Numerous patent owners have successfully argued against a purported combination of references and managed to convince the PTAB that one of ordinary skill in the art would not have been motivated to combine the cited references to reach the claimed invention. In one case in particular, the PTAB praised the demonstratives presented by the patent owner in support of an inoperable combination argument with which it agreed.

Ariosa Diagnostics, IPR2012-00022, Paper No. 166, at *40–43 (PTAB Sept. 2, 2014) (determining the ordinary artisan would not have had a reasonable expectation of success in the proposed combination); Schott Gemtron Corp. v. SSW Holding Co., IPR2013-00358, Paper No. 106, at *19–30 (PTAB Aug. 20, 2014) (determining that one of the references is not reasonably pertinent to the problem solved by the claimed invention and thus cannot be combined, as it is not analogous art).

Shaw Indus. Grp, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper No. 44, at *19–22 (PTAB July 24, 2014) (determining that the proposed combination of references would produce an inoperative device, as shown by the patent owner’s illustrative demonstratives).