“Intel… established that parties seeking to invalidate patent claims are not categorically required to show an improvement or benefit to prove that a skilled artisan would have a motivation to combine references.”
On August 16, the U.S. Court of Appeals for the Federal Circuit issued a nonprecedential ruling in Cisco Systems, Inc. v. K.Mizra LLC vacating the Patent Trial and Appeal Board’s (PTAB) determination that Cisco failed to show a motivation to combine a pair of prior art references in arguing that K.Mizra’s challenged patent claims were obvious. The Federal Circuit faulted the PTAB for its rigid application of motivation to combine analysis, and found that the Board lacked substantial evidence in rejecting a benefits-based motivation to combine rationale proffered by Cisco.
Recognizable Benefit Not Always Required to Find Motivation to Combine
This appeal stems from inter partes review (IPR) proceedings petitioned by Cisco to challenge K.Mizra’s U.S. Patent No. 8234705, Contagion Isolation and Inoculation. The ‘705 patent claims a method for protecting a network from viruses by quarantining infected computers while allowing limited access to the network through a remedial server. In its IPR petition, Cisco raised an obviousness challenge to several claims of the ‘705 patent based on a combination of U.S. Patent No. 9436820 (“Gleichauf”), which teaches a method of protecting a network from an infected computer attempting to connect without the use of a quarantine server, and U.S. Patent No. 7533407 (“Lewis”), which discloses a quarantine server that detects if a device is infected and a quarantine notification displayed via webpage.
During the IPR proceedings, the PTAB dismissed Cisco’s non-benefits-based arguments for combining Gleichauf’s remediation method with Lewis’ quarantine server and notification webpage based on predictability. The Board also dismissed Cisco’s arguments based on the benefits of combining prior art references after finding that the notification message disclosed by Gleichauf would achieve the same benefit as the browser-displayed message of Lewis.
On appeal, the Federal Circuit found that the PTAB’s obviousness analysis failed to reflect the flexibility required by the U.S. Supreme Court in its seminal 2007 decision in KSR International v. Teleflex. KSR requires that there be a motivation to combine prior art references in order to invalidate patent claims for obviousness, and such motivation is typically found in a benefit recognized by a skilled artisan to combine those references. However, the Federal Circuit’s 2023 decision in Intel v. PACT XPP Schweiz established that parties seeking to invalidate patent claims are not categorically required to show an improvement or benefit to prove that a skilled artisan would have a motivation to combine references. By failing to address whether Cisco showed a motivation to combine in its non-benefits-based rationales, the PTAB committed legal error requiring the Federal Circuit to vacate and remand the IPR rulings.
PTAB Erred in Rejecting Combination Rationale Based on Attorney Argument
Cisco also challenged the PTAB’s decision to allow K.Mizra’s responses to the benefits-based obviousness rationales advanced by Cisco, arguing that 37 CFR § 42.23(b) only allows sur-replies to include responses to arguments raised in reply briefs without introducing new evidence. The appellate court, however, found no procedural issue with the Board accepting K.Mizra’s sur-reply arguments. K.Mizra’s sur-reply included no new evidence regarding the Gleichauf-Lewis combination, and the Federal Circuit found that K.Mizra’s arguments were directly responsive to benefits of the prior art combination that were included by Cisco in its reply brief. Further, the Federal Circuit found no Administrative Procedures Act (APA) violation as Cisco had an opportunity to address K.Mizra’s arguments at a hearing and failed to raise this objection before the PTAB.
The Federal Circuit did agree with Cisco’s arguments that the PTAB erred in rejecting its rationale that a skilled artisan would have seen the benefit to using Lewis’ quarantine notification webpage with Gleichauf, which allegedly displays messages through separate software components. While the PTAB found that Gleichauf indicates that notification messages may be displayed on a browser using XML extensible messaging format, the appellate court noted that Gleichauf broadly discloses the use of extensible messaging formats to display messages in an application-independent form and not necessarily a web browser. The only support cited by the PTAB was attorney argument offered by K.Mizra, which cannot constitute substantial evidence of a motivation to combine as the Federal Circuit has previously held in decisions such as Acoustic Technology v. Itron Networked Solutions (2020).
Image Source: Deposit Photos
Author: billperry
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