Several good quotes to use against the typically flimsy obviousness rationales flouted by Examiners. Some highlights include arguments against an Examiner reasoning that the proposed combination would provide only expected results (but no apparent benefit): “a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions … is not sufficient and is fraught with hindsight bias.” Also, arguments against an Examiner reasoning that the proposed combination would solve some known problem (without detailing how): “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.”
Background / Facts: ActiveVideo alleged that Verizon’s video on demand (VoD) feature of the Verizon FiOS-TV system infringed several of its patents directed to interactive television systems and methods for delivering interactive television to subscribers. Just about all of the usual issues of infringement, invalidity, damages, marking, injunctions, etc., were raised in this case, with Verizon getting the worst of it. I found the most interesting and revealing discussion, however, to be directed to the combinability of references for obviousness assertions.
Issue(s): Whether mere assertions that a person of ordinary skill in the art would have recognized the claimed components to be “modular” in nature and therefore would have been easily able to combine any of a number of references to achieve the claimed inventions is a sufficient supporting obviousness.
Holding(s): No. The court repeatedly chastised Verizon’s expert for failing to provide any specific factual basis for his assertions. The expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims. “Rather, the expert’s testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias. … It also fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” Quoting KSR, the court emphasized the importance of identifying a rationale for combining references “because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”