IPR decision vacated and remanded for failure to compare “purposes or problems” of patent and alleged analogous art

Donner Technology, LLC v. Pro Stage Gear, LLC

Docket No. 2020-1104 (IPR2018-00708) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1104.OPINION.11-9-2020_1682293.pdf)

PROST, DYK, HUGHES

November 9, 2020

Brief Summary:  Board IPR decision vacated and remanded as it “failed to properly identify and compare the purposes or problems” of the patent and the alleged analogous prior art.

Summary:  Donner appealed USPTO (“Board”) rejecting its IPR challenge of Pro Stage’s US 6,459,023 relating to guitar effects pedalboards, finding the alleged prior art US patent (“Mullen”) not to be analogous art.  The FC panel opinion explains that the ‘023 patent “explained that there was…a need for ‘an improved pedal effects board which allows easy positioning and changing of the individual guitar effects while providing a confined and secure area for cable routing and placement” and that it “describes a guitar effects pedalboard that purportedly solves these problems.”  The Mullen reference, upon which each of Donner’s alleged grounds for invalidity depends, is described in this opinion as providing “an improved support for supporting one or more relay structures and for providing wiring-channel space” which Donner “contends…depicts a structure that is analogous to the structure claimed by the ‘023 patent”.  The FC panel agreed with Donner that the Board erred in finding it “failed because Donner had not shown that Mullen falls within the scope of the prior art”.  The FC panel explained that “[i]t is undisputed that the ‘023 patent and Mullen are not from the same field of endeavor” and “[t]herefore, the question is whether Mullen is reasonably pertinent to one or more of the particular problems to which the ‘023 patent relates” (“the problems to which both relate must be identified and compared”;  Princeton Bio., FC 2005 (“The scope of the prior art includes all analogous art.”); In re Bigio (FC 2004) (“Two separate tests define the scope of analogous prior art:  (1) whether the art is from the same field of endeavor, regardless of the problem addressed and”, if not, “(2)…whether the reference is still reasonably pertinent to the particular problem.”); Wyers, FC 2010 (“dividing line…ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose”)).  The FC panel found that while “the Board did consider all relevant arguments and evidence”, it “failed to properly identify and compare the purposes or problems to which Mullen and the ‘023 patent relate”, “the relevant purposes of an invention” being “those relating to solving a problem” (In re Clay, FC 1992).  It found “the Board’s articulation of the purpose of or problem to be solved” to be “so intertwined with the patent’s field of endeavor that it would effectively exclude consideration of any references outside that field”, while the “analysis must be carried out from the vantage point of a PHOSITA who is considering turning to the teachings of references outside her field of endeavor” (Sci. Plastic, FC 2014; FN1 acknowledging that there can be specific problems that “rules out all art outside that field”; Heidelberger, FC 1994 (“The relevant question is whether a PHOSITA ‘would reasonably have consulted’ the reference in solving the relevant problem.”)  The Board was found to have “failed to apply the proper standard” and remanded the decision.

This entry was posted in Analgous Art, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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