In Circuit Check Inc. v. QXQ Inc., Appeal No. 2015-1155, the Federal Circuit held that simple techniques within the common knowledge of any layperson are not necessarily analogous art for purposes of obviousness if an inventor would not have looked to these techniques to solve the particular problem at hand.
This appeal arises from a district court’s decision overturning a jury’s unanimous verdict that all asserted patent claims were nonobvious. Circuit Check sued QXQ, alleging QXQ’s products infringed its patents. QXQ argued the patents were invalid for obviousness. QXQ conceded that the stipulated prior art did not disclose one of the claim limitations. But at trial, QXQ argued that other references—on old technologies very different from Circuit Check’s claimed technology—disclosed the missing limitation. Circuit Check argued the disputed art was not analogous. The jury found the asserted claims not invalid for obviousness. After the jury verdict, QXQ filed a motion for JMOL of invalidity for obviousness. The district court granted QXQ’s motion, finding that, although the disputed art was not “technically pertinent” and “had not been used” in the area of Circuit Check’s technology, “any layman” would have understood how to use the techniques in the disputed art.
The Federal Circuit reversed the district court’s JMOL. In reviewing a jury’s obviousness verdict, the Federal Circuit first presumes that the jury resolved the underlying factual disputes in favor of the verdict winner and leaves those presumed findings undisturbed if they are supported by substantial evidence. Then, the Federal Circuit examines the legal conclusion de novo to determine whether it is correct in light of the presumed jury fact findings. The Federal Circuit observed that, by finding the claims nonobvious, the jury presumably found the disputed art was not analogous. The Federal Circuit determined substantial evidence supported the jury’s presumed finding. Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor was trying to solve. In light of the jury instructions, the disputed art was not part of the field of the invention. Therefore, the disputed art could be analogous only if it was reasonably pertinent, that is, if it “logically would have commended itself to an inventor’s attention in considering his problem.” The jury heard testimony that a person of ordinary skill in the art would not have thought about the technologies in the disputed art in considering how to solve the problem in Circuit Check’s patent. The Federal Circuit determined the jury was entitled to weigh this testimony and find the disputed art not analogous. The Federal Circuit remarked: “An alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method. The question is not whether simple concepts . . . are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.”