Federal Circuit kicks another one back for lack of supporting analysis

This one to PTAB, for not explaining the analysis supporting their conclusion that a reference was nonanalogous art.

Donner v ProStage

Procedural Background

ProStage Gear (“ProStage”) owns US Patent No. 6,459,023 (“the ‘023 patent”), directed to improved pedal effects boards.  In particular, the claimed boards are said to allow easy positioning and movement of individual pedals.  The boards are also alleged to provide a secure area for cable routing.  Donner Technology (“Donner”) petitioned for inter partes review of the ‘023 patent, raising obviousness challenges against various claims.  PTAB refused to institute review on the ground that Donner had failed to prove that the reference relied upon (“Mullen”)was analogous art.  Donner appealed.

The Claimed Board vs Prior Art Relays

The claimed pedal board resembles a pallet, i.e., with a number of longitudinal surfaces, interspersed with longitudinal openings.  Cables pass through the longitudinal openings and are connected to the guitar effects mounted on the longitudinal surfaces.  One side of the pedal board is raised relative to the other.

The asserted reference, US Patent No. 3,504,311 to Mullen (“Mullen”), is directed to a relay device.  Mullen describes the patentable basis of the device as its provision of an improved support for one or more relay structures with space provided for wiring connections.  Donner alleged that the structure of Mullen thus includes the surfaces for mounting relays, cable connection openings and area for routing cables claimed by the ‘023 patent.

Failure to Consider Evidence

Initially, the Court found troubling the Board’s statement that Donner did “not put forth any argument or evidence to explain what would have compelled a pedalboard inventor in 1999 or 2000 to consider potential solutions arising from early 1970’s-era relay technologies”, when Donner had in fact put forth both.  The Board’s assertion, contrary to the record, the Court held, made it “unclear whether the Board meaningfully considered all of Donner’s arguments and evidence.”  One might argue that there was no lack of clarity – the Board not only didn’t consider it, they didn’t even recognize it.

Same Field of Endeavor?

The Federal Circuit begin by reiterating that an obviousness analysis must begin with consideration of the scope and content of the prior art, followed by an analysis of the differences between the prior art and the claims at issue.  The scope of the prior art includes all analogous art.  Analogous art, in turn, is determined by a two step analysis.  The first test is whether the art is from the same field of endeavor, regardless of the problem addressed.  If the reference is not within the same field of endeavor, the reference may yet be deemed analogous art if the reference “is reasonably pertinent to the particular problem with which the inventor is involved.”

There was no dispute that the pedal effect board of ProStage and the relay device of Mullen are not within the same field of endeavor.

Reasonable Pertinence

Even if the Board would have passed the first hurdle, the Court found that the Board also “failed to identify and compare the purposes or problems to which Mullen and the ‘023 patent relate.”  Specifically, the Court held, the Board had articulated the purpose of the ‘023 patent as so intertwined with its field of endeavor to effectively exclude consideration of any reference outside that field.  This, the Court held, was error:

Importantly, this analysis must be carried out from the vantage point of a PHOSITA who is considering turning to the teachings of references outside her field of endeavor…Such a PHOSITA…would not identify the problems so narrowly so as to rule out all such art.  The Board’s characterization of the problem to which the claimed invention relates effectively collapses the field-of-endeavor and reasonable-pertinence inquiries and ignores that the reasonable-pertinence analysis must be carried out through the lens of a PHOSITA who is considering turning to art outside her field of endeavor.

The Court also faulted the Board for filing to identify the problems to which Mullen relates:

Because the Board failed to identify and compare the problems to which the ‘023 patent and Mullen relate, the Board failed to apply the proper standard.

And, although the Board had identified a number of differences between Mullen and the ‘023 patent, the Court was not mollified:

Importantly, the Board did not attempt to explain how the differences it mentioned establish that the references were not directed to solving a similar problem.

Finally, the Board failed to impress with its conclusion that a PHOSITA of guitar pedal effects would be incapable of understanding Mullen’s relay technology:

A PHOSITA might reasonably choose to consult a reference even if she would not understand every last detail of that reference, so long as she would understand the portions of the reference relevant to solving her problem well enough to glean useful information.

Disposition

Although this was all sounding pretty good for Donner, the Federal Circuit declined to give them the outcome they requested – a holding that Mullen is analogous art.  Instead, the Court held:

But, in general, appellate courts can rule on an issue of fact in the first instance only where “no reasonable fact finder could find otherwise.”  Although we conclude that the Board applied the wrong standard and might have failed to recognize certain arguments and evidence, we do not further hold that “no reasonable fact finder could conclude, under the proper standard,” that Mullen is not analogous art.