In Koninklijke Philips N.V. v. Google LLC, Case No. 2019-1177 (Fed. Cir. January 30, 2020), the Federal Circuit determined that the Board erred in instituting inter partes review based on an obviousness combination that Petitioner Google did not advance in its petition. Nevertheless, the Federal Circuit agreed that the Board could have properly relied upon the general knowledge of those of skill in the art to modify the primary reference, without having to rely upon that combination. The Federal Circuit therefore affirmed the Board’s decision that the challenged claims were invalid as obvious.
In its institution decision, the Board instituted review on a ground not advanced by Google in its Petition. The Board stated, “we exercise our discretion and institute an inter partes review on the additional ground that claims 1–11 would have been obvious over SMIL 1.0 and Hua based on the arguments and evidence presented in the Petition.” (emphasis added.) The Federal Circuit declared this to be error. Noting that while the Board is not limited by the exact language of the petition, it does not “enjoy a license to depart from the petition and institute a different inter partes review” of its own design.
The Federal Circuit, however, rejected Patent Owner Phillip’s argument that it was error for the Board to rely upon a skilled artisan’s knowledge in concluding that a person of skill in the art would have been motivated to combine that knowledge with a prior art reference. As a first matter, the Federal Circuit declared the reliance on such evidence did not contravene the requirements of 35 U.S.C. §311(b) which limits inter partes review to “prior art consisting of patents or printed publications.” “It does not follow” from this provision, said the Federal Circuit, that the Board must “ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.”
Regardless of the tribunal, the inquiry into whether any “differences” between the invention and the prior art would have rendered the invention obvious to a skilled artisan necessarily depends on such artisan’s knowledge.
The Federal Circuit further concluded that there was no inconsistency between this holding and its earlier decision in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). In Arendi, the Federal Circuit cautioned that that invoking “common sense . . . to supply a limitation that was admittedly missing from the prior art” should generally only be done when “the [missing] limitation in question [is] unusually simple and the technology particularly straightforward.” The Federal Circuit noted, however, that in Arendi the Board relied on nothing more than “conclusory statements and unspecific expert testimony” in finding that it would have been common sense to supply a limitation that was admittedly missing from the prior art. In contrast, the Federal Circuit observed that the Board in the present appeal relied on expert testimony regarding what was well-known to persons of skill in the art which was corroborated by a separate prior art reference. Moreover, the Federal Circuit noted that Patent Owner Philips offered no evidence to rebut the conclusion that a skilled artisan would have known of the methods that were combined with the prior art in Google’s combination.
The Federal Circuit’s decision provides useful guidance for future petitioners who seek to rely upon knowledge of those of skill in the art to argue that modification to a reference would have been obvious.