Judges: Mayer, Lourie (author), Dyk [Appealed from D. Del., Judge Sleet] In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 06-1402 (Fed. Cir. May 9, 2007), the Federal Circuit affirmed the district court’s judgment of noninfringement and invalidity of claim 25 of U.S. Patent No. 5,813,861 (“the ’861 patent”).

Leapfrog Enterprises, Inc. (“Leapfrog”) filed suit against Fisher-Price, Inc. and Mattel, Inc. (collectively “Fisher-Price”), alleging that Fisher-Price’s PowerTouch learning device infringed claim 25 of its ’861 patent. Claim 25 of the ’861 patent is directed to an interactive learning device including, inter alia, at least one depiction of a sequence of letters, wherein selection of a depicted letter causes the sound production device to generate a signal corresponding to the sound associated with the selected letter. The district court construed “selection of a depicted letter” to mean “choosing a particular depicted letter from the depicted sequence of letters by contacting or coming into proximity to that particular depicted letter.”

After trial, the jury was unable to reach a verdict, and the parties stipulated that the case would be submitted to the district court for decision. The district court found that the accused PowerTouch device permitted only the selection of a word rather than a particular letter and, thus, held that the PowerTouch device did not infringe claim 25.

The district court also held claim 25 invalid as obvious in view of the combination of U.S. Patent No. 3,748,748 to Bevan (“the Bevan patent”), the Texas Instruments Super Speak & Read device (“the SSR device”), and the knowledge of one of ordinary skill in the art. On appeal, neither party challenged the district court’s claim construction. Rather, Leapfrog argued that the district court’s finding of noninfringement was clearly erroneous because during operation of the PowerTouch device, for at least some words, a particular letter can be selected for a word, and it does not matter that the response is the same regardless of the particular letter selected. Fisher-Price countered by arguing that the limitation is only meaningful if the selection of a particular letter of a word results in a different outcome. Agreeing with Fisher-Price, the Federal Circuit held that the district court’s finding was not clearly erroneous, explaining that a selection involves a choice and, further, that the ordinary meaning of choice requires that alternatives from which a choice is made will result in different outcomes. In the Federal Circuit’s first review of the question of obviousness since the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), the Federal Circuit affirmed the district court’s finding of obviousness. Leapfrog argued that (1) the district court’s obviousness finding relied on improper hindsight reasoning because the Bevan patent device has a different (i.e., mechanical) function than the electronic components of the ’861 patent, (2) there was no motivation to combine the Bevan patent with the SSR device to arrive at the claimed invention, and (3) the district court failed to properly consider Leapfrog’s substantial evidence of secondary considerations in support of nonobviousness.

The Federal Circuit, relying on the guidance of KSR, affirmed the district court’s finding of obviousness.

The Court began its analysis by stating that the goal of the ’861 patent is to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word. The Court then explained that adapting a prior art mechanical device that accomplishes that goal to modern electronics would have been “reasonably obvious” to one having ordinary skill in the art in designing children’s learning devices and, further, that applying modern electronics to older mechanical devices has been commonplace in recent years.

Looking first to the Bevan patent, the Federal Circuit found that the Bevan patent discloses an electromechanical learning toy, one embodiment of which includes a puzzle piece that is imprinted with a letter from a word. When the letter is pressed, the Bevan patent device produces the sound of the letter by causing a particular portion of a phonograph record to play via a speaker.

The Court concluded that the Bevan patent teaches an apparatus that achieves the same goal as that of the ’861 patent, associating letters with their sounds and encouraging children to sound out words phonetically through a similar type of interaction.

Looking to the SSR device, the Federal Circuit found that the SSR device is a modern learning toy constructed with electronic components, including a processor, memory, and a speaker. Noting that in one mode of operation, a child presses a first letter of a word and hears the sound of the first letter followed by the sound of the entire word, the Court found that the SSR device provides a “roadmap” for one of ordinary skill in the art desiring to produce an electronics-based learning toy for children that allows the use of phonetic-based learning methods, including the association of individual letters with their phonemes. Thereafter, the Court concluded that it would have been obvious to combine the Bevan patent device with the SSR device to update it using the modern electronic components in order to gain the commonly understood benefits of the adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. Further, the combination is the adaptation of an old idea or invention (as shown by the Bevan patent) using newer technology that is commonly understood in the art (as shown by the SSR device).

Finding that the combination of the Bevan patent and the SSR device still failed to teach a reader as claimed in the ’861 patent, the Federal Circuit nevertheless concluded that there was sufficient evidence to support the district court’s finding that such readers were well known in the art at the time of the invention. The Court further concluded that it would have been obvious to add a reader to the children’s toy to provide an added benefit and simplified use of the toy for the child in order to increase its marketability. The Court thereafter cited Leapfrog’s failure to provide any evidence that provision of a reader was uniquely challenging or difficult for one of ordinary skill in the art, or that inclusion of a device commonly used in the field of electronics and electronic children’s toys (i.e., the reader) represented an unobvious step over the prior art.

Additionally, the Federal Circuit found no basis to disagree with the district court’s finding that the strength of the prima facie case of obviousness was sufficient to overcome the evidence of secondary considerations.