Federal Circuit Scratches Out District Court Determination that Rock Carving is Analogous Prior Art for Circuit Board Interface Plates

In Circuit Check Inc. v. QXQ Inc., No 15-1155 (Fed. Cir. July 28, 2015), the Federal Circuit reversed and remanded the Eastern District of Wisconsin’s judgment as a matter of law that three patents were obvious in light of the prior art. At trial, QXQ argued that rock carving, where a varnish is applied to rocks and scraped off to make a design, is analogous to circuit board interface plates, where an additional layer of paint is applied and then scraped off to mark holes. Not convinced, the jury determined the patents were nonobvious over the rock carving prior art. Following the jury’s verdict, the district court overturned the jury and found the patents were obvious over this art.

First, the Court noted that the underlying facts are presumed to have been resolved in favor of the winning party, here the patent owner, and then it determines if the legal conclusion is correct in light of those facts. With this background, the Court found the jury’s factual determination that the prior art was not analogous was supported by substantial evidence. The Court stated that the question for analogous art is not whether an inventor knows of prior art, but whether they would look to the art to solve the problem. The Court also stated that the determination that the differences between the prior art and the claims were significant was also a finding of fact, and supported by substantial evidence. Thus, the Court reversed the district court’s finding of obviousness.