Federal Circuit Considers Analogous Art In Obviousness Analysis
On November 8, 2019, the Court of Appeals for the Federal Circuit (CAFC) vacated the judgment of the Patent Trial and Appeal Board (PTAB) reversing the patent examiner’s rejection of new claims presented by Firepass Corp. (Firepass) in an inter partes reexamination of a U.S. patent. Airbus S.A.S. v. Firepass Corp., __ F.3d __, (Fed. Cir. Nov. 8, 2019). The CAFC found that the PTAB erred in its analysis of analogous art.
In 2009, Firepass sued Airbus S.A.S. (Airbus) in the Eastern District of New York alleging infringement of the at-issue patent. In 2011, Airbus brought a reexamination proceeding of the at-issue patent. Firepass presented new claims in the reexamination proceeding. The examiner rejected the newly presented claims as obvious over a prior art reference, “Kotlair” and other prior art.
Firepass appealed the examiner’s rejection of the newly presented claims to the PTAB, arguing that Kotlair is not analogous art to the claimed invention and is therefore not relevant for the purpose of obviousness. The PTAB held that Kotlair was not analogous art and reversed the examiner’s rejections of newly presented claims. In reaching this conclusion, the PTAB applied the “field of endeavor” and “reasonably pertinent” tests in considering the scope of the analogous prior art, holding that Kotlair does not qualify under either of these two tests. Airbus appealed to the Federal Circuit.
The Federal Circuit affirmed the PTAB’s holding under the “field of endeavor” test, finding that the PTAB considered “explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention,” and “weigh[ed] [the] circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.” Airbus S.A.S., slip op. at 10.
However, the Federal Circuit held that the PTAB erred in its analysis under the “reasonably pertinent” test by refusing to consider references that are relevant to the question of whether a person of ordinary skill in the art in the field of invention would have consulted references relating to another field. The court explained that “a ‘reasonably pertinent’ reference is one that an ordinarily skilled artisan would reasonably have consulted in seeking a solution to the problem that the inventor was attempting to solve.” Id. at 15. As such, “the reasonably pertinent inquiry is inextricably tied to the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.” Id.