Does an obviousness rejection under 35 U.S.C. § 103 in which a single reference discloses each element require a motivation to combine with another reference? In Realtime Data, LLC v. Iancu, the Federal Circuit said no, upholding a rejection of claims of U.S. Patent No. 6,597,812 from the Patent Trial and Appeal Board in an inter partes review. This case is particularly interesting, and my colleague Chris Francis discusses its implications on claim differentiation.
The ‘812 patent is directed to lossless data compression using “dictionary encoding,” a method of encoding large strings of data with short unique word identifiers that reduce the number of characters in a compressed file. Claim 1 recites in relevant part:
1. A method for compressing input data comprising a plurality of data blocks, the method comprising the steps of:
…maintaining a dictionary comprising a plurality of code words, wherein each code word in the dictionary is associated with a unique data block string….
During the inter partesreview, the Board held that the ‘812 patent was obvious over U.S. Patent No. 4,929,946 to O’Brien in view of Nelson, a textbook on data compression. Notably, the Board held that O’Brien alone disclosed every element of claim 1 of the ‘812 patent and that Nelson provided explanation for disclosure of O’Brien’s disclosures such that the combination of O’Brien and Nelson was simply an alternative to the single-reference obviousness rejection of O’Brien. Respondent appealed to the Federal Circuit, arguing that Petitioner and the Board did not present a reason to combine O’Brien and Nelson.
The Court affirmed the Board’s decision, noting that a single-reference obviousness rejection does not require a determination of a motivation to combine. Petitioner’s use of Nelson was simply to define and explain the encoding of O’Brien, and O’Brien sufficiently taught all the elements of claim 1. Inasmuch as Petitioner and the Board should have used O’Brien as an anticipation rejection under 35 U.S.C. § 102, the Court noted that “anticipation is the epitome of obviousness,” and that O’Brien can render claim 1 invalid under both §§ 102 and 103. Further, the Court held that there was a motivation to combine the references anyway: O’Brien suggested algorithms that were similar to ones well-known because of Nelson’s teachings, so one of ordinary skill in the art would have consulted Nelson upon reading O’Brien.
Respondent further argued that the recitation of “comprising” did not foreclose that the recitation of “maintaining a dictionary” could include additional unstated limitations, adding further requirements not disclosed in O’Brien. The Court summarily dismissed this argument, noting that the term “comprising” does not require additional elements to be read into the claim, “only that adding other elements to the device or method is not incompatible with the claim.”
Lessons for Practice
Arguing motivation to combine to overcome an obviousness rejection is already difficult when combining elements from two references, so when a secondary reference is brought merely to explain elements taught by the primary reference, focus arguments toward elements not found in the cited prior art.