United States: The "Analogous Art" Inquiry Considers The Similarities Of The Problems And The Closeness Of The Subject Matter As Viewed By A Person Of Ordinary Skill

In Scientific Plastic Products, Inc. v. Biotage AB, Nos. 13-1219, -1220, -1221 (Fed. Cir. Sept. 10, 2014), the Federal Circuit affirmed the Board's decision that all claims of U.S. Patent Nos. 7,138,061; 7,381,327; and 7,410,571 (collectively "the patents-in-suit") were invalid for obviousness.

Scientific Plastics Products, Inc. ("SPP") owns the patents-in-suit, which relate to a resealable cartridge for low pressure liquid chromatography ("LPLC") that provides a fluid tight seal under pressure. The claimed cartridge comprises a tubular container with a threaded polymer cap and a sealing flange. After SPP brought suit against Biotage AB ("Biotage") for infringement, Biotage requested inter partes reexamination of the patents-in-suit. During reexamination, the examiner rejected all the claims of the patents-in-suit as obvious based on the combination of the LPLC cartridge of U.S. Patent No. 5,693,223 ("Yamada") with the pressure-resistant caps of PCT publication WO 2002/42171A1 ("King") and U.S. Patent No. 5,100,013 ("Strassheimer"). The Board affirmed the rejections and cancelled all the claims. SPP appealed.

On appeal, the Federal Circuit affirmed. The Court first considered whether the King and Strassheimer references were analogous art, and specifically whether they were reasonably pertinent to the inventors' particular problem and thus properly relied upon for obviousness. According to the Court, "[t]he analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill [in the art]." Slip op. at 9. Noting that "[o]ther cases have found that a particular reference was not analogous art when the field was not an obvious area to be consulted," the Court held that in this case, King and Strassheimer "address the problem of providing a fluid tight seal at elevated pressures, between a container and a resealable cap," which "is sufficiently close to the problem addressed by the claimed invention." Id. Accordingly, the Court held that substantial evidence supported the Board's finding that King and Strassheimer were available as prior art.

The Federal Circuit next considered whether combining the cartridge of Yamada with the cap of King or Strassheimer would have been obvious to a person of ordinary skill in the field of liquid chromatography. The Court rejected SPP's argument that the Board relied on the inventors' description of the leakage problem, and thus improper hindsight, to find that a person of ordinary skill would have perceived a need to improve the LPLC cartridge of Yamada. The Court explained that "the issue here is not whether the Yamada cartridge leaked, but whether there was a concern with leakage in LPLC cartridges such that a person of ordinary skill would have provided a known pressure-resistant cap, as in King or Strassheimer, to the cartridge of Yamada." Id. at 11. The Court then held that substantial evidence supported the Board's finding that there was a leakage concern, and that the Board did not err in holding that it would have been obvious to modify the cartridge of Yamada with the cap of King or Strassheimer.

Judge Moore dissented and would have held that "[t]he Board failed to provide substantial evidence that it would have been obvious to modify Yamada." Moore Dissent at 1. Judge Moore explained that this was an inter partes reexamination with experts on both sides, yet there was no testimony or other evidence of a known leakage problem in prior art cartridges, including the Yamada cartridge. According to Judge Moore, "[i]t is troubling that the majority and the Board rely on the inventor's disclosure of the problem their inventions solve as the primary basis for modifying the prior art," which "is hindsight of the worst kind." Id. at 3. Judge Moore also dissented for a second, independent reason: The Board found the claims obvious without determining the level of skill in the art, which was disputed by the parties and necessary to determining the analogous art question.

Judges: Newman (author), Moore (dissenting), Wallach

[Appealed from Board]

This article previously appeared in Last Month at the Federal Circuit, October 2014

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.