Two PTAB decisions recently designated as informative show that
failure to provide detailed evidence of motivation to combine
references for an obviousness challenge, can sink a Petition before
or after institution of trial. In Johns Manville Corp. v.
Knauf Insulation, Inc. (IPR2018-00827, Paper 9), the PTAB
denied institution of an IPR for lack of reasons to substitute
compositions in one reference with those of another. In
Hulu, LLC v. Sound View Innovations, LLC (IPR2018-00582,
Paper 34), the PTAB reached a final decision that the claims of a
telecommunications patent were not obvious where Petitioner’s
motivation to combine rationale was undermined by contrary
evidence. These decisions illustrate the demanding level of
proof required of Petitioners to articulate the why and
the how a person of ordinary skill in the art (POSA) would
combine or modify the teachings of the references to arrive at the
claimed invention.
