Federal Circuit No. 2015-1478

Federal Circuit upholds PTAB finding of obviousness; evidence of commercial success found insufficient

The Federal Circuit affirmed claim rejections even in view of Appellant's arguments that claim limitations were misinterpreted and that commercial reasons would have prevented the combination of references relied on by the rejection.

The claims of Hagenbuch's U.S. Patent No. 8,014,917 and its continuation US Patent No. 8,532,867 were found unpatentable during inter partes review as being obvious of JP H03-085412 (Apr. 10, 1991; "Aoyanagi") and one or more of WO 90/03899 (Apr. 19, 1990; "Vollmer") and US 4,939,652 ("Steiner).

The Appellant argued that, in contrast to the rejection, Aoyanagi does not reasonably suggest the claimed "detecting a collision of the vehicle in response to a sudden change in the velocity of the vehicle" because Aoyanagi merely suggests detecting a collision when a vehicle brake is activated, in contrast to many different conditions described by Appellant's specifications which discuss detection of all crashes based on any sudden changes in velocity.  As such, the Appellant believed that the claims were too narrowly interpreted during the rejection, but the Federal Circuit noted that the claims did not require the Appellant's alleged distinction, and as such, the Federal Circuit affirmed the rejections.

The Appellant also argued that Aoyanagi was not concerned with recording all types of information which was suggested by the secondary reference Steiner, and therefore, it would not have been obvious to combine these references at  least because of unnecessarily increasing the cost and risk of failure of Aoyanagi's disclosure; however, the Federal Circuit noted that the combination would have been obvious because there would have been a reasonable expectation of success to combine these references.

Further, Appellant also argued that the successful sales of the Petitioner’s commercial product alleged to embody the patented technology demonstrated the claims at issue would not have been obvious, but the Federal Circuit responded by noting that the Appellant did not provide a connection between the claimed elements and the presented successful sales information, and therefore, the Federal Circuit affirmed the rejections.