Establishing a prima facie case of obviousness based on a multiple prior art references generally requires that the references teach or suggest all claim elements and that one of ordinary skill in the art would be motivated to combine the references to achieve the invention as claimed.  During patent prosecution, rebutting an examiner's motivation to combine is often considered to be more difficult than rebutting a contention that the references teach one or more specific claim elements.  This is especially true in the software arts, where many examiners implicitly take the position that it would be obvious to combine any two or more preexisting software features just because those features could (in theory) be combined.[1]  Thus, rather than rebutting the motivation to combine (arguments that are all too frequently ignored by examiners), prosecution of software applications focus on the examiner's mapping of the prior art to the claim elements.

Nonetheless, over the last 15-plus years since KSR Int'l Co. v. Teleflex Inc. mandated a more flexible and fact-specific approach for the obviousness inquiry, the Federal Circuit has slowly been fleshing out the post-KSR requirements to establish a motivation to combine.  Applicants should pay attention to this line of cases (which include Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC; Belden Inc. v. Berk-Tek LLC; and Henny Penny Corp. v. Frymaster LLC, among others), as they provide grist for refuting poorly-reasoned obviousness rejections.

Medtronic asserted two patents against Axonics, and the latter pulled these patents into an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB).  For both, the PTAB found that Axonics had failed to establish that any of the challenged claims were obvious.  The Federal Circuit reversed on appeal.  Despite this case not ending in favor of the patentee, its reasoning supports patentee endeavors by pointing out where motivations to combine do not meet the threshold needed to establish obviousness.

In particular, Axonics established that a combination of three or four references taught each limitation of the claims at issue.  Relying on arguments and expert testimony from Medtronic, the PTAB concluded that Axonics had not established that one of ordinary skill in the art would have been motivated to combine two of these references.

The Federal Circuit wrote "the Board committed a fundamental legal error in confining the motivation inquiry to whether a motivation would exist to make the proposed combination for use in the [context of one of these references]—to which the Medtronic patents are not limited."  Thus, the Court found a misalignment between the scope of the Medtronic claims and that of the references used in the motivation to combine.  This was a fatal flaw.

The words of the Court set forth its reasoning in a quotable manner:

When an obviousness challenge asserts a combination of identified prior art, the motivation-to-combine portion of the inquiry is whether a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention . . . .  The inquiry is not whether a relevant artisan would combine a first reference's feature with a second reference's feature to meet requirements of the first reference that are not requirements of the claims at issue.  A contrary view would run counter to established principles, including that the claim defines the invention whose obviousness is being assessed . . . .

Put another way, even if one can find a motivation to combine two references based on the teachings of the references themselves, this motivation is not relevant to an obviousness analysis unless the references' teachings are commensurate with the scope of the claims under consideration.  If, as in this case, the motivation for combining is based on a narrower use than what is claimed, then the motivation cannot stand.  Thus, the Court vacated and remanded the PTAB's decisions.

This means that finding just any reason to combine references is not sufficient when that reason is not reasonably related to the claims.  In practice, this rebuttal of the motivation to combine might not be available in all cases.  But, given the proclivity of examiners to throw any motivation around that is tangentially related to the claimed invention, it is worthwhile to at least consider a rebuttal when the facts line up against a conclusion of obviousness.

Again, this may be an odd case to rely on for such a rebuttal.  The Court ultimately held that the PTAB's motivation to combine inquiry was too narrowly confined to a use set forth by the cited references rather than that of the claims.  Nonetheless, the Court's language is strong and may be handy for doing away with poorly-reasoned motivations.

[1] Examiners in other technological fields take different approaches.  For instance, the motivation to combine is frequently easier to rebut in the mechanical arts because examiners understand that most claim elements are known but these elements have specific characteristics that may not be readily combinable.  There is also a slightly higher burden to establish the obviousness of claims in unpredictable arts, such as chemistry.

Axonics, Inc., v. Medtronic, Inc. (Fed. Cir. 2023)
Panel: Circuit Judges Lourie, Dyk, and Taranto
Opinion by Circuit Judge Taranto