Inconsistent verdict on obviousness

In COMAPER v. ANTEC, INC., the CAFC found problems with both jury verdicts and
with the district court's analysis.

On a jury grasping patent law points:

The jury found that independent claims 1 and 12 of the ’955
patent were not obvious. However, it also found that claims 2 and 7, which depend
from claim 1, and claim 13, which depends from claim 12, were invalid as obvious.
These verdicts are plainly inconsistent, as both the district court and Comaper
recognize. JMOL Order, 2008 WL 4140384, at *5 (“[T]he jury’s verdict was
inconsistent.”); Pl.-Cross Appellant’s Br. 7 (“[T]he verdict did contain an inconsistency
with respect to the obviousness of dependent claims 2, 7, and 13 . . . .”). “A broader
independent claim cannot be nonobvious where a dependent claim stemming from that
independent claim is invalid for obviousness.” Callaway Golf Co. v. Acushnet Co., 576
F.3d 1331, 1344 (Fed. Cir. 2009) (citing Ormco Corp. v. Align Tech., Inc., 498 F.3d
1307, 1319 (Fed. Cir. 2007)).

The concept of analogous art arose:

The district court erred in concluding that the prior art asserted by Antec was not
analogous prior art; indeed, Comaper itself did not make this argument. “Analogous art
is that which is relevant to a consideration of obviousness under [35 U.S.C. § 103].”
Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). Two criteria are
relevant in determining whether prior art is analogous: “(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.” In re Clay, 966
F.2d 656, 658–59 (Fed. Cir. 1992). Undoubtedly, the ’955 patent’s field of endeavor
deals with cooling computers and electronic components.

The district court had another problem:

The district court also erred in concluding that Antec had “fail[ed to] establish that
there is sufficient similarity between the proffered prior art and the claims of the ’955
patent, taken as a whole.”5 JMOL Order, 2008 WL 4140384, at *12. What the district
court appears to mean is that all of the claim elements of the ’955 patent do not appear
in a single piece of prior art. However, this standard governs anticipation, not
obviousness.

The TSM test is alive and well:

This analysis typically invokes the familiar teaching-suggestion-
motivation (“TSM”) test, asking whether a person having ordinary skill in the art would
have found some teaching, suggestion, or motivation to combine or modify the prior art
references. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1362 (Fed. Cir. 2007); see also
Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364–65 (Fed. Cir.
2008) (noting that the TSM test, flexibly applied, remains an important tool in an
obviousness analysis). The Supreme Court in KSR International Co. v. Teleflex, Inc.
emphasized that “[c]ommon sense teaches . . . that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary skill will be
able to fit the teachings of multiple patents together like pieces of a puzzle.” 550 U.S.
398, 420 (2007).