Circuit Check Inc. v. QXQ Inc.
795 F.3d 1331 (2015)
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Rule of Law:
For the purpose of a patent obviousness analysis, a reference is considered analogous prior art only if it is from the same field of endeavor or is reasonably pertinent to the problem the inventor was trying to solve. A reference is not reasonably pertinent merely because it is within the common knowledge of a layperson; the analysis must focus on whether a person having ordinary skill in the art would have logically looked to that reference to solve the specific problem at hand.
Facts:
- Manufacturers use interface plates, which are plastic grids, to test circuit boards for electronic devices.
- Prior methods for marking specific holes on these plates for alignment included using Mylar masks, painting, or making shallow drill marks.
- Circuit Check, Inc. developed and patented a new marking method where a first layer of color (indicia) is applied to the plate, followed by a second, different, removable layer.
- To mark specific holes, the second layer is removed from the areas adjacent to the holes, revealing the first layer underneath and making the holes visually identifiable.
- QXQ, Inc., a competitor, began making and selling interface plates that used this same two-layer removable indicia method for marking.
- Other techniques involving removing a top layer to reveal an underlying layer existed in unrelated fields, such as ancient rock carvings, modern engraved signage, and a machining dye technique known as Prussian Blue.
Procedural Posture:
- Circuit Check, Inc. sued QXQ, Inc. in the U.S. District Court for the Eastern District of Wisconsin, alleging patent infringement.
- QXQ stipulated to infringing the patents but argued the patents were invalid for obviousness.
- The case was tried before a jury, which found that the asserted patent claims were not invalid for obviousness and that QXQ's infringement was willful.
- After the verdict, QXQ filed a motion for judgment as a matter of law (JMOL).
- The district court judge granted QXQ's motion, overturning the jury's verdict and ruling that the patent claims were invalid as obvious.
- Circuit Check, Inc. (appellant) appealed the district court's JMOL to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Is a reference considered analogous prior art for a patent obviousness analysis if it is from a field completely unrelated to the invention, even if it embodies a concept considered common knowledge to a layperson?
Opinions:
Majority - Moore, Circuit Judge
No. A reference is not analogous art simply because it falls within the common knowledge of humankind; the correct inquiry is whether an inventor of ordinary skill in the art would have looked to that reference to solve the particular problem at hand. The court found that there was substantial evidence to support the jury's presumed factual finding that the disputed prior art (rock carvings, engraved signage, and Prussian Blue) was not analogous. These references are not from the field of circuit board testers. For them to be analogous, they must be 'reasonably pertinent' to the problem of marking interface plates. Circuit Check presented expert testimony that a person of ordinary skill in this art would not have considered these unrelated fields when trying to solve the problem. The district court erred by substituting its own 'any layman' or 'any vandal' standard for the correct standard, which is the perspective of a person of ordinary skill in the art. Because the jury's finding that the references were not analogous was supported by substantial evidence, those references cannot be used to invalidate the patent for obviousness.
Analysis:
This decision reinforces the specific, fact-intensive standard for what constitutes 'analogous art' in a patent obviousness analysis, rejecting a more expansive 'common sense' approach that is divorced from the perspective of a skilled artisan. It highlights the significant deference appellate courts must give to a jury's underlying factual findings, such as whether a reference is analogous, when reviewing a judgment as a matter of law. The case serves as a crucial reminder to litigants that obviousness arguments cannot be based on abstract, common-knowledge concepts from disparate fields without concrete evidence that a person of ordinary skill in the relevant art would have actually been motivated to look to those fields to solve the problem.
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