If all the elements of an invention are found in a combination of prior art references, a proper analysis under ยง 103 requires, inter alia, consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success.Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (internal citation omitted); see also PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007). 247.
A patent claim is invalid under 35 U.S.C. ยง 103(a) "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." The ultimate determination of whether an invention would have been obvious under ยง 103(a) is a legal conclusion based on underlying findings of fact. Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (citing In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000)). The underlying factual inquiries include (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; and (3) the differences between the claimed invention and the prior art.
see also Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362, 1371 (Fed. Cir. 2020) ("[I]t is not for us to second-guess the Board's assessment of the evidence." (quoting Velander v. Garner, 348 F.3d 1359, 1378 (Fed. Cir. 2003)).
The portions of Chaffee to which Team Worldwide points in opposition do not undermine that holding. Velander v. Garner, 348 F.3d 1359, 1378-79 (Fed. Cir. 2003) ("If the evidence will support several reasonable but contradictory conclusions, we will not find the Board's decision unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative."). Team Worldwide also asserts that "[a]s discussed in Patent Owner's Response, a [person of ordinary skill in the art] would not seek to combine Chaffee with Wu for multiple reasons including that of different pump types, different pump usages, lack of spatial efficiency, lack of increased energy efficiency, lack of decreased costs, lack of decreased weight, and that any such combination is not a simple substitution."
Based on this disclosure, the Board determined that it was not reasonable to restrict Vuori's teaching to distributing only one status value at a time, as suggested by Easttom. It was within the Board's discretion to assess the credibility of Easttom's testimony, see Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)), and, based on Vuori's disclosure of the presence information as comprising multiple status markers, we cannot conclude that it was error for the Board to determine that Vuori's transmission of presence information includes status information for multiple users. Second, Uniloc argues that the Board erred in determining that Vuori discloses transmitting a signal to a client.
"[I]t is not for us to second-guess the Board's assessment of the evidence." Velander v. Garner, 348 F.3d 1359, 1378 (Fed. Cir. 2003). Rather, the only question before us is whether the finding adopted by the Board is supported by substantial evidence.
"[I]t is not for us to second-guess the Board's assessment of the evidence." Velander v. Garner , 348 F.3d 1359, 1378 (Fed. Cir. 2003). Rather, the only question before us is whether the conclusion adopted by the Board is supported by substantial evidence.
Subsumed within the Graham factors is a subsidiary requirement articulated by this court that where, as here, all claim limitations are found in a number of prior art references, the burden falls on the challenger of the patent to show by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so. DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir.2006); Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir. 2003). Here, the parties vigorously disagree.
2. Obviousness The ultimate determination of whether an invention would have been obvious under 35 U.S.C. ยง 103(a) is a legal conclusion based on the factual Graham findings, e.g., "(1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; and (3) the differences between the claimed invention and the prior art." Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (citing Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)). This court has held that if all the elements of an invention are found in a combination of prior art references:
The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate."); cf. Ashland Oil, Inc. v. Delta Resins Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) ("Opinion testimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.