Using a Technique in a Known Way is Usually Obvious

Samsung Electroncs v. UUSI (Fed. Cir. 2019)

In the inter partes review (IPR), the PTAB sided with the patentee UUSI — finding that Samsung had failed to prove the obviousness of UUSI’s U.S. Patent No. 5,796,183.  On appeal, however, the Federal Circuit has vacated that decision — holding that the Board’s findings of no motivation-to-combine or reasonable-expectation-of-success were not supported by the evidence.

The patent is directed to multi-point capacitive sensing circuity – the type used for the multi-billion dollar touchscreen market. It’s 1996 priority date situates the invention before a substantial amount of prior art.  However, Samsung identified several key prior art references, including U.S. Patent Nos. 5,565,658 (Gerpheide), 5,087,825 (Ingraham), and 5,594,222 (Caldwell).

Obvious by Combination of References: Most often, obviousness is proven with a combination of references that collectively teach the claimed elements.  In addition to providing the set of prior art references, the patent challenger must also show that a person of skill in the art (POSITA) would have a “motivation to combine” the references in the way claimed and that such a combination would have a “reasonable expectation of success.”

In KSR v. Teleflex, the Supreme Court explained that the motivation to combine analysis is flexible and not bound to rigid limitations or requirements. The High Court explained: “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR.

Here, the PTAB decided to exclude Gerpheide from the analysis because its approach was directed toward single-point capacitive sensing rather the multi-point approach of the patentee.  On appeal, the Federal Circuit vacated that holding:

The Board’s categorical rejection of the teachings from a single input device to those of a multi input device is not supportable. . . . Samsung presented uncontested evidence that the combination of Ingraham and Caldwell would experience electrical interference, and Gerpheide taught a way to address electrical interference in capacitive touch devices. The fact that Gerpheide and Ingraham/Caldwell involved different types of capacitive touch devices (single versus multi input) does not undermine the motivation to combine the teachings of Gerpheide with Ingraham/Caldwell since
both devices can experience electrical interference. Gerpheide recognized this as a problem and provided a solution to reduce such interference. Thus, a person of skill in the art would have been motivated to include such a feature from analogous prior art in a multi input capacitive touch pad device (i.e., the device of the Ingraham/Caldwell combination). The Board’s contrary conclusion is not supportable.

With regard to reasonable expectation of success, the Federal Circuit also vacated — primarily holding “that the Board’s implicit claim construction was erroneous.”  Here, the Federal Circuit found that the PTAB had unduly narrowed the claim scope and that under the broader scope there may indeed be a reasonable expectation.

10 thoughts on “Using a Technique in a Known Way is Usually Obvious

  1. 4

    Top note on this case: “NOTE: This disposition is nonprecedential”

  2. 3

    For somebody in Europe, the different conclusions of the Board and the Fed Ct Panel as to exactly what is “the problem” are interesting, not least because the crux of the EPO enquiry into obviousness lies in the identification of “the objective technical problem”.

    Just as there are different degrees of abstraction when writing a claim, so there are different degrees when formulating the problem. Here, is it the problem solved by the prior art, namely “troublesome interference with the detection of finger positioning in a capacitative device, caused by spurious electrical signals” or is it the in-suit patent’s “unintended actuation of multi-input capacitative touch pads placed in close array, such as in a keyboard”.

    Is not the latter a sub-set of the former? Would not the notional, rational, diligent, unimaginative skilled person, faced with the specific keypad problem, recognise it as an artefact of the more general problem, how to detect finger position correctly, and then would not that same skilled person review the state of the art accordingly, in search of a plausible solution?

    If Yes, then it looks as if the Fed Ct Panel got it right.

    So, how about the reverse situation? Does it often happen, that the Board slaps down a claim duly issued by the USPTO, but then the Fed Ct puts it back up on its feet again? Relatively seldom, I suspect.

    1. 3.1

      Are you presupposing that the answer to your question of resolution of the more generic “problem” necessarily provides resolution of a different specific “problem?” Can (or even should) the ability to classify a specific problem as belonging to a subset of a larger generic grouping suffice?

      I think that the answer has to be “no,” since in the full application of the obviousness analysis, the analysis is not complete with a determination of concerned art fields being analogous (or even not being analogous but still related to the problem being resolved). More is still needed, eh?

    2. 3.2

      Max, as far as I am aware the Fed. Cir. has only reversed a PTAB IPR decision upholding claim validity 4 or 5 times, as contrasted to substantially more reversals of PTAB IPR claim invalidity decisions, and of course hundreds of Fed. Cir. decisions upholding PTAB decisions of claim invalidity or validity.

  3. 2

    Are Koreans bad?

  4. 1

    Unbelievable. CAFC is taking the patent of a rustbelt American inventor who managed to survive the PTAB gauntlet, and instead is helping the Korean infringer! What insanity. This nation has lost it’s collective mind.

    1. 1.1

      After the Patent Act of 2020…

      35 U.S.C 106:

      A patent for a claimed invention may not be maintained if the differences between attributes of the inventor and attributes of an infringer are such that an ordinary Republican voter would defend the claimed invention. Patentability may be confirmed by the race, religion, nationality, or gender identity of the infringer.

    2. 1.2

      Is “Josh Malone” deliberately joshing (to troll the thread) or is he serious (and thus seriously lacking in thinking power)?

      Readers, help me, for I am unable to tell whether he is a knave or (that other possibility), and that is what is worrying me.

      1. 1.2.1

        Don’t be worried, he is reacting emotionally and without reason. He is clearly off here.

      2. 1.2.2

        In a happier world, the high-schools would assign Bastiat, and concepts like gains from trade and the broken windows fallacy would be as much a part of our shared intellectual currency as “we the people…” or “do unto others… .” In this world, however, I tend toward the regrettable suspicion that #1 was meant in earnest.

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