CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020). The claims of the ‘806 patent are directed towards “download[ing] the next file [of a media presentation] concurrently with playback of the previous file.” Philips argued that the Board erred in instituting an IPR “because 35 U.S.C. § 311(b) expressly limits inter partes reviews to ‘prior art consisting of patents or printed publications,’ and because…§ 311(b) prohibits use of general knowledge to supply a missing claim limitation in an inter partes review.” The court found that the Board did not err “in relying on ‘general knowledge’” to institute an IPR because “[a]lthough the prior art that can be considered in inter parte reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” The court noted that “[r]egardless of the tribunal, the inquiry into whether any ‘differences’ between the invention… Read More »CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

Single Reference Obviousness Rejection Requires No Motivation

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… Read More »Single Reference Obviousness Rejection Requires No Motivation

Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) rejected Maryland’s argument that a cited reference is teaching away from combining it with another reference to reach a conclusion of obviousness.  The Federal Circuit affirmed a determination by the PTAB of obviousness of the claims in an interpartes reexamination of the ‘532 patent on 35 U.S.C. §103 grounds.  The reexamination was requested by Presens Precision Sensing GMBH (“Presens”), a seller of equipment that uses technology related to that in the ‘532 patent.   University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, 2016-2745, 2017-1057 (November 3, 2017). The claim rejections relied on two technical papers, Bernhard H. Weigl et al., Optical Triple Sensor for Measuring pH, Oxygen and Carbon Dioxide, 32 J. Biotechnology 127 (1994) (“Weigl”), and Shabbir B. Bambot et al., Potential Applications of Lifetime-Based, Phase-Modulation Fluorimetry in Bioprocess and Clinical Monitoring, 13 Trends in Biotechnology 106 (1995) (“Bambot”).  The references were combined to reject claims including a limitation not expressly found in either reference: “at least two types of optical chemical… Read More »Federal Circuit: No “Teaching Away” Without Discouragement

Obviousness Upheld with Secondary Reference Unrelated to Field of Technology

When can prior art references be combined to invalidate patent claims as obvious under 35 U.S.C. § 103?  Here is one case providing a lesson on this question.  In Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. Ltd., No. 2016-2321, 2017 U.S. App. LEXIS 15923 (Fed. Cir. Aug. 22, 2017), the Federal Circuit upheld the Patent Trial and Appeal Board’s (“Board”) determination that the claims of U.S. Patent No. 7,626,349 were invalid as obvious. The ‘349 patent is directed to an electric motor in an HVAC system that uses sinewave commutation to rotate the motor. The Board rejected the claims of the ‘349 patent as obvious over a combination of U.S. Patent No. 5,410,230 (“Bessler”), which taught an HVAC system with a motor, and a doctoral thesis by Peter Franz Kocybik (“Kocybik”), which taught sinewave commutation. The Board determined that combining the references “would have provided predictable results to address known problems associated with other types of motors.” Nidec, the Appellant, conceded that the claimed elements were described in the prior art. Nidec argued that Bessler taught away from the asserted combination because adding sinewave commutation of Kobycik to the HVAC system of Bessler would increase the complexity of… Read More »Obviousness Upheld with Secondary Reference Unrelated to Field of Technology