In inter partes review proceedings, the Preliminary Response allows a patent owner to argue that an IPR proceeding should not be instituted. One way a patent owner may oppose institution of an obviousness ground that relies on multiple references or teachings is to argue that the Petition does not adequately articulate a motivation or reasons why a person of ordinary skill in the art would combine the cited prior art references or teachings. Indeed, the U.S. Court of Appeals for the Federal Circuit recently confirmed the role that motivation-to-combine arguments can play in IPR proceedings, holding that the Patent Trial and Appeal Board ''must make a finding of a motivation to combine when it is disputed.'' In re Nuvasive, Inc., 842 F.3d 1376, 1382, 120 U.S.P.Q.2d 1821 (Fed. Cir. 2016).
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Originally published in BNA's Patent, Trademark & Copyright Journal, January 2017
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