The Federal Circuit’s recent decision in Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. 2023-1636, 2024 WL 5114204 (Fed. Cir. Dec. 16, 2024) concerns an obviousness determination based on a motivation to combine.  Below is a discussion of the case and a key takeaway for patent practitioners and innovators.

Before the Patent Trial and Appeal Board (“PTAB”) in an Inter Partes Review, the Petitioner, Palo Alto Networks, Inc., asserted that the patent-at-issue is invalid as obvious over the prior art, arguing that one skilled in the art at the time would have had a motivation to combine two prior art references.  Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. IPR2021-01150, 19-20 (P.T.A.B. Feb. 16, 2023).  Specifically, one reference disclosed all the limitations of the patent-at-issue except one, and a second reference disclosed the absent limitation.  Id.  The Petitioner urged the PTAB to find a motivation to combine the two references because their combination reflects an “application of known techniques [] to improve similar devices [] to provide predictable results in the same way.”  Id. at 24 (internal citation omitted).

The PTAB ruled in favor of the Patent Owner, holding that the Petitioner failed to adduce a “necessary bridge showing that one of ordinary skill in the art would have appreciated” that the two prior art references could be combined to yield the inventive aspects of the patent-at-issue.  Id. at 26.  The Petitioner then appealed the PTAB’s final written decision to the Federal Circuit.

On appeal, the Federal Circuit vacated and remanded the case because the PTAB did not adequately explain why a person of ordinary skill in the art would not have had a motivation to combine the two prior art references.  Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. 2023-1636, 2 (Fed. Cir. Dec. 16, 2024).  In particular, the Federal Circuit could not “discern with any confidence what the Board meant” by “necessary bridge.”  Id. at 11.  “If the Board meant to say that it found no motivation to combine—and we do not know whether it did—it certainly failed to explain why a person of ordinary skill in the art would not have been motivated to [combine the two prior art references].”  Id.

Patent practitioners and innovators should revisit this case when deciding whether to appeal a PTAB decision to the Federal Circuit, especially if the Board’s determination turns on a motivation to combine.  Remember that the PTAB must clearly state its findings.  A final written decision that mixes analysis with ambiguous or untested terminology (i.e., “necessary bridge”) increases the likelihood of a successful appeal.

Sources:

Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. IPR2021-01150 (P.T.A.B. Feb. 16, 2023)

Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. 2023-1636, 2024 WL 5114204 (Fed. Cir. Dec. 16, 2024)