Cole Kepro International, LLC v. Vsr Industries, Inc.
695 F. App'x 566
| Fed. Cir. | 2017Background
- Cole Kepro owns U.S. Patent No. 6,860,814 claiming a gaming apparatus with a generally planar video display mounted to the inner surface of a cabinet door and a controller in the cabinet. Claims 1–14 were challenged in an inter partes review (IPR).
- VSR petitioned for IPR on multiple obviousness grounds; the PTAB instituted review and found claims unpatentable as obvious in view of several prior-art references, including Runte, Fraley+Okada, and Smith. The Board also discounted Cole Kepro’s secondary considerations evidence.
- Runte discloses a tabletop gaming device with a CRT mounted inside a hinged tabletop (serving as a door) and a rectangular screen aperture; the Board found it would have been obvious to substitute a flat-panel (LCD/plasma) for the CRT.
- Key disputed claim issues included whether Runte teaches away from using a flat-panel, whether substituting a flat-panel yields the claimed “reduced depth dimension,” whether Runte discloses the bracket/support recited in dependent claim 9, and whether Cole Kepro’s licensing evidence establishes nonobviousness (nexus).
- The Federal Circuit reviewed the Board’s legal conclusion of obviousness de novo and its factual findings for substantial evidence, and affirmed the PTAB’s determination that claims 1–14 are unpatentable as obvious (relying on Runte as dispositive).
Issues
| Issue | Plaintiff's Argument (Cole Kepro) | Defendant's Argument (VSR / Board) | Held |
|---|---|---|---|
| Whether Runte teaches away from substituting CRT with LCD/plasma | Runte teaches comfort with its CRT table device and thus discourages that substitution | Runte’s comfort disclosure does not discourage further legroom or use of thinner displays | Affirmed: Runte does not teach away; substitution would be obvious |
| Whether replacing CRT with flat-panel yields a “reduced depth dimension” as claimed | Substitution only reduces top-to-bottom dimension, not front-to-back (depth) required by claim 8 | Runte’s tabletop orientation can be treated as the cabinet front; reduction in that axis yields a reduced depth | Affirmed: substantial evidence supports that flat-panel replacement provides the claimed reduced depth |
| Whether Runte discloses the bracket/horizontal lower support in claim 9 | Claim 9 requires the only support be a lower horizontal surface (per Cole Kepro) | Claim 9 does not require exclusive support; Runte’s CRT supports (including bottom support) suffice | Affirmed: plain claim language does not require sole support; Runte meets claim 9 limitation |
| Whether Cole Kepro’s licensing evidence shows nexus/overcomes prima facie obviousness | Licenses show industry-wide acceptance and weighty secondary consideration of nonobviousness | Licenses convey rights to other patents, lack apportionment, include small per-unit royalties and litigation-related licenses, weakening nexus | Affirmed: Board reasonably weighed licenses and found they did not overcome obviousness |
Key Cases Cited
- Harmonic Inc. v. Avid Tech., 815 F.3d 1356 (Fed. Cir.) (standard of review: ultimate obviousness de novo, factual findings for substantial evidence)
- Consolidated Edison Co. v. NLRB, 305 U.S. 197 (U.S.) (definition of substantial evidence)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S.) (Graham factors and flexible obviousness analysis)
- Graham v. John Deere Co., 383 U.S. 1 (U.S.) (framework for obviousness: prior art, differences, level of skill, secondary considerations)
- Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731 (Fed. Cir.) (teaching-away standard)
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir.) (teaching-away discussion)
- Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir.) (licensing evidence requires nexus; may reflect business choices)
- In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir.) (licensing evidence must show licenses reflect value of claimed invention rather than litigation avoidance)