To establish a prima facie case of obviousness under 35 U.S.C. § 103, it is not sufficient to show that the references are like separate pieces of a simple jigsaw puzzle. An explicit reason or motivation must be established for one of ordinary skill in the art at the time of the invention to place these pieces together. “A reason for combining disparate prior art references is a critical component of an obviousness analysis; ‘this analysis should be made explicit.’”
Background / Facts: The asserted patents here generally relate to remote telepresence technology regarding camera movement, arbitrating control of a robot, and a call back mechanism to notify a previously denied user that the robot is now available. In alleging obviousness, the accused infringer’s expert opined that she could combine certain prior art references because one reference “is talking about what happens when you have multiple robots and you want to control them from different stations,” another reference “is providing a remote telepresence for that soldier,” and another reference discloses “doing things over the Internet,” noting that “robots are going over the Internet too; so that applies to them as well.”
Issue(s): Whether an assertion that one skilled in the art could easily combine prior art references “like separate pieces of a simple jigsaw puzzle” is a sufficient rationale for establishing a prima facie case of obviousness under 35 U.S.C. § 103.
Holding(s): No. The court found that the “[expert’s] testimony was vague and did not articulate reasons why a person of ordinary skill in the art at the time of the invention would combine these references.” Instead, “[i]t appears that [she] relied on the [] patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.” Thus, “[her] testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so.”