By Matthew L. Cutler, Principal
A favored, but largely unsuccessful, line of defense for Patent Owners in inter partes review proceedings is the argument that the prior art references-at-issue teach away from their combination. A typical form of this teaching away argument arose in IPR2013-00465, styled as SDI Tech. v. Bose Corp., involving US Pat. No. 8,364,295, where Patent Owner argued that the references of record taught two different combinations other than the one that allegedly renders the ‘295 claims obvious, and that these separate teachings constituted teaching away from the claimed invention of the ‘295 patent. Decision at 19. The Board rejected this argument. Id. at 4.
The ‘295 patent relates to audio systems for playing sound from computer files and computer network radio stations. Patent Owner contended that the references asserted by Petitioner taught two alternative combinations, in addition to the combination asserted by Petitioner, each of which are contrary to the claims at issue. In the first alternative combination, the computer would be configured to accept the remote control signal and control of all functions would go through the computer, not the speaker system. This is contrary to the claims at issue, which require the speaker system to control the computer. The second alternative combination involved the use of a single universal remote to communicate with the device. This is contrary to the ‘295 claims, which required two separate signal types from the controlling remote(s). Id. at 20.
In rejecting Patent Owner’s arguments, the Board reiterated the principle that disclosure of alternative embodiments does not constitute teaching away. The Board elaborated that circumstances could arise where the ordinary artisan would choose each of the different combinations depending on his/her purpose. Id. at 21.
The Board further noted that adding Patent Owner’s alternative combinations to Petitioner’s proposed combination “renders the latter no more than an obvious selection from a finite number (here, three) of predictable solutions.” Id. at 23. The three combinations, according to the Board, are essentially three predicable rearrangements of the same elements usable for their intended purpose, and thus, precisely how to arrange these elements would have been only a matter of design choice for the skilled artisan to arrive at the claimed invention. Id.
Patent Owner also argued that Petitioner’s expert testimony was driven by hindsight because the testimony did not describe the two alternative combinations proposed by Patent Owner. The expert responded that he did not discuss Patent Owner’s proposed combinations because they would not render the claims obvious. The Board decided that such focusing of expert testimony on allegedly invalidating combinations was not hindsight bias, noting particularly that the issue is not whether the expert did not describe combinations of the references that would not have rendered the claims obvious, but whether the expert provided a reason, with rational underpinning, for combining the references in the way proposed by the expert. Id. at 22.