On November 9, 2020, the Federal Circuit vacated and remanded a decision by the United States Patent Office Patent Trial and Appeal Board (“PTAB”) in Donner Tech., LLC v. Pro Stage Gear, LLC,[1] holding that the PTAB applied an incorrect standard to determine whether a reference in the case was analogous art. While the Court’s decision did not resolve whether the reference was in fact analogous art, it reiterated the two-part test defining the scope of analogous art and identified the particular deficiencies of the PTAB’s analysis that warranted vacatur.
Donner Tech. involved an inter partes review of U.S. Patent No. 6,459,023 (“the ’023 patent”), related to mounting boards for guitar pedals and owned by appellee Pro Stage Gear, LLC. All of Donner’s obviousness challenges rested at least in part on U.S. Patent No. 3,504,311, or the “Mullen” patent, which related to support for electrical relays. The PTAB had held that Mullen did not fall within the scope of the prior art because Donner had failed to prove Mullen’s electrical relay support was analogous art to the ’023 patent’s guitar pedal mounting board.
The Federal Circuit disagreed. First citing to precedent from In re Bigio,[2] the Court identified the two required questions for establishing analogous art: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Acknowledging that the ’023 patent and Mullen were not from the same field of endeavor, the Court next turned to whether Mullen was reasonably pertinent to one or more of the problems addressed by the ’023 patent and the errors by the PTAB in concluding that it was not.
The Court explained that the second analogous art question “ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose.” Thus, the Court stated that the reasonable pertinence question requires an identification and comparison of the problems to which both the invention and the reference relate. Significantly, the analysis must “be carried out from the vantage point of a [person of ordinary skill in the art, or “POSA”] who is considering turning to the teachings of references outside her field of endeavor.” Finally, the Court dismissed the argument that a POSA’s poor understanding of the whole reference would cut against finding it an analogous art. Instead, the Court held that the “relevant question is whether the [POSA] would have reasonably consulted the reference in solving the relevant problem,” and that a POSA might reasonably consult a reference that she would not fully understand every last detail as long as she could understand the portions relevant to solving her problem enough to clean useful information.
A finding of analogous art will not end on the field of endeavor, and will depend more on the answer to the second part of the two-part test. Counsel participating in argument over analogous art should take care to identify the relevant facts of the case addressing the problems that the patent at issue and reference seek to solve, and those facts that demonstrate the accessibility of the reference to those POSAs trying to solve those problems.
[1] No. 2020-1104 (Fed. Cir. Nov. 9, 2020).
[2] 381 F.3d 1320, 1325 (Fed. Cir. 2004).
