Docket No. 2015-1155
LOURIE, DYK, MOORE
July 28, 2015
Brief Summary: DC grant of JMOL for obviousness reversed and remanded because reasonable jury could have concluded, as this jury did or was presumed to conclude, that prior art was not “analogous”, the differences were significant, evidence of secondary considerations supported nonobviousness, and the DC erroneously shifted the burden of proof to the patentee to “disprove invalidity” for certain dependent claims.
Summary: Circuit Check appealed DC JMOL that US 7,592,796; 7,695,766; and 7,749,566 relating to the interface plate (a plastic grid with holes that permit connections between the tester and the circuit board) of circuit board testers were invalid as obvious (jury found the claims nonobvious). At trial, QXQ stipulated infringement and the parties agreed three references were prior art. QXQ conceded that that prior art does not disclose the interface plate of the claims but argued that three other references disclosed it: rock carvings in which a varnish is applied to rocks and then scraped off the make designs, engraved signage in which the top layer of a multi-layer product is removed to expose a bottom layer, and a machining technique known as Prussian Blue in which a dye is applied to a workpiece that then removed by a scribe or drill (the “disputed prior art”). Circuit Check provided testimony that “Prussian Blue could not be used to make the claimed invention and had no connection to the problem.” The DC concluded that even though the disputed prior art had not been used with the claimed testers, “‘any layman’ would have understood that interface plates could be marked using the techniques” (e.g., “any vandal who has ‘keyed’ a car knows that stripping the paint with a key will result in the underlying metal color showing through.”) This opinion explains that “[t]o be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous” (“from the same field of endeavor or…reasonably pertinent to the particular problem the inventor is trying to solve”) which is a question of fact (Wang, FC 1993; Wyers, FC 2010). And while “familiar items may have obvious uses beyond their primary purposes” (KSR, US 2007), “a reference is only reasonably pertinent when it ‘logically would have commended itself to an inventor’s attention in considering his problem” (In re Clay, FC 1992). The opinion explained that the jury weighed the testimony and found the disputed art non-analogous, noting that “[j]ust because keying a car…is within the common knowledge of humankind does not mean 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 FC agreed with the jury because, for instance, “it is not surprising that one of skill in the art would not consider using a machining technique that employed removable dye on interface plates where such dye could fall into and interfere with the underlying electronics” (discussing Prussion Blue). The FC panel also agreed with “the jury’s presumed finding that the differences between the stipulated prior art and the claims were significant” (a question of fact) as it “does not disclose what makes the patented claims unique” and evidence of teaching away (i.e., no motivation). It also found that substantial evidence supported “the jury’s presumed findings that objective considerations existed” (evidence of copying, long-felt need, commercial success, skepticism, and unexpected results). Thus, the FC panel concluded “a reasonable jury could have concluded that the subject matter as a whole would not have been obvious at the time of the invention”. It also found the DC erred by invalidating certain claims because “Circuit Check, the patentee, did not explain why the additional limitations rendered the claims nonobvious” (DC “shift[ed] the burden of production to disprove invalidity”). Thus, the DC decision was reversed and remanded.