NON-ANALOGOUS ART
| August 5, 2015
THE FEDERAL CIRCUIT REITERATES THAT PRIOR ART MUST LOGICALLY COMMEND ITSELF TO AN INVENTOR’S ATTENTION
CIRCUIT CHECK INC. v. QXQ INC.
July 28, 2015
Before: Lourie, Dyk, and Moore
Summary:
The Federal Circuit reiterates that prior art must logically commend itself to an inventor’s attention. The parties disputed whether certain references could be considered analogous prior art. Merely being within the common knowledge does not mean that a reference is analogous art.
Details:
Circuit Check, Inc. is the owner of U.S. Patent Nos. 7,592,796, 7,695,766, and 7,749,566. Claim 1 of the ’796 patent is representative:
1. An indicator interface plate configured to provide readily visible identification of predetermined holes, the plate comprising: a surface including a plurality of holes having visually discernable markings to allow a user to visually determine which of said plurality of holes are to be populated, wherein a region of the plate said plurality of holes have a first predetermined indicia covering the surface surrounding said plurality of holes, the plate further comprising: a second removable indicia overlying said first predetermined indicia, said second indicia being different from said first predetermined indicia, wherein said second indicia is removed from areas of said plate adjacent each of said predetermined holes, said predetermined holes are visually identifiable to a user by the appearance of the first indicia.
Circuit Check sued QXQ alleging QXQ’s interface plates infringed its patents. QXQ had (1) stipulated that it infringed the patents; (2) stipulated that three references showing interface plates were prior art; and (3) conceded that the limitations of claim 1 were not disclosed by the stipulated prior art. At a jury trial, QXQ argued that three other references disclosed the missing limitations. One reference was directed to rock carvings, another was directed to engraved signage, while the other was a machining technique known as Prussian Blue. The parties disputed whether these references (the “disputed prior art”) constitute prior art.
The jury returned a verdict that the asserted claims were not invalid for obviousness and that infringement was willful. QXQ subsequently filed a motion for judgment as a matter of law that the claims are invalid as obvious, which was granted by the district court. The district court found that “any layman” would have understood that interface plates could be marked using the techniques described in the disputed prior art, and found that none of the objective considerations affected its conclusion that the asserted claims would have been obvious. In addition, with respect to certain dependent claims, the district court concluded that even though QXQ did not present evidence that the additional limitations would have been obvious, those limitations were too trivial to support non-obviousness.
Decision Analysis:
A district’s court’s grant of judgment as a matter of law is reviewed de novo. The jury’s decision can be overturned only if no rational jury could have come to the same conclusion. In addition, when reviewing a jury’s obviousness verdict, the court first must presume “that the jury resolved the underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if they are supported by substantial evidence. Then we examine the legal conclusion de novo to see whether it is correct in light of the presumed jury fact findings.” Jurgens v. McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991) (citations omitted).
The CAFC reasoned that by finding the claims nonobvious, the jury presumably found the disputed prior art as not analogous.
To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). Whether a reference is analogous art is a question of fact. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve. Id.
The jury was instructed that the field of the invention is circuit board testers, but the disputed prior art of rock carvings, engraved signage, and Prussian Blue is not part of the field of circuit board testers.
The jury heard testimony that a person of ordinary skill in the art would not have thought about rock carvings, engraved signage, or Prussian Blue in considering how to mark interface plates. The jury was entitled to weigh such testimony and find that an ordinarily skilled artisan would not find that the disputed prior art logically would have commended itself to the inventor’s attention.
A notable quote from the decision:
Just because keying a car, for example, is within the common knowledge of humankind does not mean that keying a car is analogous art. An alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method. The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.
In regard to non-obviousness, Circuit Check had provided much evidence to support the jury’s findings, including:
1. Testimony that an inventor would not have considered the disputed prior art when trying to improve markings.
2. Testimony that the stipulated prior art taught away from the invention.
3. Testimony that manufacturer specifications contemplated minimizing the amount of paint on interface plates because paint had a tendency to chip off and fall into the tester, which caused serious problems.
4. Testimony that counselled against covering the entire interface plate with paint.
5. Evidence of copying, long-felt need, commercial success, skepticism, and unexpected results.
6. Testimony that the industry had tried multiple prior art marking methods preceding the invention.
7. Testimony that once Circuit Check’s customers received products embodying the patents, they refused to return to the prior art marking methods.
8. Testimony that customers were worried about using the new interface plates because the claimed method could increase the likelihood of paint flaking (skepticism).
Based on examination of the record, the jury’s presumed findings are supported by the record, and therefore a reasonable jury would have concluded that the subject matter as a whole would not have been obvious at the time of the invention.
Lastly, with respect to the dependent claims in which no evidence was presented by QXQ, the district court erred “in shifting the burden of production to disprove invalidity.” It was improper for the district court to invalidate claims absent any evidence regarding the additional limitations in the claims.
Takeaways:
It is easy for a judge (or an Examiner) to find a reason to assert that it would have been obvious to look to an unrelated reference teaching. To be successful in arguing non-analogous art, the record should contain evidence supporting the same. Circuit Check had created a strong record based on much testimony to support that an inventor would not have looked at the particular art to solve the problem at hand.
