In Wyers v. Master Lock, the Federal Circuit reversed the lower court’s denial of a motion for judgment as a matter of law as to invalidity, applying a “common sense” approach to draw a legal conclusion of obviousness.
The two patents at issue were directed to a barbell-shaped hitch pin lock to secure trailers to cars or other motor vehicles. The disputed claims of these patents provided for a removable sleeve that could be attached to the center shank of the lock to increase its diameter or thickness (the “sleeve” patents, U.S. Patent Nos. 6,672,115 and 7,165,426), and an external seal to protect the lock head from the elements (the “seal” patent, U.S. Patent No. 7,225,649). The obviousness of these two limitations was the sole question before the jury as to the patents’ validity, as all other elements were admittedly known in the art. The jury returned a general verdict of validity. Master Lock filed a motion for judgment as a matter of law, and upon its denial, appealed to the Federal Circuit as to the invalidity of Wyers’ patents on grounds of obviousness.
In reversing the lower court’s ruling, the Federal Circuit closely followed the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The court considered the only disputed factual issues to be whether the prior art references were in the same field of endeavor as the patented invention, whether there was sufficient motivation to combine the references, and the existence and significance of pertinent secondary considerations. The court determined that none of these considerations favored Wyers.
The Federal Circuit applied the In re Clay factors for whether prior art is analogous, looking to “(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 inventor is involved.” Slip op. at 11. Regarding the sleeve patents, the court found the prior art to be directed to a trailer towing application adaptable to motor vehicles, and thus clearly in the same field of endeavor. Regarding the seal patent, although the jury instructions pronounced the prior art to be in the field of “locksmithing,” and thus impliedly outside the scope of relevant art, the Federal Circuit nonetheless found the prior art, directed to padlocks, to be reasonably pertinent to the problem the inventor was trying to solve, and therefore analogous prior art.
The court particularly focused on the question of common sense in determining if there was a motivation to combine prior art. Citing KSR v. Teleflex, the court found that a legal determination of obviousness may look to logic, judgment, and common sense in lieu of expert testimony, and instructed applicable courts to take an expansive and flexible approach in applying this standard. Slip op. at 13- 15. The court noted that expert testimony as to motivation to combine may be unnecessary, especially where the technology is “easily understandable,” adding that even if present, expert testimony would not necessarily create a genuine issue of material fact. Id at 15-16. With regard to the patents at issue, the court quickly concluded that industry standards and a common sense approach to address known problems in the art provided motivation to combine, and that a skilled artisan would have perceived a reasonable expectation of success in combining the known elements. Id at 19-20.
The court further held that secondary considerations of nonobviousness cannot overcome a strong prima facie case of obviousness. Here, the court appears to interpret a strong showing of obviousness under KSR’s standard to be that the inventions represent no more than “the predictable use of prior art elements according to their established functions.” Slip op. at 29.
The Federal Circuit did not give weight to Wyers’ arguments that by filing a patent application for a similar invention, defendant Master Lock had “admitted” to the nonobviousness of similar claims in the Wyers patents. In response, the court said that Master Lock’s patent application should be treated as a third party patent application, and that estoppel did not apply. “Obviousness protects the public at large, not a particular infringer, and one is not estopped from asserting the invalidity of a patent by the fact that one has previously made an attempt to procure a patent for substantially the same invention.” Slip op. at 21.
In view of this decision, practitioners should be aware of the court’s willingness to broadly apply KSR’s “common sense” approach. Under Wyers, common sense alone, even in the absence of expert testimony, may be used to support a legal conclusion of obviousness, especially where the technology at issue is easily understandable.