A patent claim can be found obvious when a person of ordinary skill would have been motivated to combine prior art references as recited. One defense is frustration of purpose, where a proposed modification makes a prior art reference inoperable for its intended purpose. Federal Circuit guidance states that modifications that render a prior art reference inoperable are inappropriate for an obviousness inquiry. PTAB decisions have treated this defense differently. In one case, the Board did not accept an argument that modifying an electrical circuit would destroy transmission lines and render it inoperable. In another case, the Board denied institution because the proposed modification was antithetical to the primary reference’s operation. The balance between these approaches remains unresolved.
"In Thermaltake Tech. Co. v. Chen, the Board found that even though the patent owner argued that the proposed modification of an electrical circuit would destroy the circuit's transmission lines and render it inoperable. IPR2024-01230, Paper 51 (PTAB Feb. 17, 2026). In Deere & Co. v. David's Dozer, the Board denied institution of the IPR because the proposed modification would render the primary reference, Funk, inoperable; specifically, the combination was "antithetical to Funk's operation." IPR2024-01442, Paper 7, p. 12 (PTAB Jan. 7, 2025)."
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