Too many references?

The PTO might be setting itself up for an overruling of In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991).  On at least three occasions in recent months, Federal Circuit judges have commented on the number of references that the PTO is relying upon to reject claims.

In the most recent comment, Judge O’Malley commented about an Inter Partes reexamination in which combinations of four, five, six, and even seven references were relied upon by the PTO to reject claims:  [Listen].

In two previous appeals, Judge Moore had more pointed comments.

In the oral argument of In re Neill, she had this exchange with the PTO’s Associate Solicitor:

Judge Moore: How often do you see four reference obviousness rejections? Because I’ll be honest, I’ve never seen one. That’s a lot of references you’ve got to piece together to get to obviousness.

Associate Solicitor for the USPTO:    It’s a good number of references; but, in this case the Examiner found the motivation to ….

Judge Moore:  The question I asked is actually quite personal.  How often have you seen a four reference obviousness rejection; because, I never have.  Not out of the PTO. Never.  I’ve seen people try to argue it in litigation, sure. But, I’ve never seen the PTO go to four separate references and cherry pick items and then combine them together.

Associate Solicitor for the USPTO:    Well, I don’t know if I’ve seen a four reference one; but, I don’t believe that the Board….

Judge Moore:  Or anything greater than four, let’s be clear so that this deposition transcript reads right, four or greater. (Laughter) That’s a lot of references!

Associate Solicitor for the USPTO:    It is; but, the Examiner here . . . All of those references come from the same field of art.  It’s all the transmission and recording of video programming data….

Judge Moore:  Yeah, but the whole reason that Cablevision came up with this invention was to get around Sony.  Like the whole reason they came up with this is to get around the copyright problems with DVR’s in homes and try to reduce the amount of storage you need in your home.  That’s so different than pulling together these pieces … ‘well, this one mentions in the background cost savings;’…  ‘and this one mentions in the background efficient bandwidth;’ … ‘and this one mentions’. . . . And then you’re just like cherry picking random elements from these references and smushing them together to come up with the invention. And it’s . . .  I don’t know, I mean you’re awfully lucky this is a very deferential standard of review, that’s for sure.


And, in one of the recent Data Treasury appeals, Judge Moore had these comments: [Comment to Patent Owner] and [Comment to PTO].

I would not be surprised if Judges Taranto, Reyna, Newman (even though she authored In re Gorman), and Hughes are in the same camp.

Update 11/25/16:

I forgot about a similar comment that Judge Rader made when he was on the bench.  Judge Rader was also part of the panel in In re Gorman.  His comment from the oral argument of In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009) is available here: [Listen].

Update 12/1/16:

Judge Hughes made a comment recently in the oral argument of ENDO PHARMACEUTICALS INC. v. ACTAVIS LABORATORIES UT, INC., No. 2016-1146 (Fed. Cir. Oct. 14, 2016). I think Judge Hughes might have been under a misimpression at the time that the Appellant was proposing a seven reference combination; nevertheless, his remark is interesting: [Listen].  This is from an appeal of a district court decision, rather than an appeal from the USPTO.

Update 7/12/17:

Judge Reyna made comments in the oral argument of INTELLECTUAL VENTURES II LLC v. ERICSSON INC., No. 2016-1803 (Fed. Cir. Apr. 18, 2017) about the number of references used by the PTAB and expressed concern about hindsight: [Listen] and [Listen].  The court appeared to avoid having to deal with a six-reference combination by affirming a four-reference combination.  In footnote 2 of the decision, Judge Lourie writing for the court stated:

The Board also instituted review of claims 1 and 2 based on a combination of six references, and later determined that the six-reference combination also rendered claims 1 and 2 unpatentable as obvious. Final Decision, 2016 WL 380219, at *11-12. Because we affirm the Board’s conclusion based on the combination of Li, Yamaura, Zhaung, and Beta, we need not, and do not, reach the second combination.

Update 4/23/2020:

In the oral argument of CPI CARD GROUP-MINNESOTA, INC. v. MULTI PPACKAGING SOLUTIONS, INC., No. 2019-1616 (Fed. Cir. Mar. 16, 2020), Judge Newman called a six reference combination “striking”:

See also Judge Rader’s comments above — he was a second member of the In re Gorman panel at the Federal Circuit.

Update 6/21/20:

During the oral argument of IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020), Judge Moore had this comment about a five-reference combination:

So, here’s my problem — I feel like the Board’s opinion, for me, is troubling because it’s five references with wildly differently designed hearing aids. And, I don’t even understand really what it’s picking from some of the references that it says are missing in the primary reference. I don’t understand why it’s motivated to go to some of those references. And, I feel like there is a lot of hand-waving. 

And, what I’m worried about is a five-reference rejection is the hindsight bias concern of just picking and choosing elements from lots of different random prior art and saying they work together. But here it’s even worse than that because I’m not sure which elements are being chosen from some of these references. I’m not sure what some of these references even add to the primary reference. That hasn’t been made clear to me. So, I am a little bit veiled in my understanding of the Board’s analysis.

Oral Argument of IN RE ANOVA HEARING LABS, INC., No. 2019-1507, beginning at 24:28.

Update 5/13/21:

During the argument of Biogen v. Iancu in December of 2019 — an appeal of a PTAB decision in an IPR — Judge Moore made this comment about a five reference combination used to invalidate a claim in the unpredictable art of treating cancer:

And, I guess my concern is, when you’re in this patient population which is definitely sensitive and you’re talking about such a large number of references combining in such an unpredictable area, I am sort of not confident in what you’ve done.

Oral argument of Biogen v. Iancu, 2019-1364 beginning at 29:40.

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