ClassCo, 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.