Harness, Dickey & Pierce, P.L.C.
Motivation To Combine Prior Art Can Come From Knowledge Of Those Skilled In The Art, The Art Itself, Or The Nature Of The Problem
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In Acoustic Technology,
Inc. v. Itron Networked Solutions, Inc., [2019-1061] (February 19, 2020), the Federal Circuit affirmed the PTAB’s
determination in IPR2017-01024 that the challenged claim of U.S.
Patent No. 6,509,841 was unpatentable,
The patent owner’s first round of attack was to assert that,
nine days after institution of the IPR, Silver Spring agreed to
merge with Itron, Inc. — an entity undisputedly time-barred
under 35 U.S.C. § 315(b). The Federal Circuit, however, held
that the patent owner waived this argument because it failed to
present those arguments before the Board.
As the the merits of the anticipation finding, the patent owner
complained that the petitioner’s expert improperly testified
about what a person of ordinary skill in the art would
“recognize” from the reference, arguing that this might
be appropriate for obviousness, but not anticipation. The Federal
Circuit disagreed, noting that in an anticipation analysis, the
dispositive question is whether a skilled artisan would
“reasonably understand or infer” from a prior art
reference that every claim limitation is disclosed in that single
reference. Expert testimony may shed light on what a skilled
artisan would reasonably understand or infer from a prior art
reference. Moreover, expert testimony can constitute substantial
evidence of anticipation when the expert explains in detail how
each claim element is disclosed in the prior art reference.
The Federal Circuit examined the testimony of Petitioner’s
expert and concluded that he conducted a detailed analysis and
explained how a skilled artisan would reasonably understand the
cited prior art. The Court thus concluded that the Board’s
finding of anticipation was supported by substantial evidence.
The Federal Circuit also rejected the patent owner’s
argument that the Board improperly relied on “the same
structures to satisfy separate claim limitations.” The Federal
Circuit explained that it was clear from the disclosure that the
identified structure may have different functions in a given
Finally, with respect to the obviousness of the claimed
invention, the Federal Circuit rejected the patent owner’s
argument that the Board erroneously mapped the prior art onto the
elements of the claim and that the Board’s
motivation-to-combine finding is not supported by substantial
evidence. On this later point, the Federal Circuit pointed out that
the motivation to combine prior art references can come from the
knowledge of those skilled in the art, from the prior art reference
itself, or from the nature of the problem to be solved.
The Board found that motivation was adequately explained by
expert testimony which was not conclusory or otherwise defective,
and thus the Board was within its discretion to rely upon it.
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