Posted On: May 29, 2007 by Karen E. Keller

O is for Obvious… The Federal Circuit Affirms the D. Del. Under the New(?) KSR Obviousness Standard

In its first decision on obviousness since the Supreme Court handed down the KSR Int'l Co. v. Teleflex, Inc. decision, the Federal Circuit affirmed a District Court of Delaware decision finding Leapfrog's patent obvious in light of the prior art. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc. (Fed. Cir. May 9, 2007).

Leapfrog accused Fisher Price's Power Touch device of infringing its patent. After a full jury trial, the jury deadlocked and the case was submitted to the Court for its decision on infringement and invalidity. Judge Sleet wrote the District Court opinion finding Leapfrog's patent both not infringed and invalid. Leapfrog appealed both outcomes to the Federal Circuit.

The Federal Circuit affirmed J. Sleet's findings that the Leapfrog patent was both not infringed and invalid for obviousness. The Court noted that the approach to be taken in any obviousness analysis is one of common sense and not a rigid formula. "Any 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." Id. at 7 (referring to the KSR opinion). In its application of this common sense approach to the facts-at-hand, the Federal Circuit found that the combination of two pieces of prior art would have been obvious to combine. Id. ("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."). This combination of art still left out the "reader" requirement of one of the claims, however, the Court also affirmed the District Court's finding that the addition of this reader also would have been obvious to one of skill in the and that Leapfrog presented "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." Id. at 10 (again referring the KSR opinion). also affirmed the lower court finding of non-infringement.

Interestingly, at a recent forum in Sweden, Judge Randall Rader from the Federal Circuit noted that the decision in Leapfrog was actually written before the Supreme Court decision in KSR and "did not require one iota of change." See posting on Intellectual Asset Management Magazine (link here). This comment further fuels the fire of those proponents that KSR has not changed the obviousness standard but only clarified what has been used by the courts for years.

You will also find an interesting post and comments at www.patently-o.com.