No. 2011-1009 (Fed. Cir. Jan. 22, 2013)
Removal of obviousness question from the jury was appropriate where the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art were not in material dispute, and the obviousness of the claim was apparent in light of those factors. Patent was obvious where modification from prior art was the addition of internet compatibility.
The patentee brought suit alleging infringement of three patents related to software for conducting electronic commerce. At the close of evidence, the trial court removed the question of obviousness from the jury for insufficient evidence. The jury found the accused infringer liable for infringement of two of the patents, and the court granted the patentee’s motion for JMOL on the third. The accused infringer appealed, and the Federal Circuit reversed in part and vacated in part.
The Court of Appeals found that while the trial court’s decision to remove obviousness from jury consideration was permissible, its determination that the patents at issue were not obvious was incorrect. Despite the fact that both sides had presented witnesses and evidence on the question of obviousness, the court upheld the removal of obviousness from jury consideration because the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art were not in material dispute, and the obviousness of the claim was apparent in light of those factors.
In considering the obviousness of the patents at issue, the court focused on the second Graham factor – the difference between the prior art and the claimed invention. The court compared a network-based system of electronic commerce, CompuServe Mall, with the Internet-based patents at issue. It rejected the distinction advanced by the patentee because that distinction was not embodied in the claims or reflected in the claim construction. Further, the court found that simply improving existing network-based methods by making them Internet capable was obvious. Ultimately, the patents were found obvious, the judgments of patent validity were reversed, and the court vacated the judgments of infringement.
A copy of the opinion can be found here.