In its first decisions to issue in the wake of the Supreme Court’s KSR Int’l Co. v. Teleflex Inc. decision, 127 S.Ct. 1727 (2007), the Federal Circuit has affirmed two district court decisions of obviousness.
In one opinion, the Federal Circuit affirmed a district court’s judgment that claim 25 of U.S. Patent 5,813,861 would have been obvious in light of two prior art references and the knowledge of one of ordinary skill in the art. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 2007 U.S. App. LEXIS 10912 (Fed. Cir. May 9, 2007)
Claim 25 of the Leapfrog ‘861 patent discloses a device that allows a child to select a letter in a word appearing in a book and then hear the corresponding phoneme of the letter. Leapfrog accused Fisher Price of infringement resulting from its “PowerTouch” toy. After affirming as to non-infringement, the court applied the recent KSR Supreme Court decision to the obviousness analysis. Citing KSR for the proposition that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” the court pointed to two references and the level of skill in the art in affirming obviousness.
The court relied on the Bevan patent, 3,748,748, which discloses using mechanical devices (phonographic needles and a record) to produce the sound of single letters in the word and a Super Speak and Read (“SSR”) device (Texas Instruments) that permits generation of the sound corresponding to the first letter of a word using only electronic means. Accordingly, the court agreed it would have been “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, such as decreased size, increased reliability, simplified operation, and reduced cost.”
Although the Bevan/SSR combination lacked one element of claim 25 (a reader), as the court noted that there was no evidence that adding a reader to the Bevan/SSR combination was “uniquely challenging or difficult” and thus did not represent “an unobvious step over the prior art.”
In the other opinion, issued days after KSR, the Federal Circuit upheld a jury verdict finding the claims of U.S. Patent No. 6,403,865 invalid for obviousness. Syngenta Seeds, Inc. v. Monsanto Co., 2007 U.S. App. LEXIS 10496 (Fed. Cir. May 3, 2007). The Syngenta ’865 patent claims are directed to corn plants genetically altered with a synthetic “Bt” gene to produce an insecticide. Syngenta’s version of the Bt gene, which is native to bacteria, is rich in nucleotides preferred by corn plants: guanine (“G”) and cytosine (“C”). The Federal Circuit found sufficient evidence to support the jury’s conclusion that a person of ordinary skill in the art would have found it obvious to try a modified corn gene having at a G+C content of at least 60 percent, based on a single prior art reference that taught methods for improving Bt expression and in light of the knowledge of skill in the art. The court also upheld the jury’s finding of a reasonable expectation of success, rejecting Syngenta’s argument that an “unexpected” degree of success resulted from the increase of G+C content to at least 60 percent.