Monday, December 05, 2016

"Motivation to combine" analyzed by CAFC in Dako v. Leica

From the decision:

The existence of a motivation to combine is a factual
determination. Star Sci., Inc. v. R.J. Reynolds Tobacco
Co., 655 F.3d 1364, 1374–75 (Fed. Cir. 2011). Under a
substantial evidence standard of review, we must draw all
reasonable inferences in favor of the Board’s decision that
are supported by the record and should take care not to
make credibility determinations or to weigh the evidence.
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,
150 (2000). “[A]lthough the court should review the
record as a whole, it must disregard all evidence favorable
to the [appellant] that the [factfinder] is not required to
believe.” Id. at 151.


The question before us is whether, based on all of the
evidence before the Board, a reasonable factfinder could
find that there was a motivation to combine Tseung and
Muller. The answer to this question is “yes.” A motivation
to combine can be found in “any need or problem
known in the field of endeavor at the time of the invention
and addressed by the patent.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). “[T]he analysis need not
seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
In its analysis, the Board primarily relied on Tseung’s
statement that “some staining techniques can be enhanced
by providing heat so that either incubation or
drying times are shortened, thereby increasing the speed
of the overall operation.” No. 15-1997 J.A. 17 (quoting
Tseung, col. 12 ll. 6–9). According to the Board, this both
provided a reason to use heating in Tseung and adapt it to
use Muller’s individual heaters. Given the disclosures of
Tseung and Muller, this conclusion is supported by substantial

Of the "mere existence" of a patent:

The speech does not describe the features
of the product Ventana ultimately released, and the mere
existence of Ventana’s patent does not necessarily imply
that the patent is based on the specific product referred to
in Mr. Schuler’s statement. Because a reasonable factfinder
could interpret the evidence Dako presented as
failing to provide a nexus, the Board’s conclusion is supported
by substantial evidence.

Teva v. Sandoz is cited:

Claim construction is an issue of law based on underlying
factual considerations. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 838 (2015). We review the
Board’s ultimate construction de novo, and any underlying
factual determinations for substantial evidence.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297
(Fed. Cir. 2015). In inter partes reexamination proceedings,
claims are given their “broadest reasonable interpretation”
consistent with the specification. In re Rambus,
Inc., 753 F.3d 1253, 1255 (Fed. Cir. 2014).


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