Federal Circuit Reverses PTAB’s Finding That Challenged Claim Was Not Unpatentable Where PTAB Committed Legal Error By Requiring “Bodily Incorporation” Of Obviousness Combination
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  • Federal Circuit Reverses PTAB’s Finding That Challenged Claim Was Not Unpatentable Where PTAB Committed Legal Error By Requiring “Bodily Incorporation” Of Obviousness Combination

    On February 24, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a final written decision by the Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding the challenged claim not unpatentable as obvious.  Intel Corp. v. PACT XPP Schweiz AG, No. 2022-0138 (Fed. Cir. Feb. 24, 2023).  In doing so, the CAFC held that the PTAB improperly required the petitioner to show the prior art references could be “bodily incorporated.”

    Petitioner Intel filed a petition for inter partes review challenging claims 1–4 of U.S. Patent No. 9,436,631.  Claim 1 is an independent claim, and claims 2–4 are dependent claims, with claim 2 depending on claim 1, claim 3 depending on claim 2, and claim 4 depending on claim 3.  In its petition, Intel asserted that claim 1 was obvious over U.S. Patent No. 5,761,455 (“King”) and that claims 2–4 were obvious over King in combination with U.S. Patent No. 5,893,163 (“Arimilli”).

    Prior to filing its Patent Owner Preliminary Response, Patent Owner PACT statutorily disclaimed claims 1–3.  The PTAB then instituted IPR on claim 4.

    In its Final Written Decision, the PTAB analyzed all four claims (because claim 4 depended, successively, from each of the other claims).  The PTAB found claims 1–3 to be obvious.  For claim 1, the PTAB found that King discloses each limitation of claim 1.  For claims 2 and 3, the PTAB found that the combination of King and Arimilli teaches all the limitations of claims 2 and 3 and that there was “a persuasive rationale” why a person of ordinary skill would have incorporated Arimilli’s teachings into King’s system to achieve the claimed system.  However, as to claim 4, the PTAB found that Intel failed to meet its burden.  Per the CAFC, Intel failed to establish a motivation to combine because “Intel has not specifically explained how a person of ordinary skill in the art would have modified King[] … to incorporate a shared bus as disclosed in Arimilli.”

    On appeal, the CAFC first found that the PTAB committed legal error by requiring Intel to explain how the two relevant aspects of King and Arimilli could be “bodily incorporated,” which is not a requirement for showing obviousness.  The CAFC explained:
    “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference[.]”  Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (quoting In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981)).  Instead, the question is whether “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[.]”  Id. (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (explaining that whether one reference can be incorporated in another is “basically irrelevant” since the test for obviousness is “not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole”).
    The CAFC then reversed the PTAB’s ultimate determination because “[b]ased on the evidence before the [PTAB] … substantial evidence could only support a finding that an ordinary artisan would have been so motivated” to combine the prior art’s teachings.  (Emphasis in original).