Analogous Art: What is the “Particular Problem”?

Donner Technology, LLC v. Pro Stage Gear, LLC, App. No. 20-1104 (Fed. Cir. 2020)

The PTAB sided with the IPR patentee — finding the cited prior art had not been proven “analogous” On appeal, the Federal Circuit has vacated and remanded for lack of substantial evidence to support that conclusion.

The Analogous Art Test: Federal Circuit obviousness doctrine begins with prior art as defined by 35 U.S.C. 102, but then limits the scope of potential references with the “analogous art” test.  The test appears to have its origin in Judge Giles Sutherland Rich’s 1966 decision of In re Winslow, 365 F.2d 1017, 1020 (Cust. & Pat. App. 1966) (“Section 103 requires us to presume full knowledge by the inventor of the prior art in the field of his endeavor.”).  There are two potential ways of showing that a reference is analogous. The first option follows directly from Winslow, asking “whether the art is from the same field of endeavor, regardless of the problem addressed.”  In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).  The alternative asks “whether the reference … is reasonably pertinent to the particular problem with which the inventor is involved.” Id.  If either prong is met (a factual question), then the reference is deemed analogous and available for use in an obviousness argument.  I believe a fair reading of KSR further expands the doctrine, but the courts have not gone there.

In the same way that a pretextual police stop opens the door to more invasive searches, the analogous arts test also opens the door to more extensive obviousness analysis. In particular, once the reference is admitted as analogous art, any aspect of the reference (including non-analogous aspects) can be used.

Here, Pro Stage Gear’s US 6,459,023 is directed to a guitar effects pedalboard with space for mounting guitar pedals and running cables.  The image above comes from the patent and shows the patented mounting-board with various controls attached.

Donner petitioned for IPR citing US 3,504,311 (along with several other references).  The ‘311 patent has nothing to do with guitars or guitar pedals.  Rather, that patent is directed to electrical relays, including a support structure for holding a relay and wiring-channel space.

The PTAB found the ‘311 patent non-analogous.  On appeal, that judgment was vacated.  Although everyone recognized the patent came from a different field of endeavor, the fight was on the second-prong — whether it addressed the same-problem as the ‘023 inventors faced.

On appeal, the court first addresses the PTAB’s apparent failure to read the briefs:

The Board erroneously stated that Donner did ‘not put forth any argument’ [that the ‘311 patent addressed questions considered by] a pedalboard inventor. . . . “To the contrary, Donner submitted detailed expert testimony relevant to the inquiry. . . . Given the Board’s mistaken assertion to the contrary, it is unclear whether the Board meaningfully considered all of Donner’s arguments and evidence.”

On a more substantive push, the court found that the Board had improperly tied the patentee’s problem-to-be-solved to the field-of-endeavor without actually focusing on the true nature of the problem:

For instance, the Board at one point stated that the “purpose of the ’023 patent” is “to mount guitar effects on a pedal board.” But substantial evidence does not support that statement. As the
’023 patent readily discloses, guitar effects had already been mounted on a pedalboard. Thus, that could not possibly be a relevant purpose of the invention. Indeed, with respect to the analogous art inquiry, the relevant purposes of an invention are those relating to solving a problem.

Slip Op. In the end, the court remanded for reconsideration rather than offering a complete reversal:

Although we conclude that the Board applied the wrong standard and might have failed to analyze 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. Accordingly, we leave this factual issue for the Board to resolve on remand.

Id.   This outcome appears correct since the question of analogous art is a question of fact.  What the court is really holding here is that substantial evidence did not support the PTAB’s factual conclusion.

 

 

 

65 thoughts on “Analogous Art: What is the “Particular Problem”?

  1. 7

    We need to come up with a way for the USPTO to pre-approve a patent BEFORE it is infringed. Like they should hire maybe 8,000 examiners, bring on a few hundred supervisors, put together a practice manual, install a quality assurance system. The examiner and applicant could compare the prior art to the new invention and come up with language to distinguish the invention. The examiner and supervisor could be persons of ordinary skill. They could decide, like before they issue the patent, whether or not it would be obvious, what is analogous art, whether there would be a motivation to combine the prior art, and evaluate other indicia like long felt need, teaching away, commercial success, industry praise. I propose that we come up with a patent system that does this BEFORE the patent issues rather than after.

    1. 7.1

      You forgot to indicate that you are holding up an “S”‘sign. I will often use the emoticon of to provide that impression (although the use may be broader, its meaning will be clear in a given context).

    2. 7.2

      That’s a great idea, but I’ve got one little tweak to suggest. Let’s do all that, but give the examiners a small fraction of the time necessary to fully search the art. That way we have the cover of “patent examination”, but we can still get patents on obvious inventions!

      1. 7.2.1

        That ‘time’ being sufficient or not is between you (and the Royal You), your union, and your employer.

        Do not attempt to make your internal issue be the concern of those seeking to protect their innovation.

        1. 7.2.1.1

          Karen: “There’s hair in my cheeseburger!”
          McDonald’s Manager: “Corporate only gives us 3 cents per patty, and the only patties you can buy at that rate have hair in them.”
          Karen: “That’s not my problem!”

          Except it’s true that it’s not anon’s problem. He’s not eating the cheeseburger, he’s facilitating it’s delivery to people like Josh. No wonder he doesn’t care about the hairy cheeseburger. Ask yourself this Josh, who benefits from low examination costs? Is it you the inventor? Is it the PTO? Or is it the group in between the PTO and inventors?

          1. 7.2.1.1.1

            Ben, those are great questions. They deserve to be put to the members of the EPO’s governing “Administrative Council” (AC) the “owner” of the EPO.

            The EPO is owned by the 38 countries that are its Member States. Each has a seat on the Board (the AC). For its shareholding, each wants a steady flow of dividends. The President of the EPO is only too happy to oblige. The more generous the dividend, the more like putty is the AC in his hands.

            The President is on a short term contract. So now, gentle reader, if you were parachuted into the job of EPO President, how would you decide what level to set, for EPO fees. you need to bear in mind that Applicants have a choice. If they don’t like the fees at the EPO, they can switch to filing at up to 38 national Patent Offices instead.

            In particular, what fees would you set, for filing a post-issue opposition, an opposition which, if successful, wipes out the patent in all 38 Member States?

            Currently, the opposition fee is EUR 815
            link to epo.org

            1. 7.2.1.1.1.1

              Reading my comment now, it strikes me that Josh will say that the EPO Opposition Fee is far too low, enabling abuse of impecunious patent owners by deep pocket Big Corp opponents.

              Yet, at the EPO, it doesn’t work like that. Why? One reason might be the no-nonsense approach the EPO takes to opposition procedure. If the patent is bad, it is soon revoked but if it is not bad, it sees off the opposition in short order and at modest cost.

              Another reason might be that if the opposition fails to dent the patent, that will leave the infringer poorly positioned, as Defendant in an infringement court, to resist the speedy grant to the patent owner of injunctive relief from infringement.

              So when my client finds their patent opposed at the EPO, I comfort them with the thought that Opponent is simply digging itself a deeper hole, while lifting up higher the presumption of validity that the patent enjoys.

              Josh, tell me please, where (if anywhere) you find fault with the patent system in Europe.

              1. 7.2.1.1.1.1.1

                while lifting up higher the presumption of validity that the patent enjoys.

                Hmm, a ‘pregnant’ statement, there.

          2. 7.2.1.1.2

            Ben,

            Practitioners have zero to do with setting of fees.

            That you intimate otherwise is only impugning your own veracity.

            1. 7.2.1.1.2.1

              “Practitioners have zero to do with setting of fees.”

              Wow. Just wow.

              Would you like to rethink that, 20 bucks a pop?

              1. 7.2.1.1.2.1.1

                Lol – what exactly are you “wowing” about here?

                Is there something from your role in the patent office prior to your retirement that you would like to share?

                1. Obtuse. Is it deliberate?

                  Now that it is clear what phrase, maybe share why — to you — that would make you exclaim so.

                2. Where to begin? Ok. First, Ever hear of notice and comment rule making wherever it is that you are, 50 cents a pop?

                3. Sure, I have heard of notice and comment.

                  Is notice and comment at play here?

                  (Hint: that would be a no).

                  Maybe instead of so desperately trying to play ‘gotcha,’ you try just a little to understand the context of the conversation that you are jumping into.

                  I know it is difficult for you. Your latest game of posting the same meme/tell across a half dozen threads, regardless of the context of the threads, and so obsessed with posting to or about me, but you really should try to understand that when you interject your self into a conversation, that there is likely a context to that conversation, and that YOUR understanding of that context would go a long ways towards you actually adding something remotely inte11igent.

                4. And, let me add, that if you have a link to any notice and comment TO the ‘in context’ discussion of how practitioners do affect fee setting — context being the discussion between Ben and I that you inserted yourself into, by all means, please provide a ‘link,’ or some other old-fashioned way of informing others of this support for your assertion.

          3. 7.2.1.1.3

            To use your own analogy Ben, “Karen” is NOT buying a “hairy cheeseburger,” but is buying a cheeseburger “under the law with the presumption that a full and proper examination has been done.

            You (and the Royal You and the Union) are the ones that have bartered for that internal ‘3 cents per patty’ mark. What has been purchased is NOT your internal dealings.

            Your very example STILL shows YOU trying to make external folks be responsible for your internal wrangling.

            You prove my point in doing so.

          4. 7.2.1.1.4

            Ben hits all the talking points of the anti-patent crowd. He obviously is more than an examiner as he either copies and pastes from a paid blogger job or he is someone higher up.

            But, this is one of the arguments pushed around that poor examination/cheap is something patent attorneys want. Not true and the better the patent attorney the more they want great prosecution by the examiners.

            All our skill is voided when examiners allow claims that shouldn’t be allowed, which is probably about 1/3 of the time.

            Furthermore it isn’t really clear there is a correlation between our fees and the fees at the PTO. There are short term couplings so that there may be a budget for a corporation and raising the fees puts pressure on our fees and the number of filings.

            But if fees doubled and the value of a patent doubled as a result that would probably mean the quality prosecutors could charge more.

            1. 7.2.1.1.4.1

              “Patent Attorneys Want Cheap Examination” isn’t really up for debate. Back when the PTO put out a request for comments regarding examination time, the AIPLA’s response was basically “but if you increase examination time, fees will go up. Just fix examination without increasing time, please.” Perhaps that attitude is not motivated by a desire for poor examination. But it’s beyond question that the patent bar is not begging for the opportunity to pay for EPO levels of search.

              NW, your comment references how quality prosecutors might benefit from better examination. I’d actually agree. But surely you can acknowledge that it doesn’t necessarily follow that it would be beneficial to those at the bottom of the quality spectrum.

              1. 7.2.1.1.4.1.1

                Ben,

                You do realize that your “some practitioners want cr@ ppy examination” IS one of the ‘talking points’ that Night Writer references, right?

                This reminds me of my retorts to Malcolm, who (for some reason ) could never accept MY position of wanting the most diligent examination as being the best thing for my clients, and how the focus on “improving patent quality” NEED BE on improving patent examination quality.

      2. 7.2.2

        ” Let’s do all that, but give the examiners a small fraction of the time necessary to fully search the art. ”

        I’m not in favor of any more time for examiners. For one reason: they won’t use it to “fully search the art” as is so often argued.

        We could double, triple, even quadruple the time given to examiners. And what would result is more of the same. The same 4, 5, 6+ reference combinations against 4 step method claims. The same rejections that acknowledge that the combination of umpteen references doesn’t disclose one, two , three of the claim features but a conclusion of obviousness based on the taking of Official Notice that it’s inherently obvious to optimize the prior art through routine experimentation (see MPEP section whatever and all of the ridiculously mischaracterized boilerplate case law that the editors of the MPEP have seen fit to cite).

        Giving the examiners more time is going to keep rejections like that from being issued. So please stop with the “examiners need more time to search!!!!!” narrative. Nobody believes it. What examiners need is the ability to examine the application in accordance with the law, and without the shadow of the brain dead OPQA folks hovering over them.

        1. 7.2.2.1

          Thank you for demonstrating so clearly that some practicioners are truly against additional examination time.

          “We could double, triple, even quadruple the time given to examiners. And what would result is more of the same.”

          Believing that quality is perfectly inelastic with examination time is just silly.

          FWIW, I think additional examination time should provided in combination with more stringent quality requirements.

          There are structural issues at the PTO which should be resolved. Those issues don’t undermine what a farce it is to say that 25 hours is enough time to examine the most complex inventions.

          1. 7.2.2.1.1

            You absolutely miss his point Ben by seeking to dismiss it outright, and then try to push the comment as supporting your prior statement.

            That’s just wrong on many levels.

            May there be some inelasticity?

            Absolutely.

            Does he have a point on the ridiculousness of ‘quality review’ that is asymmetric?

            Absolutely.

            You yourself appear to provide for some level of this with your noting of increased stringency with that more time.

            Basically, this is NOT nearly so much a “no more time ever” position, as it is “OTHER improvements should be made before ‘more time’ comes into the picture.

  2. 6

    I’m scratching my head over the financial optics.

    How could this suit / defense cost be justified? While I haven’t read the spec or claims, couldn’t the patent be relatively inexpensively innovated around?

  3. 5

    ” I believe a fair reading of KSR further expands the doctrine, but the courts have not gone there.”

    Whether any of the prior art references involved in KSR (e.g. Asano, etc.) were “analogous” was never at issue. All of the prior art was from the field of endeavor.

    The PTO has gone “there” with their revisions to the MPEP in section 2141+. Citing a precedent for an issue that was never at issue or addressed is not fair, it is improper.

    1. 5.1

      Good point, the references combined in KSR were from the same general field, but KSR also says that: “When a work
      is available in one field of endeavor, design incentives and
      other market forces can prompt variations of it, either in
      the same field or a different one.” And further says that the POSITA must be considered to have common sense and common knowledge.

      1. 5.1.1

        How much of that is pure legislating from the Bench?

        1. 5.1.1.1

          These days — and especially so with 101 / eligibility — how much is not legislating from the Bench?

        2. 5.1.1.2

          I don’t think any of it is “legislating from the bench.” Section 103 requires interpretation. What does “would have been obvious” mean? How do we determine what “would have been obvious”? What is “the art to which the claimed invention pertains”? As NW notes, I think the comment at 1.2.1 is spot on: we need an objective standard (e.g. TSM) and KSR introduced what many regard as subjectivity. The EPO’s PSA approach works great, but there’s little chance of either the legislature or courts giving us that. But for the court to determine that “art to which the claimed invention pertains” includes art from the claimed field of endeavor and art that is reasonably pertinent to the particular problem with which Applicant was concerned isn’t legislating from the bench.

          The case law on 101 is all garbage and is clearly legislating from the bench.

      2. 5.1.2

        That’s pure dicta. Nothing in KSR addressed the issue of what is or what is not analogous prior art (i.e. subject matter that pertains to the claimed invention).

        1. 5.1.2.1

          Several years back, the late Ned Heller provided a link to a scholarly tome regarding the dangers of legislating from the bench especially dealing with turning dicta into ‘hard law.’

          I have lost the bookmark. If there is anyone out there that can provide a link, it would be greatly appreciated.

  4. 4

    An unsurprising result in view of the judges: Prost, Dyk and Hughes – a piece of information that, yet again, Dennis omits. These omissions would be fine if all CAFC judges were of one mind and thus the panel composition irrelevant, but the overwhelming evidence says otherwise.

    1. 4.1

      Plus one…

      …million.

  5. 3

    I continue to be amazed to see Fed. Cir. 103 decisions like this not even citing the controlling Sup. Ct. decision on 35 USC 103, and instead citing and treating some Fed. Cir. decision as if that is superior legal authority.
    Furthermore, a relevant Fed. Cir. decision that could have been cited was not. That was a 103 decision on circuitry in an electronic baseball park sign, noting that the POSITA would be an electronics POSITA, not a baseball park sign builder. Here, in contrast: “The Board also explained that the relevant PHOSITA would have a “relatively low level” of skill and would have “had a poor understanding of Mullen’s relay technology.” [I.e., apparently assuming that someone hired to design a a better electrical circuit unit for a guitar foot-pedal would be an electrically ignorant guitar player.] The Fed. Cir. should have criticised that finding as well.

    1. 3.1

      In other words, what is analogous art is logically related to what art the POSITA would logically look to, which is highly affected by who the POSITA would be for the particular claimed invention, and not just a product-customer-user POSITA.

      1. 3.1.1

        What is a “product-customer-user POSITA?”

        1. 3.1.1.1

          An erroneously-determined POSITA in cases like this one.

        2. 3.1.1.2

          Sad. You are just plumb out of ideas, 50 cent. Time for one of your patented tells. Maybe something about a “game” ?

          1. 3.1.1.2.1

            Your tell of the game of projecting your own faults does not f00l anyone.

            Odd that you would choose this comment in a dialogue between Paul and I to insert your non sense is, well, typical nonsense.

            1. 3.1.1.2.1.1

              Ding Ding Ding ! ! ! “game”. !!!

              Didn’t we tell you? 50 cent just can’t help it with the tells ! ! !

              1. 3.1.1.2.1.1.1

                I love the fact that you use a tell about tells.

                Yes, ‘game’ is exactly appropriate here to describe YOUR choice of actions.

                And thanks for the gratis fifty cents.

                By the way, who is this ‘we’ that has been doing this ‘telling?’

  6. 2

    To the larger thread here, be aware of (and beware of) the camel nose under the tent of “or problem associated with.”

    From an historical perspective, invention has LONG come from the creative co-mingling across fields of endeavor SOLELY based on the notion of “or problem associated with.”

    See the classic 1970’s Burke television serious ‘Connections’ for many entertaining expositions of this theme.

  7. 1

    I’ve always been puzzled about the analogous art test. Why must 103 art be analogous to the claimed invention rather than to the other art with which it is being combined? Shouldn’t the doctrine be about determining if the supposedly combinable teachings are things that a POSITA would actually have in mind together?

    1. 1.1

      Easwaran,

      You arrive at the same place by way of a different path.

      Consider “analagous” as nothing more than a reflection of the portion of the phrase “In The Art” from your POSITA term.

      The easier way to think of this is that 102 art and 103 art are NOT meant to have the same source, or “universe” to draw from.

      If they were, then literally nothing would be patentable as there is nothing ‘new’ (in that sense) under the sun.

      Well, maybe except the one or two patents for man made chemical elements.

    2. 1.2

      … I would add that your phrase of “supposedly combinable teachings are things that a POSITA would actually have in mind together” (my emphasis added)

      does bring to mind one of my bugaboos of how examiners incorrectly use the “motivation to combine prong.”

      That some motivation (even if but only seen from a ‘hind’ position) exists is practically guaranteed (else, the invention itself would lack utility).

      All too often I see a motivation of one item’s benefit – in and of itself – offered as the motivation to combine.

      This would be legal error.

      The full legal term is different than the individual elements of the term.

      The “TO combine” moves the focus from a mere ‘could’ to a more pronounced ‘would.’

      Of course, it was the legislating from the bench, patent-profanity inducing Supreme Court messing with this that has boogered things up.

      In their haste to deny patent coverage, they expand the powers of obviousness and muddy the line between “would” and “could” (what the H is “ordinary level of creativity” if nothing else but Flash of Genius in another form?)

      ALL of this goes back to the pre-1952 Court self-christened with the phrase “the only valid patent is one that has not yet appeared before us,” the reaction by Congress to strip from that Court the (nebulous) power to set the meaning of invention by breaking up the pre-1952 paragraph and introducing sections 101-103, and the subsequent muddling of BOTH 103 and 101 by the Court in the greedy fingers of that Court clutching onto it’s pretty-1952 power.

      Those that do not learn from history are bound to repeat it, and We (the Royal We) have
      F
      A
      I
      L
      E
      D
      miserably to learn from history on the whole 101/103 kit and kaboodle.

      1. 1.2.1

        Totally agree with your point about SCOTUS sliding back into the pre-52 Act analysis. On 101, without question, has revived the gist or heart of the invention test by another name. And now 102/103 and of course KSR. Considering a major goal of the ’52 Act was to great an objective evidence/reviewable legal structure to patent system, SCOTUS has been doing it’s best to dismantle that system. Consider the KSR, interjection of ‘common sense.’ That’s clearly a subjective standard in contrast to the TSM framework attempting (albeit nothing is perfect) an objective standard. The heart of the issue is Justice Breyer’s ‘optimal result’ view of the world, wherein he thinks his ‘public policy’ is empowering the Courts with ‘discretion’ to impose ‘optimal solutions.’ Whereas to the people in practice he has created an unpredictable crap shoot and of course the forum shopping so dispositive under the pre-52 law.

        1. 1.2.1.1

          I could not agree more iwasthere.

          And, how do you improve quality of patents with subjective tests? You can’t.

          1. 1.2.1.1.1

            To continue down your point, Night Writer, there is a serious — and systemic — flaw in the view (as advanced by proponents of the AIA’s post grant review processes) that these items ARE “quality control” mechanisms.

            Anyone with any real world industrial process experience can quickly appreciate that the type of “warranty/post sales” work of the post grant processes — being untethered to any ‘manufacturing’ aspect of the pre-grant process, means that claims of “improve quality” are in fact meaningless.

            This is even beyond the fact that we have (and this has been recognized by high ranking members of each of the three branches of government) a Gordian Knot of conflicting case law (read that as scrivining and legislating from the bench).

      2. 1.2.2

        So, what is the most persuasive imaginary brief you ever wrote?

        1. 1.2.2.1

          Again with the tactic of the false assertion?

          Y
          A
          W
          N

          1. 1.2.2.1.1

            Just a suggestion . . . Do not lead with that when a potential (actual) employer might ask you a question.

            1. 1.2.2.1.1.1

              Your suggestion is most odd, as NO prospective employer would act as you do.

              You do realize that it is your choice that brings the sma ckdown from me, eh?

              I have a better suggestion for you:

              Realize how pa thet ic you are.

              1. 1.2.2.1.1.1.1

                Well, someday you may need to move out of the parents basement and get a real job. Glad you’re open to alternative ideas.

                1. I see that you are projecting again — or have you merely gotten your wires crossed with projecting from Malcolm’s memes?

                2. yet another false assertion, as I am not obsessed as you wish to project your own state.

                  By the way, another crawl of some 38 most recent threads (with comments) has been performed.

                  EVEN with my (always) having BOTH the last and best word with you, I run at a rate of replying to or about you at about a mere 50.09 % rate.

                  On the other hand, you run at about a staggering 98.93 % rate to or about me.

                  AND that 98.93% also reflects a 0% cogent or on point rate – for you.

                  I engage lots of people on lots of topics (cogent and on point).

                  You clearly are obsessed with one person, no matter what else may be going on.

                  I wonder if Prof. Crouch is aware of cyber-stalking laws.
                  Are you?

                3. The answer to your inanity is not to triple down on those inanities.

                  (but thank$$$ for the multiplier on my enterprising on your choices)

    3. 1.3

      I am curious if Easwaran is still puzzled.

      1. 1.3.1

        So, to be clear, 50 cent, they do have notice and comment rule making wherever it is that you are?

        1. 1.3.1.2

          My pal Shifty wilts (again) when faced with making a cogent point when given context.

          How typical.

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