Circuit Check Inc. v. Qxq Inc., 795 F.3d 1331

Background

Circuit Check holds three patents claiming an interface plate marked by a first indicia covering the plate and a second removable indicia overlying it, removed around selected holes to identify them. QXQ stipulated to infringement and that three industry documents (the "stipulated prior art") were prior art but conceded those did not disclose the claimed removable second indicia.
QXQ argued additional references—rock carvings, engraved signage, and Prussian Blue dye (the "disputed prior art")—rendered the claims obvious as analogous prior art. Circuit Check presented testimony that a person of ordinary skill would not have looked to those arts when solving the interface-plate marking problem.
A jury found the asserted claims not invalid for obviousness and awarded willful-infringement damages. The district court nevertheless granted JMOL for QXQ, concluding the disputed prior art was analogous and that objective indicia did not overcome obviousness; it also invalidated two dependent claims for being trivial.
On appeal, the Federal Circuit reviewed the JMOL de novo but construes factual findings in favor of the jury when supported by substantial evidence, including whether references are analogous, differences between prior art and claims, and objective considerations.
The Federal Circuit held that substantial evidence supported the jury’s presumed findings that the disputed references were not analogous, that the stipulated prior art lacked the claimed removable indicia, and that objective indicia (copying, long‑felt need, commercial success, skepticism, unexpected results) supported nonobviousness. It reversed the district court’s JMOL and remanded.

Issues

Issue	Circuit Check's Argument	QXQ's Argument	Held
Whether rock carvings, engraved signage, and Prussian Blue are analogous prior art	These references are not analogous; a skilled artisan would not reasonably look to them for the marking problem	These references are analogous common-knowledge techniques that would have commended themselves to an inventor	Held not analogous; jury reasonably found they would not have commended themselves to an inventor's attention
Whether the asserted claims are obvious over the prior art	The stipulated prior art lacks the claimed second removable indicia; objective indicia support nonobviousness	The combination of stipulated and disputed prior art renders the claims obvious; objective indicia do not overcome obviousness	Reversed JMOL; substantial evidence supports jury finding of nonobviousness based on scope of prior art, claim differences, and objective indicia
Whether objective indicia (commercial success, copying, etc.) negate obviousness	Objective evidence exists and was properly presented to jury	Objective factors are insufficient or irrelevant to overcome obviousness	Jury’s presumed findings on objective indicia are supported by substantial evidence; they weigh against obviousness
Whether dependent claims 5 and 11 are invalid absent evidence showing additional limitations are obvious	Dependent claims presumed valid; QXQ bears burden to prove invalidity	Court may deem added limitations trivial and invalidate dependent claims despite no evidence from QXQ	Court erred by shifting burden; invalidation improper without evidence targeting additional limitations

Key Cases Cited

Graham v. John Deere Co., 383 U.S. 1 (sets the factual inquiries for obviousness)
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (framework for obviousness and combining known elements)
Wyers v. Master Lock Co., 616 F.3d 1231 (analogous-art standard and it being a question of fact)
In re Clay, 966 F.2d 656 (reference is analogous if it would have commended itself to an inventor’s attention)
Jurgens v. McKasy, 927 F.2d 1552 (presumption of jury fact findings in obviousness review)