Federal Circuit Affirms the PTAB, Emphasizing KSR’s Flexible Approach to 103

federal-circuit-cafc-007ClassCo, Inc. v. Apple, Inc., No. 2015-1853, 2016 U.S. App. LEXIS 17314 (Fed. Cir. Sept. 22, 2016) (Before Taranto, Bryson, and Stoll) (Opinion for the Court, Stoll).

On September 22, 2016, the Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision in inter partes reexamination No. 95/002,109 that rejected disputed claims of ClassCo’s U.S. Patent No. 6,970,695 (“the ‘695 Patent”) as obvious under 35 U.S.C. § 103.

The ‘695 Patent claims technology that identifies incoming telephone calls and introduces a call-screening system to verbally announce a caller’s identity before the call is connected.

The Court affirmed the Board’s finding that two previous patents render the ‘695 Patent obvious. The Court rejected ClassCo’s argument that “[a] basic characteristic of a KSR combination is that it only unites old elements with no change in their respective function.” Slip op. at 7 (internal quotation marks omitted). The Court instead emphasized KSR’s flexible approach to a § 103 analysis:

KSR teaches that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR [Int’l Co. v. Teleflex Inc., 550 U.S. 398,] 416 [(2007)]. And it explains that the ordinary artisan recognizes “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.” Id. at 420. The rationale of KSR does not support ClassCo’s theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.

Slip op. at 8.

ClassCo argued that the Board erred by rejecting evidence of objective indicia of nonobviousness (praise, long-felt need, and commercial success) as having no merit or weight in its obviousness analysis. “[W]hile the Board properly discounted some of ClassCo’s evidence, it improperly dismissed some of the evidence.” Id. at 9–10. Nonetheless, the error was harmless and the Board’s ultimate holding of obviousness was affirmed.

Lastly, ClassCo challenged the Board’s ordinary-meaning construction of the term “identity information” in claim 14. The Court rejected ClassCo’s argument, stating that its construction “would improperly render claim 2 functionally meaningless.” Slip op. at 16.

The Court’s opinion reiterates the holding of KSR—in particular, a person of ordinary skill is assumed to be a person of ordinary creativity. This permits a teaching from a prior art reference to be combined with other references according to any obvious use of the teaching; a prior art reference is not limited to the primary use or uses that it explicitly recites.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 4 Comments comments.

  1. Anon September 30, 2016 5:51 am

    The slippery slope of “ordinary creativity” leads to the obvious question of what is extra-ordinary creativity?

    Does extra-ordinary creativity require a Flash of Genius?

  2. Prizzi's Glory September 30, 2016 3:55 pm

    I have the impression that the CAFC extended the KSR combination to anticipate the claimed invention if the KSR combination could be modified into the claimed invention “without undue experimentation”, or am I misreading?

  3. Kimmy September 30, 2016 4:32 pm

    Careful Anon, traveling back in time is best left to Dr. Who

  4. Anon September 30, 2016 5:22 pm

    Ah Kimmy, it is less any actual “travel back in time” and more “those who do not learn from history are bound to repeat it.”

    The Supreme Court’s battle not to lose its pre-1952 power, a surely corrupting power, has clear and visible signs here.