Combining prior art references for the purpose of establishing obviousness may be improper when there is substantial interplay among the claimed components. Here, for example, integrating a first reference’s microprocessor to control the camera of a second reference’s mobile phone was found to be beyond the technical ability of a skilled artisan because the surrounding claim limitations required the microprocessor to play multiple roles, and in reality, took several years to develop. “As the Supreme Court noted in KSR, even when a technique has been used to improve a device, and a skilled artisan would recognize that it could improve other devices in the same way, using that technique may not be obvious if its actual application is beyond his or her level of skill.” It may therefore be advantageous to argue the complexity of the claimed relationship among different components in traversing an obviousness combination predicated on routine skill, and to consider a declaration highlighting the real-world challenges such a combination would entail.
Background / Facts: The patents being asserted here are directed to a “small-sized, portable and hand-held work station,” such as a notebook computer, that includes a camera unit, a data processing unit, a display, a user interface, and at least one memory unit. Two prior art references are at issue with respect to an obviousness defense. Although “Kyocera” discloses many of the claimed features, it does not disclose a microprocessor or means for storing captured images for later recall. Meanwhile, “Lucent” discloses a microprocessor that performs signal processing to “enhance presentability” of captured pictures.
Issue(s): Whether the combination of the Kyocera and Lucent references is merely the predictable use of prior art elements according to their established functions, and therefore would have been obvious.
Holding(s): No. “As the Supreme Court noted in KSR, even when a technique has been used to improve a device, and a skilled artisan would recognize that it could improve other devices in the same way, using that technique may not be obvious if its actual application is beyond his or her level of skill. [] Here, [the patentee’s] expert testified that integrating the Lucent microprocessor to control the camera of the Kyocera mobile phone in the manner required by the asserted claims would be beyond the technical ability of a skilled artisan.” In particular, “[the patentee’s] expert acknowledged that had the claims merely required a processor, ‘it [would have been] obvious to put one there,’ but testified that the surrounding claim limitations required the microprocessor to ‘play[] multiple roles’ and ‘make [the claimed components] all work together,’ which was ‘a real challenge’ in the art at the time of the claimed invention. [] [The patentee’s] expert noted that Nokia, which at the time ‘was at the very forefront of innovation in the cellphone industry,’ needed two years to develop a product with a microprocessor that provided the claimed functionality between a phone and camera.”