Imagine That IP Law Blog

Earlier this week, in Intel Corporation v. Pact Xpp Schweiz Ag, the Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board (PTAB) that a processor claim was valid as being non-obvious over a combination of cited references because the Petitioner’s argument under the “known technique” test was found to be lacking. In particular, the PTAB held, and the Federal Circuit reversed, that the “known technique” test requires that the proposed combination would result in an improvement over the base reference. This appears to be in conflict with how Examiners are instructed to examine patents under the Manual of Patent Examining Procedure (MPEP).

The patent at issue in Intel is directed to a multi-processor bus and cache interconnection system. The parties agreed that the two references each taught a portion of the claimed system and covered all elements of the claim. The disagreement was over whether the references could be properly combined. The issue came down to the fact that both prior art references were aimed at solving the same problem. The patent owner argued, and persuaded the PTAB, that if the main reference already addressed the same problem as the secondary reference but solved it in a different way, the Petitioner failed to show why one of ordinary skill in the art would regard the technique in the secondary reference as an obvious improvement over the main reference.

The Federal Circuit disagreed, stating: “[t]hat Kabemoto and Bauman address the same problem and that Bauman’s cache was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.” Therefore, the Court concluded that “[i]t’s enough for Intel to show that there was a known problem of cache coherency in the art, that Bauman’s secondary cache helped address that issue, and that combining the teachings of Kabemoto and Bauman wasn’t beyond the skill of an ordinary artisan.”

As a result, under the “known-technique” rationale for combining references under 35 U.S.C. § 103, the only motivation that is required to combine the references is that the solution offered by one reference be “suitable” for solving a problem of another reference regardless of whether the solution is actually an improvement.

Effect on Patent Prosecution
The MPEP highlights the tension created by the Intel decision. Specifically, MPEP § 2143 states that, when applying a “Known Technique to a Known Device” to establish obviousness under 35 U.S.C. § 103, the Examiner must articulate “a finding that one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system.” (MPEP §2143 (D)). However, Intel holds that an improvement is not required to establish obviousness under 35 U.S.C. § 103.  Whether to Patent Office will revise the MPEP based on Intel remains to be seen.

Regardless of whether the Patent Office amends MPEP §2143 (D), patent prosecutors should understand that, if the basis for allowance is a finding under the “known technique” test that the base reference would not have been improved by the disclosures in the secondary reference, the patent may not withstand scrutiny in an IPR or in court. Rather than advancing arguments under the “known technique” test, which have been overruled by Intel, it may be better, in such circumstances, to make arguments that the proposed combination would render the combination inoperative or unsatisfactory for its intended purpose or that the references teach away from the proposed combination.

For Petitioners in Post-Grant Proceedings
The Court’s holding in Intel effectively lowers the bar for Petitioners to establish that a challenged claim is invalid under 35 U.S.C. § 103 by removing the requirement that the proposed combination result in an improvement to the base reference. By removing the improvement requirement, Intel is adopting a standard that is remarkably similar to the “problem-solution” approach for determining obviousness adopted by the European Patent Office (EPO). Under the EPO examination guidelines, the problem-solution approach has three main stages:

i. determining the “closest prior art”,

ii. establishing the “objective technical problem” to be solved, and

iii. considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person. (G‑VII, 5. Problem-solution approach - Guidelines for Examination (epo.org))

Under Step (ii) of the EPO problem solution approach, the objective technical problem is identified by determining how to modify or adapt the closest prior art to provide the technical effects that the invention provides over the closest prior art. The EPO guidelines specifically identify that “the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective.” Accordingly, like in Intel, the EPO’s problem-solution approach does not require the solution to the objective technical problem to be an improvement. Instead, the only requirement under the EPO approach and Intel is that the solution provides similar effects.

As a result, Petitioners would be well served to add additional argumentation in their petition modeled after arguments traditionally made to support an inventive step under the EPO’s problem-solution approach.

For Patent Owners in Post-Grant Proceedings
The Intel decision does not render moot any arguments against the motivation to combine references under 35 U.S.C. § 103 other than those based on the requirement that there be an improvement under the “known technique test.” For example, as is our advice for patent agents, a Patent Owner would still be well served to argue that the proposed combination would render the combination inoperative or unsatisfactory for its intended purpose or that the references teach away from the proposed combination.

However, the Intel decision further highlights the importance of the Patent Owner clearly identifying the claim elements not taught or suggested by the references cited in the petition. Even though the standard for motivation to combine may have been lowered, that lowered standard still cannot account for features that are not described in the cited prior art.