A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.
Comaper Corp. v. Antec, Inc., Nos. 2009-1248, 1249 (Fed. Cir. Mar. 1, 2010).
Following a five-day trial, the jury returned a special verdict that defendant willfully infringed claims of a patent relating to a cooling device designed to mount within the drive bay of a computer, that certain independent claims were not invalid as obvious, but that certain dependent claims were obvious. The district court attempted to resolve these inconsistent verdicts by concluding that the defendant had failed to present sufficient evidence that the dependent claims were obvious.
The Federal Circuit vacated the judgment because of the inconsistent jury verdicts on obviousness and remanded the case for a new trial on invalidity. The jury’s special verdict on obviousness reflected an irreconcilable inconsistency, specifically that “A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.” When faced with inconsistent verdicts and evidence that would support either of the inconsistent verdicts, the proper procedure was for the district court to have ordered a new trial on invalidity.
On the merits, the district court erred in resolving the inconsistent verdicts by determining that the evidence was insufficient to support verdicts of obviousness, in particular by incorrectly concluding that the prior art asserted by the defendant was not analogous to the patented invention. In determining whether prior art is analogous, two criteria are relevant: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the endeavor is involved.” Here, the prior art was analogous to the invention of the patent because it related to the same field of endeavor.
The district court also erred in concluding that defendant failed to establish sufficient similarity between the prior art and the patent, taken as a whole. The district court appeared to apply the standard governing anticipation (i.e., that all of the claim elements of the patent must appear in a single piece of prior art) rather than the standard governing obviousness, which requires considering whether two or more pieces of prior art could be combined, or a single piece of prior art could be modified, to produce the claimed invention (typically invoking the teaching-suggestion-motivation, or “TSM,” test).
A copy of the opinion can be found here.