A Generic Motivation Is Still a Motivation

| Christie Matthaei


Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: A “generic” motivation to combine that has broad appeal or applicability is not deficient so long as it is supported by more than conclusory expert testimony.

Intel requested an inter partes review of a patent owned by Qualcomm. Intel successfully argued several claims were obvious in light of a combination of references, and Qualcomm substituted new claims. Intel then argued that the substituted claims were obvious in light of a different combination of references. The PTAB rejected Intel’s motivation to combine the references as “nothing more than a generic reason to make something better,” and therefore disagreed the substitute claims were obvious.

The Federal Circuit vacated the Board’s decision with respect to the substituted claims. The Federal Circuit explained that “a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.” Rather, generic improvements may give rise to “a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” The Federal Circuit found that Intel’s motivation to combine was sufficiently supported by expert testimony explaining specifically how and why a practitioner would combine the cited references to achieve the claimed improvements. Thus, the Federal Circuit remanded.

Editor: Paul Stewart