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The PTAB Speaks Out on Analogous Art

Pure Fishing, Inc. v. Globeride, Inc., IPR2015-01252, Paper 30 (October 31, 2016)

On Final Written Decision in Pure Fishing, Inc. v. Globeride, Inc., the PTAB determined the Petitioner had failed to establish by a preponderance of the evidence that claims 1 and 2 of U.S. Patent 5,921,489 were unpatentable.  The PTAB’s decision turned on the question of whether two cited references were “analogous to the claimed invention.”  Slip op. at 8.  Ultimately, the PTAB determined they were not.

The PTAB began its analysis by quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) in which the court stated:

Two separate tests define the scope of 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.

Slip op. at 8.

The claimed invention in the ‘489 patent is “an improvement of a fishing spinning reel having an oscillate mechanism,” col. 1, lines 7-8, and “purports to solve the issue of uneven line winding by the specific arrangement” of an oscillate grove in an oscillate slider that allows the fishing reel “spool to move smoothly back and forth.”  Slip op. 4-5.

In its patentability challenge of claims 1 and 2, the Petitioner relied on a number of references, including Schad (directed to a slider crank driver mechanism) and Busse (directed to change speed switchgear devices).  All of its challenges relied in part on one of these two references.  Slip op. at 8.  The Patent Owner argued that Petitioner’s challenges failed because both Schad and Busse are non-analogous art.  Id.

With respect to whether these references are in the same field of endeavor, Patent Owner argued that the field is fishing reels, and Petitioner argued that it is “oscillate mechanisms, generally, rather than being limited to fishing reels.”  Id. at 9.  According to the PTAB, the “patent states clearly that the field of the invention is ‘an improvement of a fishing spinning reel having an oscillate mechanism.’”  Id. (citing col. 1, lines 6-8 (emphasis PTAB’s)).  The PTAB also looked to the embodiments and the claims and found they all are directed to a fishing spinning reel.  Id. at 10.  Based on these observations, the PTAB concluded that the Patent Owner was right, i.e., that “the ‘489 patent’s field of endeavor is spinning reels.”  Id.

The PTAB then broke down Bigio’s second inquiry into two sub-inquiries: (i) whether the references addressed the same problem as the ‘489 patent, and (ii) if not, whether either of the two references is “reasonably pertinent” to the problem addressed by the ‘489 patent.  Id. at 10-20.  With respect to the first sub-inquiry, the Petitioner argued that “’the actual problem was how to control the linear motion of the reciprocating element,’” while the Patent Owner contended that the problem was “’uneven line winding on the spool of a fishing spinning reel.’”  Id. at 10-11 (citations omitted).  Again, the PTAB agreed with the Patent Owner.  Id. at 11.

Having concluded that neither Schad nor Busse is directed to the same problem as the ‘489 patent, the PTAB then turned to its second sub-inquiry, i.e., whether either of the two references is “reasonably pertinent” to the problem addressed by the ‘489 patent.  Id. at 12-20.  Here, the PTAB relied extensively on Patent Owner’s expert, who went into some detail explaining why Schad and Busse are not reasonably pertinent to the problem addressed by the ‘489 patent.  Id. at 13-14, 18-19.  The PTAB found that this testimony was unrebutted by the Petitioner in its briefing and evidence and thus concluded that the Petitioner had failed to establish that one skilled in the art would have considered either reference reasonably pertinent to the problem of uneven line winding.  Id. at 14-16, 19-21.  Therefore, the Patent Owner prevailed with respect to both claims.

This case raises a point that all practitioners before the PTAB should heed:  Each party to an IPR or PGR must ensure the record before the PTAB addresses each issue raised in the other party’s papers, including expert declarations.  Expert declarations are considered evidence, and, if they contain sound reasoning to support a particular position, they must be fully addressed in the briefing by pointing to evidence to the contrary.