Federal Circuit Rejects A Wide Scope Inquiry Into Options Available At The Time Of Invention In An Obvious-To-Try Analysis
On January 6, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board (PTAB) judgment in an inter partes examination (IPR) of a U.S. patent. Google LLC v. Koninklijke Philips N.V., Appeal No. 2019-1234 (Fed. Cir. Jan. 6, 2020) (nonprecedential). The CAFC applied the obvious-to-try inquiry and found that the claims were obvious.
Koninklijke Philips N.V. sued Acer Inc. and other companies, alleging infringement based on devices that use Google operating systems. The asserted claims relate to an on-screen keypad that displays primary and secondary characters. To improve character entry, a “quick tap” of a key results in selection of the primary character associated with that key and a selection of that key for a prolonged period causes the device to display a menu of secondary characters associated with that key. A “quick tap” of a secondary character on that menu results in selection of that secondary character and the device changes the display to show the primary characters. In other words, after selection of the secondary character, the keypad returns to the default state.
Google Inc. petitioned the Patent and Trademark Office to institute an IPR. Google challenged the claims as obvious over Japanese Patent Application No. 2000–148366 to Sakata (Sakata II). Sakata II disclosed a similar on-screen keypad to the claimed invention; however, the keypad did not return to the default state after selection of the secondary character. In September 2018, the PTAB issued a final written decision holding that Google failed to prove obviousness. Google appealed to the Federal Circuit.
The Federal Circuit noted that the Supreme Court’s KSR decision established that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Thus, if the substitution was “obvious to try,” and the “anticipated success” results, a conclusion of obviousness may follow. Id.
Google argued, and the Federal Circuit agreed, that the substitution in this instance was obvious-to-try. The Federal Circuit noted that a wide-scope inquiry into all keypad possibilities is erroneous as a matter of law where “it is not disputed that a relevant artisan would in fact be studying a particular piece of prior art in thinking about the artisan’s own possible further work.”