In Handi Quilter, Inc. v. Bernina International AG, IPR2014-00270, Paper 17 (December 31, 2014), the Board granted petitioner’s request for rehearing of the Board’s decision denying institution of inter partes review. Although it is not clear from the Board’s opinion, petitioner contended that the Board overlooked or misapprehended an important point presented in the Petition regarding why a person of ordinary skill in the art at the time of the alleged invention would have been motivated to combine the teachings. The Board made a thorough examination of whether a person of ordinary skill in the art would have a reason to combine the references. The Board noted that:
The Supreme Court counsels that often it will be necessary to look to (1) interrelated teachings of multiple patents, (2) the effects of demands known to the design community or present in the marketplace, and (3) the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent. KSR, 550 U.S. at 418.
The Board found that there was an articulated reason to support a conclusion of obviousness, and observed that the patent appears to take away form the prior art the obvious use of a prior art sensor in the prior art environment. The Board make several analogies, first to Hotchkiss v. Greenwood, 52 U.S. 248 (1851), where the Court held that substitution of clay or porcelain knobs in place of known wood or metal knobs would have been obvious. The Board said that in the current case, the sensor was known and was known to perform the function required by prior art..
The Board also cited Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327 (1945),where the inventor claimed the use of a particular solvent to solve a particular problem. The characteristics of a solvent needed to solve the inventor’s problem were known. Likewise, solvents having those characteristics were known. While the prior art patents did not describe the use of the inventor’s particular solvent, the Court observed that: “Reading a list and selecting a known compound [i.e., solvent] to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention [i.e., it would have been prima facie obvious].” Sinclair, 325 U.S. at 335. The Board said that in the current case, the prior art describes the need for a sensor and its characteristics and the prior art reveals that sensor’s having those characteristics were known.
Finally, the Board cited Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320 (1945) where the Supreme Court said the mere substitution of equivalents which do substantially the same thing in the same way, even though better results may be produced, is not such an invention as will sustain a patent).
The patent owner argued that a person of ordinary skill in the art would not look to the reference, but the Board said this was undermined by Supreme Court precedent, including Graham v. John Deere Co., 383 U.S. 1, 10 (1966), where the Court, quoted from a letter from Thomas Jefferson to Oliver Evans, observed “A man has a right to use a saw, an axe, a plane separately; may he not combine their uses on the same piece of wood?” Similarly in Dunbar v. Myers, 94 U.S. 187, 195 (1876), the Court said “Ordinary mechanics know how to use bolts, rivets and screws and it is obvious that anyone knowing how to use such devices would know how to arrange a deflecting plate at one side of a circular saw which had such a device properly arranged on the other side.” The Board found the parallel between these statements from Graham and Dunbar and the case before it was manifest. The Board rephrased Jefferson’s question: “Does not a person skilled in the . . .art have a right to use the known sensor? On the record before it, the Board could not see why not. Noting that if the answer is no, “then one would be suggesting removal from the public domain an obvious use of applicable sensor technology without a quid pro quo (i.e., teaching the public anything not essentially taught by [the prior art].
The Board agreed that it overlooked Petitioner’s argument that prior art itself, even without the support of expert testimony, provides sufficient rationale to show a reasonable likelihood that a person of ordinary skill in the art would have found it obvious to combine the teachings of the two references.