Circuit Check Inc. v. Qxq Inc. , 795 F.3d 1331 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
CIRCUIT CHECK INC.,
Plaintiff-Appellant
v.
QXQ INC.,
Defendant-Appellee
______________________
2015-1155
______________________
Appeal from the United States District Court for the
Eastern District of Wisconsin in No. 1:12-cv-01211-WCG,
Judge William C. Griesbach.
______________________
Decided: July 28, 2015
______________________
COURTLAND COLLINSON MERRILL, Anthony Ostlund
Baer & Louwagi P.A., Minneapolis, MN, argued for plain-
tiff-appellant. Also represented by DANIEL RYAN HALL.
MICHAEL LEE HARRISON, Michael L. Harrison Attor-
ney at Law, Los Gatos, CA, argued for defendant-
appellee.
______________________
Before LOURIE, DYK, and MOORE, Circuit Judges.
2 CIRCUIT CHECK INC. v. QXQ INC.
MOORE, Circuit Judge.
Circuit Check, Inc. appeals from the Eastern District
of Wisconsin’s judgment as a matter of law after a jury
verdict that claims of U.S. Patent Nos. 7,592,796;
7,695,766; and 7,749,566 are invalid as obvious. We
reverse the court’s judgment as a matter of law and re-
mand.
BACKGROUND
Manufacturers of circuit boards, which are used in
various electronic devices, use circuit board testers to test
circuit boards before the boards are integrated into fin-
ished products. Many testers require an interface plate,
which is a plastic grid with holes that permit connections
between the tester and the circuit board. In order to align
circuit boards during testing, it is advantageous to mark
certain holes on the interface plate. Prior art methods of
marking interface plates included placing Mylar masks on
the surface of the interface plate, painting the surface of
interface plates, and making shallow drill marks on
interface plates.
The patents at issue claim systems and methods re-
lated to marking interface plates. Claim 1 of the ’796
patent is representative:
1. An indicator interface plate configured to pro-
vide readily visible identification of predetermined
holes, the plate comprising:
a surface including a plurality of holes having vis-
ually discernable markings to allow a user to vis-
ually determine which of said plurality of holes
are to be populated, wherein a region of the plate
said plurality of holes have a first predetermined
indicia covering the surface surrounding said plu-
rality of holes, the plate further comprising: a
second removable indicia overlying said first pre-
determined indicia, said
CIRCUIT CHECK INC. v. QXQ INC. 3
second indicia being different from said first pre-
determined indicia, wherein said second indicia is
removed from areas of said plate adjacent each of
said predetermined holes, said predetermined
holes are visually identifiable to a user by the ap-
pearance of the first indicia.
’796 patent col.6 ll.36–51 (emphases added).
Circuit Check sued QXQ, Inc., alleging that QXQ’s
interface plates infringed its patents. QXQ stipulated to
infringement and the parties stipulated that three refer-
ences describing interface plate marking techniques were
prior art to the patents: the TTCI Specifications; the
Plexus Specification; and the method depicted in Figure 1
of the ’796 patent and described in its specification (collec-
tively, the “stipulated prior art”). J.A. 1983–84. These
documents disclosed several marking techniques, such as
painting near the hole or drilling near the hole and paint-
ing over the drill mark. QXQ concedes in its briefing that
the stipulated prior art does not disclose an interface
plate comprising “a second removable indicia overlying
said first predetermined indicia . . . wherein said second
indicia is removed from areas of said plate adjacent each
of said predetermined holes.” ’796 patent col.6 ll.45–50.
At trial, QXQ argued that three additional refer-
ences—rock carvings, engraved signage, and a machining
technique known as Prussian Blue (collectively, the
“disputed prior art”)—disclose the limitation not present
in the stipulated prior art and constitute analogous prior
art. Circuit Check argued that the references were not
analogous. With respect to rock carvings, in which a
varnish is applied to rocks and then scrapped off to make
designs, Circuit Check presented testimony that a skilled
artisan at the time of the invention would not have con-
sidered rock carvings to have been reasonably pertinent
to the marking problem. J.A. 1388, 1447. With respect to
engraved signage, in which the top layer of a multi-layer
4 CIRCUIT CHECK INC. v. QXQ INC.
product is removed to expose a bottom layer, Circuit
Check presented testimony that engraved signage was not
relevant to the problem solved by the patents. J.A. 1388,
1434. And with respect to Prussian Blue, a machining
technique whereby dye is applied to a workpiece and then
removed by a scribe or drill, Circuit Check presented
testimony that Prussian Blue could not be used to make
the claimed invention and had no connection to the prob-
lem solved by the patents. J.A. 1387–88, 1397, 1430–32,
1443–44.
The validity of claims 1, 2, 3, 5, 6, 8, 10, 11, 13, and 14
of the ’796 patent; claims 1, 2, 3, 5, 7, 8, 9, 11, 12, and 14
of the ’766 patent; and claims 1, 2, 3, 5, 7, 8, 9, 11, and 12
of the ’566 patent was submitted to the jury. The jury
found the asserted claims not invalid for obviousness.
J.A. 1995–96. The jury also found that the infringement
was willful and awarded damages. J.A. 1996–97.
After the jury verdict, QXQ filed a motion for judg-
ment as a matter of law that the asserted claims are
invalid as obvious. The district court granted QXQ’s
motion, acknowledging that QXQ’s “obviousness argu-
ment is not premised on citing specific examples of prior
art in the applicable field, nor does it rely on nuanced
discussion about the level of ordinary skill in that particu-
lar field.” J.A. 6. It found that although there was no
doubt that rock carvings “are not technically pertinent to
the ‘field’ of circuit testers,” and “witnesses credibly
testified that Prussian Blue dye had not been used on
alignment plates,” “any layman” would have understood
that interface plates could be marked using the tech-
niques described in the disputed prior art. J.A. 8. It
further noted that “any vandal who has ‘keyed’ a car
knows that stripping the paint with a key will result in
the underlying metal color showing through.” J.A. 5. It
found that none of the objective considerations affected its
conclusion that the asserted claims would have been
obvious. J.A. 13. With respect to claims 5 and 11 of the
CIRCUIT CHECK INC. v. QXQ INC. 5
’796 patent, the court determined that even though QXQ
did not present evidence that the additional limitations of
the claims would have been obvious, those additional
limitations were too trivial to support nonobviousness.
Circuit Check appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
Judgment as a matter of law is permitted on an issue
following jury trial if “the court finds that a reasonable
jury would not have a legally sufficient evidentiary basis
to find for the party on that issue.” Fed. R. Civ. P. 50(a).
We review a district court’s grant of judgment as a matter
of law after a jury verdict de novo. Spectralytics, Inc. v.
Cordis Corp., 649 F.3d 1336, 1341 (Fed. Cir. 2011). Under
Seventh Circuit law, we can overturn a jury’s decision
only if no rational jury could have come to the same
conclusion. E.E.O.C. v. AutoZone, Inc., 707 F.3d 824,
834–35 (7th Cir. 2013). In reviewing a jury’s obviousness
verdict, “[w]e first presume that the jury resolved the
underlying factual disputes in favor of the verdict winner
and leave those presumed findings undisturbed if they are
supported by substantial evidence. Then we examine the
legal conclusion de novo to see whether it is correct in
light of the presumed jury fact findings.” Jurgens v.
McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991) (citations
omitted).
A patent is invalid for obviousness “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a) (2006). 1
1 Because the patents were filed before the effective
date of the America Invents Act, the earlier, pre-Act
6 CIRCUIT CHECK INC. v. QXQ INC.
“Obviousness is a question of law based on underlying
factual findings . . . .” Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). The
underlying factual inquiries include: (1) the scope and
content of the prior art, (2) the differences between the
prior art and the claims at issue, (3) the level of ordinary
skill in the art, and (4) any relevant objective considera-
tions, such as commercial success, long felt but unsolved
needs, and the failure of others. Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
By finding the claims nonobvious, the jury presuma-
bly found that the disputed prior art is not analogous and
therefore not within the scope of the prior art. See
Jurgens, 927 F.2d at 1557. Substantial evidence supports
the jury’s presumed finding. To be considered within the
prior art for purposes of the obviousness analysis, a
reference must be analogous. Wang Labs., Inc. v. Toshiba
Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). Whether a
reference is analogous art is a question of fact. Wyers v.
Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).
Prior art is analogous if it is from the same field of en-
deavor or if it is reasonably pertinent to the particular
problem the inventor is trying to solve. Id.The jury was instructed that “the field of the inven-
tion is circuit board testers and test fixtures used in the
manufacture of electronics.” J.A. 1984. The disputed
prior art—rock carvings, engraved signage, and Prussian
Blue—is not part of the field of circuit board testers and
test figures. Therefore, the disputed prior art can be
analogous only if it is reasonably pertinent to the particu-
lar problem solved by the inventor. Wyers, 616 F.3d at
1237. Although “familiar items may have obvious uses
version of § 103(a) applies. See Leahy–Smith America
Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 293
(2011).
CIRCUIT CHECK INC. v. QXQ INC. 7
beyond their primary purposes,” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 420 (2007), a reference is only reason-
ably pertinent when it “logically would have commended
itself to an inventor’s attention in considering his prob-
lem,” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The
jury heard testimony that a person of ordinary skill in the
art would not have thought about rock carvings, engraved
signage, or Prussian Blue in considering how to mark
interface plates. J.A. 1387–88, 1397, 1430–32, 1434,
1443–44, 1447. The jury was entitled to weigh this testi-
mony, find that an ordinarily skilled artisan would not
find that the disputed prior art “logically would have
commended itself to an inventor’s attention,” and thus
find the disputed prior art not analogous. See In re Clay,
966 F.2d at 659.
Just because keying a car, for example, is within the
common knowledge of humankind does not mean that
keying a car is analogous art. An alleged infringer should
not be able to transform all systems and methods within
the common knowledge into analogous prior art simply by
stating that anyone would have known of such a system
or method. The question is not whether simple concepts
such as rock carvings, engraved signage, or Prussian Blue
dye are within the knowledge of lay people or even within
the knowledge of a person of ordinary skill in the art.
Rather, the question is whether an inventor would look to
this particular art to solve the particular problem at
hand. Here, Circuit Check put forward evidence that an
inventor would not have considered the disputed prior art
when trying to improve marking. It is not hard to arrive
at that conclusion. Even though an inventor may be
aware of rock carvings, it is not surprising that the inven-
tor would not have looked to rock carvings to improve the
process of painting small dots on interface plates for
expensive circuit board testers. And, even though an
inventor may work in an office with engraved signage, the
inventor would not necessarily have considered using the
8 CIRCUIT CHECK INC. v. QXQ INC.
techniques disclosed in engraved signage to solve the
problem of marking circuit board tester interface plates.
Finally, even though an inventor in this case was aware of
Prussian Blue, it is not surprising that one of skill in the
art would not consider using a machining technique that
employed removable dye on interface plates where such
dye could fall into and interfere with the underlying
electronics of the circuit board testers. Because the jury’s
presumed finding that the disputed references are not
analogous is supported by substantial evidence, the only
references within the scope of the prior art are the stipu-
lated prior art.
Substantial evidence also supports the jury’s pre-
sumed finding that the differences between the stipulated
prior art and the claims were significant. The nature of
the differences between the prior art and the claims is a
question of fact. Graham, 383 U.S. at 17–18. Indeed, as
QXQ acknowledges, the stipulated prior art fails to dis-
close an interface plate with the claimed “second remova-
ble indicia.” Appellee’s Br. 29. A reasonable jury could
have concluded that QXQ did not prove by clear and
convincing evidence that the differences between the prior
art and the claimed invention were insignificant. The
stipulated prior art does not disclose what makes the
patented claims unique: placing a second removable
indicia on top of the interface plate and then selectively
removing that layer to identify certain holes on the inter-
face plate. Additionally, Circuit Check presented testi-
mony that the stipulated prior art taught away from the
invention. The jury heard testimony that manufacturer
specifications contemplated minimizing the amount of
paint on interface plates because paint had a tendency to
chip off and fall into the tester, which caused serious
problems. J.A. 1362, 1372. It also heard testimony that
the specifications counselled against covering the entire
interface plate with paint. J.A. 1372–73. Thus, substan-
tial evidence supports the jury’s presumed finding that
CIRCUIT CHECK INC. v. QXQ INC. 9
one of skill would not have been motivated to use more
paint to cover the entire surface of the interface plate. 2
Substantial evidence supports the jury’s presumed
findings that objective considerations existed to support
nonobviousness. Whether objective considerations sup-
port a conclusion of nonobviousness is a question of fact.
Graham, 383 U.S. at 17–18. Because the jury rendered a
general verdict that the claims were not obvious, we must
presume that they found in favor of Circuit Check on all
relevant questions supported by substantial evidence. See
Jurgens, 927 F.2d at 1557. Circuit Check presented
evidence of copying, long-felt need, commercial success,
skepticism, and unexpected results. With respect to
copying, the jury heard testimony that QXQ developed its
infringing plates after a customer saw Circuit Check
products embodying the invention and asked QXQ to
mark its interface plates by painting the surface and then
selectively removing the paint. J.A. 1409–10, 1520-21.
With respect to long-felt need, the jury heard testimony
that the industry tried multiple prior art marking meth-
ods preceding Circuit Check’s invention. J.A. 1359–62.
With respect to commercial success, the jury heard testi-
mony that once Circuit Check’s customers received prod-
ucts embodying the patents, they refused to return to
interface plates using the prior art marking methods.
2 Although the parties propose slightly different
levels of ordinary skill in the art, they only dispute the
level of skill to affect the scope and content of the prior
art. See Appellant’s Br. 43–44; Appellee’s Br. 47–48.
Under either level of ordinary skill, however, the jury’s
presumed finding about the content of the prior art is
supported by substantial evidence. This record provides
substantial evidence for the jury’s presumed finding that
rock carvings, engraved signage, and Prussian Blue dye
were not analogous arts.
10 CIRCUIT CHECK INC. v. QXQ INC.
J.A. 1409. With respect to skepticism, the jury heard
testimony that Circuit Check’s customers were worried
about using the new interface plates because the claimed
method increased the amount of paint on the interface
plate and therefore increased the likelihood that paint
would flake off and damage the testers. J.A. 1373, 1405.
And with respect to unexpected results, the jury heard
testimony that a skilled artisan would have been sur-
prised that, because paint was likely to fall into the
tester, increasing the amount of paint used would produce
desirable interface plates. J.A. 1370–71, 1373, 1379–80.
Having been presented with this testimony, the jury is
entrusted to weigh evidence and credibility in making its
findings. The jury’s presumed findings regarding objec-
tive considerations are therefore supported by substantial
evidence.
Regarding the legal conclusion of obviousness, the ju-
ry’s presumed findings regarding the scope and content of
the prior art, differences between the claimed invention
and the stipulated prior art, and objective considerations
of nonobviousness are supported by substantial evidence.
Under these circumstances, a reasonable jury could have
concluded that the subject matter as a whole would not
have been obvious at the time of the invention. The court
erred by granting judgment as a matter of law.
Finally, the court erred by invalidating dependent
claims 5 and 11. Although the court acknowledged that
QXQ presented no evidence that the additional limita-
tions in those claims were present in the prior art and
presented no evidence that the additional limitations
were trivial, it concluded that these claims were obvious
because Circuit Check, the patentee, did not explain why
the additional limitations rendered the claims non-
obvious. J.A. 22. The court erred in shifting the burden
of production to disprove invalidity. “Each claim of a
patent . . . shall be presumed valid independently of the
validity of other claims; dependent or multiple dependent
CIRCUIT CHECK INC. v. QXQ INC. 11
claims shall be presumed valid even though dependent
upon an invalid claim.” 35 U.S.C. § 282. Additionally,
“[t]he burden of establishing invalidity of a patent or any
claim thereof shall rest on the party asserting such inva-
lidity.” Id. Although “in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle,” there must be evidence
presented on the obviousness of the claim as a whole.
KSR, 550 U.S. at 420. Even assuming that the claims
from which these claims depend are invalid, it was im-
proper for the court to invalidate the claims absent any
evidence regarding the additional limitations of these
claims.
Whatever doubts we have about these patents, the ju-
ry verdict was supported by substantial evidence. We
therefore reverse the district court’s grant of judgment as
a matter of law and remand for further proceedings
consistent with this opinion.
REVERSED AND REMANDED
COSTS
No Costs.