752 F.3d 1371
Fed. Cir.2014Background
- Quad/Tech owns U.S. Patent No. 6,867,423, which claims a visual inspection system for web printing using a CMOS/image sensor and a circular LED illumination array to inspect printed substrates and control a press.
- Q.I. Press requested inter partes reexamination, citing prior art including Ross (circular LED array in an ATM), Maruyama (LED inspection in photocopiers/printers), and Sainio (image scanner in a printing press).
- The examiner rejected all claims (1–72) as obvious in various combinations and rejected certain claims under § 112 (written description). Claim groupings: claims 1–60 primarily rejected over Maruyama + Ross; claims 61–72 over Sainio + Ross.
- The Board reversed obviousness rejections for claims 1–17 and 19–60 (finding Maruyama/Ross did not suggest a printing press) but affirmed obviousness for claims 61–72 (Sainio + Ross) and affirmed written-description invalidity of claim 18; it reversed written-description rejections for claims 14 and 24.
- On appeal, the Federal Circuit affirmed the Board on claims 61–72 and claims 14, 24 and 18 (as to claim 18 invalid), but vacated and remanded the Board’s holding that claims 1–60 were nonobvious because the Board should have considered Sainio + Ross as a new ground for rejection of claims 1–60 given the close similarity to claims 61–72.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness of claims 61–72 | Q.I. Press: combination of Sainio + Ross improperly uses hindsight; Ross does not teach high-intensity illumination; industry praise shows nonobviousness | Quad/Tech/Director: Sainio teaches press; Ross teaches circular LED array; combining is predictable and obvious | Affirmed: claims 61–72 invalid as obvious over Sainio in view of Ross |
| Written description of claim 18 (§112) | Quad/Tech: Figures 1–2 show substrate unsupported at illumination point, supporting claim 18 | Director/Q.I. Press: figures do not show the press hardware or clearly an unsupported substrate at illumination | Affirmed: claim 18 lacks adequate written description; figures do not convey possession of an unsupported substrate at illumination point |
| Obviousness of claims 1–60 | Q.I. Press: Board erred by reversing examiner; Maruyama+Ross should render claims obvious; Board inconsistent given ruling on 61–72 | Quad/Tech/Director: Maruyama does not disclose a printing press so Maruyama+Ross do not show the press limitation; Board properly reversed | Vacated and remanded: Board should have considered Sainio+Ross as a new ground for rejecting claims 1–60 (nearly identical to 61–72); remand for further proceedings |
| Written description of claims 14 & 24 (§112) | Q.I. Press: spec does not identify a discrete “sensor” above LEDs; lacks positional detail | Quad/Tech/Director: image recording device includes a sensor; Figures 2–3 show LEDs between sensor and substrate; skilled artisan would understand sensor placement | Affirmed: claims 14 and 24 meet written-description requirement; figures support LEDs between sensor and substrate |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (obviousness: combining known elements yielding predictable results)
- Graham v. John Deere Co., 383 U.S. 1 (framework for obviousness analysis)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (written description: inventor must convey possession of claimed invention)
- In re Baxter Int’l, Inc., 678 F.3d 1357 (reexamination standard; waiver of arguments not raised before the Board)
- Rambus Inc. v. Rea, 731 F.3d 1248 (Board may not rely on new facts/rationales not previously raised; procedures for new grounds)
- In re Elsner, 381 F.3d 1125 (standard of review for Board legal conclusions)