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Prior Art Renders Method for Vibrating Zebra Mussels to Death Unpatentable

March 17, 2003

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Last Month at the Federal Circuit - April 2003

Judges: Mayer (author), Newman, and Bryson

In Mazzari v. Rogan, No. 02-1269 (Fed. Cir. Mar. 17, 2003), the Federal Circuit affirmed the district court’s judgment that Darrel A. Mazzari and Michael T. Sheedy’s claims were unpatentable due to anticipation and obviousness.

On April 15, 1992, Mazzari and Sheedy filed U.S. Patent Application No. 07/869,017 (“the ‘017 application”), claiming an underwater circuit that generated an acoustic wave signal of such magnitude and frequency as to vibrate the shell of a zebra mussel until it broke, thereby killing the animal. The Examiner rejected the claims, and the Board affirmed.

Pursuant to 35 U.S.C. § 145, Mazzari challenged the Board’s ruling in the United States District Court for the District of Columbia. The PTO moved for SJ. In response, Mazzari submitted the declaration of Professor Martin E. Boraas, a zoologist, who declared that one of skill in the art would not have combined certain prior art references.

The PTO submitted the declaration of its own expert, who declared that a newly discovered prior art reference anticipated all of the claims and supported the Board’s finding that the claims would have been obvious. Based upon this new evidence, as well as the references previously considered by the Board, the district court granted SJ.

On appeal, the Federal Circuit noted that this case raised an important question as to what standard of review a district court under 35 U.S.C. § 145 must apply to Board decisions and what standard the Federal Circuit must apply in reviewing the district court’s decision. The Federal Circuit looked to Dickinson v. Zurko, 527 U.S. 150 (1999), where the Supreme Court held that the PTO is an agency subject to the Administrative Procedure Act, 5 U.S.C. § 706 (2000) (“APA”). Section 706 of the APA states in part that a reviewing court shall hold unlawful and set aside agency action, findings, and conclusions found to be unsupported by substantial evidence.

The Federal Circuit determined that a decision by the PTO is reviewed on the administrative record of an agency hearing provided by statute. Therefore, both the Federal Circuit and the district court must apply the substantial evidence standard of review to findings of fact made by the Board. If additional evidence was presented to the district court, as it was in this case, the district court would make de novo factual findings if the evidence was conflicting. In addition, the Federal Circuit would review the district court’s legal conclusions without deference and its de novo factual findings under the “clear error” standard. However, because this case was presented based on SJ, the Federal Circuit reviewed the district court’s grant of SJ de novo and construed the facts in the light most favorable to the nonmovant.

The Federal Circuit determined that even construed in the light most favorable to Mazzari, there was no evidence that he performed the method taught in the ‘017 application. The only support for Mazzari’s position was the declaration of Boraas, but he admitted that the device that he had witnessed was not the correct prior art device and that he was not one of ordinary skill in the art. This, taken together with the declaration submitted by the PTO, demonstrated that no issue of material fact existed as to whether one of skill in the art would be motivated to combine the prior art.

The Federal Circuit also considered arguments that the PTO presented before the district court that Mazarri failed to overcome. These additional references both anticipated and rendered obvious the claimed inventions. Mazzari did not dispute the teachings of the additional references nor their combination. Therefore, the Federal Circuit determined that the district court properly concluded that the claimed invention was unpatentable.