Scientific Plastic Products, Inc. v. Biotage AB, 766 F.3d 1355

Background

SPP owns three patents ('061, '327, '571) claiming a resealable polymer cartridge and method for low pressure liquid chromatography (LPLC). Biotage sued for infringement; Biotage requested inter partes reexamination and the district court stayed litigation.
PTO examiner rejected all claims of the three patents as obvious; the Patent Trial and Appeal Board affirmed and cancelled all claims. SPP appealed to the Federal Circuit.
The strongest prior art: Yamada (an LPLC polymer cartridge with threaded cap and O‑ring), King and Strassheimer (plastic threaded caps/closure assemblies for pressurized beverage containers showing complementary inclined sealing surfaces).
Central issues: whether King and Strassheimer are analogous art and whether it would have been obvious to combine Yamada’s cartridge with the pressure‑resistant cap structures of King or Strassheimer to produce the claimed resealable LPLC cartridge.
The Board found (1) King and Strassheimer are reasonably pertinent to the problem of achieving a fluid‑tight resealable cap at elevated pressure, and (2) a person of ordinary skill would have been motivated to combine Yamada with those caps to solve leakage concerns identified in the SPP specification.
The Federal Circuit majority affirmed the Board’s obviousness findings; Judge Moore dissented, arguing the record lacks substantial evidence of a known leakage problem and that the Board failed to resolve the level of ordinary skill in the art.

Issues

Issue	Plaintiff's Argument (SPP)	Defendant's Argument (Biotage/PTO)	Held
Are King and Strassheimer analogous art?	Not analogous; cap art for beverages is outside field and not reasonably pertinent to flash chromatography problems.	They address the same sealing problem; a skilled artisan would reasonably look to pressurized‑container seals.	Analogous: Board and court held those refs reasonably pertinent to the sealing problem.
Would it have been obvious to combine Yamada with King/Strassheimer?	No; Yamada did not have leakage problems so there was no motivation to substitute caps—finding relied on hindsight.	Yes; known leakage concerns in polymer threaded cartridges (as described in SPP spec and implied by Yamada’s O‑ring) would motivate adoption of pressure‑resistant caps.	Obvious: Board and majority held there was substantial evidence of motivation to combine; affirmed.
Use of inventor’s specification as motivation	Spec’s statement of leakage is inventor‑centric and cannot be used to supply motivation.	Spec identifies a known problem that a skilled artisan would recognize and address.	Court held reliance on the spec and Yamada’s O‑ring as motivation was permissible and supported by substantial evidence.
Did the Board resolve the level of ordinary skill in the art?	Argued Board failed to determine this contested factual issue; affects analogous‑art inquiry.	Board implicitly applied a person of ordinary skill who would consider sealing solutions from related arts.	Majority affirmed without reversing; dissent found Board’s failure to resolve skill level fatal.

Key Cases Cited

In re Clay, 966 F.2d 656 (Fed. Cir. 1992) (analogous‑art two‑part test)
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314 (Fed. Cir. 2011) (reference is pertinent if it addresses the same purpose/problem)
In re Klein, 647 F.3d 1343 (Fed. Cir. 2011) (analogous art standard reaffirmed)
In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992) (limits on treating dissimilar fields as analogous)
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (requirement to identify a reason to combine known elements)
In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) (consulting different arts when problem not unique to field)
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309 (Fed. Cir. 1985) (analogous art may include hinge/fastener art for pen arm problem)
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) (warning against hindsight in obviousness analysis)
Graham v. John Deere Co., 383 U.S. 1 (1966) (Graham factors; need to resolve level of ordinary skill)