Finding IP Value
The Motivation to Combine References: Substantial Evidence and the Obviousness Examination Guidelines
A recent opinion by a Federal Circuit panel demonstrates that three years can be a long time in the smartphone industry. MobileMedia Ideas, LLC v. Apple, Inc. targeted Apple’s iPhone products and determined, for now at least, the fate of claims in two patents owned by MobileMedia, a non-practicing holding company partially owned by Nokia and Sony. (Fed. Cir. 2014-1060, 2014-1091.) Rulings on two separate patents hinged on whether a skilled artisan would have been motivated to combine multiple references.
The determination of obviousness is a legal question based on juror fact findings. In the case at hand, two references in combination taught every element in the claims at issue, leaving the question of motivation to be decided concerning two asserted patents, the relevant claims being:
- Claim 73 of U.S. 6,427,078 (“DEVICE FOR PERSONAL COMMUNICATIONS, DATA COLLECTION AND DATA PROCESSING, AND A CIRCUIT CARD”)(“the ’078 Patent”), claimed a smartphone with dual functionality of a mobile phone plus a built-in camera and sensor for capturing images. The specification contained an example of a cellular telephone that could scan a business card, providing OCR and additional image processing capabilities. Claim 73, with an effective filing date of May 1995, survived the validity challenge.
- Claims 5, 6, and 10 of U.S. 6,253,075 (“METHOD AND APPARATUS FOR INCOMING CALL REJECTION”)(“the ‘075 Patent”), claimed call rejection features for incoming calls when the phone is already on an active call. The asserted claims were represented by claim 10, with an effective filing date of May 1998. These claims were invalidated by the District Court, a ruling that the Federal Circuit affirmed.
With respect to claim 73 of the ‘078 Patent, Apple challenged based on a prior Japanese patent application by Kyocera and a prior U.S. patent to Lucent. The former taught a mobile phone containing every element of the subject ‘078 Patent claims except for a microprocessor. The latter taught a mobile phone with a microprocessor. Although the District Court found all elements in the combined references, the “jury implicitly chose to believe” the testimony of MobileMedia’s expert evidencing a lack of motivation to combine the references. The District Court denied Apple’s Motion for judgment as a matter of law, and the Federal Circuit affirmed. The panel cited KSR’s reasoning that a technique with known advantages (e.g., incorporating a microprocessor with a mobile phone having a camera) might not be obvious if its actual application is beyond the ordinarily skilled artisan’s capacity.
The level of ordinary skill for the case was an electrical engineer with a Bachelor of Science in electrical engineering or computer science and 2-4 years of experience working in the field. The expert testimony apparently was reasonable to have supported either a finding of motivation or the absence of motivation, so both the District Court and the Federal Circuit left the jury finding undisturbed.
The jury’s finding on the ‘075 Patent, having a 1998 filing date, did not receive the same deference. This patent claimed a mobile phone that, while actively engaged with a first call, would transmit to the mobile network a rejection message releasing any incoming calls. The main issue on validity involved the existence or absence of motivation to combine two prior, inter-related technical specifications to arrive at the claimed invention.
The technical specifications were from the European Telecommunications Standards Institute for the Global System for Mobile communications (GSM). One standard described protocols for a “release complete message” from a mobile phone to a mobile network, causing the release of an incoming call without further communication between the mobile phone and the network. The other provided instructions for handling incoming calls when a user is already active on a call.
The jury determined there was no motivation to combine, consistent with nonobviousness. In supplanting this finding, the District Court ruled, and the Federal Circuit affirmed, that “no substantial evidence supports a determination that one of ordinary skill in the art would not have been motivated to combine the references.” Accordingly, the subject claims to the call releasing functionality currently stand invalidated as obvious.
At first glance, it seems hard to reconcile the two results in this case. Perhaps the separateness of cell network transmissions and image processing moved the merger of these disciplines beyond the ordinary capacity of the reasonably skilled artisan. This, plus the earlier filing of the ‘078 Patent, might help explain the seemingly disparate levels of jury deference. Even so, one wonders if the outcome would have been different had MobileMedia, in support of the claims involving incoming calls, presented evidence of an “expenditure of time, effort, or resources” to develop this technology, which was at the time greater than what the prior art taught. See Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v. Teleflex, Federal Register, Vol. 75, No. 169, September 1, 2010 (accessed March 27, 2015).
For example, with respect to combining prior art elements, the Examination Guidelines cite KSR and provide case law examples that
“[e]ven though the components are known, the combining step is technically feasible, and the result is predictable, the claimed invention may nevertheless be nonobvious when the combining step involves such additional effort that no one of ordinary skill in the art would have undertaken it without a recognized reason to do so.”
Id. at 53646.
Had the expert based his testimony further on evidence of significant time, expenses and resources, it might have been viewed as more concrete, making it less amenable to the “only conclusory” characterization by the panel. The posture of the case on appeal was, after all, a determination whether substantial evidence supported the jury’s verdict. Such evidence might have provided additional weight to tip the scales toward MobileMedia’s no-motivation-to-combine position.
Either way, the post-KSR obviousness Examination Guidelines are not limited to USPTO practice. Rather, in a litigation context, as with patent prosecution, the Examination Guidelines provide useful content and case law examples for patent challengers and patent holders alike.