22 Feb 2018 in Newsletter
Teaching Away and Motivation to Combine
By: Seema Mehta
Late last year, the Federal Circuit issued an opinion in ARCTIC CAT INC., Plaintiff–Appellee v. BOMBARDIER RECREATIONAL (“BRP”), providing a noteworthy discussion of requirements to show motivation and teaching away in the 103 context. U.S. Patent Nos. 6,568,969 (“’969 patent”) and 6,793,545 (“’545 patent”) owned by Arctic Cat Inc. relate to a thrust steering system for personal watercrafts propelled by jet stream. The jury determined that BRP failed to prove by clear and convincing evidence that the claims at issue would have been obvious to a skilled artisan. BRP moved for judgment as a matter of law (JMOL) on obviousness, which the district court denied. On appeal, BRP argues that the district court erred in refusing to grant JMOL that the asserted claims would have been obvious in light of two existing systems from 1997 and 1998 (the Sea–Doo Challenger 1800 Jet Boat (“Challenger”) and the Sea–Doo GTX RFI (“GTX”)).
In order to show that someone with ordinary skill in the art would have been motivated to modify a PWC with Challenger’s off-throttle thrust reapplication system, BRP used two prior art reports written by the Society of Automotive Engineers (“SAE”). While the reports did directly and specifically mention the combination of the Challenger with a PWC, they did not stop there. The reports also talked about potential new hazards that may occur with such a steering system, such as collisions when the additional thrust is applied. The reports stated that because these would be new hazards that are not currently experienced in the two prior art systems, predicting how often such collisions would occur would be “difficult.”
On appeal, the Federal Circuit admits that the Challenger system and a PWC like the GTX disclose all elements of most of the asserted claims of the two patents. The jury in the district court case did not find adequate motivation to combine features from these two existing prior art systems. The only way the appeals court could have reversed this finding is if the jury’s finding was not supported by substantial evidence. However, instead of focusing the appeal arguments on rebutting the evidence that may have supported the jury’s finding of no motivation to combine, BRP spent much of its efforts on re-litigating the case, and therefore, lost the appeal directed to the obviousness determination.
The court states that prior art may contain one reference suggesting a combination and other references critiquing or otherwise discouraging the same, emphasizing that the entirety of the art must be considered. Further, the degree of teaching away matters. A reference that expresses a general preference one way or the other, without actually criticizing, discrediting, or discouraging the alternative(s) does not teach away from such alternatives. Understandings about reasons to combine or contrasting reasons not to combine could come from the knowledge, skill, and creativity of the person with ordinary skill in the art.
The court also reiterates KSR, stating that where a motivation to combine two references is asserted, the asserting party must also show that a reasonable expectation of success exists based on such a combination. Without a reasonable expectation of “anticipated success,” the combination may not be obvious. KSR, 550 U.S. at 421. Whether a person with ordinary skill in the art has reason to combine or exclude references, is a factual determination to which deference must be given. Once all relevant facts are found, the ultimate legal determination involves weighing fact findings to conclude whether the claimed combination would have been obvious to a person with ordinary skill in the art.
BRP missed their opportunity to convince the Federal Circuit that a reasonable jury could only have concluded a person of ordinary skill would have been motivated to combine the two existing systems by not focusing on the evidence supporting the fact findings made by the jury.