With the Supreme Court decision in KSR v. Teleflex barely ten days old, the U.S. Court of Appeals for the Federal Circuit, looked to the "goal" of a claimed invention and held that the invention would have been obvious over a combination of references and the knowledge of one of skill in the art. Leapfrog Enterprises, Inc. v. Fisher-Price and Mattel, Inc., Case No 06-1402 (Fed. Cir., May 9, 2007) (Laurie, J.)
In the district court, the claimed invention, directed to a processor-based phonics device to teach reading skills to children, was found to be obvious over prior art that consisted of a prior art reference describing an electro-mechanical toy (Bevan) that was designed to teach children to read based on the association of letters with their phonetic sounds, a prior act electronic, processor-based Texas Instruments (TI) device known as Super Speak & Read (SSR) and the knowledge of one of skill in the art. Leapfrog appealed.
On appeal, Leapfrog argued that the district court engaged in improper hindsight in reaching its conclusion of obviousness by concluding that all of the limitations of the claim are found in the prior art (since the claimed "reader" was not found in either reference and that since Bevan’s device is mechanical (and thus different in structure and interrelation from the electronic components recited in the claim) it lacked the claimed functionality and that "there was inadequate evidence in the record to support a motivation to combine Bevan, the TI SSR, and a reader to arrive at the invention." Finally, Leapfrog argued that the district court did not properly consider the strong evidence of secondary considerations of non-obviousness.
Fisher-Price countered that the claimed invention was simply a Bevan-type device updated with modern electronics that were common by the time of the alleged invention, and "that particularized and specific motivations to combine need not be found in the prior art references themselves in the context of an improvement that arises from a desire to generally improve a known device (e.g., to make the product smaller, lighter, or less expensive) using newer technology."
The Federal Circuit opened its analysis citing to its own authority (not KSR), noting that "[o]bviousness is a question of law, reviewed de novo, based upon underlying factual questions which are reviewed for clear error following a bench trial." The Court then affirmed the district court on obviousness, citing to the newly minted KSR decision: "An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." See KSR Int’l Co. v. Teleflex Inc.: "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."
Bowing to the KSR methodology, the Court noted that "the goal of the [claimed] device was to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in the word. In this way, the child would both associate the sound of the letter with the letter itself and be able to sound out the word one letter at a time to learn to read phonetically. Accommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years."
In lieu of even mentioning the TSM ("teaching, suggestion, motivation") test that was at the heart of the KSR appeal, the Court noted that "one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. … The combination is thus the adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art (the SSR)."
Missing Element
Acknowledging that the combination of Bevan and the SSR did not include an element of claim, i.e. "reader," the Court agreed with the district court that "readers were well-known in the art at the time of the invention" and, " that the reasons for adding a reader to the Bevan/SSR combination are the same as those for using readers in other children’s toys—namely, providing an added benefit and simplified use of the toy for the child in order to increase its marketability." In a burden shifting some might find ominous, the Court then noted that the patent owner presented "no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art" or that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art."
Secondary Considerations
Noting that the district court explicitly stated "… that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that [the] claim … would have been obvious," the Court concluded "we have no basis to disagree with the district court’s conclusion."
Practice Note: Perhaps going beyond the KSR decision, the Federal Circuit, in requiring that the patent owner show that the missing element of the claim (the reader) was an "unobvious step over the prior art" may have now signaled it will impose an E. P. O. type "inventive step" hurdle for patent owners to overcome.
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