I fondly recall the day we splurged to upgrade our “starter” shredder to a Fellowes P560C-2 cross-cut model. While Starter jammed with more than a page or two and gagged on a single staple, the P560C-2 gulps pages at a time and devours staples without indigestion. And although it will overheat during an end-of-year purge, the Fellowes shredder has served me well. That explains my disappointment in seeing the Federal Circuit quash a Board finding of non-obviousness in ACCO Brands Corp. v. Fellowes, Inc. (decided February 22, 2016).

Fellowes owns U.S. Pat. No. 7,963,468, which claims a shredder that prevents paper jams using a combination of two sensors. A “presence sensor” detects whether there is paper present in the feeder, while a “thickness detector” evaluates whether there are too many sheets of paper to shred. If the thickness detector finds that the number of sheets is acceptable, the sheets are moved into a position such that the presence sensor will activate the cutting mechanism. On the other hand, if the thickness detector reads that there are too many sheets to shred, the sheets are moved into a different position such that the presence sensor will not allow the cutting mechanism to activate. The configuration prevents paper jams by not allowing too many sheets to enter an activated cutting mechanism.

Upon issuance of the ‘468 patent, Fellowes sued ACCO Brands for infringement. At ACCO Brands’ request, the USPTO instituted an inter partes reexamination of the ‘468 patent, and the district court stayed the lawsuit pending the outcome of the reexamination proceeding. After the examiner rejected the claims for obviousness, Fellowes appealed. The Board reversed, finding that the examiner had not made the required prima facie showing. However, the Federal Circuit disagreed, and remanded the case back to the Board.

The re-examination examiner had relied on multiple prior art references that taught the use of a presence sensor, a thickness sensor, and a controller for turning a motor on or off. Jap. Pat. No. 57-70445 (“JP ‘445”) described a shredder having a thickness sensor for cutting power to the motor prior to beginning shredding, but the reference did not disclose a presence sensor or any other means for starting the motor. Presence sensors were, however, well known. The Board focused on the claim requirement that the controller be configured to start the motor only when the presence sensor detects paper and the thickness detector senses an allowable thickness. It concluded that the claimed configuration was unobvious from the cited art.

The Federal Circuit KSR’d the Board decision, concluding that substantial evidence did not support it. A unanimous panel ruled that an ordinary artisan would have modified JP ‘445 by adding a presence sensor and controller because it would be clear that “the user must have some way to turn the shredder motor on in the first place” and presence sensors/controllers were already well known for this purpose. The court also reasoned that it would have been obvious from JP ‘445 to include a thickness detector in any shredder equipped with a presence sensor to avoid paper jams.

Further, the court explained that the thickness detector could only be located above or below the presence sensor, and that either design choice was an obvious combination of prior-art elements in the post-KSR v. Teleflex world. Although the Fellowes design favored positioning the thickness sensor above the presence sensor, either configuration would have been obvious to the skilled person. According to the court, “even if one possible obvious combination falls outside of the claims, it fails to undercut the fact that the other possible obvious combination lies within their scope.” The court dumped the confetti back into the Board’s lap for further consideration of any rebuttal evidence from Fellowes.

This was likely an easy call for the Federal Circuit. The outcome underscores the challenges that inventors in the “predictable” electromechanical arts face in establishing non-obviousness after KSR when all of the claimed elements can be found somewhere in the prior art. Absent the availability of unexpected results from the claimed shredder, Fellowes may need to rely on evidence of other “secondary considerations,” such as long-felt unmet need or commercial success. I wish them all the best on remand. I’m also reminded that my shredder lacks a thickness detector; when mine jams, I reverse the motor to clear it. Is it time to upgrade? Or is it simply up to me to remember the difference between a sensible, easily swallowed “two or three” sheets and a throat-choking “six or seven”?