New CAFC case suggests standard for motivation to combine to find obviousness can be less onerous
In a recent ruling Cisco System Inc. V. K. Mizra, the U.S. Patent & Trial Appeal Board (PTAB) standard for non-obviousness came under scrutiny, when the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed PTAB and held that PTAB’s application of a “benefits based motivation” was too strict.
“While an obviousness analysis should be ‘expansive and flexible,’ KSR Int’l Co., 550 U.S. at 415, ‘there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention.’”
At the heart of the dispute is a network security patent U.S. Patent No. 8,234,705 (’705 patent). Cisco raised an obviousness challenge in an IPR to several claims of the ‘705 patent based on a combination of the Gleichauf and Lewis references based on predictability, which the Board dismissed.
On Appeal, the Federal Circuit determined that the Board had erred in its evidence in how much a petitioner needs to provide to show “motivation to combine” as outlined in the seminal KSR decision of 2007 or the Federal Circuit’s 2023 decision in Intel v. PACT XPP Schweiz.
“A tribunal, however, crosses into forbidden territory when it applies a general principal as a rigid rule. Id. At 419. And as we recently decided in Intel, a party is not rigidly required to show an improvement or benefit in combining prior art references in a ‘categorical sense’ in order to show a motivation to combine.”
Read the full Opinion.
About the Author
Hemant Khanna, Ph.D.
Hemant focuses his practice on drafting and prosecuting patent portfolio’s, strategic IP procurement and management of global intellectual property assets in biotechnological and pharmaceutical matters Read More…
