A Generic Motivation Is Still a Motivation
In Intel Corporation v. Qualcomm Incorporated, Appeal No. 20-1664, the Federal Circuit held that a “generic” motivation to combine that has broad appeal or applicability is not deficient so long as it is supported by more than conclusory expert testimony.
Intel requested inter partes review of a patent owned by Qualcomm. Intel successfully argued several claims were obvious in light of a combination of references, and Qualcomm substituted new claims. Intel then argued that the substituted claims were obvious in light of a different combination of references. The PTAB rejected Intel’s motivation to combine the references as “nothing more than a generic reason to make something better” and therefore disagreed the substitute claims were obvious.
The Federal Circuit vacated the Board’s decision with respect to the substituted claims. The Federal Circuit explained that “a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.” Rather, generic improvements may give rise to “a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” The Federal Circuit found that Intel’s motivation to combine was sufficiently supported by expert testimony explaining specifically how and why a practitioner would combine the cited references to achieve the claimed improvements. Thus, the Federal Circuit remanded.
(Communications Technology, Motivation to Combine; Prepared by Christopher Smith)
The PTAB Should Analyze Patentability Even if Claims Are Indefinite
In Intel Corporation v. Qualcomm Incorporated, Appeal No. 20-1828, the Federal Circuit held that indefinite claims do not preclude a patentability analysis at the PTAB.
Intel Corp. requested inter partes review of a patent owned by Qualcomm Inc. The PTAB found several claims non-obvious over the prior art but declined to rule on other claims, finding that Intel had failed to meet the threshold burden to demonstrate unpatentability.
In reviewing the decision, the Federal Circuit reasoned that the Board failed to fully assess claims 16 and 17 for patentability. The Board had ruled that since there were issues of indefiniteness, a full patentability analysis for those claims could not be carried out. The Federal Circuit, however, stated that the “Board did not itself conclude that the prior-art analysis task was impossible” and concluded that the Board should nevertheless address whether the underlying patentability of the claims could be analyzed despite any indefiniteness issues. Accordingly, the Federal Circuit vacated and remanded the Board’s decision.
(Computer Hardware, Patentability, Claim Construction; Prepared by Kenneth Wang)