Motivation to Combine Unnecessary Under Section 103 if Secondary Reference Does Not Supply Element or Teaching

“Where the PTAB determines a single reference discloses all limitations of a claimed invention and relies on a second reference for what is generally known by one of skill in the art, there is no need to make findings regarding a motivation to combine the references.”


On January 10, the Federal Circuit issued an opinion affirming a decision of the Patent Trial and Appeal Board (PTAB) invalidating several claims of U.S. Patent No. 6,597,812 (the ‘812 patent) as obvious. Realtime Data, LLC v. Iancu, No. 2018-1154 (Fed Cir. Jan. 10, 2019) (Before Dyk, Taranto, and Stoll, Circuit Judges) (Opinion for the court, Stoll, Circuit Judge).

Hewlett Packard Enterprise Co., HP Enterprise Services, LLC, and Teradata Operations, Inc. (collectively, HP) sought inter partes review (IPR) of U.S. Patent No. 6,597,812, alleging that the claims were obvious under 35 U.S.C. §103(a) over U.S. Patent No. 4, 929, 946 (O’Brien) and further, in view of a data compression textbook by Mark Nelson (Nelson). After instituting review, the PTAB found the challenged claims obvious over the prior art. Realtime Data appealed on two grounds: (1) that the PTAB erred in determining that a person of ordinary skill would have been motivated to combine the teachings of O’Brien and Nelson, and (2) that the PTAB erred by failing to properly construe the term “maintaining the dictionary”.

The ‘812 patent, owned by Realtime Data, LLC (Realtime Data), is directed to a system and method for lossless data compression and decompression using dictionary encoding. Dictionary encoding “assigns a code word to a particular data string, maps that code word to an index, and replaces every matching data string with the corresponding code word.”

No Motivation to Combine Necessary

HP’s primary argument to the PTAB was that all of the elements of claims 1–4, 8, and 28 were disclosed in O’Brien. HP relied on Nelson to demonstrate that a person of ordinary skill in the art would have understood that the string compression disclosed in O’Brien was a type of “dictionary encoder”, which a terminology used in the ’812 patent specification, as well as a term specifically used in claim 28. Alternatively, HP also argued that Nelson disclosed certain of the elements in the claims at issue.

On appeal, the Federal Circuit accepted HP’s primary argument that all of the challenged claims were disclosed in O’Brien, with Nelson used only to demonstrate that the term “dictionary encoder” used in the ‘812 patent was actually what was disclosed in O’Brien. HP thus relied on Nelson merely to explain that O’Brien’s algorithm was a dictionary algorithm, which Realtime conceded. Because the PTAB did not rely on Nelson for the disclosure of any particular element or teaching and instead relied on O’Brien alone to supply the elements and teachings, there was no obligation to make any finding regarding a motivation to combine O’Brien and Nelson. Therefore, the PTAB “did not err when it concluded that claim 1 was invalid under § 103 based on O’Brien alone,” Judge Stoll wrote.

Single Reference Obviousness Rejections are a Myth

It is worth pausing for a moment, however, to take issue with the Federal Circuit saying that it is proper to reject a claim under §103 based on a single reference. That is not technically correct. While there is no doubt a belief in the industry that so-called single reference obviousness rejections exist and are legitimate, even by some Judges on the Federal Circuit, that is not correct. Perpetuating the myth of a single reference obviousness rejection really must stop.

While the outcome in the case would be unchanged, an anticipation rejection under 35 U.S.C. § 102 is proper when a single reference provides exact identity with the claimed invention. Obviousness always requires more than a single reference, although that which is additional does not need to add an element or teaching found in the claims. As here, the secondary reference—Nelson—added what is understood by one of skill in the art. The secondary reference merely demonstrated that the language used in the primary reference would be understood to be referring to the same thing as the language used in the claims being reviewed. Thus, Nelson was used to establish what would be understood by one of skill in the art.

It is inappropriate to think of a primary reference plus a reference explaining what one of skill in the art would understand as a single reference obviousness rejection. Single reference obviousness rejections are fiction. Continually referring to such a fictitious rejection only encourages Examiners and certain PTAB panels to misapply common sense in order to supply missing elements, or to inappropriately take official notice that something is well-established or understood when that matter is disputed.

No Error Construing “Maintaining a Dictionary”

The Board did not expressly construe the phrase “maintaining a dictionary” as it relates to claim 1, but instead found that O’Brien satisfied this limitation because it disclosed all of the steps in dependent claim 4, which depends directly on claim 1 and seemingly narrows by providing a specific definition for “maintaining a dictionary.”

At first glance, this seems odd. How could the PTAB rely on a narrowing dependent claim for the meaning of the term to be narrowed in the independent claim? As the Federal Circuit explained, the language of claim 4 directly mimics the portion of the specification that explains what it means to maintain a dictionary. Therefore, the text explaining the specific way in which a dictionary is dynamically maintained would be at least one way of maintaining the dictionary covered within the meaning of claim 1, as the PTAB found.

Unfortunately for Realtime, the proposed construction offered to and rejected by the PTAB with respect to the meaning for “maintaining a dictionary” was not supported by the intrinsic evidence.

Ultimately, Realtime could not demonstrate that the PTAB committed legal error by failing to adopt its offered claim construction. The Federal Circuit concluded the PTAB committed no error in finding that O’Brien disclosed the “maintaining a dictionary” limitation of claim 1.

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Copyright: billperry


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Join the Discussion

10 comments so far.

  • [Avatar for Anon]
    January 24, 2019 02:51 pm

    Thanks Dan,

    It is well night boilerplate for applicants themselves to include a proviso that the various elements taught within the four corners of an application are not limited by the express combinations expressed therein.

    This though, may speak to mere capability of being combined, and not necessarily to motivation to combine.

    Additionally, although this is often times a difficult point to have appreciated, motivation OF a single feature – for the benefits of that feature in and of itself – is NOT the same thing as a motivation to combine. Nearly every single Office Action I receive has the examiner misunderstanding the notion of “to combine” and instead rely on the benefit – in and of itself – of the feature alone.

  • [Avatar for Dan Hanson]
    Dan Hanson
    January 24, 2019 10:01 am

    Some single-reference obviousness cases:

    In those instances in which an Examiner bases an obviousness rejection upon a single reference, there must ordinarily be evidence of some reason to modify that reference. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). The reason or motivation need not be the same motivation as the inventor had. See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012).

    It is also permissible for an examiner to combine (some say “mix and match”) features from different embodiments within a single reference. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (the reference’s description and figures indicated the features could be combined); see also In Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376 (Fed. Cir. 2017).

  • [Avatar for Peter Kramer]
    Peter Kramer
    January 23, 2019 02:00 pm

    One situation where a single reference requires a 103 rejection (and if I recall correctly, with a motivation statement) is when different embodiments in the reference individually do not anticipate but but account for all elements when combined. I can provide case law later (I’m using smart phone at the moment.)

  • [Avatar for Anon]
    January 22, 2019 05:04 pm


    You alight on an aspect that received considerable insights (at that “other” blog).

    For a court to continue to muck up 102 and 103 only shows a lack of respect for the Rule of Law.

  • [Avatar for Dan Hanson]
    Dan Hanson
    January 22, 2019 02:32 pm

    It may have been correct to rule that, in this case, it would have been a waste of time to argue that a claim that is anticipated under section 102 would not be obvious under section 103, but the basis for the Court’s decision seems to be that if there is anticipation, there is also necessarily obviousness: “[I]t is well settled that ‘a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for “anticipation is the epitome of obviousness.”‘” Slip op. at 9 (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).

    Previous authorities indicate the question is not at all “well settled.” In Cohesive Tech., Inc. v. Waters Corp., 543 F.3d 1351, 1364 n. 2 (Fed. Cir. 2008), the Court said that it is incorrect to think of anticipation as being the “epitome of obviousness.” The Court did acknowledge, however, that there is some authority to the contrary. Id. at 1363-64 (opinion of the court) and at 1376 (Mayer J., dissenting). But the Court also specifically addressed what the Connell case actually said about the subject.

    In addition, the Court in Cohesive Tech recognized that it is possible for a claim to be anticipated by the prior art, but not obvious, though such circumstances may be rare. The Realtime Data Court could have acknowledged that this case is simply not one of those rare cases.

    Further authorities show that anticipation and obviousness issues can sometimes turn upon different issues. Although anticipation and obviousness are related, they are legally distinct and separate bases for invalidating (or rejecting) a patent. Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107 (Fed. Cir. 2003). But “[t]he tests for anticipation and obviousness are different.” Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Anticipation is a question of fact, while obviousness is a question of law based on underlying factual findings. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). Further, “the various unenforceability and invalidity defenses that may be raised by a defendant—inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under § 103—require different elements of proof.” Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107–08 (Fed. Cir. 2003).

  • [Avatar for Cee]
    January 22, 2019 01:36 pm

    Why ? Because Mommy (the USPTO) says so.

  • [Avatar for mike]
    January 22, 2019 11:37 am

    It seems that if claim 4 was no different from claim 1, it should have been objected to for failing to further limit the claim.

    With reference to Benny@3, it seems this is a perfect example of “don’t bother to examine the application, just allow it and if it’s important, the courts will sort it out.” The applicant would have had a lot more flexibility to raise arguments and amend the claims if there had been a substantive office action raising these issues.

  • [Avatar for Benny]
    January 22, 2019 05:36 am

    I looked at the public record. It appears that the original application went straight to allowance without examination (there is no correspondence before the issue notification). That appears to be the source of the problem.

  • [Avatar for Non Sequitur II]
    Non Sequitur II
    January 21, 2019 04:52 pm

    How exactly are they different in these circumstances? Both types of rejections require comparing the claimed invention to the prior art. If those differences are zero, it is a 102 rejection. If the differences are greater than zero AND the differences are “obvious,” it is a 103 rejection. Accordingly, arguments that could defeat a 102 rejection (e.g., “The prior art does not disclose…”) can also defeat a 103 rejection.

  • [Avatar for Night Writer]
    Night Writer
    January 21, 2019 02:21 pm

    I think the problem with this judgment is that it should have been remanded. The patentee should be afforded the opportunity to traverse/appeal a rejection based on the right section of 35 USC. An appeal based on 103 is very different than 102.

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