Scientific Plastic Products, Inc. v. Biotage AB

Addressing the issue of analogous art in the context of inter partes reexamination, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) that in turn affirmed an examiner’s rejection of all claims to a low pressure liquid chromatography (LPLC) cartridge because it would have been obvious to modify prior art cartridge with the pressure-resistant threaded cap of carbonated beverage containers known in the art to address a concern with leakage in LPLC cartridge. Scientific Plastic Products, Inc. v. Biotage AB, Case No. 13-1219, -1220, -1221 (Fed. Cir., Sept. 10, 2014) (Newman, J.) (Moore, J., dissenting).

Scientific Plastic Products (SPP) sued Biotage for infringement of three of its patents relating to a low-cost resealable LPLC cartridge that provides a fluid tight seal under pressure. Biotage then requested inter partes reexamination (IPR) of the three patents. The primary issue on reexamination concerned obviousness of combining the prior art LPLC cartridge to replace detachable threaded seal of the cartridge with caps known in the art for sealing of carbonated beverage containers in substantially gas-tight and liquid-tight fashion. The examiner rejected all claims for obviousness.  SPP appealed to the PTAB.

On appeal, SPP challenged the examiner’s determination that the prior art disclosing beverage sealing systems were analogous art and that it would have been obvious to combine such disclosure with the prior art LPLC cartridge, arguing that “chemists in laboratories would not look to soda-pop bottle caps to solve problems with flash chromatography cartridges.” Notwithstanding, the PTAB affirmed the examiners rejections and cancelled all claims of the patent.

For a reference outside an inventor’s field of endeavor to be considered “analogous art,” it must be “reasonably pertinent” to the particular problem with which the inventor is involved, such that a person of ordinary skill would reasonably have sought a solution to the problem in that outside field.” The Board concluded that it was reasonable for the patent examiner to find that one of ordinary skill in the art would have found the prior art references on sealed beverage containers relevant in forming a plastic container having a fluid tight seal at elevated pressure, while maintaining access to the container for varying its contents, because it was one of the stated purposes of the SSP inventors. The Board found motivation to combine the references in the need to improve the sealing arrangement of LPLC cartridges by solving the known problem of leakage under pressure identified in the patents.  SPP appealed again, this tie to the Federal Circuit.

The Federal Circuit found that the prior art references disclosing beverage containers with resealable caps address the problem of providing a fluid tight seal at elevated pressures, which was sufficiently close to the problem addressed by the claimed invention to be analogous art. The Court emphasized that the issue was not whether the prior art cartridge leaked, but whether there was a concern with leakage in LPLC cartridges, such that a person of ordinary skill would have provided a known pressure resistant cap associated with beverages to the cartridge.

In dissent, Judge Moore would have reversed the Board for relying on the inventors’ disclosure of the problem solved by their invention as the primary basis for modifying the prior art and for failing to determine the level of ordinary skill in the art when the analogous art question was unclear. The dissent asserted that the majority was relying on hindsight reconstruction and speculation about a “potential” problem where there was no testimony or other evidence of a known leakage problem in prior art cartridges.