Looking Back at Hindsight

Obviousness may not be established using hindsight or in view of the teachings or suggestions of the inventor. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 U.S.P.Q.2d 1237, 1239 (Fed. Cir. 1995), citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984).

Hindsight is inherent in the patent examination process. Examiner’s look at what the inventor claims, and with this information look for prior art to determine whether or not the claimed invention is obvious, flirting with “tempting but forbidden zone of hindsight.” See, Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 873, 228 USPQ 90, 98 (Fed.Cir.1985). The problem of hindsight is exacerbated by modern search technology which allows Examiner to quickly and easily find each and every element of the claimed invention, and all that the is needed is to stitch the individual elements together. Patent law has developed several tools to combat hindsight. First, 35 USC 103 requires obviousness of the invention “as a whole,” so merely finding the elements individually in the prior art does not mean that the invention was obvious. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 U.S.P.Q.2d 1686 (Fed. Cir. 2004). Second, there is the requirement that there be some reason to modify or combine the prior art. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 U.S.P.Q.2d 1686 (Fed. Cir. 2004). Without some reason the modification/combination is not obvious, and neither is the invention. Finally, there are objective indicia of non-obvious, often called “secondary considerations,” that guard against the hindsight reconstruction of the invention. See, In re Sernaker, 702 F.2d 989, 996, 217 USPQ 1, 7 (Fed.Cir.1983).

When confronted with a hindsight reconstruction, there are a number of colorful descriptions of hindsight that can help frame the argument:

Using the Claims as a Frame, and the Prior Art as a Mosaic. In W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), the Federal Circuit reversed the district court’s finding of obviousness, noting that “[t]he result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention.”  721 F.2d at  1551, 220 USPQ at 311.

Using What the Inventor Taught Against its Teacher. Also in W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), in reversing the district court’s finding of obviousness, the Federal Circuit explained the problem of hindsight: “To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.” 721 F.2d at  1553, 220 USPQ at 312-13.

Throwing Metaphorical Darts at a Metaphorical Dartboard. In re Kubin, 561 F.3d 1351, 90 U.S.P.Q.2d 1417 (Fed. Cir. 2009), in affirming a finding of obviousness, the Federal Circuit cautioned that in the situation where a challenger, “merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.” See, also, Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 107 U.S.P.Q.2d 1943 (Fed. Cir. 2013); In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.(Eurand, Inc. v. Mylan Pharm., Inc.), 676 F.3d 1063, 102 U.S.P.Q.2d 1760 (Fed. Cir. 2012).

Collapsing the Obviousness Analysis into a Hindsight-Guided Combination. In Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 107 U.S.P.Q.2d 1943 (Fed. Cir. 2013), the Federal Circuit reversed the obviousness determination in a reexamination, finding that “the Board erred by collapsing the obviousness analysis into a hindsight-guided combination of elements.”

A Hindsight Combination of Components Selectively Culled from the Prior Art to fit the Parameters of the Invention. In ATD Corp. v. Lydall, Inc., 159 F.3d 534 , 546 (Fed. Cir. 1998), the Federal Circuit reversed a judgment of invalidity, stating “Determination of obviousness can not be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention. There must be a teaching or suggestion within the prior art, or within the general knowledge of a person of ordinary skill in the field of the invention, to look to particular sources of information, to select particular elements, and to combine them in the way they were combined by the inventor.”

Using the Inventor’s Disclosure as a Blueprint. In Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 227 U.S.P.Q. 543 (Fed. Cir.1985), the Federal Circuit vacated the district court’s summary judgment of invalidity, noting that the court reconstructed the invention, using the blueprint of the inventor’s claims, and saying [t]he invention must be viewed not with the blueprint drawn by the inventor, but in the state of the art that existed at the time.” See, also, In re Dembiczak, 175 F.3d 994, 50 U.S.P.Q.2d 1614 (Fed. Cir. 1999); Ecolochem, Inc. v. So. Cal. Edison Co., 227 F.3d 1361, 1371-72 (Fed.Cir.2000);

A Poster Child for Impermissible Hindsight Reasoning. In Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 102 U.S.P.Q.2d 1729 (Fed. Cir.2012), in affirming the district court’s determination that the claims were not invalid, the Federal Circuit noted that the district court’s careful analysis exposed the Defendants’ obviousness case for what it was — “a poster child for impermissible hindsight reasoning.”

Simple Things are the Best (and They can be Patentable Too)

Simplicity is not inimical to patentability. In re Oetiker, 977 F.2d 1443, 24 U.S.P.Q.2d 1443, citing Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 594, 88 L.Ed. 721 (1944) (simplicity of itself does not negate invention); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1572, 1 USPQ2d 1593, 1600 (Fed.Cir.) (the patent system is not foreclosed to those who make simple inventions), cert. denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987). Roberts v. Sears, Roebuck, Co., 723 F.2d 1324, 1334, 221 U.S.P.Q. 504 (7th Cir. 1983)(“[I]ntuitive analysis distorted by the invention’s simplicity and retrospective self-evidence must be avoided. Simplicity is not to be equated with obviousness.”); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 218 U.S.P.Q. 673 (Fed.Cir. 1983)(“That is not to say that simplicity of the invention, or its ready understandability by a judge, constitute evidence of obviousness.”) 

In DatCard Sys., Inc. v. PacsGear, Inc., No. 8:10-cv-01288-MRP, 2013 BL 440221 (C.D.Cal. Mar. 12, 2013), the district court said:

To be sure, the Court’s characterization of the patents-in-suit as “simple” is hardly a clue regarding its opinion regarding their validity under, for example, Section 103 . Patent law lacks a doctrine of simplicity. To be sure, as a matter of logic, technically simple patents are perhaps more vulnerable to obviousness-based invalidity than technically complex patents. But they are not obvious because they are technically simple.

(emphasis added)

But, see, Skee-Trainer, Inc. v. Garelick Mfg. Co., 361 F.2d 895, 150 U.S.P.Q. 7 (8th Cir. 1966)(“[A]lthough the simplicity of a mechanical innovation will not automatically render it unpatentable, simplicity is itself strong evidence that ‘invention’ is lacking.”)

Making (Common) Sense of Non-Obviousness

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 , 416 , 127 S. Ct. 1727 , 167 L. Ed. 2d 705 (2007), the Supreme Court cemented the role of common sense in the obviousness inquiry, noting that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” The Supreme Court instructed that “[c]ommon sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Thus the Supreme Court said that:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

550 U.S. at 421; 127 S.Ct. at 1742; 167 L.Ed.2d at 723-4.

After KSR, the Federal Circuit has affirmed the application of common sense in a number of cases. In B/E Aerospace, Inc. v. C&D Zodiac, Inc, 962 F.3d 1373, 1379-80, 2020 U.S.P.Q.2d 10706 (Fed.Cir. 2020), the Federal Circuit affirmed the PTAB’s determination of obviousness of U.S. Patent Nos. 9,073 ,641 and 9,440,742 relating to space-saving technologies for aircraft enclosures such as lavatory enclosures, agreeing with the PTAB that it would have been a matter common sense to modify the prior art. In Perfect Web Techs., Inc. v. Infousa, Inc., 587 F.3d 1324, 92 U.S.P.Q.2d 1849, (Fed. Cir. 2009), the Federal Circuit affirmed summary judgment of invalidity of U.S. Patent No. 6,631,400 directed to managing bulk e-mail distribution to groups of targeted consumers, affirming the district court application of common sense and noting that common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning. In Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 2020 U.S.P.Q.2d 32509 (Fed.Cir. 2020), the Federal Circuit affirmed a PTAB decision that relied on common sense to supply a missing claim element, where corroborated expert testimony established that that element was not only in the prior art, but also within the general knowledge of a skilled artisan.

Of course, what is important to prosecutors is combatting the misapplication of common sense in the obviousness inquiry. That is what happened in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 119 U.S.P.Q.2d 1822 (Fed. Cir. 2016) where the Federal Circuit reversed the PTAB determination that challenged claims of U.S. Patent No. 7,917,843 were obvious, because the Board misapplied the law on the permissible use of common sense in an obviousness analysis. The Federal Circuit identified at least three caveats to note in applying “common sense” in an obviousness analysis: First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation. Second, as in Perfect Web, when common sense is invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question must be unusually simple and the technology particularly straightforward. Third, references to “common sense”—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.  The Federal Circuit said that the Board relied upon conclusory statements and unspecific expert testimony in drawing its conclusion that the invention would have been “common sense.” Because the application of “common sense” was conclusory and unsupported by substantial evidence, the missing limitation was not a “peripheral” one, and there was nothing in the record to support the Board’s conclusion that supplying the missing limitation would be obvious to one of skill in the art, the Federal Circuit reversed the Board’s finding of unpatentability.

In DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 126 U.S.P.Q.2d 1084 (Fed. Cir.2018), the Federal Circuit reversed the PTAB’s determination that the challenged claims of U.S. Patent No. 6,218,290 were invalid for obviousness, because the Board did not provide a sufficient explanation for its conclusions, and because it could not glean any such explanation from the record.

The PTAB invoked the “ordinary creativity” which the Federal Circuit said was no different from the reference to “common sense” that it considered in Arendi. The Board relied on a gap-filler—”ordinary creativity” instead of “common sense”—to supply a missing claim limitation. The Federal Circuit said that in cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, the search for a reasoned basis for resort to common sense must be searching. The Federal Circuit said that the Board’s reliance on “ordinary creativity” calls for the same “searching” inquiry. The Federal Circuit found that the Board’s decision did not satisfy the standard set forth in Arendi. The full extent of the Board’s analysis is contained in a single paragraph. In reaching its conclusion that the missing element would have been obviousness, the Board made no citation to the record, referring instead to the “ordinary creativity” of the skilled artisan. This was not enough to satisfy the Arendi standard.

In re Van Os, 844 F.3d 1359, 121 U.S.P.Q.2d 1209 (Fed. Cir. 2017), the Federal Circuit vacated and remanded the PTAB affirmance of the Examiner’s rejection of Van Os’ claims. The Federal Circuit said that it has repeatedly explained that obviousness findings grounded in “common sense” must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness. ” The Federal Circuit said that “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.'” The Federal Circuit concluded that “Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine. This type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan would have combined the elements in the manner claimed.”

When faced with an obviousness rejection based upon “common sense” or “ordinary creativity” or “intuition,” it is important to note that these are not a substitute for reasoned analysis and evidentiary support. This is especially true when dealing with a limitation missing from the prior art references specified. Demand this reasoned analysis where it is lacking.

A Preference for Something Else is not a Teaching Away

In General Electric Company v. Raytheon Technologies Corporation, [2019-1319] (December 23, 2020), the Federal Circuit vacated the Board’s decision finding Raytheon Technologies Corporation’s U.S. Patent No. 8,695,920 on a gas turbine engine not unpatentable for obviousness, and remanded the case for further consideration because the Board lacked substantial evidence for its conclusions.

The Board found that prior art disclosed all of the elements of the claimed invention, but then found that by expressly considering at least some of the one-stage versus two-stage tradeoffs and specifically chosing the one-stage option, the reference taught away from the combination asserted by GE. The Board alternatively held that, even if the reference did not teach away from the proposed combination, the evidence presented did not persuasively demonstrate a motivation to combine.

The Federal Circuit found that the Board lacked substantial evidence for its finding that reference taught away form the combination. The Federal Circuit said a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.

The Federal Circuit also found that the Board lacked substantial evidence for its conclusion that GE did not establish a motivation to combine the references. The Federal Circuit said that the Board made certain findings that, on their own, could establish obviousness. The Federal Circuit said that these findings set forth reasons that an artisan might seek to modify the prior art, and a reasonable expectation of success in doing so.

Finally, the Board lacked substantial evidence for holding that GE did not establish the obviousness of claim 10 “as a whole.” The Federal Circuit said that the law has always evaluated the motivation to combine elements based on the combination of prior art references that together disclose all of the elements of the invention. The Federal Circuit said that

the Board’s approach would require a motivation to com-bine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work al-ready done in the prior art reference. The claimed invention and an invention in the prior art must both be analyzed as a whole for the same reason: an invention is more than the sum of its individual elements.

Because the Board lacked substantial evidence for its underlying factual conclusions from which it found the claims non-obvious, the Federal Circuit vacated the Board’s decision and remanded the case to the Board for further proceedings.

Finding Claims Non-obvious Was Not Error; It Was the Application of the Proper Evidentiary Standard

In Apple Inc. v. VOIP-PAL.com, Inc., [2018-1456, 2018-1457] (September 25, 2020), the Federal Circuit affirmed the PTAB’s determination that claims of U.S. Patent No. 8,542,815 and 9,179,005 were not invalid for obviousness, and the PTAB’s imposition of sanctions against VOIP-PAL.

The ‘815 and ‘005 patents describe the field of invention as “voice over IP communications and methods and apparatus for routing and billing” and relate to routing communications between two different types of networks—public and private.

The Federal Circuit noted that the appeal was moot as to 18 claims that a court held were directed to unpatentable subject matter. As to the 15 remaining claims, the Federal Circuit rejected Apple’s argument of mootness, and considered the merits of the non-obviousness determination.

Apple argued that the Board violated the Administrative Procedures Act (“APA”) and its due process rights when the Board imposed non-enumerated sanctions for Voip-Pal’s ex parte communications. The Board’s actions are reviewed for abuse of discretion, and the Board abuses its discretion if the sanction (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.

37 C.F.R. § 42.12(b) provides that sanctions “include” those enumerated subsection (b). The Federal Circuit said that “key” here was that Section 42.12(b) uses the term “include,” which signifies a non-exhaustive list of sanctions. The Federal Circuit held that the plain reading of Section 42.12(b) provides the Board with discretion to issue sanctions and that the Board did not commit an APA violation when it issued a sanction not explicitly listed under Section 42.12. The Federal Circuit noted that the Board’s decision to (a) allow Apple to petition for rehearing before a new panel, and (b) provide Apple with a meaningful opportunity to respond to Voip-Pal’s letters was a reasonable course of action and one that it would not not disturb, and did not find that Apple was deprived of due process.

Apple argued on appeal that the Board legally erred in rejecting its motivation-to-combine argument by improperly applying the now-rejected teaching, suggestion, motivation test rather than the flexible obviousness analysis required under KSR. The Federal Circuit found that the Board did not fault Apple for not citing explicit teachings, suggestions, or motivations to combine the prior art. Rather, the Federal Circuit said, the Board noted that Apple’s expert provided only “conclusory and insufficient” reasons for combining the prior art and failed to articulate reasoning with some rational underpinning. The Board did not legally err but rather held Apple to the proper evidentiary standard.

Board Misconstrued Scope of Prior Art By Relying on Reference Numerals in its Claims

In Grit Energy Solutions, LLC v. Oren Technologies, LLC, [2019-1063] (April 30, 2020), the Court of Appeals for the Federal Circuit vacated and remanded the PTAB’s Final Written Decision that Grit Energy had not met its burden of showing that the challenged claims of U.S. Patent No. 8,585,341 on a discharge system for proppant used in fracking were unpatentable as obvious.

On appeal, Grit Energy contended that the Board’s determination that prior art does not disclose the ’341 configuration is unsupported by substantial evidence, and the Federal Circuit agreed. The reference disclosed that a stud on one shutter engaged an orifice on another shutter, but claim 5 was written broad enough to cover the stud and orifice being on the opposite shutters. The Federal Circuit found that the Board’s findings rested on an erroneous reading of claim 5. This erroneous interpretation arose from the claims inclusion of parenthetical reference numerals. The Federal Circuit said that including references to a narrower non-limiting example serves not to limit the disclosure provided by the claims to that non-limiting ex-ample, but rather to map the embodiment to the claims.

This case is notable for crediting the prior art with the scope of its broad claims, which went beyond the explicit description in the specification, and for finding the references numerals in the claims did not limit their scope.

The Board Can Identify New Issues of the Patentability of Amended Claims; But Must give the Parties Notice

In Nike, Inc.v. Adidas AG, [2019-1262] (April 9, 2020) The Federal Circuit affirmed the Board’s the Board’s finding that Nike failed to establish a long-felt need for substitute claims 47–50, but vacated the Board’s decision of obviousness as to substitute claim 49 because no notice was provided to Nike for the Board’s theory of unpatentability.

The case involved U.S. Patent No. 7,347,011, which discloses articles of footwear having a textile “upper,” which is made from a knitted textile using any number of warp knitting or weft knitting processes. The case in an appeal after remand from a previously appeal where the Federal Circuit affirmed-in-part and vacated-in-part the Board’s decision denying Nike’s motion to amend. Nike is again appealing the denial of its motion motion to enter substitute claims 47–50.

Substitute claim 49 recites a knit textile upper containing “apertures” that can be used to receive laces and that are “formed by omitting stitches” in the knit textile. Adidas opposed substitute claim 49, arguing that it was obvious form the combination of three prior art references: U.S. Patent No. 5,345,638 (Nishida); U.S. Patent No. 2,178,941 (Schuessler I); and U.S. Patent No. 2,150,730 (Schuessler II), and in particular that Nishida disclosed substitute claim 49’s limitation that the apertures are “formed by omitting stitches.” The Board found that Nishida does not disclose apertures formed by omitting stitches, as recited in claim 49, but that another prior art document of record in the proceeding demonstrates that skipping stitches to form apertures was a well-known technique.

Nike, having no chance to address this finding, appealed. The Federal Circuit held that the Board may sua sponte identify a patentability issue for a proposed substitute claim based on the prior art of record. However, if the Board sua sponte identifies a patentability issue for a proposed substitute claim, however, it must provide notice of the issue and an opportunity for the parties to respond before issuing a final decision under 35 U.S.C. § 318(a).

Because the case involves a motion to amend, The Federal Circuit concluded that the Board should not be constrained to arguments and theories raised by the petitioner in its petition or opposition to the motion to amend. However the Federal Circuit reserved for another day the question of the Board may look outside of the IPR record in determining the patentability of proposed substitute claims.

Although the Board was permitted to raise a patentability theory based on Spencer, the notice provisions of the APA and Federal Circuit case law require that the Board provide notice of its intent to rely on Spencer and an opportunity for the parties to respond before issuing a final decision relying on Spencer. Under the APA, “[p]ersons entitled to notice of an agency hearing shall be timely informed of of fact and law asserted,” 5 U.S.C. § 554(b)(3), and the agency “shall give all interested parties opportunity for . . . the submission and consideration of facts [and] arguments,” id. § 554(c)(1).

Motivation to Combine Prior Art Can Come from Knowledge of those Skilled in the art, the Art Itself, or the Nature of the Problem

In Acoustic Technology, Inc. v. Itron Networked Solutions, Inc., [2019-1061] (February 19, 2020), the Federal Circuit affirmed the PTAB’s determination in IPR2017-01024 that the challenged claim of U.S. Patent No. 6,509,841 was unpatentable,

The patent owners first ground of attack was that nine days after institution of the IPR, Silver Spring agreed to merge with Itron, Inc., an entity undisputedly time-barred under 35 U.S.C. § 315(b). However, the Federal Circuit held that the patent owner waived this argument because it failed to present those arguments before the Board.

As the the merits of the anticipation finding, the patent owner complained that the petitioner’s expert improperly testified about what a person of ordinary skill in the art would “recognize” from the reference, — arguing that this might be appropriate for obviousness, but not anticipate. The Federal Circuit disagreed, noting that in an anticipation analysis, the dispositive question is whether a skilled artisan would “reasonably understand or infer” from a prior art reference that every claim limitation is disclosed in that single reference. Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference. Moreover, expert testimony can constitute substantial evidence of anticipation when the expert explains in detail how each claim element is disclosed in the prior art reference.

The Federal Circuit examined the testimony of Petitioner’s expert and concluded that he conducted a detailed analysis and explained how a skilled artisan would reasonably understand the cited prior art. The Court thus concluded that the Board’s finding of anticipate was supported by substantial evidence.

The Federal Circuit also rejected the patent owner’s argument that the Board improperly relied on “the same structures to satisfy separate claim limitations.” The Federal Circuit explained that it was clear from the disclosure that the identified structure may have different functions in a given embodiment.

Finally with respect to the obviousness of the claimed invention, the Federal Circuit rejected patent owners argument that the Board erroneously mapped the prior art onto the elements of the claim and that the Board’s motivation-to-combine finding is not supported by substantial evidence. On this later point the Federal Circuit pointed out that the motivation to combine prior art references can come from the knowledge of those skilled in the art, from the prior art reference itself, or from the nature of the problem to be solved. The Board found that motivation was adequately explained by expert testimony which was not conclusory or otherwise defective, and thus the Board was within its discretion to rely upon it.

Only an Expert Can Testify about What Would Be Obvious to a Non-Expert

In HVLPO2, LLC, v. Oxygen Frog, LLC, [2019-1649] (February 5, 2020), the Federal Circuit reversed and remanded the district court’s determination that U.S. Patent Nos. 8,876,941 and 9,372,488 directed to methods and devices for controlling an oxygen-generating system, would have been obvious, because the district court abused its discretion by admitting lay witness testimony regarding obviousness.

At trial, Oxygen Frog argued that the claims were obvious in view of a combination of two prior art references. The author of one of the references, Piebes, was not qualified as an expert witness, but did provide deposition testimony as a fact witness. HVO objected to Mr. Piebes’ testimony regarding obviousness as improper expert opinion testimony. The district court overruled the objection, and instead gave the jury a limiting instruction prior to playing Mr. Piebes’ deposition testimony.

The Federal Circuit found that under the circumstances here, the district court’s limiting instruction was insufficient to cure the substantial prejudice caused by Piebes’ testimony, and thus the district court abused its discretion by denying a motion for a new trial.

The Federal Circuit said that the admission of Piebes’ testimony opining that it would be “obvious” to modify a prior art system in a particular way that would match the claimed invention was improper. It noted that Federal Rule of Evidence 702 provides:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other spe-cialized knowledge will help the trier of fact to un-derstand the evidence or to determine a fact in issue; . . .

The Federal Circuit said that this precisely described testimony which would pertain to an obviousness invalidity challenge in a patent trial. The Federal Circuit said that Issues of infringement and validity are analyzed in great part from the perspective of a person of ordinary skill in the art, such that a witness who is not ‘qualified as an expert by knowledge, skill, experience, training, or education’ in the pertinent art cannot assist the trier of fact to understand the evidence or to deter-mine a fact in issue. Thus, the Federal Circuit said. “it is an abuse of discretion to permit a witness to testify as an expert on the issues of non-infringement or invalidity unless that witness is qualified as an expert in the pertinent art.

The Federal Circuit said that the prohibition of unqualified witness testimony extends to the ultimate conclusions of infringement and validity as well as to the underlying technical questions. A witness not qualified in the pertinent art may not testify as an expert on obviousness, or any of the underlying technical questions, such as the nature of the claimed invention, the scope and content of the prior art, the differences between the claimed invention and the prior art, or the motivation of one of ordinary skill in the art to combine these references to achieve the claimed invention.

Because the district court abused its discretion by admitting lay witness testimony regarding obviousness, the Federal Circuit reversed and remanded for a new trial.

Federal Circuit Asks PTAB to Give it a Go and Decide Whether Indefinite Claims Were otherwise Patentable

In Samsung Electronics America, Inc. v. Prisua Engineering Corp., 2019-1169, 2019-1260 (February 4, 2020) the Federal Circuit affirmed the PTAB determination that claim 11 of U.S. Patent No. 8,650,591 was invalid for obviosuness, but vacated the PTAB’s decision declining to decide whether claims 1-4 and 8 were patentable because these claims were indefinite.

The claims of the ‘591 patent are directed to methods and apparatuses for generating a displayable edited video data stream from an original video data stream. The Board determined that claim 1 (and claims 2-4 and 8) claimed both an apparatus and a method, and thus was indefinite under IPXL Holdings. Because the claims were indefinite, the Board declined to determine whether they otherwise defined patentable subject matter. The Board also found the claims indefinite because of the inclusion of “digital processing unit” which the Board found invoked 112(f), without identifying any corresponding stucture in the claims.

Samsung appealed arguing that the Board should have declared the claims in valid for indefiniteness. The Federal Circuit agreed with the Board that the Board did not have the authority to invalidate claims on that ground.

Samsung’s secondary argument was that the Board should have nonetheless assessed the patentability of claims 1 and 4–8 under sections 102 or 103. On this point, the Federal Circuit agreed.

The Federal Circuit noted that on the first ground of indefiniteness — mixed method and apparatus claiming, the indefiniteness problem was one of understanding when infringement occurred, and not necessarily what the claim actually means. Moreover, the Federal Circuit noted that the Board had previously held that IPXL-type indefiniteness does not prevent the Board from addressing patentability.

Thus the Federal Circuit remanded the case for the Board to attempt to apply 102 and 103 to the claims.

As to the second ground of indefiniteness, that “digital processing unit” invoked 112(f) without providing corresponding structure in the claims, the Federal Circuit disagreed. The Federal Circuit said that the question whether the term “digital processing unit” invokes section 112, paragraph 6, depends on whether persons skilled in the art would understand the claim language to refer to structure, assessed in light of the presumption that flows from the drafter’s choice not to employ the word “means. The Federal Circuit said that the Board pointed to no evidence that a person skilled in the relevant art would regard the term “digital processing unit” as purely functional. In fact, the patent owner argued to the Board, based on testimony from its expert (the inventor), that the digital processing unit recited in the claims is “an image processing device that people in the art are generally familiar with.” Moreover, the fact that claim 1 required the “digital processing unit” to be operably connected to a “data entry device” supports the structural nature of the term “digital processing unit,” as used in the claim.

The Federal Circuit rejected the Board’s conclusion that the term “digital processing unit,” as used in claim 1, invoked means-plus-function claiming,
and that for that reason claims 1 and 4–8 cannot be analyzed for anticipation or obviousness.