Google wins appeal at CAFC

The outcome of Google v. KONINKLIJKE PHILIPS at the CAFC was a victory for Google:


We conclude, on the record of this case, that the Philips invention
would have been obvious in light of the prior art. We therefore reverse the
Board’s decision.



KSR is invoked:


In one formulation [of KSR] that is key to
this case, the Court explained that when “there is a design
need or market pressure to solve a problem and there are
a finite number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known
options within his or her technical grasp.” Id. at 421. If
such an option is in that way “obvious to try,” and the “anticipated success” results,
a conclusion of obviousness may
follow. Id. That formulation is related to, and its application must be informed by,
other explanations the Court set
forth about “predictab[ility]” and “known” options and their
effect on obviousness determinations. Id. at 416 (precedent
established that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable result”); id.
at 417 (“a court must ask whether the improvement is more
than the predictable use of prior art elements according to
their established functions”; referring to “simple substitution of one known element
for another” as basis for obviousness).

Invoking the obvious-to-try formulation, Google argues
that a relevant artisan presented with Sakata II would
have realized that there are only “two options following entry of a secondary character: (1) either substitute the key
with the last selected secondary character,” i.e., character
substitution, or “(2) simply return the key to the default
state without substituting the secondary character.” Appellant’s Br. at 50. The Board did not disagree with that
characterization of options. Nor does Philips, which instead shifts the inquiry away from the question of what options are available at the last step—after a secondary
character is selected—of the Sakata II process involving
presentation of secondary characters in a drag menu for
possible selection after an extended hold of a key. Philips
asserts that there is a wide variety of keypad techniques in
general. Appellee’s Br. at 51–52 (citing J.A. 2583–85).

The problem with this response is not that it lacks record support
as a factual matter but that it shifts the inquiry
improperly as a legal matter. Philips’s wide-scope inquiry
into all keypad possibilities does not fairly reflect the point
of KSR’s relevant discussion as it applies to a case, like this
one, in which it is not disputed that a relevant artisan
would in fact be studying a particular piece of prior art in
thinking about the artisan’s own possible further work. In
that situation, the Court’s declarations about “mere substitution of one element for another known in the field,” with
“predictable results,” KSR, 550 at 416, indicate that the obvious-to-try inquiry at least sometimes must focus on
known options at what is undisputedly the sole point of
novelty in the claim at issue. Moreover, that is the inquiry
we conducted in Perfect Web, where we asked if the sole
contested step of the claim at issue was obvious to try, taking the remaining steps as a given. 587 F.3d at 1331; see
also In re Copaxone Consolidated Cases, 906 F.3d 1013,
1025–27 (Fed. Cir. 2018) (determining that dosage and frequency limitations in method of treatment claim were obvious to try, while taking remaining limitations as a given).
The same focus is appropriate in this case.