Federal Circuit No. 2015–1155
In Circuit Check, the Federal Circuit held that, for obviousness, the prior art reference must be analogous art to the claimed invention, even when the concepts are so simple that any layperson would have understood it. Circuit Check owns patent nos. US 7,592,796, US 7,695,766 and US 7,749,566 that are directed to interface plates having a plurality of holes for permitting connection between a circuit board tester and a circuit board. Circuit Check sued QXQ, Inc., alleging that QXQ’s interface plates infringed its patents.
According to a representative claim, the indicator interface plate has “a region of the plate said plurality of holes have a first predetermined indicia [i.e., paint] covering the surface surrounding said plurality of holes” and “a second removable indicia [i.e., removed paint] overlying said first predetermined indicia.”
During a jury trial, QXQ argued that disputed prior art including rock carvings, engraved signage and a machining technique known as Prussian Blue, disclosed limitations that were not in the prior art that the parties had stipulated to. After considering the arguments, the jury found that the claims were not obvious. However, the district court overruled the jury verdict.
Specifically, the district court reasoned that “obviousness argument is not premised on citing specific examples of prior art in the applicable field, nor does it rely on nuanced discussion about the level of ordinary skill in that particular field.” With regard to the particular elements in the representative claim, the district court concluded that “any layman” would have understood that interface plates could be marked using the techniques described in the disputed prior art. Further, the district court analogized that “any vandal who has ‘keyed’ a car knows that stripping the paint with a key will result in the underlying metal color showing through.”
The Federal Circuit disagreed with the district court’s analysis and emphasized that the inquiry to determine if a reference is analogous art should be “whether an inventor would look to this particular art to solve the particular problem at hand.” Moreover, the inquiry should consider whether the prior art is “reasonably pertinent to the particular problem solved by the inventor” and “logically would have commended itself to an inventor’s attention in considering his problem.” Furthermore, the Federal Circuit warned that “[a]ll systems and methods within the common knowledge cannot be transformed into analogous prior art simply by stating that anyone would have known of such a system or method.”
In addition, the Federal Circuit found that substantial evidence of secondary considerations support non-obviousness. For instance, Circuit Check presented evidence of copying (QXQ developed similar plates), long-felt need (multiple prior art methods tried), commercial success (prior marking techniques abandoned), skepticism (increased paint use would lead to flaking) and unexpected results (desirable plates with increased paint).
In view of the above, the Federal Circuit reversed the district court’s grant of judgment as a matter of law and remanded case for further proceedings.