On May 26, 2015, the Board issued its final written decision in Schott Gemtron Corp. v. SSW, IPR2014-00367, confirming the patentability of all of the challenged claims of U.S. Patent No. 8,286,561 (“the ’561 patent”).¹ The Board concluded the prior art on which the petitioner, Schott Gemtron Corporation, relied was not analogous to the ’561 patent’s claimed invention and, more particularly, the art was not reasonably pertinent to all the problems the inventor faced.
The ’561 patent describes refrigerator shelving that has a hydrophobic surface arranged in spill-containment pattern, such as a frame-like border. The petitioner advanced two obviousness grounds, and each ground relied on U.S. Patent No. 5,948,685 (“Angros”). Angros, the Board found, describes “an analytic plate, such as a microscope slide or a diagnostic plate, having a containment border for containing a liquid.” The Board concluded that Angros was not analogous and, thus, rejected the petitioner’s obviousness challenge.
The parties did not dispute that the Angros microscope slide is not from the same field of endeavor as refrigerator shelves. Rather, the parties disputed whether Angros would have been reasonably pertinent to the problem facing the refrigerator shelf inventors.
The Board’s conclusion was based on the Federal Circuit’s two-pronged test, which considers a reference to be analogous prior art: “(1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if ‘the reference still is reasonably pertinent to the particular problem with which the inventor is involved,’ even though the reference is not within the field of the inventor’s endeavor.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The parties did not dispute that the Angros microscope slide is not from the same field of endeavor as refrigerator shelves. Rather, the parties disputed whether Angros would have been reasonably pertinent to the problem facing the refrigerator shelf inventors. According to the petitioner, the pertinent problem was how to contain a liquid in a predetermined area. In contrast, the patent owner argued that the problem was not only containing liquid, but also maximizing (refrigerator) shelf space. The Board agreed with patent owner, relying on a Federal Circuit decision which, according to the Board, held that analogous art must be pertinent to the entire problem being solved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
In light of this decision, being more inclusive in defining the problem the claimed invention solves may limit the scope of prior art available for obviousness combinations.
¹ The Board previously upheld the validity of other claims of the ‘561 patent in a separate but related IPR. IPR2013-00358, Paper 106 (PTAB Aug. 20, 2014).