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February 28, 2016


Fellowes got 7,963,468, claiming a particular paper shredder, and sued competitor ACCO for infringement the day the patent was issued. ACCO filed a reexam which stayed court proceedings.

ACCO Brands v. Fellowes (CAFC 2015-1045) precedential; Judges Newman, Chen (author), Hughes

On reexamination, the examiner found a prima facie case that independent claims 9 and 11 would have been an obvious combination of the prior art thickness and presence sensors and the prior art controller in a paper shredder.

Fellowes appealed to the Board. The Board agreed with the examiner's findings that the prior art contained the claimed presence sensor, the claimed thickness sensor, and a controller to turn the motor on and off... The Board determined that, even if an ordinary artisan might have found it obvious to combine the two prior-art sensors and the prior-art controller, he would not have found it obvious to configure this controller as claimed.

Whereupon Fellowes appealed to the CAFC.

A claim 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 at the time the invention was made to a person having ordinary skill in the art . . ." 35 U.S.C. ยง 103 (2006);5 see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). During patent examination and reexamination, the concept of prima facie obviousness establishes the framework for the obviousness determination and the burdens the parties face. See Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1384 (Fed. Cir. 2015). Under this framework, the patent examiner must first set forth a prima facie case, supported by evidence, showing why the claims at issue would have been obvious in light of the prior art. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner's evidence. Id. The examiner then reaches the final determination on obviousness by weighing the evidence establishing the prima facie case with the rebuttal evidence. See Leo Pharm. Prods. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) ("[C]onsideration of the objective indicia is part of the whole obviousness analysis, not just an after-thought.") (emphasis omitted). If this weighing shows obviousness by a preponderance of the evidence, then the claims at issue were unpatentable. Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013).
As Fellowes concedes before us, the Board correctly found that prior-art shredders contained the claimed presence sensor, the claimed thickness sensor, and a controller to turn the motor on and off.
It is unclear from the Board opinion whether the Board would find that it would have been obvious to combine the prior-art presence and thickness sensors and the prior-art controller in a single shredder. Regardless, such a combination would have been obvious.

The CAFC panel then goes on to say that however the combination of elements would have been construed by an artisan for constructing the shredder, combining them was obvious.

See KSR Int'l Co., 550 U.S. at 416 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). See KSR Int'l Co., 550 U.S. at 419-20 ("One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.").

Posted by Patent Hawk at February 28, 2016 12:53 PM | Prior Art