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Obviousness Inquiry Allows Flexibility in Considering Teachings of Prior Art

Addressing issues of obviousness, the US Court of Appeals for the Federal Circuit affirmed a finding of obviousness based on a flexible approach and further clarified the appropriate evaluation of secondary considerations evidence in an obviousness analysis. ClassCo, Inc. v Apple, Inc., Case No. 15-1853 (Fed. Cir., Sept. 22, 2016) (Stoll, J).

ClassCo brought suit against Apple and several others for infringement of its patent relating to “caller ID” technology. The patented technology improves pre-existing systems by verbally announcing a caller’s identity before the call is connected. Apple filed a request for inter partes reexamination of the patent. The Examiner found, and ClassCo agreed, that the primary reference taught all elements of the claims except the use of a single speaker to announce both voice signals and identity information. The Examiner found the claims obvious in view of a second reference’s disclosure of a speaker in a telephone system that can produce audio from multiple types of data. However, the secondary reference did not specifically disclose the use of a single speaker for both voice signals and announcing the caller’s identity. The Patent Trial and Appeal Board (PTAB or Board) affirmed the Examiner’s finding of obviousness on the basis that modifying the primary reference in the way taught by the secondary reference would have resulted in no more than the predictable result of the use of a speaker in a telephone system that produces audio derived from multiple data sources, including voice signals, identity information or tonal ringing. The PTAB gave no weight to ClassCo’s secondary considerations evidence, finding it did not have sufficient nexus to the merits of the claimed invention or was not commensurate with the claim scope. ClassCo appealed.

On appeal, ClassCo argued that the PTAB improperly applied the seminal Supreme Court of the United States KSR obviousness case, and that, under KSR, a combination of references can only unite old elements with no change in their respective functions. The Federal Circuit disagreed, explaining that an ordinary artisan would recognize that familiar items may have obvious uses beyond their primary purpose and that KSR requires a flexible approach to an obviousness determination. The Federal Circuit found that the PTAB properly applied this flexible approach in reaching its obviousness conclusion.

Addressing secondary considerations, the Federal Circuit noted that much of ClassCo’s evidence of praise focused on conventional features in the prior art. The PTAB properly ignored this evidence. However, the Federal Circuit also concluded that the PTAB improperly dismissed some of ClassCo’s evidence of praise on the grounds that the claims encompassed additional embodiments not subject to the praise. As the Federal Circuit explained, the features subject to praise were clearly encompassed by the claims, and a patent applicant need not sell every conceivable embodiment of the claims in order to rely upon evidence of secondary considerations. Nevertheless, while this secondary considerations evidence should have been considered by the PTAB, it was not sufficient to overcome the prima facia obviousness determination.

© 2022 McDermott Will & EmeryNational Law Review, Volume VI, Number 301
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About this Author

Jacqueline Mahoney, McDermott Will Emery Law Firm, Patent Attorney
Associate

Jacqueline Mahoney is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Silicon Valley office.  She focuses her practice on patent preparation and prosecution.

Jacqueline has experience prosecuting patents in a broad range of fields, including pharmaceuticals, drug delivery and medical devices.  She has prosecuted both foreign and U.S. patents.  Jacqueline has also worked on infringement analyses and due diligence investigations.

650-815-7644
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