Federal Circuit Holds that Obviousness of Patent May Boil Down to Common Sense
In Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010), rehearing denied, the U.S. Court of Appeals for the Federal Circuit expounded upon the Supreme Court’s leading obviousness case, KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), to find that even in the absence of expert testimony, judges can make a common sense determination to combine the prior art to find patent claims obvious and thus invalid. Prior to Wyers, the Federal Circuit rarely relied on common sense as the basis for finding a motivation to combine prior art. Wyers signals that the Federal Circuit will be receptive to obviousness challenges to claims involving combination of prior art elements without expert testimony. This decision should encourage defendants to seek early summary judgment to invalidate patents clearly combining prior art elements. Andrews Kurth handled the appeal for Master Lock Corporation.
The patents at issue related to barbell-shaped trailer hitch locks used to secure trailers to towing vehicles. Since all the elements of the claims were admittedly known in the prior art, the issue tried before the jury was obviousness. The jury found all three patents-in-suit valid and awarded plaintiffs Philip Wyers and Wyers Products Group a royalty of 24%. The trial court added pre- and post-judgment interest, as well as a 24% royalty for ongoing sales, making the total award nearly $9 million.
The Federal Circuit’s Reversal
The Federal Circuit reversed, holding that it was a matter of common sense to combine the prior art under KSR as a matter of law.
The Federal Circuit, through Judge Dyk, addressed three primary issues: (1) whether the prior art references were within the same field of endeavor, (2) whether there was a motivation to combine the prior art references, and (3) whether secondary considerations existed and were significant.
First, the Federal Circuit ruled that a prior art reference for vehicle trailer towing was in the same field of endeavor as the trailer hitch lock addressed in the patents. With regard to another prior art reference involving a padlock, since the jury instruction defined the field of endeavor as locksmithing, the Court ruled that padlocks were within that field of endeavor.
Second, and most importantly for future cases, the Federal Circuit concluded that (a) even in the absence of expert testimony, common sense may be used, (b) it was a matter of common sense to combine the prior art, and (c) the patent claims were therefore obvious as a matter of law.
Finally, the Court held that secondary considerations of non-obviousness cannot overcome a strong prima facie case of obviousness.
Judge Linn concurred, and wrote separately to advise parties and trial judges about the desirability of special verdict forms in obviousness cases, due to the mixed questions of fact and law involved in the determination of obviousness.
Possible Impact of Wyers v. Master Lock’s Common Sense Approach
The Federal Circuit’s decision in Wyers likely will make summary judgment and judgment as a matter of law on obviousness more common. Even after the Supreme Court’s KSR decision, the Federal Circuit has rarely relied on common sense as the basis for finding a motivation to combine prior art. Wyers v. Master Lock provides federal judges with some confidence to invalidate patents using common sense as the motivation to combine prior art references. In fact, Wyers should incentivize defendants to file for early summary judgment on invalidity. Defendants can rely on the Federal Circuit’s observation in the Wyers decision that “in appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of ‘common sense,’ appropriate for resolution on summary judgment,” Wyers, 616 F.3d at 1240, as well as the Court’s comment that “expert testimony concerning motivation to combine is unnecessary and, even if present, will not necessarily create a genuine issue of material fact.” Id. at 1239, citing KSR, 550 U.S. at 427.