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.

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