Holding: The analysis to determine whether there is a motivation to combine two or more references to show obviousness must be thorough and requires specificity. The fact finder must articulate a reason why a person of ordinary skill in the art would combine the references or expressly say there is no motivation to combine with an adequate explanation for its decision.
Palo Alto filed an IPR petition alleging unpatentability of Centripetal’s US Patent No. 10,530,903 as being obvious. The ‘903 Patent is directed to a computing system that first identifies packets received by a network device that came from a host located in a first network. A log is generated that stores data corresponding to the packets. The system then identifies packets transmitted by the network device to a host on a second network. Entries corresponding to these packets are stored on the log. The system then correlates the packets transmitted to the network device on the first network to the packets transmitted by the network device to the second network. This correlation process may be used to prevent the identity or location of the host that originally sent the information from being hidden, in some instances with malicious intent. A notification is sent to a user or a network administrator revealing the host that originally sent the packets on the first network.
Palo Alto’s IPR petition alleged that the ‘903 Patent was obvious over US Pat. Pub. No. 2014/0280778 to Paxton in view of US Pat. No. 8,413,238 to Sutton and US Pat. No. 8,219,675 to Ivershen. Palo Alto alleged that Paxton disclosed all of the limitations of independent claim 1 except for the final limitation requiring that the identity of the first host be sent to the user. Palo Alto relied on Sutton to show this limitation, as Sutton teaches notifying a network administrator about a device that is suspected of malicious activity. Palo Alto argued that it would be obvious to combine the notification feature of Sutton with the system described in Paxton to prevent further malicious communications and to improve network security.
The PTAB found the ‘903 Patent to not be obvious in view of the asserted references. The PTAB explained that Paxton discloses the correlation portion of the claims of the ‘903 Patent and that Sutton discloses the transmission portion of the claims of the ‘903 Patent, but that the combination of the two does not include “the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation.”
The Federal Circuit found that PTAB erred by not clearly explaining its rationale regarding the lack of motivation to combine Paxton and Sutton. The factual inquiry of whether there is a motivation to combine references, must be “thorough and searching” and requires specificity. There is no rigid formula for identifying the motion to combine, but a reason why a person of ordinary skill in the art would combine the prior art references must be articulated. If it is found that there is no motivation to combine, this decision must be stated expressly with adequate explanation.
In this case, the Board failed to include the necessary explanation to support its decision that there was no motivation to combine. In particular, the Board failed to explain what it meant when it stated that the combination of Paxton and Sutton lacked the “necessary bridge” to provide the motivation to combine the references. This statement falls short of an explicit statement that there was no motivation to combine to combine Paxton and Sutton, and does not give sufficient explanation as to why a person of ordinary skill in the art would not have been motivated to combine Paxton and Sutton.
The Board also erred by failing to resolve whether the combination of Paxton as modified by Sutton would have taught the transmission step of the ‘903 Patent. Instead, the Board looked at each reference individually. The Board simply found that Paxton alone did not disclose the transmission step and then found that Sutton “fails to fill in this gap” without providing any additional analysis besides the determination regarding the missing “necessary bridge.” Instead, Paxton and Sutton should be read together to determine whether the combination argued by Palo Alto to modify Paxton by adding Sutton’s notification step after the correlation step in Paxton would meet the claim limitations of the ‘903 Patent.
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