Randall MFG v. Rea (Fed. Cir. 2013) (Inter Partes Reexamination No. 95/000,326)
FG Products owns U.S. patent No. 7,214,017 that is directed to a moveable bulkhead for partitioning cargo space in a shipping container. Back in 2007, Randall requested inter partes reexamination of the '017 patent. The reexamination examiner found the claims as obvious based upon a combination of three prior art references. However, in a 2012 decision, the USPTO's Board reversed – finding that someone of skill in the art "would not reasonably have appreciated" that the prior art could be combined in the manner suggested. Now on appeal, the Federal Circuit has vacated the Board Decision – finding that the Board's approach failed because it narrowly focused on the four cited prior art references while ignoring other factual evidence presented. In essence, the Federal Circuit is demanding that the flexible analysis of KSR be applied by the USPTO.
In KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior-art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. Rejecting a blinkered focus on individual documents, the Court required an analysis that reads the prior art in context, taking account of "demands known to the design community," "the background knowledge possessed by a person having ordinary skill in the art," and "the inferences and creative steps that a person of ordinary skill in the art would employ." KSR. . . .
The Board's analysis in this case ran afoul of that basic mandate. By 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. As KSR established, the knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious. . . .
The Board's failure to consider that evidence—its failure to consider the knowledge of one of skill in the art appropriately—was plainly prejudicial. Once it is established that a prevalent, perhaps even predominant, method of stowing a bulkhead panel was to raise it to the ceiling, it is hard to see why one of skill in the art would not have thought to modify Aquino to include this feature—doing so would allow the designer to achieve the other advantages of the Aquino assembly while using a stowage strategy that was very familiar in the industry. Moreover, although FG claims that, as depicted, the panels of Aquino may have been impeded by the rails from being raised all the way to the ceiling, there is no dispute that it would have been well within the capabilities of an ordinary bulkhead designer to adjust the geometry ( e.g., drop the hinge axis down a few inches) so that the panels could be freely raised to the ceiling. There are no apparent functional concerns that would have discouraged a bulkhead designer of ordinary skill from attempting the combination.
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." KSR (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, (1976)). In addition, neither FG nor the Board points to any objective indicia of non-obviousness. On this record, the Board's finding of lack of motivation to combine is infected by prejudicial error. We accordingly vacate the Board's reversal of the Examiner's rejection.
Based upon Judge Taranto's writing here, it is unclear why he chose to vacate the Board holding rather than reverse as the Supreme Court did in KSR. Joining Judge Taranto on the panel were Judges Dyk and Rader.
In the context of the hallmark obviousness case of Graham v. John Deere, 383 U.S. 1 (1966), this case should probably be seen as placing focus on "the level of ordinary skill in the pertinent art" and a mechanism for evidencing the type of creativity
One interesting issue that I'll write on more later is that the Federal Circuit did not address the issue of standing – i.e., whether there is a sufficiently ripe case-or-controversy between the parties to comply with that Constitutional requirement.