The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision that claims to a ballistic parachute were obvious over the prior art based on knowledge attributable to artisans and denying the patentee’s motion to substitute proposed amended claims, finding that they lacked written description. Fleming v. Cirrus Design Corp., Case No. 21-1561 (Fed. Cir. Mar. 10, 2022) (Lourie, Hughes, Stoll, JJ.)
Cirrus Design filed a petition for inter partes review on certain claims of Fleming’s patent related to ballistic parachute systems on an aircraft. The challenged claims relate to an autopilot system that increases the aircraft’s pitch, reduces the aircraft’s roll or changes the aircraft’s altitude when a ballistic parachute deployment request is made. Fleming moved to amend some of the challenged claims, effectively cancelling those claims. In its final written decision, the Board found the remaining original claims obvious over the prior art and found that the amended claims lacked written description and were indefinite. Fleming appealed both the obviousness determination and the denial of the motion to amend.
Fleming argued that the Board’s obviousness determination was incorrect because the prior art did not disclose the commands to the autopilot to alter the aircraft’s pitch, roll or altitude. The Board acknowledged that neither of the primary prior references included the claimed commands upon the receipt of a deployment request, but nevertheless, concluded that a person of ordinary skill in the art would have had the motivation to combine the prior art disclosures to arrive at the claimed invention. The Federal Circuit concluded that the Board’s findings were supported by substantial evidence, citing to the Supreme Court’s 2007 KSR decision for the proposition that it is appropriate to consider a person of ordinary skill in the art’s knowledge, creativity and common sense, so long as they do not replace reasoned analysis and evidentiary support. Here the Court noted with approval the Board’s finding that aircraft autopilots are programmable and can perform flight maneuvers and deploy a parachute. The Court also noted that an artisan would have understood that certain maneuvers, such as stabilizing at an appropriate altitude, should be performed prior to deploying a whole-aircraft parachute. The Board concluded that a person of ordinary skill in the art would be motivated to reprogram the autopilot to take Fleming’s proposed actions prior to releasing the parachute to improve safety outcomes.
Fleming also appealed the Board’s rejection of his argument that the prior art taught away from claimed invention because a person of ordinary skill in the art would deem the combination unsafe. He argued that the prior art taught that autopilot systems should not be used in the sort of emergency situations that would lead to the deployment of a ballistic parachute. The Board rejected that argument, and the Federal Circuit found that the substantial evidence supported the Board’s determination that the prior art did not teach that a person of ordinary skill in the art would never use an autopilot system during an emergency. The Court noted that while the prior art cautioned against the use of autopilot in certain emergency situations for safety reasons, “the Board correctly explained that the obviousness inquiry does not require that the prior art combination is the ‘preferred, or the most desirable’ configuration’” and that the safety concern did not extend to all aircrafts or to all emergency situations.
Finally, Fleming argued that the Board did not appropriately consider his evidence regarding copying by Cirrus as an objective criteria of nonobviousness. Fleming had repeatedly sent copies of his patent to Cirrus. The Federal Circuit found that the Board’s decision was supported by sufficient evidence and explained that Fleming’s declaration in support of copying did not provide a meaningful infringement analysis to substantiate his claims in view of Cirrus’s evidence of differences between its patent application and the challenged claims.
The Federal Circuit also affirmed the Board’s denial of Fleming’s motion to amend for lack of written description. The Court noted the Board’s finding that Fleming provided no specification support for the specific limitations that the Board found lacked written description. Because the claims lacked written description, the Court did not reach the indefiniteness argument.
Practice Note: Parties seeking to argue copying as a secondary consideration should include “meaningful” claim analysis to substantiate their allegations. It is insufficient to allege that a product falls within the scope of a claim. If that were sufficient, the mere existence of an infringing product would render a claim nonobvious (assuming the patent was known to the product designer). Parties seeking to amend claims during a Board proceeding should clearly delineate the specification support for all limitations in the amended claims.