MOTIVATION TO COMBINE: HOW SISVEL V SIERRA COULD PROVE USEFUL FOR PATENT PROSECUTORS

By Josue Rosario

In the fast-paced world of technology, where companies are always striving to stay ahead of the competition and dominate the market, intellectual property disputes are very common. Recently, a high-profile case has been making waves in the tech sector - Sisvel v. Sierra Wireless (Sisvel International S. A. v. Sierra Wireless, Inc., No. 22-1493 (Fed. Cir. Oct. 6, 2023). This landmark patent infringement lawsuit has huge implications for protecting intellectual property in the wireless communications industry, especially when it comes to motivation to combine.

On one side, there's Sisvel Group - a well-known Italian firm that's recognized for its strong patent licensing and enforcement practices. On the other side, we have Sierra Wireless - a global leader in designing wireless communication solutions and modules. The case revolves around Sisvel's claims that Sierra Wireless has violated several of its patents related to data transmission technology, specifically related to coding data and data blocks. These patents are crucial components of 4G and 5G wireless standards, which form the backbone of the modern smartphone and IoT industry.

The court's decision in this case hinged on a concept known as "motivation to combine" - which is a fundamental element of patent law. Essentially, it refers to the driving force that would prompt a skilled professional to merge various elements, technologies, or prior art references to create a specific invention. The crux of Sisvel's argument was that Sierra Wireless had combined its patented technologies with prior art in a way that was not justified by any non-obvious motivation to combine.

This case has shone a light on the ongoing debates in US patent law regarding combination claims, and the positions taken by the U.S. Supreme Court. In the 2007 KSR case, the court emphasized that the combination of known elements is generally perceived as an obvious step unless there exists a substantial reason to conclude otherwise (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). This decision has far-reaching implications for the evaluation of combination claims, and it underlines the importance of providing justifications when claiming that a combination of known elements would not have been obvious.

Under 35 USC 103, if the difference between the claimed invention and prior art had been obvious to PHOSITA, which is a hypothetical person, the claim would be invalid. The Supreme Court’s decision on KSR ruled that the PTAB must: “articulate a reason why a PHOSITA would combine the prior art references”; (2) have an adequate evidentiary basis for that finding; and (3) provide a “satisfactory explanation” for the motivation finding that includes an express and “rational” connection with the evidence presented.”

Regarding the Sisvel v. Sierra Wireless case's IPR (Inter Partes Review), the PTAB invalidated claims of Sisvel's patent No. 6,529,561. The Board stated that the petitioner failed to provide a clear explanation of: “the primary versus secondary reference, what elements were missing from the primary reference, what elements should be added from the secondary reference to achieve the claimed invention, or why those elements would be considered obvious to add”.

The Board's reasoning was based on whether there was a motivation to combine, highlighting the challenges in addressing combination claims within US patent law. IPR petitioners are required to offer important reasons to support the assertion that a PHOSITA would have been motivated to combine references to render the claims unpatentable as being obvious.

Sisvel's claims of motivation to combine on Sierra Wireless's part were perceived as mere allegations and thus fell short of the required standard. On appeal, the Federal Circuit Court upheld the missing arguments of the motivation to combine both patents.

This ruling is informative for patent attorneys when dealing with 103 claim rejections. They can now use the Sisvel decision to argue an improper combination of references.

Although the Sisvel decision arose in the context of invalidity allegations by an IPR petitioner, the motivation to combine principles applies equally during patent prosecution. By requiring examiner explanations to meet KSR's standards, applicants may succeed in overcoming some obviousness rejections.