When a party challenging a patent’s validity alleges that multiple prior references made the invention obvious, it may need to show that someone would have been motivated to combine those references into the invention. However, in a recent case, the U.S. Court of Appeals for the Federal Circuit found that no motivation to combine is required where a secondary reference is used only to explain the primary reference.
A lack of motivation
Realtime Data, LLC (Realtime) holds a patent for a method of data compression and decompression using a system known as dictionary-based encoding. This type of encoding assigns a code word to a particular data string (which has more characters than the code word), maps that code word to an index and replaces every matching data string with the corresponding code word — thereby compressing the data.
Hewlett Packard (HP) asked the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) to reconsider and cancel the patent based on “prior art” that made the claimed invention obvious and therefore unpatentable. Specifically, HP contended that the invention would have been obvious from a previously issued patent (dubbed “O’Brien” by the court) in view of a 1992 data compression textbook (referred to as “Nelson”).
The PTAB ruled in HP’s favor, finding the patented method was obvious. Realtime appealed, asserting that the board was wrong to hold that a “person of ordinary skill” in the relevant field would have been motivated to combine the teachings of O’Brien and Nelson.
The combined rulings
When a party claims that a combination of references made a patented invention obvious, the court must consider whether a person of ordinary skill in the field would be motivated to make such a combination. The fact that independent elements of the patented invention already existed isn’t enough to make the invention obvious.
HP argued that all of the elements at issue were disclosed in O’Brien and that it relied on Nelson simply to demonstrate that a person of ordinary skill would have understood that the compression disclosed in O’Brien (string compression) was, in fact, a type of dictionary encoder, the terminology used in the patent. In the alternative, HP claimed that Nelson disclosed some of the claim elements.
The PTAB relied on HP’s primary argument, not the alternative. Under these circumstances, the Federal Circuit said, the PTAB was free to conclude that O’Brien alone disclosed every claim element at issue. And, because it didn’t rely on Nelson for the disclosure of a particular element or teaching, the board had no obligation to find a motivation to combine.
In any event, the court found, substantial evidence in the case pointed toward a motivation to arrive at the claimed invention based on the teachings in O’Brien. According to the court, a motivation can be found in market forces; design incentives; and the background knowledge, creativity and common sense of the person of ordinary skill, among other places. The court made clear that the PTAB didn’t need to make a finding of motive to combine because it relied on one of the references (O’Brien), but, if it did need to find that motive, it could have.
Nelson, the court said, is a “well-known data compression textbook,” and the compression techniques it describes as dictionary encoders “share striking similarities” to O’Brien’s compression techniques. Moreover, O’Brien itself encourages a person of ordinary skill in the field to turn to “well-known algorithms such as Nelson’s.” The Federal Circuit found this evidence sufficient to find that a person of ordinary skill would have turned to Nelson to better understand O’Brien’s algorithms. Again, even though no motive to combine was necessary because O’Brien alone made the patent obvious, the court concluded it could be found.
The case compressed
Although the court ultimately found a motivation to combine, the critical takeaway from this case is that it didn’t need to in these circumstances. The Federal Circuit’s ruling illustrates that no motivation to combine need be shown when a secondary reference is used only to explain how a person of ordinary skill would have interpreted the primary reference.
Realtime Data, LLC v. Iancu, No. 18-1154, Jan. 10, 2019, Fed. Cir.