Obviousness is Alive and Well

In ABT Systems, LLC v. Emerson Electric Co., [2014-1618, 2014-1700] (August 19, 2015), the Federal Circuit reversed the district court’s denial of Emerson’s motion for JMOL that the claims of the patent in suit were invalid for obviousness.

Rather than mounting a strong challenge to the merits of Emerson’s theory of obviousness based on the disclosures of the prior art references, ABT takes the position that Emerson’s argument is flawed because the references upon which it relies are either non-enabled or teach away.  The Federal Circuit said that the references do not “teach away,” as ABT argues, because it is clear that none come near to criticizing, discrediting, or otherwise discouraging investigation into the claimed invention.  The Federal Circuit also rejected ABT’s argument that the references were not enabled because even “[a] non-enabling reference may qualify as prior art for the purpose of determining obviousness,” Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991), and even “an inoperative device . . . is prior art for all that it teaches,” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).

In looking for a reason to combine the references, the Federal Circuit said that it was well settled that even where references do not explicitly convey a motivation to combine, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”  The Federal Circuit said that a court may find a motivation to combine prior art references in the nature of the problem to be solved, particularly with simpler mechanical technologies.  The Federal Circuit the references themselves and the nature of the problem provided the required reason to combine.

ABT also tried to rely upon commercial success, but the Federal Circuit said that its case was undermined by the failure to establish a nexus between the invention and the commercial success of the products embodying the invention.  Advertisements and press releases were not a substitute for market share information or industry praise or recognition for the novelty of the invention.  The Federal Circuit further found the number of licenses was insufficient to overcome a convincing case of invalidity without showing a clear nexus to the claimed invention.