No Shortcuts to the “Reasonable Pertinence” Analysis in the Analogous Art Inquiry
Before Prost, Dyk, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: A determination as to whether a reference is analogous art to a claimed invention requires, in part, an identification and comparison of the purposes or problems to which the reference and the invention relate, from the perspective of a person having ordinary skill in the art (“PHOSITA”).
Donner requested IPR of a patent owned by Pro Stage relating to a mounting board for guitar effects pedals. In its IPR request, Donner asserted that the patent was obvious, in part, in view of a prior art reference related to electrical relay structures (“Mullen”). The PTAB rejected Donner’s obviousness challenges on the ground that Donner failed to demonstrate that Mullen is analogous art. Donner appealed.
The Federal Circuit vacated the Board’s decision. It was undisputed that Pro Stage’s patent and Mullen were not from the same field of endeavor. Thus, the analogous art inquiry hinged on whether Mullen “is reasonably pertinent to the particular problem with which the inventor [of Pro Stage’s patent] is involved.” The Federal Circuit first found that the Board erred in improperly dismissing Donner’s detailed expert testimony concerning reasons that would have compelled a pedalboard inventor to consider art in the field of electrical relay technologies. The Federal Circuit then held that the Board failed to identify and compare the purposes or problems to which Mullen and Pro Stage’s patent related from the perspective of the PHOSITA and improperly conflated the “reasonable pertinence” and “field of endeavor” tests. The Federal Circuit also noted that the relevant question in the analogous art inquiry is not whether there are “significant differences” between the reference and the patent or whether the PHOSITA would understand every detail of the reference, but rather, whether the PHOSITA “would reasonably have consulted” the reference when attempting to solve the relevant problem. Vacating the Board’s decision, the Federal Circuit remanded the case for resolution of the relevant factual issues under the proper standard for analyzing reasonable pertinence.
Editor: Paul Stewart