Hulu, LLC v. Sound View Innovations, LLC

Informative decision only: persuasive authority, not binding precedent. When a petitioner's obviousness rationale for adding a reference's feature (here, a main memory database) rests on a stated premise (tight timing requirements) that the record undermines, because conventional alternatives were adequate and the modification would not affect the premised timing, the Board may find no persuasive reason to combine and hold the claims not shown unpatentable. A generic desire for improved speed, a statement of anticipated success ("plug-and-play"), or a rationale first raised in reply or at oral argument cannot substitute for an articulated reason to make the combination. No prior Board precedent is named in the text as directly addressed; the decision applies the Federal Circuit's Belden holding that obviousness requires that a skilled artisan would, not merely could, have been motivated to make the combination. For petitioners, the rationale must be tied to the actual requirements of the primary reference and must withstand the patent owner's evidence and the petitioner's own expert's cross-examination, and the petitioner cannot rescue a weak rationale later. For patent owners, evidence that conventional technology was adequate, that the modification would not change the premised performance, and that the added feature carried cost, capacity and volatility drawbacks can defeat motivation even where the references teach each element. The Board relied on Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015), on KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and on Graham v. John Deere Co., 383 U.S. 1 (1966). LEGAL TEST OR STANDARD: Obviousness under pre-AIA 35 U.S.C. § 103(a) is resolved on Graham factual findings: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Petitioner must show by a preponderance that a skilled artisan would have been motivated to make the combination, not merely could have made it (Belden). TRIGGERING FACTS: Petitioner proposed putting Kao's main memory database into O'Neil's prepaid cellular billing system based on tight timing requirements. Patent Owner's evidence showed O'Neil needed response times on the order of seconds, Petitioner's own expert agreed once-per-second was acceptable, disk-based databases were conventional and adequate, O'Neil routes calls before in-process CDRs are created, and main memory was costly, limited and volatile. Petitioner's reply rationale (generic improved access times, plug-and-play) and its throughput rationale raised at oral argument did not cure the gap. KEY QUOTE: "Just as in Belden, the fact that the combination might have been successful does not mean that an ordinarily skilled artisan would have been motivated to make the combination." (Paper 34, p. 22) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015), and, on reply scope, applies 37 C.F.R. § 42.23(b), the Trial Practice Guide Update (Aug. 2018), and Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). PRACTICE TIP: State the reason to combine fully in the petition, anchored to the primary reference's actual requirements, and test it against the expert's likely cross-examination and the disadvantages of the added feature. Do not rely on a statement of predictable success or generic speed, and do not hold new rationales or evidence for the reply or oral argument, where they will not be considered.