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July 28 — Circuit Check Inc. can return to district court with a valid patent asserted against competitor QXQ Inc., after the Federal Circuit July 28 overturned a judgment of patent obviousness.
The court's opinion is more important, though, to patent holders who have seen the U.S. Supreme Court's 2007 decision in KSR Int'l Co. v. Teleflex Inc. used by district courts and the Federal Circuit to chip away at issued patents. KSR's allowance for arguments that an invention was “obvious to try” or obvious by reason of “common sense,” for instance, has left many patents invalid that would have survived pre-KSR.
In this case, the question was about what “analogous art” could be considered in the obviousness analysis—i.e., how far afield from the technology at issue a court can stray to find knowledge that the inventor “would have known” at the time of the invention.
The district court said that KSR allowed it to go pretty far afield, and the Federal Circuit said no. It rejected the lower court's judgment that Circuit Check's improvement in circuit board testing was obvious because of what the inventor could have learned from not-even-remotely-related rock carvings.
Circuit Check sued QXQ for infringement of its patents related to a system and method for aligning the boards before testing begins. U.S. Patent Nos. 7,592,796; 7,695,766; and 7,749,566. QXQ challenged the patents for invalidity based on obviousness, insisting that the U.S. District Court for the Eastern District of Wisconsin consider information well outside the technology.
The district court agreed, quoting from KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 2007 BL 12375, 82 U.S.P.Q.2d 1385 (2007), in saying that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”
“The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art,” the Federal Circuit said. “Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.”
“Although ‘familiar items may have obvious uses beyond their primary purposes,' ” the Federal Circuit said, acknowledging KSR, “a reference is only reasonably pertinent when it ‘logically would have commended itself to an inventor’s attention in considering his problem,' ” a quote from the court's own In re Clay, 966 F.2d 656, 659, 23 U.S.P.Q.2d 1058 (Fed. Cir. 1992).
“Even though an inventor may be aware of rock carvings, it is not surprising that the inventor would not have looked to rock carvings to improve the process of painting small dots on interface plates for expensive circuit board testers,” the court said.
After similarly debunking the likelihood that the inventor would apply lessons from signage and dye used in machining, the court reversed and remanded.
Since QXQ has already conceded infringement, the next step appears to be a damages assessment.
Judge Kimberly A. Moore wrote the court's opinion, which was joined by Judges Alan D. Lourie and Timothy B. Dyk.
Courtland C. Merrill of Anthony Ostlund Baer & Louwagi P.A., Minneapolis, represented Circuit Check. Michael L. Harrison of Los Gatos, Calif., represented QXQ.
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