Friday, June 16, 2017

CAFC discusses obviousness in Navico v. ITC

The appellant Navico lost:

Navico Inc. and Navico Holding AS appeal from a Final
Determination of the United States International
Trade Commission that resulted in an exclusionary order
prohibiting importation of certain sonar imaging devices.
The Final Determination includes a finding of infringement
of U.S. Patent Nos. 8,305,840 and 8,605,550, a
determination of invalidity for some of the asserted
claims, and a finding of noninfringement of U.S. Patent
No. 8,300,499. On appeal, Navico raises several challenges
to the Commission’s Final Determination. We affirm
the Commission’s decision in these challenged aspects.

The standard of review:

Under the Administrative Procedure Act, 5 U.S.C.
§ 706(2), we review the Commission’s factual findings for
substantial evidence, and the Commission’s legal determinations
de novo. See Spansion, Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1343–44, 1349 (Fed. Cir. 2010).
Under the substantial evidence standard, the court “must
affirm a Commission determination if it is reasonable and
supported by the record as a whole, even if some evidence
detracts from the Commission’s conclusion.” Spansion,
629 F.3d at 1344. This court may set aside the Commission’s
choice of remedy only if it is legally erroneous,
arbitrary and capricious, or constitutes an abuse of discretion.
Fuji Photo Film Co. v. Int’l Trade Comm’n, 386 F.3d
1095, 1106 (Fed. Cir. 2004).

Note the related case:

Our decision today in a related case, Garmin International,
Inc. v. International Trade Commission, No. 16-
1572, reverses the Commission’s finding of validity and
finds these patent claims invalid as obvious over the prior
art. Because the claims are invalid, there can be no
contributory infringement. Accordingly, we affirm the
Commission’s finding of no contributory infringement.

This is an obviousness case, and, yes, KSR is cited:

The obviousness inquiry must “guard against slipping
into use of hindsight and . . . resist the temptation to read
into the prior art the teachings of the invention in issue.”
Graham v. John Deere Co., 383 U.S. 1, 36 (1966). Further,
“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.” KSR,
550 U.S. at 416. Similarly, § 103 usually bars patentability
when the improvement is nothing more than the
predictable use of prior art elements according to their
established functions. Id. at 417.

Obviousness is a question of law based on subsidiary
findings of fact relating to “the scope and content of the
prior art, differences between the prior art and the claims
at issue, the level of ordinary skill in the pertinent art,
and any objective indicia of non-obviousness.” Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
Whether there would have been a motivation to combine
multiple references is also a question of fact. S. Ala. Med.
Sci. Found. v. Gnosis S.p.A., 808 F.3d 823, 826 (Fed. Cir.
2015). If all elements of the claims are found in a combination
of prior art references, as is the case here, the
factfinder should further consider whether a person of
ordinary skill in the art would be motivated to combine
those references, and whether in making that combination,
a person of ordinary skill would have a reasonable
expectation of success. Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1164 (Fed. Cir. 2006).

The arguments against obviousness:

Navico argues for reversal of the Commission’s finding
of obviousness on four grounds. First, Navico argues
that Tucker discloses sidescan, not downscan, sonar.
Thus, Navico argues, the Commission should not have
used Tucker as prior art for the downscan linear transducer
component. (...)

Second, Navico argues that the combination of Tucker
and Betts renders both references inoperable for their
intended purposes. See In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (finding that a modification which renders
the invention inoperable for its intended purpose is
not obvious because it teaches away from the invention).


Third, Navico argues that there was no motivation to
combine the Tucker and Betts references. Navico suggests
that because Betts was a simple, fixed system and
Tucker was a complex, customizable system, there would
be no motivation to combine them. It “can be important
to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements
in the way the claimed new invention does.” KSR,
550 U.S. at 418.


Fourth, Navico argues that the Commission considered
the objective indicia of non-obviousness as a mere
afterthought after making a prima facie case. We have
held that such an analysis is improper, and a fact finder
must “consider all evidence relating to obviousness before
finding a patent invalid on those grounds.” In re Cyclobenzaprine,
676 F.3d 1063, 1075 (Fed. Cir. 2012). Objective
indicia of non-obviousness are vital to an obviousness
determination and must be considered, not ignored as a
mere afterthought. See, e.g., Leo Pharm. Prods., Ltd. v.
Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“Whether
before the Board or a court, this court has emphasized
that consideration of the objective indicia is part of the
whole obviousness analysis, not just an afterthought.”); In
re Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (“[W]hen
secondary considerations are present, though they are not
always dispositive, it is error not to consider them.”);
Stratoflex v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983); In re Depomed, Inc., No. 2016-1378, 2017 WL
676604, at *5 (Fed. Cir. Feb. 21, 2017) (Reyna, J., concurring).


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