In Intel Corp. v. PACT XPP Schweiz AG, the Federal Circuit held that establishing a motivation to combine prior art for KSR analysis based on the “known-technique” rationale does not require showing that the “known-technique” is an improvement. The Court held that it only requires showing that the “known-technique” is a “suitable option.”
PACT XPP Schweiz AG (“PACT”) owns U.S. Patent No. 9,250,908 (“the ’908 patent”). Intel Corp. (“Intel”) petitioned for inter partes review (IPR) of claims 4 and 5 of the ’908 patent, alleging that claims 4 and 5 would have been obvious over the combination of U.S. Patent No. 5,890,217 (“Kabemoto”) and U.S. Patent No. 5,680,571 (“Bauman”). The Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO) disagreed and concluded that “Intel failed to show that a person of ordinary skill in the art would have been motivated to combine the teachings of Kabemoto and Bauman.” Intel appealed the PTAB’s decision.
In the IPR, Intel argued that a person of ordinary skill in the art would have been motivated to combine Kabemoto and Bauman because they “related to the same field …” and “address the same problem.” The PTAB rejected Intel’s argument and concluded that “[i]f . . . Kabemoto already addresses [the] problem [of cache coherency] through the use of a known technique similar to that of Bauman’s, [it] fail[ed] to see why one of ordinary skill in the art would regard Bauman’s technique as an obvious improvement to Kabemoto.”
The Court disagreed with the PTAB. The Court held that “[t]hat Kabemoto and Bauman address the same problem and that Bauman’s cache was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.” The Court explained that “…Intel never had to show that replacing Kabemoto’s secondary cache with Bauman’s secondary cache was an ‘improvement’ in a categorical sense. … Intel just had to show that Bauman’s secondary cache was a ‘suitable option’ to replace Kabemoto’s secondary cache.”
This case suggests that a motivation to combine references may exist if a known technique in one reference for solving one problem can be substituted with another technique in another reference for solving the same problem even if such substitution does not yield an improvement.