October 30, 2013
7,214,017 was shipped into reexamination by a competitor to its owner: Randall Manufacturing. While the examiner rejected numerous claims, the patent board couldn't see a motivation to combine references. But the CAFC could, finding the failure to do so "a blinkered focus."
Randall Mfg. v. USPTO & FG Products (CAFC 2012-1611) precedential; Judges Rader, Dyk and Taranto (opinion author)
7,214,017 "is directed to moveable bulkheads for partitioning cargo space in a shipping container."
A claimed invention is unpatentable if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to one of ordinary skill in the relevant art. 35 U.S.C. § 103. Whether a claimed invention would have been obvious is a question of law, based on factual determinations regarding the scope and content of the prior art, differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and any objective indicia of non-obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). On appeal, we review the Board's compliance with governing legal standards de novo and its underlying factual determinations for substantial evidence. In re Sullivan, 498 F.3d 1345, 1350 (Fed. Cir. 2007).
In KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior-art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, 550 U.S. at 415-22. Rejecting a blinkered focus on individual documents, the Court required an analysis that reads the prior art in context, taking account of "demands known to the design community," "the background knowledge possessed by a person having ordinary skill in the art," and "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. This "expansive and flexible approach," id. at 415, is consistent with our own pre-KSR decisions acknowledging that the inquiry "not only permits, but requires, consideration of common knowledge and common sense." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
The Board's analysis in this case ran afoul of that basic mandate. By narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional record evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions. As KSR established, the knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.
The patentee made the honest mistake of explaining the then-current state of the art in the disclosure background. This used to be common practice. But since Obzilla (KSR) came stomping into the patent regime, that creates a template for finding obviousness via combination. Thus, hiding any knowledge of the prior art now helps a patent applicant, while proving a disservice to the public notice function of patenting. In other words, Obzilla has helped make patenting a more crooked game than it was. But then, the courts, which decide how they want to rule, then back-fit case law to suit, are the ultimate corrupters of the patent system.
In recognizing the role of common knowledge and common sense, we have emphasized the importance of a factual foundation to support a party's claim about what one of ordinary skill in the relevant art would have known. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009). One form of evidence to provide such a foundation, perhaps the most reliable because not litigation-generated, is documentary evidence consisting of prior art in the area. Randall relied on just such evidence in citing to extensive references of record showing a familiar, even favored, approach to bulkhead stowage.
Particularly when viewed in the context of the background references Randall provided, the evidence strongly supports the notion that the bulkhead design FG claimed was nothing more than the "combination of familiar elements according to known methods," "'each performing the same function it had been known to perform,'" "yield[ing] predictable results." KSR, 550 U.S. at 416-17 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). In addition, neither FG nor the Board points to any objective indicia of non-obviousness. On this record, the Board's finding of lack of motivation to combine is infected by prejudicial error.
Vacated and remanded.
Posted by Patent Hawk at October 30, 2013 9:46 PM | Prior Art