Federal Circuit Clarifies The “Reasonably Pertintent” Analogous Art Standard

The Federal Circuit vacated and remanded an IPR decision in Donner Technology, LLC v. Pro Stage Gear, LLC, because the PTAB used the wrong standard in evaluating whether a reference was analogous art.  The correct standard, according to the Federal Circuit, is whether the reference is reasonably pertinent to particular problems to which the patent relates, and that requires identifying and comparing the problems to which the reference and the patent relate.

Federal Circuit Held That, When Assessing The Analogous Art Inquiry, PTAB Should Have Identified And Compared Problems To Which Patent And Reference Relate.

Donner petitioned for IPR of U.S. Patent No. 6,459,023 owned by Pro Stage Gear, challenging various claims as obvious under 35 U.S.C. §103. Donner relied on the teachings of a patent to Mullen. Mullen relates to electrical relays while the ‘023 patent relates to guitar effects pedalboards. The PTAB rejected the prior art challenges on the ground that Donner did not prove that Mullen is analogous art. Donner appealed. See Donner Technology, LLC v. Pro Stage Gear, LLC, No. 2020-1104, slip op. at 2 (Fed. Cir. Nov. 9, 2020). 

On appeal, the Federal Circuit clarified the second part of the Bigio standard that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (toothbrush is in the same field of endeavor as claimed hair brush). The Federal Circuit held that, because it was undisputed that the ’023 patent and Mullen are not from the same field of endeavor, the only question is whether Mullen is reasonably pertinent to one or more of the particular problems to which the ’023 patent relates. See Donner Technology, No. 2020-1104, slip op. at 7.

The Federal Circuit held that when addressing the analogous art inquiry under a reasonable-pertinence theory, the problems to which both relate must be identified and compared. Id. at 8. In concluding that the PTAB erred in its reasonable-pertinence analysis of whether Mullen is analogous art, the Federal Circuit pointed out that the PTAB failed to properly identify the purposes or problems to which Mullen and the ’023 patent relate.  According to the Federal Circuit, the PTAB’s articulation of the purpose of or problem to be solved by the ’023 patent was so intertwined with the patent’s field of endeavor that it effectively excluded consideration of any references outside that field; in addition, the PTAB never compared the purpose or problem of the ’023 patent with any problems addressed by Mullen, or otherwise assessed whether Mullen was reasonably pertinent to this problem. Id. at 8-10. 

Federal Circuit Re-Emphasized That The Reasonable-Pertinence Analysis Must Be Carried Out Through The Lens Of A PHOSITA

The Federal Circuit re-emphasized that the reasonable-pertinence analysis must be carried out through the lens of a PHOSITA (person having ordinary skill in the art) who is considering turning to art outside her field of endeavor. Id. at 10.  The Federal Circuit also characterized how a PHOSITA would consider references outside her field of endeavor in solving her problem; for example, a PHOSITA would be “resigned” to considering art outside her field of endeavor and would thus not identify the problems so narrowly so as to rule out all such art. Id. at 9. 

The Federal Circuit also found that the PTAB’s inquiry regarding whether a PHOSITA would have a relatively low level of skill and would have had a poor understanding of Mullen’s relay technology is not a relevant question.  It held that the relevant question is whether a PHOSITA would reasonably have consulted the reference in solving the relevant problem, because even if a PHOSITA would not understand every detail of a reference, she might reasonably choose to consult the reference so long as she would understand the portions of the reference relevant to solving her problem well enough to glean useful information. Id. at 11. 

The Federal Circuit found that the PTAB erred in its reliance on differences between the claimed invention and the reference (e.g., technical differences or age difference) in concluding that the reference is not analogous art.  The Federal Circuit pointed out that the PTAB did not adequately explain how those differences establish that the reference was not directed to solving a similar problem or how the differences relate to why a PHOSITA would not turn to the teachings of the reference in solving the problem at hand. Id. at 10-12. 

While the Federal Circuit concluded that the PTAB erred in applying the wrong standard when assessing whether Mullen was analogous art, it did notitself rule on whether Mullen was analogous art.  The Federal Circuit instead left this factual issue for the PTAB to resolve on remand, noting that appellate courts can rule on an issue of fact in the first instance only where no reasonable fact finder could find otherwise. Id. at 12. 

In sum, the Federal Circuit emphasized that in assessing the reasonable-pertinence inquiry for analogous-art purposes, problems to which the claimed invention and a different-field reference relate must be identified and compared from the perspective of a PHOSITA. Patent challengers should argue that a PHOSITA would have identified the similarities of the problems and considered the reference in solving her problem. On the other hand, patent owners should adequately explain why a PHOSITA would not have turned to the reference’s teaching despite her willingness to consider art outside her field of endeavor. One potential argument for patent owners, as suggested in a footnote of the decision, is that the problem a reference solves is so specific to its particular field of endeavor that a PHOSITA could not possibly describe the problem the reference solves other than in a manner that rules out all art outside that field. Id. at 9 n1.