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September 18, 2020

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ClassCo, Inc. v. Apple, Inc.: A Reminder Of Obviousness Analysis Under KSR

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that discussed caller ID technology that would verbally announce the name of an incoming caller before the call is connected.  The ’695 patent has been asserted in litigation against Apple, Samsung, LG, HTC America, Hewlett-Packard, Palm, Inc., Nokia, and ZTE Corp., in both the Northern District of Illinois, and another suit in the District of Massachusetts, respectively.  Apple filed an Inter Partes Review (“IPR”) against the ’695 patent, whereby the Board found the ’695 patent obvious in view of two prior art references, the Fujioka and Gulick patents.

The Board found that the Fujioka patent disclosed all but one of the elements of the ’695 patent.  The Board reasoned that it would have been obvious to a person having ordinary skill in the art to combine the Fujioka patent with the Gulick patent to include the missing element.  On appeal, ClassCo argued that it would not have been obvious to a person having ordinary skill in the art to combine the two patents.  ClassCo claimed that the Board’s decision failed to properly adhere to the obviousness standards described in the seminal United States Supreme Court decision in KSR as it relates to combining prior art: “[a] basic characteristic of a KSR combination is that it ‘only unites old elements with no change in their respective functions.’”  Contrary to ClassCo’s argument, the Federal Circuit held that the Board properly applied the rationale in KSR to the Board’s decision in the IPR.  The Federal Circuit reasoned that a person having ordinary skill in the art would be “able to fit the teachings of multiple patents together like pieces of a puzzle.”

ClassCo further argued that the Board failed to give weight and consideration to ClassCo’s evidence of industry praise and commercial success.  The Federal Circuit agreed that the Board erred in dismissing ClassCo’s evidence of nonobviousness.  The Federal Circuit reasoned that although the Board erred by not addressing ClassCo’s secondary considerations, it was not dispositive.  The Court further reasoned that the Board should have given some weight and consideration to ClassCo’s evidence.  However, in light of the foregoing, the Federal Circuit upheld the Board’s decision to invalidate several claims of ClassCo’s ’695 patent for being obvious in view of the Fujioka and Gulick patents.

This post was written with contributions from Anthony E. Faillaci.

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About this Author

Brad Scheller Patent Litigation Attorney Mintz Law Firm
Member

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and...

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Kristina Cary, Patent Litigator, Mintz Boston Law firm
Associate

Kristina is a patent litigator and trial attorney who concentrates primarily in hardware and software matters in Section 337 investigations before the International Trade Commission (ITC). She brings extensive training and industry background in electrical and computer engineering to her practice, which focuses on highly technical aspects of patent litigation, including patent portfolio analysis and patent infringement and validity analyses.

Kristina has acted as the technical lead for multiple patents in complex patent litigation at the ITC adverse to some of the largest technology companies in the world. During these investigations, she has examined witnesses at trial, deposed scores of fact and expert witnesses, coordinated extensive multinational discovery, and managed large teams of technologists and litigators. She works closely with industry experts throughout all phases of litigation and related diligence. Kristina also represents clients in patent infringement cases in federal district courts.

Kristina has broad industry experience in hardware and software engineering, gained from her work at several technology companies and as an independent consultant. She applies this technical knowledge in representing her clients, both in litigation and in providing strategic counseling to help clients protect and leverage IP rights.

Kristina is an active member of IEEE.

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