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New Directions in the Federal Circuit: Motivation to Combine

Through two recent panels, both including Judge Lourie, the Federal Circuit expanded upon the Supreme Court’s leading obviousness case, KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), finding motivation to combine references to render the patents-in-suit invalid as obvious. Both panel decisions indicate the Federal Circuit’s increasing readiness to find motivation to combine, even when explicit motivation is not present in the references.

Moreover, in both cases the Court ruled on motivation to combine without the benefit of expert testimony, perhaps illustrating a growing willingness to decide obviousness on summary judgment. Both cases involved simple mechanical inventions, however, so it remains to be seen whether the Federal Circuit will apply its apparent openness to determining obviousness on summary judgment to more complicated technologies that may require the assistance of experts.

Wyers v. Master Lock Co.1

In Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010), cert. denied the Federal Circuit, reversing a jury decision that three trailer hitch lock patents were valid and infringed, found that even in the absence of expert testimony, judges can make a common sense determination to combine the prior art to find patent claims obvious and thus invalid. Prior to Wyers, the Federal Circuit rarely relied on common sense as the basis for finding a motivation to combine prior art. Wyers confirms that successful obviousness challenges are possible without expert testimony. On February 22, 2011, the Supreme Court declined to grant Wyers’ petition for a writ of certiorari.

Tokai Corp. v. Easton Enterprises, Inc.

InTokai Corp. v. Easton Enterprises, Inc.,—F.3d—, 2011 WL 308370 (Fed. Cir. 2011), the Federal Circuit in a split decision affirmed a grant of summary judgment which found the patents-in-suit to be invalid as obvious. Tokai’s March 3, 2011 petition for panel rehearing and rehearing en banc is pending.

Tokai’s patents relate to automatic child-safety mechanisms for safety utility lighters. Judge Lourie wrote for the majority:

It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters… to fit a utility lighter as disclosed by [the prior art], even if it required some variation in the selection or arrangement of particular components.  

The Court concluded that “the undisputed facts in this case – including the state of the prior art, the simplicity and availability of the components making up the claimed invention, and an explicit need in the prior art for safer utility lighters – compel a conclusion of obviousness.” The Court also affirmed the exclusion of expert declarations because Tokai failed to submit expert reports.

Impact of Wyers and Tokai

These decisions support a summary judgment strategy for invalidity claims in three ways: (1) by making it easier to find a motivation to combine, (2) by not requiring expert testimony to establish a motivation to combine and, (3) in cases where a strong prima facie case of obviousness is established, by making it difficult for secondary considerations to save the patents. “[T]he ultimate inference as to the existence of a motivation to combine references may boil down to a question of ‘common sense,’ appropriate for resolution on summary judgment,” Wyers, 616 F.3d at 1240, and “expert testimony concerning motivation to combine is unnecessary and, even if present, will not necessarily create a genuine issue of material fact.” Id. at 1239, citing KSR, 550 U.S. at 427.

Tokai also makes it challenging for a simple mechanical patent to withstand an obviousness challenge particularly when there is a known need.

For a more in-depth look at this issue, please click here.

1. Andrews Kurth LLP represented Master Lock Corporation before the Federal Circuit.

Copyright © 2020, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume I, Number 113



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Andrews Kurth has a seasoned intellectual property practice dedicated to ensuring our clients’ IP assets, business brands and global presence are consistently, strategically and effectively managed, protected and enforced. Today, intellectual property not only commands a place at the corporate table, but often serves as a driver of innovation, growth and corporate strategy. That is why Andrews Kurth has patently positioned our IP team at the intersection of business and technology. We are bringing IP out of its technical comfort zone and into the business environment in...