Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.
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Federal Circuit Review — Issue No. 62-01.
A Simple Concept Within an Inventor’s Knowledge Does Not Make It Analogous Art
Circuit Check Inc., v. QXQ Inc., No. 2015-1155, 2015 U.S. App. LEXIS 13620 (Fed. Cir. Jul. 28, 2015) (Before Lourie, Dyk, and Moore, J.) (Opinion for the court, Moore, J.). Click Here for a copy of the opinion.
Circuit Check sued QXQ for infringement of U.S. Patent Nos. 7,592,796; 7,695,766; and 7,749,566. These patents claim systems and methods related to marking interface plates used for circuit board testers. QXQ stipulated to infringement and the parties agreed that three references describing plate marking techniques were prior art to the patents (collectively, the “stipulated prior art”). QXQ conceded that the stipulated prior art is missing a feature of the patent claims. This prior art “does not disclose an interface plate comprising ‘a second removable indicia overlying said first predetermined indicia…wherein said second indicia is removed from areas of said plate adjacent each of said predetermined holes’.”
QXQ presented three additional references describing marking techniques for rock carvings, for engraved signatures, and for so-called Prussian Blue machining (the “disputed prior art).” QXQ argued that the disputed prior art “disclosed[d] the limitation not present in the stipulated prior art and constitute[d] analogous prior art.” The jury found for Circuit Check and held the patents valid and infringed. QXQ moved for judgment as a matter of law that the asserted claims were invalid as obvious. The district court granted the motion and Circuit Check appealed.
The issue was whether the disputed prior art is sufficiently “analogous” to the art of marking interface plates for it to be applied in a proper obviousness analysis. “Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” Since the disputed prior art was not in “the field of circuit board testers and test figures,” it was analogous only “if it [was] reasonably pertinent to the particular problem solved by the inventor.” According to the Court, the question here was whether an inventor would look to this particular art to solve the particular problem at hand.” The Court held that even though an inventor may be aware of rock carving, engraved signage, or Prussian Blue methods, this does not mean that he would look to these methods when trying to improve markings for circuit board testers. The Court also found that the jury’s determination of validity, which tacitly concluded the disputed prior art was non-analogous, was supported by substantial evidence in the record.
With respect to the stipulated prior art, the Court concluded that substantial evidence supported the jury’s finding that “the differences between the stipulated prior art and the claims were significant.” Substantial evidence also supported the jury’s finding that “objective considerations existed to support nonobviousness.” The district court therefore erred in granting judgment as a matter of law. Accordingly, the Court reversed and remanded.