Menu
  • ABOUT
    • GUIDING PRICIPLES
    • WRITTEN WORKS
    • JOIN OUR TEAM
  • ATTORNEYS
  • PRACTICE AREAS
    • PATENTS
    • COPYRIGHTS
    • TRADEMARKS
    • DUE DILIGENCE & LICENSING
    • INTELLECTUAL PROPERTY & COMMERCIAL LITIGATION
  • BLOG
  • CONTACT
coats+bennett-logo
800-575-1278 | EMAIL
  • ABOUT
    • GUIDING PRICIPLES
    • WRITTEN WORKS
    • JOIN OUR TEAM
  • ATTORNEYS
  • PRACTICE AREAS
    • PATENTS
    • COPYRIGHTS
    • TRADEMARKS
    • DUE DILIGENCE & LICENSING
    • INTELLECTUAL PROPERTY & COMMERCIAL LITIGATION
  • BLOG
  • CONTACT
Menu
  • ABOUT
    • GUIDING PRICIPLES
    • WRITTEN WORKS
    • JOIN OUR TEAM
  • ATTORNEYS
  • PRACTICE AREAS
    • PATENTS
    • COPYRIGHTS
    • TRADEMARKS
    • DUE DILIGENCE & LICENSING
    • INTELLECTUAL PROPERTY & COMMERCIAL LITIGATION
  • BLOG
  • CONTACT
coats+bennett-logo
SERVING CLIENTS WORLDWIDE
800-575-1278 | EMAIL

BLOG CATEGORIES

  • Copyrights
  • Firm News
  • Intellectual Property
  • Intellectual Property Litigation
  • Non-Disclosure Agreements
  • Patent Law
  • Podcast
  • Trade Dress
  • Trade Secrets
  • Trademarks

Fed. Cir. Rules Motivation to Combine Standard Requires No Actual “Motivation”

WILLIAM PAGÁN

On 13 March 2023, the Federal Circuit issued a precedential decision in Intel Corp. v. PACT XPP Schweiz AG, No. 22-1037 (Fed. Cir. 2023).  The decision relates to the requirements for showing that a patent claim is unpatentably obvious.  

The Patent Office will often find that an invention as claimed is not patentable because the invention is merely an obvious combination of two or more techniques that are already known.  However, it is not enough to show that all of the individual features of the invention were already known at the time the invention was filed.  Rather, obviousness has also traditionally required a showing that there was some motivation or suggestion to modify one of the references cited according to the other(s).  The decision in Intel v. PACT provides additional clarity regarding the “motivation to combine” standard in which it is apparent that “motivation” is perhaps too strong a word to accurately describe what is required.

Intel v. PACT holds that the motivation to combine standard is met when a second prior art reference teaches a suitable option for addressing a known problem in the technology described in a first prior art reference.  It is explicitly not required that the option offer an improvement over what is already described in the first reference. 

In other words, one of ordinary skill need not have been motivated to improve the first reference by modifying it according to the second reference in order for the combination to be obvious.  Rather, the decision states that “[i]t’s enough… to show that there was a known problem… in the art, that [a second reference] help[s] address that issue, and that combining the teachings… [is not] beyond the skill of an ordinary artisan.”  Intel at 13.

Perhaps the “motivation to combine” standard of obviousness should be renamed to the “appreciation of suitability” standard.

Share on facebook
Facebook
Share on twitter
Twitter
Share on linkedin
LinkedIn

We Want To Hear From You

Please fill out the form below if you would like to contact us. If you are requesting CLE credit, please include your state, bar number, and any event code required to certify your attendance.
FIELDS MARKED WITH AN * ARE REQUIRED

DISCLAIMERDISCLAIMER: THE USE OF THE INTERNET OR THIS FORM FOR COMMUNICATION WITH THE FIRM OR ANY INDIVIDUAL MEMBER OF THE FIRM DOES NOT ESTABLISH AN ATTORNEY-CLIENT RELATIONSHIP. CONFIDENTIAL OR TIME-SENSITIVE INFORMATION SHOULD NOT BE SENT THROUGH THIS FORM.
| PRIVACY POLICY

Address

1400 Crescent Green
Suite 300
Cary, North Carolina 27518

MAP & DIRECTIONS

Phone

800-575-1278

Social Networks

Facebook
LinkedIn
Twitter

REVIEW US

Address

1400 Crescent Green
Suite 300
Cary, North Carolina 27518

MAP & DIRECTIONS

Phone

800-575-1278

Social Networks

Facebook
LinkedIn
Twitter

REVIEW US
© 2020 COATS & BENNETT, PLLC. ALL RIGHTS RESERVED.
DISCLAIMER | SITE MAP | PRIVACY POLICY