979 F.3d 1353
Fed. Cir.2020Background
- Donner Technology filed IPR challenging claims of U.S. Patent No. 6,459,023 as obvious, relying in part on U.S. Patent No. 3,504,311 (Mullen).
- The ’023 patent claims a guitar effects pedalboard that eases placement/change of effects and confines cable routing beneath an effect-mounting surface.
- Mullen discloses a support for electrical relays with mounting surfaces and wiring-channel space; Donner argued these teachings were analogous for the cable-routing problem.
- The PTAB rejected Donner’s obviousness grounds because Donner failed to prove Mullen is analogous art and found significant differences between the references.
- The Federal Circuit concluded the Board applied the wrong standard, mischaracterized Donner’s evidence (including expert testimony), and failed to identify and compare the problems each reference addresses; the court vacated and remanded.
- The Federal Circuit declined to resolve the analogous-art fact itself, remanding for the Board to apply the correct legal standard and fully consider the record.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Mullen is analogous art to the ’023 patent | Donner: Mullen’s support with mounting surfaces and wiring channels is reasonably pertinent to the pedalboard’s cable-routing/change problem | Board/Pro Stage: Different field, significant structural differences, PHOSITA would not consult or understand Mullen (and Mullen’s age) | Vacated Board decision; Board applied wrong standard and failed to compare the problems; remanded to decide factual issue under correct test |
| Whether the Board properly considered Donner’s evidence and expert testimony | Donner: Submitted detailed expert testimony and argued analogy in petition and reply | Board: Asserted Donner offered no argument/evidence compelling a pedalboard inventor to consider 1970s relay tech | Court found Board’s statement erroneous and unclear whether it meaningfully considered the evidence; remanded for reconsideration |
| Whether the Federal Circuit should decide analogous-art fact in first instance | Donner: Urged court to find Mullen analogous because substantial evidence supports it | Pro Stage/Board: Urged remand for factfinding | Court refused to find the fact in first instance (per standard that appellate courts rule only when no reasonable factfinder could find otherwise); remanded to the Board |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (1966) (establishes the Graham obviousness framework)
- In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (defines analogous-art tests: same field or reasonably pertinent to the problem)
- In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) (scope of analogous prior art and relevance inquiry)
- In re Clay, 966 F.2d 656 (Fed. Cir. 1992) (reference with same purpose as claimed invention supports use in obviousness rejection)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (analogous art requires similarity in problems addressed)
- In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) (analogous art may include references from different fields despite significant differences)
- Sci. Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355 (Fed. Cir. 2014) (exception where problem solved is so field-specific that outside art is not reasonably pertinent)
- In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) (Board must make necessary findings and provide adequate explanation)
- Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) (appellate courts should decide facts in first instance only when no reasonable factfinder could find otherwise)