Federal Circuit Addresses the Obviousness of Prior Art Combinations

October 5, 2016

The Federal Circuit recently applied the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., in determining the obviousness of a caller ID system patent.
In ClassCo, Inc. v. Apple, Inc., Apple was attacking ClassCo’s patents which protected the playing of an identifying sound regarding an incoming phone call. ClassCo’s patent No. 6,970,695, involved a caller ID system which used audio to announce a caller before answering the call. The case initially arose from ClassCo’s patent infringement claim against various cell phone companies, including Apple, Samsung, and LG. The basis of the claim was that several of the defendant’s smartphone models had infringed ClassCo’s patent.
During the course of litigation, Apple requested that the Patent & Trademark Office’s Patent Trial and Appeal Board review certain claims in ClassCo’s patent on the grounds that “the parent application of the ‘695 application . . . is anticipatory prior art to the ‘695 patent.” This would mean that ClassCo’s patent qualified as “obvious” under 35 U.S.C. §103(a), and thus ClassCo’s caller ID system would be unpatentable.  At this point in the litigation, the District Court for the Northern District of Illinois stayed the proceedings until further decision by the PTO. In April of 2015, the PTO’s Patent Trial and Appeal Board “found that the patent was obvious in light of two pieces of prior art—U.S. Patent Nos. 4,894,861 (Fujioka) and 5,199,064 (Gulick).”
Fujioka contained all but one of the claim limitations—namely that the telephone headset speaker is used both for calls and to announce a caller’s identity, the board said. Gulick discusses using the same speaker to produce audio from calls and for ringing sounds that alert the user of incoming calls. A person of ordinary skill would be motivated to combine the two, using the one-speaker idea of Gulick to convey different types of audio information.
The Patent Trial and Appeal Board found that by combining the Fujioka and Gulick patents, ClassCo’s patent claims would be covered, and thus the patented material would be obvious. In June of 2015, ClassCo filed a notice of appeal of the Patent Trial and Appeal Board’s decision with the Federal Circuit. Again, the original litigation was put off pending the Federal Circuit’s decision.
Just this past week, the Federal Circuit finally issued its decision regarding the obviousness of the patents. The Federal Circuit ultimately concluded that in light of the Fujioka and Gulick patents, ClassCo’s patent on caller ID was obvious, and thus unprotectable.
ClassCo tried to argue on appeal that the Patent Trial and Appeal Board’s finding that their patent was merely a combination of the Fujioka and Gulick patents did not equate to obviousness. The Federal Circuit reviewed the Patent Trial and Appeal Board’s decision de novo, and reviewed the decision for “substantial evidence” supporting the determination of obviousness.
The Federal Circuit performed a detailed analysis of the Patent Trial and Appeal Board’s decision in light of the Supreme Court case KSR International Co. v. Telefax, Inc.. The Federal Circuit held that KSRdoes not require that a combination only unite old elements without changing their respective functions . . . Instead, KSR teaches that ‘[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.’” Further, “familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like a puzzle.”
In other words, KSR, as applied in this case, recognizes that prior art combinations are not merely those which take two patents already in existence, and combines them together without creating any meaningful changes to the function of the product. The Federal Circuit held that, unlike the viewpoint advanced by ClassCo, KSR instructs that the obvious inquiry requires a flexible approach.” In so holding, the Federal Circuit recognized “that creativity allows that person to recognize that a piece of prior art can have obvious new uses, which is what happened here when the dual-use speaker in Gulick was adapted to produce sounds that announced the identification of the incoming caller . . . .”

Since the combination of Fujioka and Gulick’s patent had “resulted in no more than [a] predictable result,” ClassCo’s caller ID patent did not reach the bar of creativity required for protectability of non-obviousness.

Ultimately, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision.
While it is obvious that the mere combining of two previously existing patents would not meet the non-obvious requirements as set forth by 15 U.S.C. §103(a), a remaining question is left open as to the “flexible” standard created by the Federal Circuit in this case, and by the Supreme Court in KSR. That question is: how much creativity must go into the prior art combination to make the new patent qualify as non-obvious, and thus protectable under §103(a)?  In other words, while this flexible standard is beneficial for both potential future defendants and current owners of the patent that is combined, how much does the one making the combination have to change the functions within the original patents for the new patent to be protectable? While the decision of the Federal Circuit is understandable, they may have opened the floodgates for a variety of obviousness challenges if the newer patent does not change the functions of the old patents to a degree recognized as protectable by the courts.