A Known Technique for Showing a Motivation to Combine References

Written by: Justin J. Gillett & Eric Wittgrove

INTEL CORP. V. PACT XPP SCHWEIZ AG

Before Newman, Prost, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: Under the “known-techniques” rationale, a motivation to combine two prior art references exists when the references address the same problem and one of the references provides a known technique that would suitably address that problem.

Intel petitioned for Inter Partes Review of Pact’s patent directed to computer memory access.  Pact argued that Intel failed to demonstrate a motivation to combine two asserted references.  Intel argued a motivation to combine existed using the “known-technique” rationale: the two references related to the same field and addressed the same problem, and the second reference provided a known technique that would suitably address that problem.  The PTAB rejected Intel’s argument and upheld the patentability of the petitioned claim.  The PTAB reasoned that there was no motivation to use the known technique of the second reference because the first reference already addressed the problem.  Thus, the PTAB concluded that using the technique of the second reference would not improve the teaching of the first. Intel appealed.

On appeal, the Federal Circuit reversed and remanded.  It specified that the known technique of the second reference need not categorically improve the teaching of the first; the combination need not be “the best option, only [] a suitable option.” The Federal Circuit concluded that the PTAB’s reasoning “belies its conclusion”: the fact that the two references “address the same problem and that [the technique of the second reference] was a known way to address that problem is precisely the reason that there’s a motivation to combine.”

Editor: Paul Stewart