Digest of Scientific Plastic Products, Inc. V. Biotage AB, Nos. 2013-1219, -1220, -1221 (Fed. Cir. September 10, 2014) (precedential). On appeal from the Patent Trial and Appeal Board in Reexamination Nos. 95/000,495; 95/000,496; and 95/000,497. Before Newman, Moore, and Wallach.

Procedural Posture: Scientific Plastic Products, Inc. (“SPP”) is the owner of three patents relating to low pressure liquid chromatography (LPLC). SPP filed suit against Biotage AG for infringement and Biotage requested inter partes reexamination of the three patents. The Examiner rejected all claims of the three patents on the ground of obviousness and the PTAB affirmed the rejections. The CAFC affirmed.

  • Obviousness: The primary issue on reexamination concerned the obviousness of combining a LPLC cartridge described in one reference with either of two other references teaching pressure-resistant caps. Although the two pressure-resistant cap references concerned “soda-pop” bottle caps, the CAFC stated that these references addressed a problem that was sufficiently close to the LPLC cartridge problem addressed by the claimed invention, therefore qualifying the references as analogous prior art. The CAFC further stated that because the LPLC reference had a known leakage problem with its disclosed cartridge, it would have been obvious to a person of ordinary skill in the art to combine either of the pressure-resistant cap references to the cartridge, resulting in the claimed invention.

Moore, dissenting: 

  • Obviousness: The majority relied on inappropriate hindsight. The LPLC cartridge reference did not actually have the leakage problem that is relied upon by the majority, and thus one of ordinary skill in the art would not modify the reference to solve the nonexistent problem. Additionally, the PTAB should have, but did not, resolve the level of ordinary skill although it was hotly contested and would affect the scope of the analogous art.