IPR obviousness decision based on common sense modification of prior art affirmed

B/E Aerospace, Inc. v. C&D Zodiac, Inc.
Docket No. 2019-1935, -1936 (IPR2017-01275, -01276)
LOURIE, REYNA, HUGHES
June 26, 2020

Brief Summary: Board IPR obviousness decision based in part on common sense affirmed.

Summary: B/E appealed Board final written decision (FWD) finding certain claims of US 9,073,641 and 9,440,742 related “to space-saving technologies for aircraft enclosures such as lavatory enclosures, closets, and galleys” invalid for obviousness. Representative claim 1 of the ‘641 patent recites “a lavatory unit including a forward wall portion” including “a first recess” and a “second recess”. The Board concluded obviousness because the prior art shows a “contoured wall design” that meets “the ‘first recess’ claim limitation” and that the “second recess”, while not explicitly disclosed, “is nothing more than the application of a known technology…for its intended purpose with a predictable result”; agreed with Zodiac that a skilled artisan would have been motivated to include the second recess (“interested in maximizing space in airplane cabins”); and that “‘it would have been a matter of common sense’ to incorporate a second recess”. The FC panel reviewed “the Board’s legal conclusions of obviousness de novo and its factual findings for substantial evidence” (HTC, FC 2017; Consol. Ed., US 1938). The FC panel agreed with the Board that “modifying” the prior art “to include a second recess was nothing more than the predictable application of known technology…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” (KSR, US 2007 (“combination of familiar elements according to known methods”, “no more than yield predictable results”); also supported by expert testimony). The FC panel also affirmed the Board’s conclusion that “it would have been a matter of common sense” to incorporate the second recess, and disagreed with B/E’s assertion that the Board relied “on ‘an unsupported assertion of common sense’ to ‘fill a hole in the evidence formed by a missing limitation in the prior art” (“failed to provide a ‘reasoned explanation and record evidence to support its position” (Arendi, FC 2016)). The FC panel explained that “[i]n KSR, the Supreme Court opined that common sense serves a critical role in determining obviousness” and “teaches that familiar items may have obviousness 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”, also noting that “common sense cannot be used as a ‘wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art” (KSR, US 2007; Perfect Web, FC 2009 (“affirmed a [DC’s] invocation of common sense to supply a missing claim limitation…[t]he record showed that the technology was simple and that ‘step (D) merely involves repeating earlier steps’ until success is achieved”)). “Here,” the FC panel wrote, “just like in Perfect Web, the evidence showed the technology…is simple” and “[t]he missing claim limitation (the ‘second recess’) involves repetition of an existing element (the ‘first recess’) until success is achieved.” The FC panel also found that the Board did not rely on certain “design drawings” and did not reach B/E’s § 311(b) arguments.