Stone Strong v. Del Zotto (CAFC 2011-1156) nonprecedential; Judges Dyk (author), Clevenger, and Reyna

On appeal, we need address only the question of obviousness since we conclude that the asserted claims of both patents are obvious as a matter of law.

A patent is invalid for obviousness "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a) (2006). "Obviousness is a question of law based on underlying findings of fact." In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009).

In determining whether a patent is invalid for obviousness, "the first step is to determine the meaning and scope of each claim in suit." Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (internal quotation marks omitted) (quoting Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992)). Patent claim construction is an issue of law, which this Court reviews without deference.  Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1325 (Fed. Cir. 2009).  Here, the parties disagree as to the meaning and scope of the claims of the patents in suit.

The claimed "alignment" was realigned to open the claim up to the prior art.

We therefore construe the alignment limitation to require that when the lift loops of one block are inserted into the recess on the bottom of another, there is not enough play to allow the blocks to be misaligned without further manual adjustment.

The CAFC facilely concluded that expert testimony was inexpert, so it could ignore all the facts of the case and get on with invalidation on its own terms, as the technology was "easily understandable."

In light of this claim construction we consider whether the asserted claims would have been obvious in light of the prior art.  Amazon.com, 239 F.3d at 1351.  At trial, both sides presented expert testimony as to obviousness.  This testimony, however, was largely conclusory and so truncated as to be unhelpful.  Nevertheless, because the technology at issue is "easily understandable," expert testimony is not necessary.  Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010) (internal quotation marks omitted).  The Supreme Court in KSR International Co. v. Teleflex Inc. requires an "expansive and flexible approach" in determining whether a patented invention was obvious at the time it was made. 550 U.S. 398, 415 (2007).  In particular, the Court emphasized the role of "common sense": "[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it." Id. at 421.

Following KSR we held that the legal determination of obviousness, especially where the technology at issue is "easily understandable," "may include recourse to logic, judgment, and common sense, in lieu of expert testimony." Wyers, 616 F.3d at 1239, 1242. "Thus, in appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of 'common sense.'" Id. at 1240.

In particular, our cases emphasize that "where all of the limitations of the patent were present in the prior art references, and the invention was addressed to a 'known problem,' 'KSR . . . compels [a determination of] obviousness.'" Wyers, 616 F.3d at 1240 (citing Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)).  As KSR stated,

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

550 U.S. at 421.

Then the court hit the bricks. That the invalidating prior art was not before the examiner made a big difference. From that you'd think Microsoft had won its case to reduce the burden of proving invalidity. It officially didn't, but unofficially, the fix is in. The CAFC shows its corruption once again.

In the present case, all of the relevant elements of the claimed invention, the lifting device and the alignment mechanism, existed in the prior art.  Both prior art patents disclose a lifting device and an alignment mechanism.  Notably, the prior art patents, the '642 and '818 patents, were not before the examiner during prosecution, and thus, under KSR, "the rationale underlying the presumption [of validity] . . . seems much diminished." 550 U.S. at 426; see also Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 2250-51 (2011).

We conclude that, because the '098 and '304 patents represent no more than the predictable use of prior art elements to address a known problem, their claims are obvious as a matter of law. See KSR, 550 U.S. at 417, 421. 

Accordingly, it would be natural that one of skill in the art would consider all available solutions to address the problem presented by lifting devices.  Being a simple mechanical invention, there were only a number of possible techniques to avoid interference between the lifting devices and subsequently-placed blocks. 

Reversed.