United States: Federal Circuit: Vandalism Is Not Prior Art

The Federal Circuit's decision in Circuit Check Inc. v. QXQ Inc., No. 2015-1155 (Fed. Cir. July 28, 2015), not only revived an infringement verdict against the defendant, but also rearticulated what prior art references can properly be used in an obviousness analysis, strengthening the so-called "non-analogous art doctrine."

The technology in the patent litigation before the Eastern District of Wisconsin involved a testing device for circuit boards. Test fixtures are used to connect the circuit board being tested to the probes on the tester. Such testers typically require an "interface plate" (also called an "alignment plate" or "waffle plate"), which is essentially a flat piece of plastic with rows of holes through which the probes that contact the board protrude. To align circuit boards during testing, it is advantageous to mark certain holes on the interface plate. The patents-at-issue, owned by Circuit Check, Inc., claimed systems and methods related to marking interface plates, such as this representative claim:

1. An indicator interface plate configured to provide readily visible identification of predetermined holes, the plate comprising:

a surface including a plurality of holes having visually discernable markings to allow a user to visually determine which of said plurality of holes are to be populated, wherein a region of the plate said plurality of holes have a first predetermined indicia covering the surface surrounding said plurality of holes, the plate further comprising: a second removable indicia overlying said first predetermined indicia, said

second indicia being different from said first predetermined indicia, wherein said second indicia is removed from areas of said plate adjacent each of said predetermined holes, said predetermined holes are visually identifiable to a user by the appearance of the first indicia.

U.S. Patent No. 7,592,796 col. 6 ll. 36-51 (emphases added). As Circuit Check explained to the jury, the industry's problem had always been "marking the interface plates for circuit board test fixtures in a way that would not require someone to manually mark the plates at numerous locations, a process that was labor-intensive, subject to human error, and expensive." See Circuit Check Inc. v. QXQ Inc.,2014 U.S. Dist. LEXIS 150059, at *3 (E.D. Wisc. Oct. 21, 2015). The method disclosed in the patents-in-suit effectively marks the interface plate by scratching off a surface coat of paint at predetermined locations, i.e., around the holes through which the probes are intended to protrude, so that the contrasting color of the plate itself is visible. Id.

Circuit Check filed suit, alleging infringement of its patents. The parties agreed to three prior art references that would be used in the validity determination. However, QXQ acknowledged that the stipulated prior art fails to disclose an interface plate with the claimed "second removable indicia." At trial, QXQ argued that three additional references—rock carvings, engraved signage, and a machining technique known as Prussian Blue—should be available to disclose a limitation admittedly not in the stipulated prior art. Circuit Check objected, arguing that these references were not analogous and could not be considered in the obviousness determination. Regarding each of these additional references, Circuit Check presented evidence that either (1) a skilled artisan at the time of the invention would not have considered them reasonably pertinent to the marking problem, or (2) they are not relevant to the problem solved by the patents-in-suit. Ultimately, the jury found the asserted claims not invalid for obviousness. The jury found that the infringement was willful and awarded damages.

But, pursuant to a QXQ motion for judgment as a matter of law on obviousness, the district court threw out the jury determination. According to the court, although there was no doubt that rock carvings "are not technically pertinent to the 'field' of circuit testers," and that "witnesses credibly testified that Prussian plue dye had not been used on alignment plates," nevertheless, "any layman" would have understood that interface plates could be marked using such primitive techniques. See id. "[A]ny vandal who has 'keyed' a car knows that stripping the paint with a key will result in the underlying metal color showing through." Id at 7. The trial court thus found the patents-in-suit obvious.

On appeal, the Federal Circuit first restated the law on analogous art: "To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous. . . . Prior art is analogous [1] if it is from the same field of endeavor or [2] if it is reasonably pertinent to the particular problem the inventor is trying to solve." Circuit Check, No. 2015-1155, slip op. at 6 (citations omitted). In this case, the Federal Circuit explained, the jury was instructed that the field of the invention is circuit board testers and test fixtures used in the manufacture of electronics. The court explained:

Although "familiar items may have obvious uses beyond their primary purposes," KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007), a reference is only reasonably pertinent when it "logically would have commended itself to an inventor's attention in considering his problem," In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The jury heard testimony that a person of ordinary skill in the art would not have thought about rock carvings, engraved signage, or Prussian Blue in considering how to mark interface plates. The jury was entitled to weigh this testimony, find that an ordinarily skilled artisan would not find that the disputed prior art "logically would have commended itself to an inventors attention," and thus find the disputed prior art not analogous. Id.

Circuit Check, No. 2015-1155, slip op. at 6-7 (J.A. citations omitted).

The Federal Circuit further disregarded the trial court's vandalism example: "Just because keying a car, for example, is within the common knowledge of humankind does not mean that keying a car is analogous art. . . . Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand." Id. at 7. The court found that Circuit Check had put forward sufficient evidence for a jury to conclude that an inventor, unsurprisingly, would not have considered rock carvings, engraved signage, and Prussian Blue when trying to improve the process of marking interface plates. Accordingly, it reversed and remanded.

Practitioners may be reassured that there are enforceable limits on the prior art references that may be used in an obviousness analysis, whether before the U.S. Patent and Trademark Office or in trial court litigation. Nonanalogous references too far afield cannot be relied on just because they appear simple. The Federal Circuit has again reaffirmed that where a prior art reference would not have been considered by one of skill at the time of invention, it cannot serve as the basis for a holding under 35 U.S.C. § 103.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
2 Nov 2017, Webinar, Washington, DC, United States

Join us for a two-part webinar series exploring recent developments in machine learning and other technologies that have greatly advanced artificial intelligence (AI) since its origins more than 50 years ago.

9 Nov 2017, Webinar, Washington, DC, United States

As part of Strafford Publications’ webinar series, Finnegan attorneys Adriana Burgy, Chris Johns, and Kai Rajan will discuss the Examiner Count System and provide strategies for interacting with examiners.

15 Nov 2017, Conference, California, United States

Finnegan is a Gold sponsor of the second annual Digital Media & IP Forum, hosted by World Congress.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.