In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter. In doing so, the Federal Circuit reminded the PTAB, and practitioners alike, of the proper standard for determining whether a reference is “analogous,” as well as how to appropriately apply that standard.
Pro Stage Gear owns U.S. Patent No. 6,459,023 (“the ’023 patent”), which is directed to a pedalboard for mounting guitar effects that easily and securely routes cables to and from the guitar effects. Donner successfully petitioned for IPR of the ’023 patent on three different grounds that the claims were unpatentable as obvious at least in part based on U.S. Patent No. 3,504,311 (“Mullen”), which provides a structure for mounting electrical relays and routing cables to and from the relays. During the IPR proceeding, the PTAB affirmed the patentability of all claims of the ‘023 patent. In particular, the PTAB concluded that the claims of the ’023 patent were not obvious on these grounds because Donner had failed to prove that Mullen is analogous art, rendering Mullen unavailable as prior art.
On appeal, the Federal Circuit vacated the PTAB’s decision, holding that substantial evidence did not support the PTAB’s conclusion that Mullen is not analogous art (a question of fact). At the outset, the court criticized the PTAB for failing to properly consider Donner’s evidence that Mullen is analogous art. Here, the court took issue with the PTAB’s finding that “Donner did ‘not put forth any argument or evidence to explain what would have compelled a pedalboard investor in 1999 or 2000 to consider potential solutions arising from early 1970s-era relay technologies,’” despite the fact that Donner’s petition and reply brief contained arguments and evidence, including detailed expert testimony, that Mullen was analogous art. Slip Op. at 8. This glaring contradiction led the court to question whether PTAB had “meaningfully considered all of Donner’s arguments and evidence.” Id.
The court also criticized the PTAB for failing to apply the proper standard for determining the scope of analogous prior art: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 7 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). As both Donner and Pro Stage Gear conceded that Mullen was “not from the same field of endeavor,” the court focused its analysis on prong (2), whether Mullen is reasonably pertinent to one or more of the particular problems addressed by the ’023 patent.
Importantly, the court noted that the PTAB never identified and compared the problems addressed by Mullen and the ’023 patent, as the standard requires. Instead, the court observed that the PTAB simply concluded that the “purpose of the ’023 patent” is “to mount guitar effects on a pedal board,” “significant differences” existed between Mullen and the ’023 patent, and, in any event, a person having ordinary skill in the art (“PHOSITA”) would have “had a poor understanding of Mullen’s relay technology.” Id. at 9-11. However, according to the court, the purpose identified by the PTAB was already solved by the prior art, and, therefore, was not the problem (or a problem) the ’023 patent actually addressed. Moreover, by framing the purpose in such a narrow way, the PTAB, according to the court, had improperly “intertwined” the problems addressed by the’023 patent to the field of endeavor of the ’023 patent, thereby “effectively exclud[ing] … references outside” the ’023 patent’s field of endeavor. Id. at 9. At this point, the court reminded the PTAB that the reasonable pertinence analysis “must be carried out from the vantage point of a PHOSITA who is considering turning to the teachings of references outside her field of endeavor.” Id. (citing In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). The court also dismissed the PTAB’s reliance on the “significant differences” between Mullen and the ’023 patent, particularly because the PTAB did not explain how these differences solved similar or different problems, noting that “a reference can be analogous art even if there are significant differences between the two references.” Id. at 10 (citing In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007). Finally, while the court acknowledged that the level of skill in the art is relevant to the reasonable pertinence inquiry, the court again criticized the PTAB for failing to explain whether the relevant PHOSITA “would understand the relevant teachings of Mullen … sufficiently well to use those teachings to solve her problem.” Id. at 11.
The reasonable pertinence analysis “must be carried out from the vantage point of a PHOSITA who is considering turning to the teachings of references outside her field of endeavor.”
Interestingly, despite finding that the PTAB’s conclusion was not supported by substantial evidence and that the PTAB applied the wrong standard, the court remanded the case back to the PTAB for further consideration. Here, the court noted that it could not “hold that ‘no reasonable fact finder could under the proper standard’ that Mullen is not analogous art,” as would be required to justify a complete reversal of the PTAB on a factual issue. Id. at 13.