With increasing frequency, challenge grounds in IPR Petitions are being denied because Petitioners are attempting to shortcut the proper anticipation analysis by combining teachings from various, distinct embodiments in the prior art, instead of indicating how the prior art discloses, in a single embodiment, each and every limitation of a challenged claim. See, e.g., Panasonic Corp., et al. v. Optical Devices, LLC, IPR2014-00302, Paper 9 at 13-14 and Symnatec Corp. v. RPost Comunications Ltd., IPR2014-00357, Paper 14 at 20.
When a prior art reference discloses multiple, distinct embodiments, combining teachings from those distinct embodiments requires an obviousness analysis, including a demonstration of why one of ordinary skill would be motivated to combine those disparate teachings. In contrast, “[f]or anticipation, it is not enough that the prior art reference discloses multiple, distinct teachings that the ordinary artisan might somehow combine to achieve the claimed invention.” Symantec, at 20 (citing In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)). The lure of a 102 argument where 103 is more appropriate can, apparently, be too strong to pass up on occasion.