Q.I. Press Controls, B v. v. Lee
752 F.3d 1371
| Fed. Cir. | 2014Background
- Patent at issue: U.S. Patent No. 6,867,423 covering a visual inspection system for web printing that uses a CMOS image recording device and a circular array of LEDs to illuminate a substrate for defect detection and process control.
- Q.I. Press requested inter partes reexamination asserting claims were obvious over prior art including Ross (circular LED ring for ATMs), Maruyama (LED illumination in copiers/printers), and Sainio (printing-press optical scanner).
- Examiner rejected all claims (1–72) as obvious over various combinations of references and rejected several claims under § 112 written-description grounds.
- Board reversed the examiner as to obviousness for claims 1–17 and 19–60 (finding Maruyama/Ross did not suggest use with a printing press), but affirmed obviousness of claims 61–72 (Sainio + Ross) and affirmed written-description invalidity of claim 18 while reversing written-description rejections of claims 14 and 24.
- Q.I. Press appealed the Board’s reversal of obviousness rejections and written-description rulings for claims 14 and 24; Quad/Tech cross-appealed the Board’s affirmance of obviousness of claims 61–72 and the written-description rejection of claim 18.
- Federal Circuit: affirmed Board as to claims 61–72 (obvious over Sainio+Ross), affirmed written-description ruling invalidating claim 18, affirmed that claims 14 and 24 satisfy written description, but vacated and remanded the Board’s holding that claims 1–60 were not obvious because the Board should have considered Sainio+Ross as a new ground for rejecting claims 1–60 given the close similarities to claims 61–72.
Issues
| Issue | Plaintiff's Argument (Q.I. Press) | Defendant's Argument (Quad/Tech / Director) | Held |
|---|---|---|---|
| Obviousness of claims 61–72 | Ross+Sainio improperly combined; Ross does not teach high-intensity LEDs; industry praise shows nonobviousness | Combination was obvious: Sainio discloses printing press system; Ross discloses circular LED array; combining yields predictable result | Affirmed: claims 61–72 obvious over Sainio in view of Ross |
| Written description of claim 18 (§112) | Figures 1–2 show substrate unsupported at illumination point, satisfying written description | Figures do not show substrate physically unsupported at illumination point; figure 2 is a block diagram, not full press context | Affirmed: claim 18 invalid for lack of written description |
| Written description of claims 14 & 24 (§112) | Specification does not identify a distinct "sensor" above LEDs and substrate | Figures 2 and 3 show image recording device (includes sensor) and LEDs between sensor and substrate; POSITA would understand sensor location | Affirmed: claims 14 and 24 have adequate written description |
| Obviousness of claims 1–60 | Board correctly found Maruyama+Ross do not disclose printing press; thus claims not obvious | Examiner had relied on Maruyama+Ross; Board failed to consider Sainio+Ross (which the Board found convincing for other claims) as a ground against claims 1–60 | Vacated & remanded: Board erred by not considering Sainio+Ross as a new ground for rejecting claims 1–60 given overlap with claims 61–72; further proceedings required |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (sets factual/legal framework for obviousness analysis)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (favors combining familiar elements for predictable results)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (written description requires possession of claimed invention)
- In re Baxter Int’l, Inc., 678 F.3d 1357 (reexamination standard; waiver of arguments not presented to the Board)
- Rambus Inc. v. Rea, 731 F.3d 1248 (Board may not rely on new facts/rationales not presented by examiner without designating a new ground)
- In re Elsner, 381 F.3d 1125 (standard of review for Board legal conclusions)
- In re Gartside, 203 F.3d 1305 (substantial-evidence review of Board factual findings)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (definition of substantial evidence standard)