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Outdry Technologies Corp. v. Geox S.p.A.

PTAB May Establish Motivation to Combine By Reciting Petitioner’s Arguments

Outdry Technologies Corp. v. Geox S.p.A., (Fed. Cir. June 16, 2017) (Dyk, MOORE, Reyna) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR determination of obviousness. Outdry’s patent related to methods for waterproofing leather goods. The Board correctly construed the claims, and the opinion rejects Outdry’s argument for a narrower construction as unsupported by the specification. The opinion also rejects Outdry’s attempt to overcome the prior art by relying on the language of the preamble, which recited a “process for waterproofing leather.” In this case, the preamble “like most preamble is simply a statement of intended use, not a separate claim limitation,” as per Boehringer, 320 F.3d 1339 (Fed. Cir. 2003). The Board’s finding that a person of skill would have been motivated to combine references so as to reach the claimed inventions was supported by substantial evidence. The opinion lists recent cases where the Board has failed to adequately explain its analysis of motivation to combine, but distinguishes this case because the Board “clearly articulated Geox’s arguments” showing a motivation. Op. at 8. “The Board’s reliance on Geox’s arguments does not undermine its otherwise adequate explanation for finding a motivation to combine.” Id. at 10. And there was no requirement that the motivation to combine be the same motivation that motivated Outdry’s inventors.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (YES); MOTIVATION TO COMBINE