Acco Brands Corporation v. Fellowes, Inc.
2016 U.S. App. LEXIS 3015
| Fed. Cir. | 2016Background
- Fellowes owns U.S. Patent No. 7,963,468 claiming a paper shredder that uses a thickness sensor, a presence sensor, and a controller that starts the motor only when paper is present and the thickness is below a threshold.
- JP ’445 discloses a thickness sensor that cuts motor power when too much paper is fed; it does not disclose a presence sensor or a way to turn the motor on. Several other prior references disclose presence sensors and controllers that start the motor and jam-detection circuitry that stops it after a jam.
- ACCO requested inter partes reexamination; the examiner rejected claims 9–12 as obvious by combining the prior-art thickness sensor, presence sensor, and controller. Fellowes submitted rebuttal evidence (long-felt need). Examiner maintained the §103 rejection.
- The Patent Trial and Appeal Board (Board) reversed the examiner, finding the examiner failed to make a prima facie case because it was not obvious to configure the controller to start only when both sensors indicated permissive conditions. The Board therefore did not address rebuttal evidence or the examiner’s separate prima facie case for dependent claims 10 and 12.
- The Federal Circuit (panel opinion) reversed the Board on the prima facie issue, holding the examiner established motivation to combine and that obvious configurations of sensor placement would meet the claim limitations. The case was remanded for the Board to consider (1) Fellowes’ rebuttal evidence and (2) whether dependent claims provide independent nonobviousness.
Issues
| Issue | Plaintiff's Argument (Fellowes) | Defendant's Argument (ACCO / Examiner) | Held |
|---|---|---|---|
| Whether examiner made a prima facie case of obviousness for independent claims | Claimed controller configuration (start only when presence detected and thickness below limit) is nonobvious; Board agreed examiner failed to show prima facie case | Prior art discloses both sensors and controllers; ordinary artisan would be motivated to combine them and configure controller as claimed | Reversed Board: examiner made prima facie case; obvious to combine and to connect sensors to controller |
| Whether motivation existed to combine JP ’445 thickness sensor with presence-sensor controllers | Combination not obvious because JP ’445 lacks a motor-start mechanism | Skilled artisan would add a known presence-sensor/controller to JP ’445 to enable motor start; problem-solution and predictable combination support motivation | Motivation present; combining elements would yield predictable results (obvious) |
| Whether sensor placement/configuration would meet claim limitations | Different placements produce different behavior; one placement (presence above thickness) may briefly start motor and fall outside claims | At least one obvious placement (thickness before presence) meets claim limitations; obvious design choices are finite and predictable | The obvious placement satisfies claim; existence of another placement not dispositive |
| Whether Board needed to address rebuttal evidence and dependent-claim prima facie case | Board should have weighed rebuttal evidence and examiner’s case for dependent claims | Board did not reach those issues after finding no prima facie case | Remanded for Board to consider rebuttal evidence and examiner’s separate prima facie case for dependent claims 10 and 12 |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (framework for obviousness and combining familiar elements yields predictable results)
- In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007) (examiner must set forth prima facie case; burden shifts to patentee for rebuttal)
- Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015) (prima facie framework and burdens during examination/reexamination)
- Leo Pharm. Prods. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) (objective indicia must be weighed within whole obviousness analysis)
- Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013) (preponderance standard in final obviousness determination)
- Q.I. Press Controls, B.V. v. Lee, 752 F.3d 1371 (Fed. Cir. 2014) (standard of review for Board legal conclusions and factual findings)