Proposing Two Alternative Arrangements Is Not Enough To Teach Away

December 08, 2014

Dave emery speakers

SDI Technologies, Inc. filed an inter partes reviews (IPR) of U.S. Patent No. 8,364,295 (IPR2013-00465).  IPR2013-00465 is one of a few IPRs filed by SDI against this family of patents.  U.S. Patent No. 8,364,295 (“the ‘295 patent”) is owned by Bose Corp. and relates to an audio system for reproducing sound from computer files and computer network radio stations, such as the Bose Wave® radio shown above.

Claim 1 of U.S. Patent No. 8,364,295 relates to an audio system which connects to a computer to provide audio information from digital music files stored on a computer, for example.  The audio system recited in claim 1 includes a “sound reproduction device,” including a housing, speakers, and a connector which controls a computer, and a “remote control device.”

In one of Petitioner’s grounds for unpatentablity, Petitioner asserts that several claims of the ‘295 patent, including claim 1, would have been obvious in view of an article describing a software package for playing MP3 digital audio files on a computer (“WinAmp”), Internet web pages pulled from the Wayback Machine referencing an infrared receiver that connects to a computer, and an Altec Lansing Manual which discloses a speaker system which may be connected to and controlled by a computer via a USB cable connection.

Petitioner argues that claim 1, for example, is unpatentable over these references because the speaker system in the Lansing Manual could be modified to include the WinAmp software and a computer could be equipped with an infrared receiver.  With this combination, the Petitioner argues that the modified speaker “would receive, process, and play audio information from the computer . . . and covert remote control signals into commands that would control the WinAmp software.”  The Petitioners argued that such a system would include two remote controls (one for communicating with the computer and one for communicating with the speaker system).  Petitioner further argues that a person of ordinary skill in the art would consolidate the functions of the two remote controls into one remote control to reduce clutter and duplication, and thus, the combined structure would render claim 1, for example, obvious.

Patent Owner counters that the references teach away from Petitioner’s combination by teaching two alternative rearrangements.  For example, Patent Owner argues that the references either teach a computer connected with a remote for controlling all functions of a speaker system, or teach a single universal remote capable of communicating with a computer and a speaker.  However, Patent Owner argues that the references do not teach a system in which the speakers control the computer as required by the claims.  Since the references teach two combinations which are divergent from the claims, Patent Owner reasons that the references teach away from the claimed subject matter.

The Board disagrees with the Patent Owner’s arguments and reiterates that the disclosure of alternative designs does not teach away from the claimed invention, especially since there is no teaching that the Patent Owner’s proposed combinations are superior to the combination proposed by the Petitioner.  The Board notes that the three rearrangements proposed (two from Patent Owner and one from Petitioner) constitutes a finite number of predicable solutions in which rearrangement of known elements would have been an obvious matter of design choice.  Further, the Board is satisfied with Petitioner’s rationale for combining the references (i.e. to reduce duplication and clutter).

As the above indicates, arguments that a reference teaches away from a proposed combination are best supported by a statement in the reference that the proposed combination is inferior.  If the reference does not strongly support a teaching away argument, Patent Owner may benefit from attacking the functionality or intended purpose of the proposed combination, as proposing a few alternative arrangements is not enough to support a finding of non-obviousness.


Maggie Welsh


Margaret M. Welsh is an associate in the firm’s Electrical/Mechanical Group. Ms. Welsh’s practice focuses on the ‎preparation and prosecution of domestic and foreign patent applications as well as counseling clients on ‎intellectual property matters. She has experience in a wide range of mechanical and electrical technologies, including semiconductor and nanotechnologies‎ and technologies in various automobile components, such as ‎tires, transmissions, engines, fuel-injectors, motors, lamps, steering systems, connectors/wiring, valves, and ‎control/monitoring systems. ‎

Ms. Welsh previously has worked as an energy consultant where she provided various entities with technical, regulatory, and strategic support for many of their energy initiatives. She was also the Managing Editor of Volume XXI of Fordham’s Intellectual Property, Media and Entertainment Law Journal.