Written by: Nitai Sylvetsky
Highlights
- In 2025, the Federal Circuit continues to require clear, fact-based reasoning to support obviousness under 35 U.S.C. § 103.
- Generalized assertions of technological predictability, standing alone, do not render claims obvious.
- PTAB decisions are often scrutinized where motivation-to-combine findings are conclusory or inadequately explained.
What Is Obviousness — and Why Motivation to Combine Matters
Under U.S. patent law, a claim in a patent application or patent is unpatentable as being “obvious” if, at the time of invention, a person of ordinary skill in the art would have been motivated to combine prior art teachings, or to modify prior art without a combination, to arrive at the claimed invention with a reasonable expectation of success. The motivation-to-combine requirement is critical because it guards against hindsight reasoning and ensures that patents applications are evaluated based on real-world technical decision-making, not after-the-fact reconstruction.
Recent Federal Circuit decisions reaffirm that obviousness remains a fact-intensive inquiry. Courts are consistently rejecting hindsight reasoning and requiring challengers to show why a skilled artisan would have been motivated to combine prior art references with a reasonable expectation of success. These rulings provide practical guidance for patent drafting, prosecution, and post-grant strategy across STEM disciplines.
Key 2025 Developments
PTAB Obviousness Findings Under Review
Throughout 2025, the Federal Circuit has reiterated that obviousness determinations by the Patent Trial and Appeal Board (PTAB) must be supported by substantial factual evidence, including a clearly articulated rationale for combining references.
For instance, in Honeywell International v. 3G Licensing, the Federal Circuit reversed a PTAB obviousness decision and held that the Board misapplied the motivation-to-combine analysis by focusing too narrowly on the patentee’s stated objectives, rather than on motivations that a person of ordinary skill in the art would have had (“Requiring the motivation to modify to be the same motivation as that of the patent inventor has no basis in obviousness doctrine.”, Honeywell International Inc. v. 3G Licensing, S.A., 124 F.4th 1345, 1354 (Fed. Cir. 2025)).
Related considerations have been stated by the court in Palo Alto Networks v. Centripetal Networks. (“The Patent Trial and Appeal Board failed to make the required finding on whether one of ordinary skill would be motivated to modify two patents’ notification step after the first patent’s correlation step… The Board erred by analyzing the two patents individually instead of considering their proposed combination, contrary to the requirement to read prior art references in context.”, Palo Alto Networks, Inc. v. Centripetal Networks, LLC, 122 F.4th 1378, 1379 (Fed. Cir. 2024)).
Procedural Limits in IPR Obviousness Challenges
In Qualcomm v. Apple, the court clarified limits on the use of applicant-admitted prior art (AAPA) in inter partes review (IPR) proceedings and held that applicant-admitted prior art cannot serve as the basis of an IPR ground under 35 U.S.C. § 311(b) (“The plain language of § 311(b) limits “the basis” of an inter partes review ground to prior art consisting of patents or printed publications. Since AAPA is not a prior art patent or printed publication, the Board’s interpretation permitting AAPA as the basis when combined with prior art patents or printed publications contravenes the statute’s plain meaning.”, Qualcomm Inc. v. Apple Inc., 134 F.4th 1355, 1356 (Fed. Cir. 2025)). While procedural in nature, the decision affects how obviousness grounds are constructed in IPR proceedings before the PTAB.
The above examples indicate that prosecution under the United States Patent and Trademark Office or PTAB decisions relying on generalized expert testimony or unexplained assertions of predictability may prove vulnerable on appeal.
Conclusions and Practical Implications
For STEM innovators, these 2025 decisions reinforce that obviousness challenges hinge on specific technical reasoning, not assumptions about field maturity or similarity of components.
- Applicants and patent owners should draft specifications that clearly explain technical problems, design choices, and advantages to counter future motivation-to-combine arguments.
- Patent challengers should ensure that obviousness theories are well supported by the record and explicitly tied to the claimed invention’s technical context.
The Federal Circuit’s 2025 guidance sends a consistent message: obviousness must be explained, not presumed.
References/For Further Reading:
- Honeywell International Inc. v. 3G Licensing, S.A., 124 F.4th 1345 (Fed. Cir. 2025), see also https://law.justia.com/cases/federal/appellate-courts/cafc/23-1354/23-1354-2025-01-02.html
- Palo Alto Networks, Inc. v. Centripetal Networks, LLC, 122 F.4th 1378 (Fed. Cir. 2024), see also https://law.justia.com/cases/federal/appellate-courts/cafc/23-1636/23-1636-2024-12-16.html and https://www.ptablaw.com/2025/02/05/unclear-analysis-at-the-ptab-leads-to-confusion-at-the-federal-circuit/.
- Qualcomm Inc. v. Apple Inc., 134 F.4th 1355 (Fed. Cir. 2025), see also https://law.justia.com/cases/federal/appellate-courts/cafc/23-1208/23-1208-2025-04-23.html
