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Federal Circuit diverges from PTAB on analogous art ruling
As patent owners are well aware, sometimes overcoming invalidating prior art can be difficult. Prior art — which makes an invention known and/or obvious, and therefore unpatentable — includes existing patents that are “analogous art.” But what makes an existing patent analogous? The U.S. Court of Appeals for the Federal Circuit, which handles all patent-related appeals, has explained.
Can you hear me now?
Pro Stage Gear LLC owns a patent on an improved guitar effects pedalboard for amplifying a guitar’s sound. Pedals are foot-operated, and, when multiple pedals are used, they must be interconnected by cables to the original sound source. Once interconnected, the pedals are placed on a pedalboard and covered with foam so the cables aren’t exposed. The patented pedalboard reduces the difficulty involved in swapping or adding new pedals on a board.
Donner Technology LLC filed an inter partes review (IPR) against the patent, challenging various claims as obvious and therefore invalid. In an IPR proceeding, the Patent Trial and Appeal Board (PTAB) can reconsider and cancel an already-issued patent based on certain types of prior art. The PTAB’s final decision is subject to the Federal Circuit’s review.
Donner’s challenges all relied on the teachings of an earlier patent known as the Mullen patent. That patent covers an improved structure for supporting electrical relays and providing wiring-channel space for receiving wires to connect to the relays. Donner argued that certain embodiments of the Mullen patent disclose a structure that is analogous to the structure in Pro Stage’s pedalboard.
The PTAB rejected the obviousness challenges. It found that Donner failed to show the Mullen patent was analogous prior art for purposes of establishing obviousness. However, on appeal, the Federal Circuit found the PTAB’s analysis flawed.
What’s the problem?
Two separate tests define the scope of analogous art:
- Whether the art is from the same field of endeavor, regardless of the problem addressed, and
- If the reference isn’t within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem the inventor is tackling.
The Federal Circuit determined that the prior art and subject application weren’t in the same field of endeavor in this situation, so the court looked to the second way to qualify as analogous prior art. If the two patents had pertinent similarities such that the Mullen patent was reasonably pertinent to one or more of the problems addressed by Pro Stage’s patent, it said, Mullen was analogous art.
The court found the PTAB erred in its reasonable pertinence analysis because it didn’t properly identify and compare the problems that the two patents tackle. The problems must be identified and compared from the perspective of a “person having ordinary skill in the art” (PHOSITA) — a PHOSITA who is considering turning to the teachings of references outside of his or her field of endeavor.
The PTAB reasoned that the relevant PHOSITA would have a relatively low level of skill and a poor understanding of Mullen’s relay technology. But the court said the relevant question was whether a PHOSITA would reasonably have consulted Mullen in solving the problem. A PHOSITA, it said, might reasonably consult a reference even if he or she couldn’t understand every last detail — as long as the PHOSITA understood the parts relevant to solving the problem well enough to glean useful information.
Don’t get too amped up
The court concluded that the PTAB applied the wrong standard, but it didn’t go so far as to hold that no reasonable judge or jury could conclude the Mullen patent wasn’t analogous art and, therefore, irrelevant to the obviousness issue. Rather, it vacated the PTAB’s decision and sent the case back for the board to apply the correct standard.
