Oral argument of the week: Philips Lighting N.A. v. Wangs Alliance Corp.

The oral argument of the week is from PHILIPS LIGHTING NORTH AMERICA v. WANGS ALLIANCE CORPORATION, No. 2017-1526 (Fed. Cir. Apr. 18, 2018).  The oral argument is interesting for its discussion of “design choice” as well as other issues concerning motivation to combine references in an obviousness argument.

You can listen to the oral argument below:

You can read the court’s opinion [here].

The pertinent portion of the opinion reads:

Philips complains that the Board did not identify the specific “affirmative reason” for a person of skill looking at Hochstein to adopt the alternative configuration in Hildebrand. But in the circumstances of this case, we conclude, Philips is demanding too much. Under KSR, we see no need for more than what the Board found in this case, including that (1) there were just two obvious design choices in the respect put at issue (Hochstein and Hildebrand), which solve the same problem in the same way but with the filter and current-conducting network swapped in their locations, (2) the two references “show the demand for designs that solve the known problem,” id. at 33; (3) Hildebrand’s location choice was a common and approved design that could be used in Hochstein; and (4) Hochstein would not malfunction if modified to use such a design. These findings suffice to establish a reason for a skilled artisan, seeking to solve the status-test problem, to use a three-component circuit arrangement as found in both references and to choose either of the two disclosed orders of the first two components within that arrangement—specifically, the order that is especially common in the art and that is used in the ‘988 patent. See KSR, 550 U.S. at 416 (combining “familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).

PHILIPS LIGHTING NORTH AMERICA v. WANGS ALLIANCE CORPORATION, No. 2017-1526 (Fed. Cir. Apr. 18, 2018).

During the oral argument, the appellant repeatedly referenced three cases: Metalcraft v. Toro, ActiveVideo v. Verizon, and Innogenetics v. Abbott.  Since the court’s opinion does not mention those cases, I thought it might be helpful to reproduce them below for your reference as you listen to the oral argument.

 

The district court rejected Toro’s motivation to combine argument. It recognized that “a patent `composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art'” and that “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” J.A. 13-14 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007)). It concluded that Toro failed to raise a substantial question of validity, stating Toro offered “no reason, and the Court cannot imagine one, that a person of ordinary skill in this field would combine a motorcycle shock with a suspended truck cab and come up with a suspended operator platform.” J.A. 13-14.

On appeal, Toro argues the district court’s analysis is inconsistent with KSR, 550 U.S. at 420-21, 127 S.Ct. 1727, which stated: “The idea that a designer hoping to make an adjustable electronic pedal would ignore Asano because Asano was designed to solve the constant ratio problem makes little sense. A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Toro argues it would have been obvious to a person of skill in the art to combine Henriksson and Sasaki because Henriksson sought to solve the problem of transmission of shock loads to the operator and specified conventional and telescope-type shock absorbers as methods of reducing shock loads.

We hold that the district court’s finding that there would not have been a motivation to combine is not clearly erroneous. The district court correctly acknowledged that it is not enough for Toro to merely demonstrate that elements of the claimed invention were independently known in the prior art. Often, every element of a claimed invention can be found in the prior art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Moreover, Toro merely identifies a problem that Henriksson sought to solve. However, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008).

We agree with the district court that Toro provides no explanation or reasoning for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. See KSR, 550 U.S. at 421, 127 S.Ct. 1727. And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. See KSR, 550 U.S. at 419, 421, 127 S.Ct. 1727. For these reasons, we conclude that the district court did not abuse its discretion in rejecting Toro’s obviousness defense and determining that Toro did not raise a substantial question of validity.

Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017).

 

We agree with the district court that the obviousness testimony by Verizon’s expert was conclusory and factually unsupported. Although Verizon’s expert testified that “[t]hese are all components that are modular, and when I add one, it doesn’t change the way the other one works,” J.A. 4709, he never provided any factual basis for his assertions. The expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims. Rather, the expert’s testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the “modular” nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias. See KSR, 550 U.S. at 418, 127 S.Ct. 1727 (“A patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373-74 (Fed.Cir. 2008) (“Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness.”).

1328*1328 The opinion by Verizon’s expert regarding the motivation to combine references was likewise insufficient. Verizon’s expert testified that:

The motivation to combine would be because you wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before.

J.A. 4709-10. This testimony is generic and bears no relation to any specific combination of prior art elements. It also fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does. See KSR, 550 U.S. at 418, 127 S.Ct. 1727 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does … because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”); Innogenetics, 512 F.3d at 1373 (Fed.Cir.2008) (“[K]nowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references….”). Because the record evidence was insufficient for a reasonable jury to support a determination of obviousness, the district court’s grant of ActiveVideo’s JMOL on obviousness was not erroneous.

ActiveVideo Networks v. Verizon Communications, 694 F.3d 1312, 1327-28 (Fed. Cir. 2012).

 

Dr. Patterson merely lists a number of prior art references and then concludes with the stock phrase “to one skilled in the art it would have been obvious to perform the genotyping method in [claims 1-9 & 12-13] of the ‘704 patent.”[2] “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.Cir.2006); see also KSR Int’l Co. v. Teleflex Inc., ___ U.S. ___, 127 S.Ct. 1727, 1741, 167 L.Ed.2d 705 (2007) (“To facilitate review, this analysis should be made explicit.”) (citing Kahn, 441 F.3d at 988). Nowhere does Dr. Patterson state how or why a person ordinarily skilled in the art would have found the claims of the ‘704 patent obvious in light of some combination of those particular references. As the district court found: “It is not credible to think that a lay jury could examine the Cha application, the Resnick ‘718 patent that defendant cited as prior art or any of the other references and determine on its own whether there were differences among them and the ‘704 patent.” Innogenetics, N.V. v. Abbott Labs., No. 05-0575-C, slip op. at 14 (W.D.Wis. Jan. 3, 2007). Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness. See Graham v. John Deere Co., 383 U.S. 1, 36, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) (discussing the “importance of guarding against hindsight… and resisting] the temptation to read into the prior art the teachings of the invention in issue” when considering the obviousness of a patent).

On appeal, Abbott argues in a single sentence, without any explanation, that the district court erred in concluding that Dr. Patterson did not offer any evidence of a “motivation to combine” the various prior art references that he opined rendered the claims of the ‘704 patent obvious. To be sure, Dr. Patterson suggested that one of skill in the art was motivated to find a method capable of genotyping because at least one prior art reference had disclosed that “different genotypes of HCV respond differently to interferon therapy.” The district court was nevertheless correct that knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method. Innogenetics, slip op. at 14 (“A generalized motivation to develop a method is not the kind of motivation required by the patent laws.”). We cannot conclude that the district 1374*1374 court abused its discretion when it precluded Dr. Patterson’s vague and conclusory obviousness testimony which did not offer any motivation for one skilled in the art to combine the particular references he cites in order to practice the claimed method.[3]

Abbott also argues that there is no requirement that an expert opine on motivation to combine references, and that motivation can be established by other witnesses or the prior art. Abbott is correct that an expert is not the only source for evidence that it would be obvious for one skilled in the art to combine references to reach the claimed method. But, as the district court held, “some kind of motivation must be shown from some source, so that the jury can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented method.” Id. at 13.

Innogenetics, NV v. Abbott Laboratories, 512 F.3d 1363, 1373-74 (Fed. Cir. 2008).


Just for my own benefit for future reference, here is a related quote from Personal Web Technologies v. Apple:

The Board’s reasoning is also deficient in its finding that a relevant skilled artisan would have had a motivation to combine Woodhill and Stefik in the way claimed in the ‘310 patent claims at issue and would have had a reasonable expectation of success in doing so. The Board’s most substantial discussion of this issue merely agrees with Apple’s contention that “a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature.” Id. at *8 (emphasis added). But that reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation 994*994 to pick out those two references and combine them to arrive at the claimed invention. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).

If the Board’s statement were read more broadly, it would not be adequately explained and grounded in evidence. Indeed, the Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work. At least in this case, such a clear, evidence-supported account of the contemplated workings of the combination is a prerequisite to adequately explaining and supporting a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.

 

Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017).

 

Comments are closed.