DONNER TECHNOLOGY, LLC, Appellant v. PRO STAGE GEAR, LLC, Appellee
November 9, 2020
When a court or the Patent Office is considering whether a patent claim is valid over the prior art, it may consider both art that is in the same “field of endeavor” as the claim, and “analogous” art.
The Federal Circuit has explained that a prior art reference may qualify as analogous art if it is “reasonably pertinent to the particular problem with which the inventor [of the claim at issue] is involved.” And to decide this question, the finder of fact must identify and compare problems that are addressed by the patent claim at issue and by the allegedly analogous prior art reference.
In this appeal from an IPR, Donner Technology challenged several claims of Pro Stage Gear’s US Patent No. 6,459,023, which is directed to a mounting board (also called a “pedal board”) for guitar effects pedals—foot-switchable electronic devices (like distortion, fuzz, chorus, etc.) that change an instrument’s amplified sound. The ‘023 patent explains that although it had been common in the prior art to mount effects pedals on a pedalboard, it had not been easy to: (a) manage the cables that interconnect the various effects pedals; or (b) to reconfigure or swap out effects pedals. To overcome these deficiencies, the patent discloses and claims a pedalboard that “allows easy positioning and changing of the individual guitar effects while providing a confined and secure area for cable routing and placement.”
Challenger Donner Technology argued to the PTAB that the ‘023 patent’s claims (which are directed to a structure for supporting, interconnecting, and reconfiguring effects pedals) were invalid as obvious over Mullen, a 50-year-old patent that describes a structure for supporting, interconnecting, and reconfiguring electrical relays. The PTAB ultimately agreed with patent owner Pro Stage Gear that Donner had “not put forth any argument or evidence to explain what would have compelled a pedalboard inventor in 1999 or 2000 to consider potential solutions arising from early 1970s-era relay technologies”. The Board also concluded that Mullen was neither in the same field of endeavor as, nor analogous art to, the ‘023 patent (whose purpose was “to mount guitar effects on a pedal board”).
On appeal, the Federal Circuit said that the PTAB correctly concluded that the Mullen reference and the ‘023 patent are related to different fields of endeavor; but the Board failed to support its conclusion that Mullen was not analogous art.
The Federal Circuit’s 2014 Scientific Plastic Products decision explains that when deciding whether a reference is analogous art, the PTAB must: (a) identify and compare problems that are addressed by the patent claim at issue; identify problems addressed by the allegedly analogous prior art reference; and (c) compare the two sets of problems. This comparison must be performed from the perspective of a person of ordinary skill in the art, who would be willing to consider art outside the field of her endeavor.
Here, the PTAB went wrong in at least two ways: first, it characterized the problem addressed by the ‘023 patent as being directed to “mount[ing] guitar effects on a pedal board”. This was both too broad—because guitar effects pedals had been mounted to pedalboards for decades— and too narrow, because it was so intertwined with the ‘023 patent’s field of endeavor that it eliminated the possibility that the PTAB would consider any analogous art (that is, any art not directed specifically to pedalboards). Second, the Scientific Plastic Products decision required the Board to identify and compare the problems addressed by both the ‘023 patent and the Mullen reference—but the Board never identified the problems addressed by Mullen.
Because the record developed below was incomplete, the panel remanded the case to the PTAB to identify the problems addressed by the prior art Mullen reference, more properly characterize the problem addressed by the ‘023 patent, and perform the comparison between the two required by the Scientific Plastic Products decision.