To invalidate a patent as obvious, a prior art reference often must be modified to incorporate the teachings of another prior art reference. However, the Supreme Court has held that the obviousness analysis must include some reason why a skilled artisan would have made that modification, and the Patent Trial and Appeal Board (PTAB) has held to that requirement, even when the modification would be “trivial.” Thus, failing to specifically articulate why even trivial modifications would be made can prove fatal in an IPR proceeding.
In TRW Automotive U.S. LLC v. Magna Electronics, Inc., TRW Automotive (the petitioner) challenged the validity of Magna Electronics’ (the patent owner) patent under section 103, based on a combination of multiple prior art patents. In response, the patent owner disputed whether a skilled artisan would have been motivated to modify the references in order to create the combination needed to meet the challenged claims. The petitioner replied by contending that not only would a skilled artisan have been able to combine the references in the proposed manner, but it would have been trivial to do so. However, the PTAB found a fatal flaw in the petitioner’s analysis: “The issue is not whether a skilled artisan could [modify the prior art in the way proposed by the petitioner] or whether it would have been trivial to do so. The issue is whether a skilled artisan would have been motivated to do so….” On that issue, the PTAB looked to the references in the IPR proceeding and held that the motivation to modify and combine proposed by the petitioner was not directly supported by the disclosures of their references. As a result, the PTAB upheld the challenged claims, because the petitioner failed to identify why a skilled artisan would have made those “trivial” changes.
Thus, TRW Automotive illustrates the importance of having a sound motivation to combine, even in cases where your proposed change is simple or trivial. TRW Automotive further demonstrates the imperative of ensuring that your motivation to combine is not only rational, but is also based at least in part on the teachings of the references. This is especially true in obviousness combinations with more than two references. Here, where the petitioners attempted a four-reference combination, a simple motivation to combine all four references did not survive the PTAB’s scrutiny. Practitioners should take note — when combining more than two references in a petition to render a patent obvious, the motivation to combine must be clearly spelled out and stand to reason, and that reasoning should be grounded in the references themselves.
The Facts of TRW Automotive
TRW Automotive filed a petition challenging the validity of U.S. Patent No. 8,481,916 (the ’916 Patent), which is directed toward mounting various accessories, such as a camera, to a vehicle rearview mirror assembly attached to a windshield. The PTAB focused on claim 58 of the ’916 Patent as exemplary, which claims a camera mounted on a rearview mirror with the rearview mirror attached to the interior of the vehicle windshield glass. The claim also covers a light-absorbing layer on the interior of the windshield glass, and an aperture in this layer through which the camera could view areas external to the vehicle. Importantly, the Abstract of the ’916 Patent describes the light-absorbing layer as hiding the entire structure attached to the windshield from the view of a person external to the vehicle.
The petitioner asserted that the combination of the following patents rendered the challenged claims of the ’195 Patent obvious under 35 U.S.C. § 103:
- U.S. Patent No. 5,708,410 (the Blank patent): directed toward a vehicle information display and focuses on placing electronics inside of the rearview mirror assembly.
- U.S. Patent No. 5,096,287 (the Kakinami patent): discloses a video camera inside of a rearview mirror housing.
- U.S. Patent No. 5,667,896 (the Carter patent): discloses a light absorbing area of vehicle glass called a “black frit area,” which is located around the borders of a glass area, or directly underneath the area where an accessory is attached to the glass (called a “footprint”).
- U.S. Patent No. 5,708,410 (the Anderson patent): discloses solar cells mounted along the border of a vehicle windshield, frit layers, and small openings in the frit layer to allow sunlight to reach the solar cells beneath the light absorbing frit layer.
The motivation to combine Blank with Kakinami, Carter and Anderson, according to the petitioner, was two-fold. First, a skilled artisan would have been motivated to use Carter’s frit layer to conceal Kakinami’s camera mounted on Blank’s system from outside observers. Second, a skilled artisan would have been motivated to use Anderson’s openings in the frit layer to allow the camera to have a clear view through the windshield.
The patent owner responded that Carter does not disclose a single embodiment with a frit area extending beyond the footprint of the accessory mounted on the glass, and one of skill would not have been motivated to extend the footprint. In other words, because Carter only teaches using a frit layer directly underneath the footprint of an accessory mounted on glass, as opposed to extending the frit layer beyond the footprint, one of skill would have no reason to extend the frit layer in the manner alleged by the petitioner. The PTAB was persuaded by this argument.
The PTAB maintained that the petitioner’s motivation to combine simply did not mesh with the prior art teachings, as Carter does not teach extending the frit layer beyond the footprint of the rearview mirror on the windshield. Thus, according to the PTAB, there would be no reason to use Anderson’s frit layer openings because Kakinami’s camera already has a clear line of site through the windshield. Accordingly, the petitioner failed to ground the reasoning for extending the frit area in Carter beyond the footprint to a rationale found in Carter.
Finally, the PTAB also noted that while it may have been trivial, from a technical perspective, for one of ordinary skill in the art to extend the frit layer beyond the footprint, this is not the real issue. Citing KSR Int’l Co. v. Teleflex Inc, the PTAB concluded that “[t]he issue is whether a skilled artisan would have been motivated to do so based on teachings of the references; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Because the petitioner failed to properly address that important issue, its challenge failed.