CAFC Applies KSR: Affirms Obviousness

Leapfrog v. Fisher-Price (Fed. Cir. 2007).

In their first true application of the Supreme Court's obviousness pronouncement in KSR v. Teleflex, the Court of Appeals for the Federal Circuit (CAFC) affirmed a finding of obviousness.

Leapfrog and Fisher-Price compete in the toy market. In this case, leapfrog sued Fisher-Price -- alleging that Fisher-Price's PowerTouch Learning System infringes claim 35 of Leapfrog's patent.

The trial court found the patent not-infringed and invalid as obvious.  On appeal, the CAFC affirmed, noting that the obviousness analysis requires a common sense approach rather than any rigid formula.

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) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).

The results may have serious implications for Internet-related patents that have a close non-Internet corollary. The two pieces of prior art were Bevin (electro-mechanical, but not electronic, toy for phonetic learning) and SSR (electronic book-type toy). Together, the two references teach almost all the elements of the asserted claim, and the courts found their combination to be appropriate.

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.

The one remaining limitation -- a "reader" -- was "well-known in the art at the time of the invention" and its combination. That known element could be combined because it provides "an added benefit and simplified use of the toy for the child in order to increase its marketability."

Finally, the court gave the patentee a chance to avoid the combination.

Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art.

Secondary factors not enough to save the day:

The district court explicitly stated in its opinion that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious.

Obviousness affirmed.

Notes:

• Judgment of non-infringement was also affirmed.
• Read the case 

Comments

[Michael L. Slonecker]

"Can I get a patent on it?"

Maybe yes, maybe no. To prospective client: "Tell me more."

"Do I need one to market this invention?"

Of course not.

The question from a client I find much more relevant is "Should I try to secure a patent, why, and where?" Similarly, "Are there other means at hand to help accomplish my objectives, what are they, and what will they do that will help me?" These questions assume, of course, that an office interview is a comprehensive exploration into what it is that the client wants to accomplish from a business perspective.

[Malcolm Mooney]

"Maybe yes, maybe no. To prospective client: "Tell me more.""

What do you need to know? Nobody's described one before. I've never disclosed it to anybody. I finished a fully functional prototype yesterday.

Can I patent this? I would hate to have someone copy my invention just when it's getting popular. But I don't want to waste my money filing if I can't get a patent.

Can I patent my invention? Or is it obvious? Who can apply this KSR case? Or is it really a worthless pile of garbage like some people seem to think?

[John Roethel]

Magic Cue Ball: Determine the differences between your invention and the prior art.

1. Change in color: PHOSITA would know that it is obvious to change color of a product unless color change results in unexpected results.

2. Duplication of windows: PHOSITA would know that it is obvious to duplicate parts for their intended results unless duplication results in unexpected results.

3. Addition of music player: PHOSITA would know that it is obvious to add a known component for its intended use unless addition results in unexpected results. Presumably no interaction between added music player and other uses of the magic cue ball. Remember that aggregations are not patentable.

4. When turned over: this requires a prior art reference to make obvious. Presumably now the music player operates in conjunction with the answer giving function of the magic cue ball. If I turn the magic cue ball over to prepare for the presentation of a new answer and the music player plays to announce that a new answer is about to occur, now we have a combination of elements operating together. If there is prior art that uses a music player to announce an event (e.g. when I turn over an hour glass to start a new time period and music plays to announce such event OR when I roll a die to create a random number and music plays to announce such event, then the magic cue ball with a music player when turned over would have been obvious.

[Malcolm Mooney]

Thanks John. I think your analysis is reasonable and legally correct in view of KSR.

So I guess KSR didn't destroy our ability to evaluate the obviousness of inventions after all.

[CaveMan]

John's analysis has nothing to do with KSR Mooney. Talk about a worthless pile of garbage...

[CaveMan]

Why you ask? Because he has only postulated one reference...

[Malcolm Mooney]

"John's analysis has nothing to do with KSR Mooney."

Your habit of tossing out words like "nothing" as if they have no meaning is a bad one, Cavey. If you think John's analysis has "nothing" to do with KSR, then you are wrong. But you are entitled to your belief. Nobody can take that away from you. Have a great Tuesday.

[CaveMan]

Mooney, your habit of characterizing everything as good/bad right/wrong is evidence of the strong dualism that permeates and is the source of your misery in your life (along with unrestrained ego). Talk to Buddha about it. You may find an answer for all of your problems.

[metoo]

If you think that the KSR decision from the Supreme Court leaves much to be desired, did anyone happen to read what the Supremes did in Panetti v. Quarterman? Geesh! Check out this report on that one: http://www.theonion.com/content/news/supreme_court_reaches_landmark_it?utm_source=EMTF_Onion