Federal Circuit Vacates and Remands PTAB Decision on Basis of Analogous Art

Earlier this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision of the U.S. Patent and Trademark Office, Patent Trial and Appeal Board (PTAB) in Donner Technology, LLC, v. Pro Stage Gear, LLC. In particular, the CAFC held that the PTAB applied an incorrect standard for determining if a reference is analogous art, but did not go as far as to say that “no reasonable fact finder could conclude, under the proper standard,” that the reference in question was not analogous art. Thus, the CAFC vacated and remanded the case to the PTAB to resolve the issue of whether the reference was analogous art.

Donner Technology, LLC (Donner) petitioned the PTAB for inter partes review (IPR) of U.S. Patent No. 6,459,023 (the ’023 patent). Donner asserted that various claims of the ‘023 patent were obvious under 35 U.S.C. § 103 in view of  U.S. Patent No. 3,504,311 (Mullen).  The ’023 patent was directed to guitar effect pedals for electronically amplifying the sounds of a guitar and explained that there was a need for “an improved pedal effects board which allows easy positioning and changing of the individual guitar effects while providing a confined and secure area for cable routing and placement.” The Mullen reference related to electrical relays and noted that one “object of [the] invention is to provide 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.” Donner asserted that the Figures of Mullen depicted a structure that was analogous to the structure claimed by the ’023 patent, which included surfaces for mounting relays, cable connection openings, and area for routing cables. The PTAB determined that Donner’s obviousness arguments failed because Donner did not prove that Mullen was analogous art. Donner appealed to the PTAB.

Analagous Art Analysis

On appeal, Donner argued that the PTAB erred in concluding that Donner’s obviousness challenges, which rely on the teachings of Mullen, failed because Donner had not shown that Mullen falls within the scope of the prior art. Citing  In re Bigio, the CAFC explained that two tests exist to define the scope of analogous art: “ (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” The CAFC noted that it was undisputed that the ’023 patent and Mullen were not from the same field of endeavor; thus, the  sole question on appeal was whether Mullen was “reasonably pertinent to one or more of the particular problems to which the ’023 patent relates.”

The CAFC explained that the PTAB erred in its analysis of whether Mullen is analogous art and noted that Donner submitted expert testimony and evidence to “explain what would have compelled a pedalboard inventor in 1999 or 2000 to consider potential solutions arising from early 1970s-era relay technologies.” Since the PTAB mistakenly asserted that Donner did not put forth such evidence, the CAFC asserted that it was “unclear whether the Board meaningfully considered all of Donner’s arguments and evidence.”

Perspective of a PHOSITA

In addition, the CAFC noted that the PTAB “failed to properly identify and compare the purposes or problems to which Mullen and the ’023 patent relate.” The CAFC explained that the “problems to which the claimed invention and reference at issue relate must be identified and compared from the perspective of a person having ordinary skill in the art (PHOSITA). Noting that the PTAB’s assertion that a PHOSITA would have a “relatively low level” of skill and would have “had a poor understanding of Mullen’s relay technology” was insufficient to determine whether Mullen was analogous art, the CAFC cited Heidelberger Druckmaschinen AG v. Hantscho Com. Prods., Inc. in explaining that the “relevant question [was] whether a PHOSITA ‘would reasonably have consulted’ the reference in solving the relevant problem.” The CAFC further explained that a “PHOSITA might reasonably choose to consult a reference even if she would not understand every last detail of that reference, so long as she would understand the portions of the reference relevant to solving her problem well enough to glean useful information.”

The PTAB also noted that the PTAB acknowledged that there may be “’pertinent similarities’ between Mullen and the ’023 patent but concluded that those similarities, even if credited, did ‘not establish why [a PHOSITA] would have considered a reference from a different technology and time.’” According to the CAFC, if the two references had “pertinent similarities” such that Mullen was “reasonably pertinent to one or more of the problems to which the ’023 patent pertains, then Mullen is analogous art.” Thus, the CAFC concluded that the PTAB applied the wrong standard when assessing whether Mullen was analogous art and possibly failed to analyze certain arguments and evidence. However, the CAFC declined to hold that “no reasonable fact finder could conclude, under the proper standard, that Mullen is not analogous art.”  The CAFC vacated the PTAB’s decision and remanded for consideration of the proper standard of analogous art.