B/E Aerospace, Inc. v. C&D Zodiac, Inc.
301 F.3d 1343 (2020)
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Rule of Law:
Common sense can be used to supply a missing claim limitation in a patent obviousness analysis, provided its use is supported by a reasoned explanation and evidence, such as expert testimony, demonstrating that the combination of known elements would have been a predictable solution for a person of ordinary skill in the art.
Facts:
- B/E Aerospace, Inc. (B/E) owned patents for a space-saving aircraft lavatory.
- The invention featured a lavatory unit with a forward wall designed to be placed directly behind a passenger seat.
- The forward wall had a contoured shape, including a 'first recess' designed to receive the upper, inclined seat back of the passenger seat.
- The forward wall also included a 'second recess' configured to receive the lower, aft-extending seat support.
- Prior art, referred to as 'Admitted Prior Art,' disclosed a standard flat lavatory wall positioned behind a passenger seat with an aft-extending seat support.
- Another piece of prior art, U.S. Patent No. 3,738,497 ('Betts'), disclosed a contoured wall with a recess to accommodate the upper part of a seat back, but it did not disclose a second recess for the seat support.
Procedural Posture:
- C&D Zodiac, Inc. ('Zodiac') filed petitions for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB), challenging claims in two of B/E Aerospace, Inc.'s ('B/E') patents.
- Zodiac argued that the patent claims were obvious in view of the combination of 'Admitted Prior Art' and a prior patent known as 'Betts.'
- The PTAB instituted the IPR and, in its final written decision, found the challenged claims unpatentable as obvious.
- B/E requested a rehearing, which the PTAB denied.
- B/E Aerospace, Inc., as Appellant, appealed the PTAB's final written decision to the U.S. Court of Appeals for the Federal Circuit, with C&D Zodiac, Inc. as the Appellee.
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Issue:
Is a patented invention for an aircraft lavatory obvious when a claimed feature, not explicitly present in the prior art, would have been a common-sense addition to a combination of existing prior art elements for a person of ordinary skill in the art?
Opinions:
Majority - Reyna, Circuit Judge
Yes, the patented invention is obvious. Combining prior art with the common sense of a person of ordinary skill can render a patent obvious, especially when the modification is a predictable variation of a known element to solve a known problem. The court affirmed the Board's conclusion, finding that it was properly supported by both a traditional obviousness analysis and a common-sense approach. Under the traditional approach, the court agreed that adding a second recess was a predictable application of the known technology (the first recess) to solve the known problem of maximizing cabin space, a conclusion supported by expert testimony. Under the common-sense approach, the court held that, consistent with KSR Int’l Co. v. Teleflex Inc., the Board’s invocation of common sense was not an unsupported assertion but was properly accompanied by reasoned analysis and substantial evidentiary support, namely the expert's detailed testimony explaining why a skilled artisan would find it logical to add the second recess.
Analysis:
This decision reinforces the framework established in KSR v. Teleflex, affirming that common sense is a critical tool in the obviousness analysis. It clarifies that an appeal to common sense is not a 'wholesale substitute for reasoned analysis,' as cautioned in Arendi, but is permissible when substantiated with evidence like expert testimony that explains why a modification would be predictable to a skilled artisan. The ruling makes it more difficult to secure or defend patents on inventions that involve simple, incremental combinations of known elements, particularly in fields with predictable arts like mechanical engineering. This precedent strengthens the position of patent challengers who can articulate a logical, common-sense motivation to combine prior art, even if one element is not explicitly taught.
