analogous art Archives

Hit Rewind: Analogous Art and Field of Endeavor

By Tessa Kroll on Sep 21, 2023
Posted In Patents

Addressing the Patent Trial & Appeal Board’s application of the field of endeavor and reasonably pertinent tests for determining analogous art, the US Court of Appeals for the Federal Circuit found that the Board should not have required a petitioner to precisely articulate the relevant field of endeavor for the patent and prior art using the magic words, “field of endeavor.” However, the Court agreed with the Board that the prior art was not reasonably pertinent because it concerned a different problem than the challenge addressed by the patent. Netflix, Inc. v. DivX, LLC, Case No. 22-1138 (Fed. Cir. Sept. 11, 2023) (Stoll, Hughes, and Stark, JJ.)

Netflix filed an inter partes review (IPR) challenging DivX’s patent directed toward a feature called “trick play functionality,” which refers to the ability to fast forward, rewind and skip frames in a multimedia file. The patent’s background explains that the invention generally relates to the “encoding, transmission and decoding of multimedia files.” Notably, the claimed invention implements a multimedia file based on the Audio Video Interleave (AVI) structure with an additional storage structure called an “index chunk.”

In its petition, Netflix asserted that the challenged claims were obvious over two prior art references, Zetts in view of Kaku. Kaku disclosed the use of an AVI file with an index chunk to show image data and/or play sound data in a digital camera. Kaku explained that the invention’s primary object is to reproduce a motion image in a device with minimal memory but clarified that the invention is “applicable to every electronic appliance to reproduce motion images.” Netflix asserted that Zetts disclosed a system for facilitating trick play while Kaku disclosed using an AVI file format with an index chunk to store video/audio data.

In its patent owner response, DivX argued that Kaku was non-analogous art because the challenged patent relates to facilitating trick play in streamed multimedia content, whereas Kaku utilizes M-JPEG files in limited-memory cameras. DivX similarly argued that Kaku was not reasonably pertinent to the problem of “facilitating trick play functionality in streaming services.” Netflix countered that Kaku must be considered for its AVI teachings and/or the “encoding and decoding of multimedia files,” both of which are “applicable to every electronic appliance to reproduce motion images” and render Kaku reasonably pertinent. The Board rejected Netflix’s obviousness argument, holding that it failed to identify the field of endeavor for the DivX patent or Kaku, as well as the problem to be addressed by the DivX patent. Netflix appealed.

The Federal Circuit first considered the Board’s conclusion that Netflix failed to identify an overlapping field of endeavor for Kaku and the DivX patent. The Court explained that the field of endeavor is determined by reference to explanations of the invention’s subject matter in the specification and is not limited to the specific point of novelty or the particular focus within a field. Rather, a field of endeavor may be broadly defined because it relies on the specification’s complete disclosure. Applying this principle, the [...]

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Not a Well-Crafted Housing: Product-by-Process Claim Element Isn’t Limiting

By Thomas DaMario on Aug 25, 2022
Posted In Patents

The US Court of Appeals for the Federal Circuit affirmed a ruling that certain claims reciting a “housing . . . being cast in one piece” should be construed as a product-by-process claim element and affirmed the subsequent finding of invalidity of all challenged claims. Kamstrup A/S v. Axioma Metering UAB, Case No. 21-1923 (Aug. 12, 2022) (Reyna, Mayer, Cunningham, JJ.)

Kamstrup owns a patent directed to an ultrasonic flow meter housing in the form of a monolithic polymer structure that is cast in one piece. The patent specification explains that the invention can be fabricated with fewer steps compared to existing meters, since only a single step is used to form the monolithic polymer structure. Axioma petitioned for inter partes review of all claims of the patent, and the Patent Trial & Appeal Board (Board) found each claim unpatentable as either obvious or anticipated.

The Board construed the claim term “being cast in one piece” to be a product-by-process claim element. Kamstrup did not present any evidence showing that this claim element provided structural or functional differences distinguishing the housing itself from the prior art, and therefore the Board determined that the housing element was not entitled to patentable weight. The Board subsequently invalidated the independent claim and various dependent claims based on a prior art meter having a housing. The Board also found the remaining dependent claims to be invalid based on two additional references, which the Board determined were sufficiently analogous to flow meter technology to merit consideration in its obviousness analysis.

On appeal, Kamstrup challenged the Board’s product-by-process construction. The Federal Circuit explained that product-by-process claiming is designed to enable an applicant to claim an otherwise patentable product that resists definition other than by the process by which it is made. Where a product-by-process claim element is implicated, structural and functional differences distinguishing the claimed product from the prior art must be shown in order for that claim element to be relevant (limiting) to the anticipation or obviousness inquiry. If no structural or functional differences are shown, the element is given no patentable weight. Turning to the claim element at issue, the Court found that the plain meaning of the term “housing . . . being cast in one piece” implicated a product-by-process interpretation since it described the structure “being” cast in a particular way. The Court also affirmed the Board’s finding of invalidity because Kamstrup failed to identify any disclosure in the specification, prosecution history or extrinsic evidence of any structural or functional differences between the housing element as claimed and the prior art.

Kamstrup also argued that the two secondary prior art references were not analogous prior art because they fell within the field of “medical devices for thermodilution,” and therefore they should not be included in an obviousness analysis. The Federal Circuit disagreed, finding that the references were directed to “sensing or measuring fluid flow and fluid flow characteristics such as temperature,” which is related to “flow meters that include different types of sensors.”

Analogous Art Includes Reference a Skilled Artisan Would Reasonably Consult

By Thomas DaMario on Nov 19, 2020
Posted In Patents

Addressing the standard for determining whether a prior art reference constitutes analogous art for purposes of an obviousness analysis, the US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision that a reference was not analogous. The Court explained that the Board did not consider the purpose and problems to which the prior art and challenged patent relate. Donner Tech., LLC v. Pro Stage Gear, LLC, Case No. 20-1104 (Fed. Cir. Nov. 9, 2020) (Prost, C.J.)

Pro Stage owns a patent directed to an improved guitar effects pedalboard. Guitar effects pedals are electronic devices that affect the amplified sound of a guitar. The pedals are controlled by foot operation switches in order to leave the user’s hands free to play the instrument. When multiple pedals are used, they must be interconnected by cables, which are typically daisy-chained between each separate pedal. Once interconnected, the pedals are placed on a wooden pedalboard and covered with foam so that the cables are not exposed. This leads to difficulty when swapping or adding new pedals because the foam must be removed from the board and the cables repositioned. Pro Stage’s patent attempts to remedy this issue by elevating one side of the pedalboard from the stage floor and providing a mounting surface and cable connection openings such that cables can pass beneath the mounting surface, as demonstrated by the patent figures shown below.

Donner petitioned for inter partes review of the patent, challenging various claims as obvious under 35 USC §103. Donner asserted three grounds of invalidity, all relying at least in part on the teachings of the Mullen patent. Mullen relates to an improved structure for supporting one or more electrical relays and for providing wiring-channel space for receiving wires connected to the relays in order to connect the relays to various control circuits. As part of its petition, Donner claimed that certain embodiments of Mullen (below), disclose a structure that is analogous to the structure claimed in the challenged patent.

The Board rejected that Donner’s obviousness challenges, finding that Donner did “not put forth any argument or evidence to explain what would have compelled a pedalboard inventor in 1999 or 2000 to consider potential solutions arising from early 1970s-era relay technologies,” notwithstanding arguments, expert and other testimony, and other evidence submitted by Donner to the contrary. Donner appealed.

The Federal Circuit reversed, explaining the relevant tests to analyze whether a prior art reference is analogous. The two separate tests are (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is [...]

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