November 2013
Board’s Failure to Consider Evidence of Knowledge of One of Skill in the Art Was Plainly Prejudicial
| Judges: Rader, Dyk, Taranto (author) |
| [Appealed from Board] |
In Randall Manufacturing v. Rea, No. 12-1611 (Fed. Cir. Oct. 30, 2013), the Federal Circuit held that the Board, in an inter partes reexamination, failed to consider a plethora of extrinsic evidence highly material to evaluating the motivation to combine references under 35 U.S.C. § 103, and thus vacated and remanded the case to the Board.
FG Products, Inc. (“FG”) and Randall Manufacturing (“Randall”) sell competing products for refrigerated trucks. The parties both manufacture movable, track-mounted cargo space partitions. FG owns U.S. Patent No. 7,214,017 (“the ’017 patent”), directed to partitioning apparatuses that include two
half-width panels independently mounted to the ceiling of a shipping container using rail-and-trolley assemblies.
Shortly after the ’017 patent issued, Randall requested inter partes reexamination of the ’017 patent. The examiner granted the request and subsequently rejected all fifteen original claims in the ’017 patent. In response, FG amended or canceled its original claims and added seventy-eight new claims. The examiner allowed many of FG’s new and amended claims, but rejected claims 10-12, 38-40, 48-56, 75-79, and 83-91 as obvious over a combination of four prior art references. Based on the four prior art references, the examiner concluded that all of the elements of the rejected claims were well known at the time of FG’s application and that it would have been obvious to one of ordinary skill in the art to combine them. FG appealed the obviousness rejections to the Board. In its briefing, Randall presented evidence of what one of ordinary skill in the art would have known, including a host of references that had been considered by the examiner—some of which provided the examiner’s basis for rejecting FG’s original claims. In its decision, the Board did not consider the background references cited by Randall as evidence of the knowledge of one of skill in the art. Instead, relying only on the same four prior art references as the examiner, the Board reversed the examiner on the rejections for claims 11, 12, 38-40, 48-56, 75-79, and 83-91, finding a lack of motivation for one of ordinary skill in the art to combine all four references. Addressing claim 10 separately, the Board concluded that the “means for separating” and the “means for mounting” the claim are means-plus-function terms, and thus limited to the structures described in the specification (and their equivalents) for performing the claimed functions. Randall appealed the Board’s decision.
“In recognizing the role of common knowledge and common sense, we have emphasized the importance of a factual foundation to support a party’s claim about what one of ordinary skill in the relevant art would have known. One form of evidence to provide such a foundation, perhaps the most reliable because not litigation-generated, is documentary evidence consisting of prior art in the area.” Slip op. at 12 (citations omitted).
On appeal, the Federal Circuit first noted that the Supreme Court has “criticized a rigid approach to determining obviousness based on the disclosures of individual prior-art references,” and in “[r]ejecting a blinkered focus on individual documents,” has “required an analysis that reads the prior art in context.” Slip op. at 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-22 (2007)). The Court held that, “[b]y narrowly focusing on the four prior-art references cited by the examiner and ignoring the additional record evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.” Id. at 12.
The Court indicated the emphasis it has placed on the importance of a factual foundation to support a party’s claim about what one of ordinary skill in the relevant art would have known. The Court stated that Randall relied on just such evidence in citing to extensive references of record showing a familiar, even favored, approach to bulkhead stowage. The Court found that the references constituted important evidence of the state of the art and the context in which the examiner-cited combination should be evaluated. On the present record, the Court stated, “[T]he Board’s finding of lack of motivation to combine [was] infected by prejudicial error.” Id. at 14. “Particularly when viewed in the context of the background references Randall provided, the evidence strongly supports the notion that the bulkhead design FG claimed was nothing more than the ‘combination of familiar elements according to known methods,’ ‘each performing the same function it had been known to perform,’ ‘yield[ing] predictable results.’” Id. (alteration in original) (quoting KSR, 550 U.S. at 416-17). Additionally, the Court noted, neither FG nor the Board pointed to any objective indicia of nonobviousness. Accordingly, the Court vacated the Board’s reversal of the examiner’s rejection of claims 11, 12, 38-40, 48-56, 75-79, and 83-91 for obviousness.
Finally, the Court stated that it need not address the issues on appeal with respect to claim 10 because its conclusion that the Board committed prejudicial error in its analysis of the obviousness of the prior art combination affects the ultimate obviousness analysis of claim 10. Accordingly, the Court vacated the Board’s determination of nonobviousness of claim 10 along with its determination as to the other claims-at-issue.
*Jonathan R.K. Stroud is a Law Clerk at Finnegan.
