PTAB/Fed. Cir. Decision: Donner Technology Inc. v. Pro Stage Gear LLC, No. 2020-1104 (Fed. Cir., Nov. 9, 2020)
In Donner Technology Inc. v. Pro Stage Gear LLC, the Federal Circuit vacated and remanded the PTAB's rejection of §103 challenges in an IPR petition. The PTAB found that a prior art reference ("Mullen") directed towards a structure allowing for better supporting and organizing of electrical relays was not analogous art to the patent-at-issue, US Patent No. 6,459,023 (the '023 Patent) directed to the organization of multiple guitar pedals in a pedalboard. The Federal Circuit disagreed, holding that the Board applied the wrong standard in determining whether the reference was analogous art, and that there was sufficient evidence to indicate that the prior art reference could be construed as reasonably pertinent to the challenged patent. Although the Federal Circuit did not explicitly rule that Mullen was analogous art to the '023 Patent, it held that there existed sufficient factual evidence to support such a conclusion that the PTAB failed to consider, and remanded the opinion for a decision consistent with such evidence.
Whether Mullen, which was directed towards a structure for supporting and organizing electrical relays could be construed as reasonably pertinent, and therefore analogous art, to the '023 Patent directed towards a guitar pedalboard.
The Federal Circuit held that, although it was undisputed that Mullen was not from the same field of endeavor as the '023 Patent, Mullen was nonetheless reasonably pertinent to one or more problems to which the '023 Patent relates. While the scope of the prior art includes all analogous art, the difference between pertinent and less-than-pertinent art rests on the extent to which the prior art reference and the claimed invention relate to a similar problem or purpose.
The Court held that the PTAB failed to consider the detailed expert testimony and arguments presented by the petitioner regarding how Mullen was analogous art. Additionally, the Court held that the PTAB's determination that the '023 Patent's purpose was "to mount guitar effects on a pedal board" was incorrect. The '023 Patent openly disclosed that prior art in the field had already included the capability of mounting guitar effects on a pedalboard. Furthermore, the determination of such a narrow purpose for the '023 Patent would have made it impossible to consider any potential analogous art outside of the guitar pedal field. Finally, the Board's argument of the numerous differences that have since arisen between the Mullen reference and the '023 Patent, along with the age difference between the two references, was not convincing to the Court.
Instead, the PTAB should have considered the purpose of the '023 Patent from the perspective of a POSA who is considering turning to art outside her field of endeavor. The fact that a POSA for the '023 Patent would have a "relatively low level" of skill should not exclude the consideration of other prior art outside of the immediate field of endeavor. The relevant question is whether such a POSA would have "reasonably consulted" such references in solving the relevant problem. Complete understanding of a reference is further not required. A POSA may reasonably choose to utilize portions of a reference that she does not fully understand, so long as those utilized portions are relevant to helping her solve the problem.
When considering whether a piece of prior art is analogous, it is easy to focus solely on the field of endeavor or pertinent industry of the patent-at-issue. Rather than tunnel-visioning on the references within the same field, practitioners should consider whether the problem which the claimed invention attempts to solve could arise in other fields and industries. The determination of pertinent prior art should be focused on the scope of the problem, rather than the technical field of the invention. Given that many problems are not limited by industry or technical expertise, one may be surprised to find how often similar issues (and potential solutions) may appear in vastly different scientific fields!
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