Obviousness

Obviousness Analysis under 35 U.S.C. § 103 for US Patent 9317170

A determination of obviousness under 35 U.S.C. § 103 requires identifying a combination of prior art references that would have rendered the claimed invention obvious to a person having ordinary skill in the art (POSA) at the time of the invention, along with a motivation to combine those references. In the case of US Patent 9317170, the Patent Trial and Appeal Board (PTAB) has already made such a determination, which was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit.

Prior Art Combination and Obviousness Finding

Claims 1-20 of US Patent 9317170 were challenged and found unpatentable under 35 U.S.C. § 103 as obvious over a combination of prior art references in Inter Partes Review (IPR) IPR2021-01257. [cite: "Petition grounds: Unified Patents challenged claims 1-20 of U.S. Patent No. 9,317,170 as unpatentable under 35 U.S.C. § 103 over a combination of US 2005/0156914 to Lipman ("Lipman '914"), US 2006/0132463 to Lipman ("Lipman '463"), and US 2007/0070059 to Lipman ("Lipman '059") (collectively, "Lipman")."]

The specific references identified were:

• US 2005/0156914 to Lipman ("Lipman '914") [cite: "Petition grounds: Unified Patents challenged claims 1-20 of U.S. Patent No. 9,317,170 as unpatentable under 35 U.S.C. § 103 over a combination of US 2005/0156914 to Lipman ("Lipman '914"), US 2006/0132463 to Lipman ("Lipman '463"), and US 2007/0070059 to Lipman ("Lipman '059") (collectively, "Lipman")."]
• US 2006/0132463 to Lipman ("Lipman '463") [cite: "Petition grounds: Unified Patents challenged claims 1-20 of U.S. Patent No. 9,317,170 as unpatentable under 35 U.S.C. § 103 over a combination of US 2005/0156914 to Lipman ("Lipman '914"), US 2006/0132463 to Lipman ("Lipman '463"), and US 2007/0070059 to Lipman ("Lipman '059") (collectively, "Lipman")."]
• US 2007/0070059 to Lipman ("Lipman '059") [cite: "Petition grounds: Unified Patents challenged claims 1-20 of U.S. Patent No. 9,317,170 as unpatentable under 35 U.S.C. § 103 over a combination of US 2005/0156914 to Lipman ("Lipman '914"), US 2006/0132463 to Lipman ("Lipman '463"), and US 2007/0070059 to Lipman ("Lipman '059") (collectively, "Lipman")."]

The PTAB's Final Written Decision, issued on January 26, 2023, concluded that claims 1-20 were indeed unpatentable. [cite: "Final Written Decision (issued: 2023-01-26): Claims 1-20 were found unpatentable."] The Board determined that the Petitioner (Unified Patents, LLC) had demonstrated by a preponderance of the evidence that claims 1-20 are unpatentable under 35 U.S.C. § 103 as obvious over the combination of Lipman '914, Lipman '463, and Lipman '059. [cite: "Specifically, the Board determined that Petitioner demonstrated by a preponderance of the evidence that claims 1-20 are unpatentable under 35 U.S.C. § 103 as obvious over Lipman '914, Lipman '463, and Lipman '059."]

Reasoning for Obviousness

The PTAB found that the combination of the Lipman references disclosed or rendered obvious all the limitations of claims 1-20 of US9317170. [cite: "Reasoning: The Board found that the combination of Lipman '914, Lipman '463, and Lipman '059 disclosed or rendered obvious all the limitations of claims 1-20, and that a person of ordinary skill in the art would have been motivated to combine these references to achieve the claimed invention."] This implies that each element of the claims was present in one or more of these prior art documents.

Motivation to Combine

The PTAB explicitly stated that a person of ordinary skill in the art would have been motivated to combine these references to achieve the claimed invention. [cite: "Reasoning: The Board found that the combination of Lipman '914, Lipman '463, and Lipman '059 disclosed or rendered obvious all the limitations of claims 1-20, and that a person of ordinary skill in the art would have been motivated to combine these references to achieve the claimed invention."] While the detailed reasoning for the motivation to combine is contained within the full Final Written Decision of IPR2021-01257, the Board's conclusion indicates that the integration of the teachings from Lipman '914, Lipman '463, and Lipman '059 would have been logical and apparent to a skilled artisan seeking to develop interactive devices and user interface functionalities similar to those claimed in US9317170. Common motivations in the field of interactive displays and input devices often include improving accuracy, enhancing user experience, reducing manufacturing costs, or expanding functionality.

The Federal Circuit subsequently affirmed the PTAB's decision on December 18, 2023, upholding the finding that claims 1-20 are unpatentable. [cite: "Appeal: The Final Written Decision was appealed to the U.S. Court of Appeals for the Federal Circuit. The appeal was filed under docket number 23-1630. On December 18, 2023, the Federal Circuit affirmed the PTAB's decision, finding claims 1-20 unpatentable."] This affirmation solidifies the obviousness finding against claims 1-20 of US9317170.