Even Under KSR, Party Asserting Obviousness Defense Based on a Combination of Prior Art References Must Provide Some Evidence of a "Reason to Combine"

Defendant was not entitled to summary judgment of invalidity based on a combination of prior art references. "[Defendant] argues that 'one of ordinary skill in the art would have been motivated to combine these references to address the problem stated in the application . . . however, [defendant] has failed to present any evidence in support of this assertion, nor has [defendant] presented any evidence suggesting the above-referenced 'problem' was 'known' in the field at the time of the application for the patents-in-suit. Consequently, [defendant] has failed to demonstrate a reason to combine the references at issue existed."

District Judge Maxine M. Chesney
Medtronic, Inc. v. AGA Medical Corp., 3-07-cv-00567
(CAND April 28, 2009, Order)