Finding waiver of a post-KSR challenge to jury instructions, the U.S. Court of Appeals for the Federal Circuit upheld a finding of non-obviousness and affirmed a judgment of infringement. Rentrop v. Spectranetics Corp., Case No. 07-1560 (Fed. Cir. Dec. 18, 2008). (Walker, District Judge., sitting by designation. 

A jury found that Spectranetics’ cardiac catheters infringed the patent-in-suit and that the relevant claim was not invalid for obviousness. The Supreme Court’s landmark opinion in KSR issued after the jury verdict but before the lower court’s resolution of post-trial motions. On appeal to the Federal Circuit, Spectranetics argued for the first time that the jury instructions on obviousness conflicted with KSR. As the Federal Circuit explained, Spectranetics was barred from attacking the jury finding of non-obviousness directly on appeal because Spectranetics did not move for judgment as a matter of law on obviousness below. Spectranetics instead argued to the Federal Circuit that obviousness was so evident that the jury could only have found non-obviousness because of error in the jury instructions. 

Rentrop contended that Spectranetics waived its challenge to the jury instructions. The Federal Circuit agreed. The Federal Circuit reasoned that in this case, unlike other cases cited by Spectranetics, the trial court had not yet entered judgment at the time KSR was decided. Because Spectranetics failed to bring KSR to the attention of the trial court, the trial court was deprived of the opportunity to consider the decision. The Federal Circuit held that “when there is a relevant change in the law before entry of final judgment, a party generally must notify the district court; if the party fails to do so, it waives arguments on appeal that are based on the change in the law.” 

The Federal Circuit further explained that the challenged jury instructions were consistent with KSR, in any event. The jury instructions stated that there “must have been a motivation or a suggestion to combine.” While recognizing that KSR rejected the rigid use of a “teaching, suggestion and motivation” test, the Federal Circuit concluded that, here, any possible error was negated by the further definition of “motivation” “in unrigid terms”: “The motivation may arise from common knowledge, or common sense of the person of ordinary skill in the art, without any specific hint or suggestion in a particular reference.” The disputed instructions further stated that the test for obviousness is not whether it would be obvious to try to solve the problem that the invention solves. The Federal Circuit observed that the challenged instruction did not conflict with KSR, which recognizes that obviousness may be shown if a specific combination of elements was obvious to try, but that the test is a flexible one.