Obviousness combinations require “flexible approach” and consideration of evidence of nonobviousness

ClassCo, Inc. v. Apple, Inc., No. 2015-1853 (Fed. Cir. Sep. 22, 2016)

The patentee appealed the decision of the Patent Trial and Appeal Board (PTAB) following an inter partes reexamination. The PTAB affirmed the examiner’s rejection of several claims of the patent regarding caller identification as unpatentable under 35 U.S.C. § 103(a). On appeal, the patentee argued that the PTAB erred in affirming the examiner’s rejection of the claims as obvious in light of the prior art, and also erred in finding that none of the patentee’s evidence of nonobviousness merited any weight. The Federal Circuit affirmed. 

Reviewing the questions of law de novo and the factual findings for substantial evidence, the Federal Circuit affirmed the PTAB’s ultimate finding of obviousness. The Federal Circuit held there was substantial evidence to support the PTAB’s finding that one of ordinary skills in the art would be motivated to modify and combine the two relied upon prior art references. The patentee argued that under the Supreme Court’s ruling in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), obviousness combinations were limited to those combinations that united old elements with no change in their respective functions. The Federal Circuit disagreed, and noted that “KSR does not require that a combination only unite old elements without changing their respective functions. Instead, KSR teaches that a person of ordinary skill is also a person of ordinary creativity, not an automaton.” The Federal Circuit added: “KSR instructs that the obviousness inquiry requires a flexible approach.” 

However, the Federal Circuit disagreed with the PTAB’s finding that none of the evidence of nonobviousness had been presented was entitled to any weight. The Federal Circuit emphasized its former holdings regarding evidence of nonobviousness, noting that “[f]or objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”  The Federal Circuit found that the PTAB should have given some weight to the patentee’s evidence of praise and limited commercial success. The PTAB had initially rejected evidence of praise and commercial success as having no nexus to the claimed invention, but the Federal Circuit held that the evidence focused on features that were not available in the prior art, and were commensurate with the scope of the claimed invention. Although due some weight by the PTAB, the Federal Circuit found that the evidence of nonobviousness did not outweigh the substantial evidence regarding the prior art and affirmed the PTAB’s conclusion that submitted claims were unpatentable under § 103.