In Circuit Check Inc. v. QZQ Inc., [2015-1155] (July 28, 2015), the Federal Circuit revered the district court grant of JMOL, restoring the jury verdict that three patents on systems and methods for marking interface plates used in the testing of circuit boards were not invalid for obviousness.
The Federal Circuit reasoned that by finding the claims nonobvious, the jury presumably found that the disputed prior art is not analogous and therefore not within the scope of the prior art, and concluded that substantial evidence supports the jury’s presumed finding. The Federal Circuit explained whether a reference is analogous art depends upon whether it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.
The Federal Circuit agreed that the asserted prior art — rock carvings, engraved signage, and Prussian Blue — was is not part of the field of circuit board testers and test figures, which meant that the art was only prior art if it was reasonably pertinent to the particular problem solved by the inventor. The Federal Circuit said that although familiar items may have obvious uses beyond their primary purposes, a reference is only reasonably pertinent when it “logically would have commended itself to an inventor’s attention in considering his problem.”
The jury heard testimony that a person of ordinary skill in the art would not have thought about rock carvings, engraved signage, or Prussian Blue in considering how to mark interface plates, and was entitled to weigh this testimony, find that an ordinarily skilled artisan would not find that the disputed prior art “logically would have commended itself to an inventor’s attention,” and thus find the disputed prior art not analogous.
The Federal Circuit said that:
[a]n alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method. The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.
Even if the prior art were analogous, the Federal Circuit went on to find that a reasonable jury could have concluded that QXQ did not prove by clear and convincing evidence that the differences between the prior art and the claimed invention were insignificant.
The Federal Circuit concluded that the jury’s presumed findings regarding the scope and content of the prior art, differences between the claimed invention and the stipulated prior art, and objective considerations of nonobviousness were supported by substantial evidence, and from these a reasonable jury could have concluded that the subject matter as a whole would not have been obvious at the time of the invention. Thus, the district court erred by granting judgment as a matter of law.