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Motivation to Combine References May Be Found in the Nature of the Problem to Be Solved

January 29, 2004

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Last Month at the Federal Circuit - February 2004

Judges: Rader (author), Newman, and Michel

In Ruiz v. A.B. Chance Co., No. 03-1333 (Fed. Cir. Jan. 29, 2004), the Federal Circuit affirmed a district court’s finding, following a bench trial, that the patentsin- suit were invalid for obviousness over a combination of prior-art references.

The two patents-in-suit relate to a screw anchor with an earth-boring (screw) tip and a metal bracket used for underpinning a building foundation to support and stabilize the building. The prior art Fuller- Rupiper method uses a screw anchor with a concrete haunch instead of a metal bracket for supporting a building. The prior art Gregory patents are directed to an apparatus for underpinning structural foundations using a push pier (nonscrew) and a metal bracket. Following a bench trial, the district court found the patentsin- suit to be obvious under 35 U.S.C. § 103 over a combination of the teachings of the Gregory patents and the Fuller-Rupiper method.

The Federal Circuit affirmed the district court’s finding of obviousness. The Court began by explaining that section 103 requires consideration of the claimed invention as a whole. This requires a showing that an artisan of ordinary skill in the art at the time of the invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention, would select the various elements from the prior art and combine them in the claimed manner. In other words, the Examiner or court must show some suggestion or motivation, before the invention itself, to make the new combination.

The Court rejected the patent owner’s argument that the district court had clearly erred in finding a motivation to combine the teachings in the Gregory patents with the Fuller-Rupiper method. The Court explained that a finding of obviousness does not require the prior art references to contain an express, written motivation to combine; instead, a motivation to combine prior art references may be found in the nature of the problem to be solved. The Court noted that the Gregory patents and the Fuller-Rupiper method address precisely the same problem as the patents-in-suit. The Court observed that this form of motivation to combine is particularly relevant with simpler mechanical technologies. Agreeing that the record did contain some evidence weighing against the district court’s finding, the Court nevertheless found that it did not approach the level of evidence necessary to leave it with a firm conviction that the district court had committed clear error in its factual finding of a motivation to combine.

The Federal Circuit also rejected the patent owner’s argument that the district court had committed clear error in discounting its evidence of commercial success. The Court found that the record supported the district court’s finding that any commercial success was not due to the patented combination, but rather due to the patent owner’s experience with screw anchors combined with being the first large screw-anchor manufacturer to enter the underpinning market. Accordingly, the Court affirmed the judgment of the district court.