Processing All Things Federal Circuit
March 20, 2023 - Last Week in the Federal Circuit

Last Week In The Federal Circuit (March 13 – March 17): A reminder that motivation doesn’t need to be found in the prior art references themselves


The Court had a busy week as the weather begins to turn, and those with school-aged kids begin to plan for spring break. This week we look at the Court’s latest reminder that obviousness is a flexible analysis, so below we provide our usual weekly statistics and a brief discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 5

Non-precedential opinions: 8

Rule 36: 4

Longest pending case from argument: Intel Corporation v. PACT XPP Schweiz AG, No. 22-1037 (96 days)

Shortest (non-Rule 36) pending case from argument: Borusan Mannesmann Boru Sanayi ve Ticaret A.S. v. US, No. 21-2097 (36 days)

Case of the (recent) week: Intel Corporation v. PACT XPP Schweiz AG, No. 22-1037

Panel: Judges Newman, Prost, and Hughes, with Judge Prost writing for the opinion

You should read this case if: motivation to combine is at issue (as it almost always is in cases involving obviousness)

In this PTAB appeal, Intel beat the odds and got the Board’s non-obviousness decision reversed. 

The patent relates to multiprocessor systems and how processors in those systems access data. The patent owner did not dispute that the combination of two prior art references taught every limitation in the independent claim.  It instead argued—and the Board agreed—that ordinary artisans wouldn’t be motivated to combine the references.

The Court made short work of the Board’s no-motivation ruling. After highlighting the flexible nature of the obviousness analysis, the Court noted that there can be “universal” motivations known in a particular field. These universal motivations can provide “‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (Emphasis by Court.) One such universal motivation is the “known-technique” rationale, when there’s a motivation to combine simply because the prior art discloses a known technique to address a known problem in the field. 

Before the Board, Intel relied on that theory. It argued that a person of ordinary skill would have been motivated to combine the two references because they relate to the same field and address the same problem. In rejecting that argument, the Board opined that if the prior art references already addressed that problem with their own solutions, then (absent something more) there would be no reason why one reference’s solution would be an obvious improvement over the other’s. On appeal, the Federal Circuit disagreed, holding that the Board’s rationale was counter to KSR and the Court’s precedent. Once a known technique has been used to improve one device, a person of ordinary skill would recognize that the technique would improve similar devices in the same way. Here, the Court explained that the Board erred by requiring the patent challenger to show that replacing one reference’s solution with another’s was an “improvement.” It emphasized that the combination doesn’t need to be the best solution to the known problem, it only needs to be a “suitable option.”