FEDERAL CIRCUIT HOLDS THAT NO MOTIVATION TO COMBINE IS REQUIRED WHEN A SECONDARY REFERENCE IS NOT RELIED ON FOR DISCLOSURE OF A PARTICULAR ELEMENT OR TEACHING

REALTIME DATA, LLC v. IANCU, Appeal No. 2018-1154 (Fed. Cir. January 10, 2019).  Before Dyk, Taranto and Stoll.  Appealed from the Patent Trial and Appeal Board. (Motivation To Combine For Obviousness)

Background:

Hewlett Packard (HP) sought inter partes review (IPR) of Realtime Data’s patent.  The patent disclosed a method for providing lossless data compression using “dictionary” encoding.  “Dictionary” encoding is a form of lossless data compression that 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.

HP argued in its petition that certain claims of the patent would have been obvious over O’Brien in view of Nelson.  HP argued that O’Brien disclosed all substantive steps of the challenged claims.  Because O’Brien did not specifically use the claim term “dictionary,” however, Nelson was relied on to prove that a skilled artisan would have recognized that O’Brien’s string compression is indeed a “dictionary”-based algorithm.

The Board instituted the IPR and, in its final decision, found that all challenged claims of the patent would have been obvious over O’Brien and Nelson.  Realtime appealed the Board’s decision arguing that there was no motivation to combine O’Brien and Nelson.

Issue/Holding:

Did the Board err in its determination that the challenged claims would have been obvious over O’Brien in view of Nelson?  (continue reading)

Summary byAshley Yeum

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