CAFC Finds Claim Limitations Missing in the Prior Art May Still Be Obvious with Common Sense
| July 13, 2020
B/E AEROSPACE, INC. v. C&D ZODIAC, INC
June 26, 2020
Lourie, Reyna, and Hughes, Opinion by Reyna.
Summary:
On appeal from an inter partes review proceeding wherein the petitioner, C&D Zodiac, Inc. (“Zodiac”), successfully challenged two patents owned by B/E Aerospace, Inc. (“B/E”), U.S. Patent No. 9,073,641 (“the ’641 patent”) and U.S. Patent No. 9,440,742 (“the ’742 patent”) B/E asserted that the PTAB had failed to consider all the limitations of the claims. The patents involved space-saving technologies for aircraft enclosures, such as lavatory enclosures, designed to “reduce or eliminate the gaps and volumes of space required between lavatory enclosures and adjacent structures.”
The CAFC concluded that the Board’s final determination of obviousness by predictable result of a known element and common sense was correct and therefore affirmed the Board’s decision.
Details:
Claim 1 of the ’641 patent was designated as representative of the challenged claims.
1. An aircraft lavatory for a cabin of an aircraft of a type that includes a forward-facing passenger seat that includes an upwardly and aftwardly inclined seat back and an aft-extending seat support disposed below the seat back, the lavatory comprising:
a lavatory unit including a forward wall portion and defining an enclosed interior lavatory space, said forward wall portion configured to be disposed proximate to and aft of the passenger seat and including an exterior surface having a shape that is substantially not flat in a vertical plane; and
wherein said forward wall portion is shaped to substantially conform to the shape of the upwardly and aftwardly inclined seat back of the passenger seat, and includes a first recess configured to receive at least a portion of the upwardly and aftwardly inclined seat back of the passenger seat therein, and further includes a second recess configured to receive at least a portion of the aft-extending seat support therein when at least a portion of the upwardly and aftwardly inclined seat back of the passenger seat is received within the first recess.
The appeal focused on the “first recess” and “second recess” limitations, labeled as elements 34 and 100, respectively, in Figure 2 of the ‘641 patent reproduced below.
The IPR had only one instituted ground: that the challenged claims were obvious over the “Admitted Prior Art” and U.S. Patent No. 3,738,497 (“Betts”). The “Admitted Prior Art” included Figure 1. Betts discloses an airplane passenger seat with tilting backrest. Rather than a flat forward-facing wall, Betts discloses a contoured forward-facing wall to receive the tilted backrest. The Court noted that the “lower portion 30” of Betts slants rearwardly to provide space for a seatback 12 and the top 32 of the storage space 16 also slants rearwardly to not interfere with the seatback 12.
The PTAB had ruled that the Bett’s contoured wall design met the “first recess” limitation and that skilled artisans (airplane interior designers) would have been motivated to modify the flat forwardfacing wall of the lavatory in the Admitted Prior Art with Betts’s contoured, forward-facing wall to preserve space in the cabin.
While the cited art does not disclose the “second recess” to receive passenger seat supports, the Board agreed with Zodiac that creating a recess in the wall to receive the seat support was an obvious solution to a known problem and found that Zodiac “established a strong case of obviousness based on the Admitted Prior Art and Betts, coupled with common sense and the knowledge of a person of ordinary skill in the art.”
B/E’s appeal argued that the Board’s obviousness determination is erroneous because it improperly incorporated a second recess limitation not disclosed in the prior art.
Analysis
The CAFC determined that only the “second recess” limitation was at issue. They found no error in the PTAB’s approaches to finding the “second recess” obvious. First noting that the prior art yields a predictable result, the “second recess,” because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so. The Court noted the evidence provided by Zodiac’s expert and quoted the often cited KSR recitation: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. . . . If a person of ordinary skill in the art can implement a predictable variation § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The Court further affirm the Board’s conclusion that the challenged claims would have been obvious because “it would have been a matter of common sense” to incorporate a second recess in the Admitted Prior Art/Betts combination. B/E argued that the Board legally erred by relying on “an unsupported assertion of common sense” to “fill a hole in the evidence formed by a missing limitation in the prior art.” The Court again cited KSR, noting that common sense teaches that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. Id at 421. (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). They found the PTAB’s “invocation of common sense was properly accompanied by reasoned analysis and evidentiary support” noting that the Board dedicated more than eight pages of analysis to the “second recess” limitation and relied on detailed expert testimony.
The Court noted their decision in Perfect Web Techs, Inc. v. InfoUSA, Inc., that “[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” 587 F.3d 1324, 1328 (Fed. Cir. 2009). They concluded that the Board properly adequately explained their reasoning that the missing claim limitation (the “second recess”) involves repetition of an existing element (the “first recess”) until success is achieved (reasoning that the logic of using a recess to receive the seat back applies equally to using another recess to receive the aft extending seat support).
The CAFC therefore affirmed the PTAB’s finding of the challenged claims unpatentable.
Take Aways
Patent holders need to be cautious in relying on simple limitations. Such limitations may be considered obvious even if not clearly recited in the prior art. Consideration of whether the use of common sense by a skilled artisan would result in the inclusion of the limitation needs to be taken into consideration.
