On May 9, 2007, the Federal Circuit issued its first decision addressing obviousness after the Supreme Court’s recent KSR decision. KSR required courts to use a “flexible approach” when analyzing a patent’s validity based on obviousness. Citing KSR’s mandate to base an obviousness analysis on “the common sense of those skilled in the art,” the Federal Circuit affirmed the District of Delaware’s finding of obviousness in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 2007 WL 1345333 (Fed. Cir. May 9, 2007). The Federal Circuit upheld obviousness based on the combination of two prior art references, although the combination omitted one limitation of the patent claim at issue. The court found that adding the missing limitation would nevertheless be obvious to one of ordinary skill in the art.
The disputed claim of Leapfrog’s patent related to an interactive phonetic reading toy that allowed a user to touch a letter on a page and hear the associated phonetic sound of the letter. Sounds were produced electronically with switches, a reader, a processor, and memory.
Following a hung jury in the District of Delaware, the parties stipulated to submit the case to the court for a decision. After the trial court issued its decision, Leapfrog appealed and the Federal Circuit reviewed the district court’s obviousness determination de novo, and the underlying factual questions for clear error.
The Federal Circuit affirmed obviousness based on the combination of two prior art references and the knowledge of one of ordinary skill in the art.2 The first reference, Bevan, described a learning toy that produced a sound associated with a letter via an electro-mechanically operated phonograph. Id. at *4. The second reference, Texas Instrument’s Super Speak & Read (“SSR”), electronically produced sounds, but only of the first letter of a word, with the remainder of the sounds of the letters in the word grouped and played together. Id.
Although the Bevan reference disclosed an electro-mechanical device rather than a processor and electronics, the court noted that the device had “the same method of operation,” and “achieve[d] the goals . . . of associating letters with their sounds” as described in Leapfrog’s patent. Id. The SSR reference used electronic means to emit a sound associated with the first letter of a word, and thereby provided 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.” Id. The court concluded that “one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation.” Id. at *5.
The combination of the Bevan and SSR references lacked the reader component recited in the disputed claim. Nevertheless, the Federal Circuit agreed with the district court’s finding that “readers were well-known in the art at the time of the invention.” Id. The court reasoned that adding a reader was not “uniquely challenging or difficult for one of ordinary skill in the art” who would have added a reader to the Bevan/SSR combination to enjoy the same benefits by those who used readers in other children’s toys, such as simplified use and increased marketability. Id.
The Federal Circuit summarily rejected Leapfrog’s argument that the strength of secondary considerations outweighed a prima facie showing of obviousness. Acknowledging “substantial evidence of commercial success, praise, and long-felt need,” the Federal Circuit nevertheless deemed the evidence “inadequate” in light of “the strength of the prima facie obviousness showing.” Id.