Summary: CAFC rules on obviousness.

Case: In re Naren Chaganti, No. 2013-1372 (Fed. Cir. Jan. 27, 2014) (non-precedential). On appeal from PTAB in Serial No. 09/634,725. Before Moore, Schall, and Reyna (per curiam).

Procedural Posture: Applicant appealed the Board’s decision affirming the rejection of all pending claims as obvious. CAFC affirmed.

  • Obviousness: The Federal Circuit affirmed the Board’s decision that the combination of prior-art references rendered the disputed claims obvious, which were directed to providing limited access to copyrighted content through the Internet pursuant to a license. In finding the claims obvious, the CAFC held that the prior art reference that disclosed an internet distribution system need not disclose every limitation of the claimed invention (e.g., distribution of copyrighted material) to fall within the same field of endeavor as the claimed invention. Further, although the prior art reference described an element such as lock servers as having “undesirable” features, the reference did not teach away from that element if it also listed various features to avoid those deficiencies. Moreover, the CAFC upheld the Board’s decision that there would have been a reason to combine the prior art references because common sense would have allowed a person of ordinary skill to combine the teachings of the prior art to distribute copyrighted images under the appropriate licenses. The CAFC did caution the Board that such common sense type reasoning must be clearly articulated. However, the absence of a factual finding of the level of ordinary skill in the art by the Board did not give rise to reversible error when the prior art reflected an appropriate level and a need for testimony is not shown.