Anderson v. Pella (CAFC 2007-1536) non-precedential

Taking into consideration KSR, the district court granted Gore and Pella's motion to re-open the motions for summary judgment on the limited issue of obviousness, and the court requested further briefing from the parties. In their briefs and at oral argument before the district court, Gore and Pella asserted that the invention claimed in the '612 patent was rendered obvious by an electromagnetic-shielding mesh manufactured by TWP, Inc. ("TWP") in combination with Japanese Patent No. 195646, disclosing a method of coating a screen with light absorbable black color to reduce reflection. These two references were the basis of an obviousness rejection of Andersen's patent application by the United States Patent and Trademark Office ("PTO"). Eventually, however, the application issued as the '612 patent after Andersen overcame the rejection by amending its claims to include the limitation "in a fenestration unit that permits ventilation there through."

Applying the test for obviousness under 35 U.S.C. § 103(a), the district court began with an analysis of the primary obviousness factors delineated in Graham v. Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966): (1) scope and content of the prior art, (2) the differences between the prior art and claimed invention, and (3) the level of ordinary skill in the art. Andersen, 500 F. Supp. 2d at 1195-97. Since the court found that the defendants had made out a prima facie showing of obviousness under these primary factors, it then weighed the secondary considerations of nonobviousness discussed in Graham, 383 U.S. at 17-18, including commercial success, long felt but unmet need, and failure of others. Andersen, 500 F. Supp. 2d at 1197-98. Under the direction of KSR, the court rejected "a 'rigid approach,' in favor of an 'expansive and flexible approach' using 'common sense' when assessing whether an invention would have been obvious to a person of ordinary skill in the art." Andersen, 500 F. Supp. 2d at 1195 (quoting KSR, 127 S. Ct. at 1739, 1742-43).

In its discussion of obviousness, the court asked, "[W]ould an insect screen manufacturer of ordinary skill have found it obvious to use the TWP screening material, decrease its reflectance value, bond it, and place it in a window frame?," to which it responded, "The answer, plain and simple is 'Yes.'" Id. at 1195.

Andersen argues that the district court erred in granting summary judgment of invalidity by reason of obviousness because it raised genuine issues of material fact with respect to whether one of ordinary skill in the art (here, "someone who manufactures insect screens with no understanding of optics and physics," Andersen, 500 F. Supp. 2d at 1195) seeking to design an insect screen with reduced visibility would have looked to the TWP mesh.

To which the CAFC panel agreed.

Upon our review of the record in the light most favorable to Andersen, we find support adequate to overcome summary judgment on the question of whether the TWP mesh was outside the scope and content of the prior art. Andersen put forth evidence in the record that, one, the TWP mesh was not part of the insect screen manufacturing field, and, two, an insect screen manufacturer would have read the prior art to teach away from using a mesh with the characteristics possessed by the TWP mesh. This field-of-invention and teaching-away evidence, combined with the deference owed to the PTO's issuance of this patent after reviewing the same prior art references that form the basis of this obviousness challenge, raises a genuine issue of material fact as to whether an ordinarily skilled insect screen designer would have found the combination of the TWP mesh with the other prior art references obvious.

The CAFC granted deference to PTO allowance over the same art that Pella applied, pre-KSR.

As we have explained, the PTO examiner's issuance of the patent is entitled to deference:

When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.

PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984)).

Vacated and remanded.