CAFC Provides Pertinent Guidance on Criteria for Analogous Prior Art
In Donner Technology LLC v Pro Stage Gear LLC 20-1104 the US Court of Appeal for the Federal Circuit (CAFC) clarified the approach to considering analogous art in relation to obviousness determinations.
Donner sought Inter-Partes Review (IPR) of Pro Stage’s patent, which concerns improvements in relation to pedalboards for foot operated guitar effect devices by allowing easy positioning and changing of the individual guitar effects while providing a confined and secure area for cable routing and placement. Donner argued that the patent is obvious on account of a prior art patent (Mullen) from a different field – electrical relays – that solved the same problems. Mullen disclosed an improved support for supporting one or more relay structures and for providing wiring-channel space for receiving wires that would be connected to the relay structures to connect the relay structures in various control circuits.
The Patent Trial and Appeal Board (PTAB) held that Mullen did not qualify as analogous art and so dismissed Donner’s obviousness challenge.
On appeal the CAFC found fault with the PTAB’s reasons for rejecting Mullen as analogous art and remanded the case back to the PTAB for further consideration. The CAFC noted that obviousness challenges on the basis of analogous art can be made either in relation to any prior art in the same field or in relation to prior art from a different field if it is still reasonably pertinent to the problem with which the proposed invention is concerned. The CAFC further noted that the dividing line between reasonable pertinence and less-than-reasonable pertinence is context dependent and ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose.
The CAFC found that the PTAB failed to properly identify and compare the purposes or problems addressed in Mullen and Pro Stage’s patent – where the relevant purposes for inventions are those relating to solving a problem. The CAFC noted in particular that the PTAB’s characterisation of the problems or purposes that Pro Stage’s patent is concerned with effectively excluded all prior art not in the same field. The CAFC held that the relevant hypothetical person having ordinary skill in the art would not exclude from consideration all art from outside the field with which the patent is concerned, as the problem solved was not so specific to the field of endeavour that the skilled person would only look within that field.
Whereas the PTAB identified several differences between Mullen and Pro Stage’s patent, the CAFC noted that a reference can be analogous art with respect to a patent even if there are significant differences between the two references. Particularly with art from a different field there are bound to be differences, but that does not rule it out from being pertinent to the addressed problem or purpose. In this regard the skilled person would not need to understand everything disclosed in a prior art reference from another field, information therein would be available to the skilled person provided it would have been reasonable for them to have consulted the reference and could glean from it the relevant pertinent information.
The CAFC further held that the PTAB was wrong to find that on account of Mullen being from the early 1970’s the skilled person would not have considered consulting it, finding that the PTAB did not adequately explain why the difference in publication dates would have excluded it from relevance to the addressed problem.
Author: Quinn Miller