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Federal Circuit says Basic Math ≠ Modification

Blackbird v Fitbit Background Blackbird Tech owns US patent number 6,434,212 directed to a device that counts an individual’s steps.  Based on the length and rate of those steps, the device provides information such as distance traveled and speed.  Fitbit and Wahoo Fitness each sought an inter partes review of claims 2,5 and 6.  PTAB […]

PTAB again holds that motivation to combine does not exist when art possesses the benefit, prior to modification

Motivation to combine is not present when benefit alleged to be provided by the combination is already present in the art Ex parte Allen, Appeal No. 2018-008208, July 1, 2020.  Allen’s claims were directed to a method of introducing a cable or plurality of cables into a longitudinally extending conduit using a pliant material having […]

Federal Circuit provides illustrative application of InTouch Techs

In support of the proposition that “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether “they would have been motivated to do so.”  InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).  I have often used Belden Inc. v Berk-Tek […]

Motivation to combine is not present when benefit alleged to be provided by the combination is already present in the art

Wait … what? This argument came up and prevailed – twice – in Tech Center 1700 PTAB decisions in November. First, Ex parte Gama, US Patent Application No 12/042641, Appeal 2019-002094, decided November 5, 2019.  In Gama, the Examiner found claims directed to a fuel filter obvious over two references.  The motivation to combine, the […]

Similarity of purpose not enough to establish motivation to combine

In William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, Petitioner filed a Petition for inter partes review of US Pat. No. 8784542, in which each independent claim was directed to a shale-gas separator and each prior art reference was directed to an apparatus for treating drilling mud. In their obviousness analysis, PTAB […]