The Federal Circuit, in Dome Patent L.P. v. Lee, further clarified the standard for a person of ordinary skill in the art’s motivation in deciding obviousness contentions under U.S.C. §103(a).1 The court decided that the district court properly determined whether a person of ordinary skill in the art would have been motivated to combine conflicting prior art references that taught all the elements of a claim. In sustaining the district court’s decision, the court looked to both the need for the claimed product and the prior art as a whole, while also noting that “the burden of overcoming the district court’s factual findings is, as it should be, a heavy one.”2

On reexamination, the PTO found that the patent in question, U.S. 4,306,042 (“the ‘042 patent”), would have been obvious, and the district court agreed. The ‘042 patent claimed a method for “making contact-lens materials that are rigid and gas permeable.”3 The Federal Circuit noted that during the relevant time period, such lens material was needed for long lasting, clear contact lenses. Reviewing the case of obviousness de novo, the court relied on three patents: U.S. 4,120,570 (Gaylord); U.S. 4,152,508 (Ellis); and U.S. 4,235,985 (Tanaka), in making its decision.

The Plaintiff’s argued that Tanaka “teaches away” from combining Gaylord and Tanaka, and as such, a person of ordinary skill would not have been motivated to perform the method recited in the claims of the ‘042 patent. The court acknowledged that Tanaka discloses potential disadvantages to combining the prior art references, but the court emphasized that “a motivation to combine prior art references may flow from ‘the nature of the problem to be solved’”4 and the “other prior art references disclose[d] roadmaps on how to offset the disadvantages”.5