November 16, 2020 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (November 9-13): Analyzing Analogous Art

Last week, the Federal Circuit was relatively busy, issuing five precedential opinions and three other written decisions.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 5

Non-precedential opinions: 3

Rule 36: 6

Longest case pending from argument: Hessami v. MSPB, No. 19-2291 (189 days)

Shortest case pending case from argument (non-rule 36): In re: Google Technology Holdings LLC, No. 19-1828 (38 days)

Case of the week: Donner Technology, LLC v. Pro Stage Gear, LLC, No. 20-1104

Panel: Chief Judge Prost and Judges Dyk and Hughes, with Chief Judge Prost writing the opinion

You should read this case if: you have an obviousness issue where the prior art comes from a different field

In deciding whether a claimed invention is obvious, the Federal Circuit has held, the prior art that matters is the “analogous art.”  What is “analogous art”?  The Court took up that question in our case of the week.

This case involves a patent for a guitar effects pedalboard.  An electric guitar can be connected to pedals that make sound effects.  A pedalboard, as the name suggests, is a board that houses the pedals.  According to the patent, prior art pedalboards made it difficult to swap or rearrange pedals because of how the wiring was laid out.  The claimed invention aims to solve that problem with a different way of mounting pedals and routing wires.

The IPR petition in this case challenges various claims as obvious in light of a patent relating to electrical relays.  That patent—we’ll follow the Court’s lead and call it the “Mullen” patent—issued several decades earlier and describes a structure that provides space for wiring channels.

The PTAB rejected the obviousness challenge because it determined that the Mullen patent is not “analogous art.”  The Federal Circuit vacated the decision, finding multiple errors in the PTAB’s “analogous art” analysis.

The Mullen patent, all agreed, is not from the “same field of endeavor” as the claimed invention (one concerns electrical relays; the other concerns guitar pedalboards).  Therefore, under Federal Circuit precedent, the reference is analogous art only if it “still is reasonably pertinent to the particular problem” addressed by the patent.  The Court held that this means “the problems to which both relate” (meaning both the reference and the claimed invention) “must be identified and compared.”

The PTAB failed to do so, the Court held.  For one, the PTAB never identified the problem addressed by the prior art reference.  For another, the PTAB didn’t properly identify the problem addressed by the claimed invention.  According to the PTAB, the patent’s purpose was “to mount guitar effects on a pedal board.”  The Court rejected this as a factual matter, finding it not supported by substantial evidence.  The Court also found legal error, holding that the PTAB’s characterization of the patent’s purpose “is so intertwined with the patent’s field of endeavor that it would effectively exclude consideration of any references outside that field.”  Future cases may hash out just how broadly to define the problem a patent is trying to solve.

The Court also noted yet another reversible error for good measure:  The PTAB appeared to have ignored arguments and evidence presented by the petitioner.

The Court went on to address three considerations the PTAB had relied on.  First, the PTAB noted “significant differences” between the Mullen patent and the claimed invention.  Second, the PTAB concluded that the relevant person of ordinary skill would have had a poor understanding of the Mullen technology.  Third, the Mullen patent was much older than the claimed invention.  These considerations were insufficient standing alone to make the Mullen patent irrelevant, the Federal Circuit held, because the PTAB failed to connect these observations to the governing legal standard.

By this point, the Court had all but held that the Mullen patent was analogous art.  Yet the Court stopped short of saying so.  Instead, it vacated the PTAB’s decision and left it to the Board to apply the clarified legal standard to these facts.  The Court may have been driven by scrupulous adherence to principles of judicial modesty.  Or maybe the panel members disagreed over whether the Mullen patent was indeed analogous art, and this narrow result was an effective compromise that yielded this instructive—and unanimous—opinion.