Randall Mfg. v. Rea
733 F.3d 1355
| Fed. Cir. | 2013Background
- FG Products owns U.S. Patent No. 7,214,017 for a moveable, two-panel, half-width bulkhead that can be joined with straps and independently moved along longitudinal rails and raised toward a trailer ceiling via lift mechanisms.
- Randall Manufacturing requested inter partes reexamination; the PTO Examiner rejected numerous claims as obvious over a combination of four references: two ROM advertisements (half-width panels with straps), Aquino (track-and-trolley ceiling-mounted, independently movable panels), and Gibbs (lift mechanism for stowing panels at the ceiling).
- FG amended claims and added new claims; the Examiner maintained rejections of several claims (including claim 10 and others) as obvious based on the cited combo.
- The Board reversed the Examiner, focusing only on the four cited references and concluding there was no motivation to modify Aquino to permit ceiling stowage; it also construed claim 10’s means-plus-function limitations and found corresponding structure not taught by the prior art.
- Randall pointed to extensive additional prior art and declarations showing that ceiling stowage of track-mounted bulkheads and use of straps/lift mechanisms were well known in the industry; FG argued physical incompatibilities and teaching away in Aquino.
- The Federal Circuit vacated the Board’s decision and remanded, holding the Board erred by ignoring the broader background art and common-knowledge evidence relevant to motivation to combine.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board erred by reversing Examiner’s obviousness rejections for multiple claims | FG: No motivation to combine Aquino with Gibbs/ROM because physical incompatibilities and Aquino teaches side-wall stowage (teaching away) | Randall: Industry background shows ceiling stowage and lift/strap solutions were widely known, motivating combination | Court: Vacated Board; Board erred by excluding broader background prior art and common-knowledge evidence showing motivation to combine |
| Whether the Board properly considered common knowledge and background art in an obviousness analysis | FG: Board properly limited analysis to Examiner-cited references | Randall: Background references and declarations establish what a skilled artisan would know and are relevant | Court: Board failed to follow KSR and must consider the store of public knowledge and record evidence of ordinary skill |
| Construction and application of means-plus-function in claim 10 | FG: Means-plus-function corresponds to specific structures described in spec; Board’s mapping appropriate | Randall: Board improperly imported an unclaimed limitation (raising to ceiling) into corresponding structure | Held: Court did not decide the claimed construction question on appeal; remanded (declined to reach construction question) |
| Whether objective indicia of nonobviousness negate motivation to combine | FG: Implied (but did not point to specific) objective indicia | Randall: No objective indicia identified | Court: No objective indicia shown; Board’s lack-of-motivation finding was prejudicial error |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (rejects rigid prior-art-only obviousness analysis; requires consideration of background knowledge and common sense)
- Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (sets Graham factual inquiries for obviousness)
- Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976) (combination of familiar elements performing known functions may be obvious)
- In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007) (appellate review standards for PTO fact findings and law)
- Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) (importance of factual foundation for assertions about ordinary skill and common knowledge)
- Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) (evidence required to support common-knowledge assertions)
- Rexnord Indus., LLC v. Kappos, 705 F.3d 1347 (Fed. Cir. 2013) (appellee may defend Examiner’s rejection on recorded grounds)