Wednesday, May 09, 2007

"Common Sense" Affirms Obviousness in CAFC

Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., et al. (06-1402) May 9, 2007

Leapfrog appealed the district court's (pre-KSR) finding that claim 25 from US Patent 5,813,861 was invalid:

Claim 25. An interactive learning device, comprising:

a housing including a plurality of switches;

a sound production device in communication with the switches and including a processor and a memory;

at least one depiction of a sequence of letters, each letter being associable with a switch; and

a reader configured to communicate the identity of the depiction to the processor,

wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter, the sound being determined by a position of the letter in the sequence of letters.

The district court found the claim obvious over a 1973 patent (Bevan), the Texas Instruments Super Speak & Read ("SSR") device and the knowledge of one ordinary skill in the art.

Fisher-Price argued that claim 25 was nothing more than the Bevan mechanical device that was updated with modern electronics. The SSR device was combined with Bevan to demonstrate that the electronic (versus mechanical) implementation was an obvious variant. The CAFC agreed:

An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837, at *12 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). Thus, we bear in mind that the goal of the claim 25 device was to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word. In this way, the child would both associate the sound of the letter with the letter itself and be able to sound out the word one letter at a time to learn to read phonetically. Accommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.

* * *

We agree with the district court that one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. While the SSR only permits generation of a sound corresponding to the first letter of a word, it does so using electronic means. The combination is thus the adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art (the SSR). We therefore also find no clear error in the finding of the district court that one of ordinary skill in the art could have utilized the electronics of the SSR device, with the method of operation taught by Bevan, to allow a child to press each individual letter
in a word and hear the individual phonemes associated with each letter to sound out the words.

[Blogger Note: Where did the "reasonably obvious" terminology (highlighted above) come from? Was that a slip?]

Interestingly, the opinion avoided any in-depth analysis of the KSR decision, and notably avoided using the "apparent reason to combine" test by name. Instead, the court seemed to take the Sakraida/Anderson's Black-Rock approach highlighted in KSR, and generally applied it to the specific facts of the case. As a review, the Supreme Court stated the following in KSR:
[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative - a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
And there we have it, the CAFC's first substantive post-KSR opinion. While the outcome is significant (the CAFC nixing a combination patent), the ruling provides little guidance going forward, and should have limited citation value. We will have to wait and see in the coming days/weeks whether or not the CAFC will transform the obviousness standard from Doctor Banner into the Incredible Hulk ("KSR Smash!").

Stay tuned.

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