Commercial embodiment plays role in CAFC obviousness reversal

Judge Moore, writing in AGRIZAP, INC. v. WOODSTREAM CORPORATION:

Because sufficient evidence supports the jury’s verdict finding Woodstream liable
for fraudulent misrepresentation and the trial evidence provides a reasonable basis for
the jury’s attendant award of damages, we affirm. Though we defer to the jury for its
fact findings on obviousness, we ultimately conclude that, despite those findings, the
patent claims in dispute are invalid for obviousness and thus reverse the district court’s
denial of Woodstream’s JMOL in that respect. As our decision on those issues
completely resolves this case, we decline to address the other arguments as to patent
infringement, invalidity, or unenforceability.

The decision states:

Because the patent law aspects of this case can be decided entirely on the
grounds of obviousness—notwithstanding the panoply of issues raised by the parties on
appeal—we limit our discussion to only that which is necessary.

(...)

Thus, even when the jury is given an essentially black box verdict form—that is, a form that
merely asks the jury to answer “yes” or “no” as to whether a claim is obvious, such as
was done in this case3—we presume all factual disputes were resolved in favor of the
verdict. See Jurgens v. McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991).

(...)

Though we are fully cognizant of the hindsight bias that often plagues determinations of obviousness, Graham v. John Deere
Co., 383 U.S. 1, 36 (1966), we are also mindful that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more than
yield predictable results,” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).

(...)

It is undisputed that, while the PTO was aware of the ’091 patent, it was not
aware of the public use of its commercial embodiment.

(...)

While Agrizap’s correction of inventorship disqualified the ’091 patent as a
basis for a double patenting rejection, it did not disqualify the commercial embodiment
of that patent, the Gopher Zapper, from being considered as prior art.

(...)

This is a textbook case of when the asserted claims involve a combination of
familiar elements according to known methods that does no more than yield predictable
results. KSR, 127 S. Ct. at 1739. The only difference between the Gopher Zapper and
the asserted claims, as conceded by Agrizap, is the type of switch used to complete the
circuit that triggers the generator.

[The CAFC cited Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007). ]




Paul Zegger was cited in footnote 3:

Paul J. Zegger et. al, The Paper Side of Jury Patent Trials: Jury Instructions,
Special Verdict Forms, and Post-Trial Motions, 910 PLI/PAT 701, 716 (2007) (“By
compelling a jury to consider factual issues individually, special verdicts and
interrogatories may improve the consistency of jury verdicts as well as the underlying
decision-making processes that produce them.”).