Case: 20-1104 Document: 61 Page: 1 Filed: 11/09/2020
United States Court of Appeals
for the Federal Circuit
______________________
DONNER TECHNOLOGY, LLC,
Appellant
v.
PRO STAGE GEAR, LLC,
Appellee
______________________
2020-1104
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00708.
______________________
Decided: November 9, 2020
______________________
SCOTT AMY, Thomas Horstemeyer LLP, Atlanta, GA,
for appellant. Also represented by ROBERT GRAVOIS,
WESLEY AUSTIN ROBERTS.
DOUGLAS JOHNSON, Miller & Martin PLLC, Chatta-
nooga, TN, for appellee. Also represented by M. ELLIS
LORD, ROBERT F. PARSLEY; PHARAN A. EVANS, Atlanta, GA.
______________________
Before PROST, Chief Judge, DYK and HUGHES, Circuit
Judges.
Case: 20-1104 Document: 61 Page: 2 Filed: 11/09/2020
2 DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC
PROST, Chief Judge.
Donner Technology, LLC (“Donner”) petitioned for in-
ter partes review (“IPR”) of
U.S. Patent No. 6,459,023 (“the
’023 patent”), challenging various claims as obvious under
35 U.S.C. § 103. Donner’s petition set forth three grounds
of unpatentability, all relying at least in part on the teach-
ings of
U.S. Patent No. 3,504,311 (“Mullen”). The Patent
Trial and Appeal Board (“Board”) rejected these challenges
on the ground that Donner did not prove that Mullen is
analogous art. Donner Tech., LLC v. Pro Stage Gear, LLC,
No. IPR2018-00708,
2019 WL 4020204, at *10–11
(P.T.A.B. Aug. 26, 2019) (“Decision”). Donner appealed.
We vacate and remand.
BACKGROUND
I
Guitar effects pedals are electronic devices that affect
the amplified sound of a guitar. These pedals are usually
placed on a pedalboard and “are controlled by foot opera-
tion switches in order to leave the user’s hands free to play
the instrument.” ’023 patent col. 1 ll. 35–38, 56–57.
Pro Stage Gear, LLC owns the ’023 patent. According
to the ’023 patent, prior art pedalboards were essentially
wooden boards to which guitar effects pedals were
mounted.
Id. at col. 1 ll. 56–61. If multiple guitar effects
pedals were used, “they must be interconnected by cables
to the original source of the sound to be altered, and then
connected to the amplification system.”
Id. at col. 1 ll. 42–
45. These cables were “inserted into the adapters on the
guitar effects and arranged between the pedals on the
board. The wooden board may be placed in a carrying case
and the cables covered by foam so that the cables are not
exposed.”
Id. at col. 1 ll. 58–61. With such setups, it was
difficult to change out or add new effects “because the foam
must be removed to uncover the cable connections, the ef-
fect removed from the board, the cables repositioned for the
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DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC 3
new effect, the new effect positioned on the board, the ca-
bles rerouted, and the foam re-cut or replaced for the new
effect.”
Id. at col. 1 ll. 62–67. The ’023 patent explained
that there was thus a need for “an improved pedal effects
board which allows easy positioning and changing of the
individual guitar effects while providing a confined and se-
cure area for cable routing and placement.”
Id. at col 2 ll.
1–4.
The ’023 patent describes a guitar effects pedalboard
that purportedly solves these problems. Figure 7, repro-
duced below, shows a perspective view of example pedal-
board 10. That example includes support structure
members 30 and 32 and frame base 42, which elevates one
side of pedalboard 10 from the stage floor. Pedalboard 10
also includes effect mounting surface 12 for mounting gui-
tar effects and cable connection openings 14, 16, and 18 to
“allow for the cable 56 to pass beneath the effect mounting
surface 12 for connection to the guitar effect 46 mounted on
top of the effect mounting surface 12.”
Id. at col. 3
ll. 17–20. Figure 12, also reproduced below, shows an ex-
ample pedalboard with eight attached guitar effects pedals.
Case: 20-1104 Document: 61 Page: 4 Filed: 11/09/2020
4 DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC
II
Mullen relates to electrical relays. Mullen highlights
that one “object of this invention is to provide an improved
support for supporting one or more relay structures and for
providing wiring-channel space for receiving wires that
would be connected to the relay structures to connect the
relay structures in various control circuits.” Mullen col. 1
ll. 50–54. An embodiment of Mullen’s support is depicted
in Figures 1 and 4 below. Donner contends that these Fig-
ures depict a structure that is analogous to the structure
claimed by the ’023 patent and that includes surfaces for
mounting relays, cable connection openings, and area for
routing cables. E.g., Appellant’s Br. 14–17.
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DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC 5
III
In its IPR petition, Donner set forth three grounds it
contends render various claims unpatentable as obvious.
Each ground relies, at least in part, on the teachings of
Mullen. The Board determined that Donner’s obviousness
Case: 20-1104 Document: 61 Page: 6 Filed: 11/09/2020
6 DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC
challenge failed because Donner had not proven that Mul-
len is analogous art. Decision,
2019 WL 4020204, at *9–11.
Donner appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
“We review the [Board’s] factual findings for substan-
tial evidence and its legal conclusions de novo.” Redline
Detection, LLC v. Star Envirotech, Inc.,
811 F.3d 435, 449
(Fed. Cir. 2015). “Substantial evidence is something less
than the weight of the evidence but more than a mere scin-
tilla of evidence.” In re Kotzab,
217 F.3d 1365, 1369 (Fed.
Cir. 2000).
The Board “must make the necessary findings and
have an adequate ‘evidentiary basis for its findings.’” In re
NuVasive, Inc.,
842 F.3d 1376, 1382 (Fed. Cir. 2016) (quot-
ing In re Sang Su Lee,
277 F.3d 1338, 1344 (Fed.
Cir. 2002)). In addition, the Board “must examine the rel-
evant data and articulate a satisfactory explanation for its
action including a rational connection between the facts
found and the choice made.”
Id. (quoting Motor Vehicle
Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co.,
463 U.S. 29,
43 (1983)); see also Princeton Vanguard, LLC v. Frito-Lay
N. Am., Inc.,
786 F.3d 960, 970 (Fed. Cir. 2015) (explaining
that although the “Board is not required to discuss every
piece of evidence,” it cannot “disregard [evidence] without
explanation” or “short-cut its consideration of the factual
record before it”). “This explanation enables the court to
exercise its duty to review the [Board’s] decisions to assess
whether those decisions are ‘arbitrary, capricious, an abuse
of discretion, or . . . unsupported by substantial evidence.’”
NuVasive, 842 F.3d at 1382 (quoting
5 U.S.C. § 706(2)(A),
(E)).
I
Obviousness is a question of law based on underlying
facts. Eli Lilly & Co. v. Teva Parenteral Meds., Inc.,
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DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC 7
845 F.3d 1357, 1372 (Fed. Cir. 2017). These “factual in-
quiries” include “the scope and content of the prior art,” the
“differences between the prior art and the claims at issue,”
and “the level of ordinary skill in the pertinent art.” Gra-
ham v. John Deere Co. of Kan. City,
383 U.S. 1, 17 (1966).
Here, the Board concluded that Donner’s obviousness
challenges, which rely on the teachings of Mullen, failed
because Donner had not shown that Mullen falls within the
scope of the prior art. Donner argues that the Board erred
in reaching that conclusion. We agree.
The scope of the prior art includes all analogous art.
See, e.g., Princeton Biochemicals, Inc. v. Beckman Coulter,
Inc.,
411 F.3d 1332, 1339 (Fed. Cir. 2005); In re GPAC Inc.,
57 F.3d 1573, 1577–78 (Fed. Cir. 1995). “Two separate
tests define the scope of analogous prior 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.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). Whether a reference
is analogous art is an issue of fact. In re ICON Health &
Fitness, Inc.,
496 F.3d 1374, 1378 (Fed. Cir. 2007).
It is undisputed that the ’023 patent and Mullen are
not from the same field of endeavor. Therefore, the only
question is whether Mullen is reasonably pertinent to one
or more of the particular problems to which the ’023 patent
relates.
Although the dividing line between reasonable perti-
nence and less-than-reasonable pertinence is context de-
pendent, it ultimately rests on the extent to which the
reference of interest and the claimed invention relate to a
similar problem or purpose. See, e.g., Wyers v. Master Lock
Co.,
616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that
prior art padlocks were analogous art because they “were
clearly directed toward the same problem the inventor was
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8 DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC
trying to solve in the” patent at issue); GPAC,
57 F.3d at
1578; In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992) (con-
cluding that, where a “reference disclosure has the same
purpose as the claimed invention, the reference relates to
the same problem, and that fact supports use of that refer-
ence in an obviousness rejection”). Thus, when addressing
whether a reference is analogous art with respect to a
claimed invention under a reasonable-pertinence theory,
the problems to which both relate must be identified and
compared.
We conclude that the Board erred in its analysis of
whether Mullen is analogous art. As an initial matter, the
Board erroneously stated that Donner did “not put forth
any argument or evidence to explain what would have com-
pelled a pedalboard inventor in 1999 or 2000 to consider
potential solutions arising from early 1970s-era relay tech-
nologies.” Decision,
2019 WL 4020204, at *9. To the con-
trary, Donner submitted detailed expert testimony
relevant to the inquiry. See J.A. 1521. Donner also argued
in its petition and reply that Mullen was analogous art,
supporting that argument with expert testimony and evi-
dence from both the ’023 patent and Mullen. E.g., J.A. 88–
91, 104–12, 447–50. Thus, Donner set forth both argu-
ments and evidence that Mullen is analogous art. Given
the Board’s mistaken assertion to the contrary, it is unclear
whether the Board meaningfully considered all of Donner’s
arguments and evidence.
Moreover, even assuming that the Board did consider
all relevant arguments and evidence, the Board also failed
to properly identify and compare the purposes or problems
to which Mullen and the ’023 patent relate.
For instance, the Board at one point stated that the
“purpose of the ’023 patent” is “to mount guitar effects on a
pedal board.” Decision,
2019 WL 4020204, at *9. But sub-
stantial evidence does not support that statement. As the
’023 patent readily discloses, guitar effects had already
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DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC 9
been mounted on a pedalboard. ’023 patent col. 1 ll. 56–61.
Thus, that could not possibly be a relevant purpose of the
invention. Indeed, with respect to the analogous art in-
quiry, the relevant purposes of an invention are those re-
lating to solving a problem. See, e.g., Clay,
966 F.2d at 659.
In addition, the Board’s articulation of the purpose of
or problem to be solved by the ’023 patent is so intertwined
with the patent’s field of endeavor that it would effectively
exclude consideration of any references outside that field.
The problems to which the claimed invention and ref-
erence at issue relate must be identified and compared
from the perspective of a person having ordinary skill in
the art (“PHOSITA”). See, e.g., Sci. Plastic Prods., Inc. v.
Biotage AB,
766 F.3d 1355, 1360 (Fed. Cir. 2014) (“The
analogous art inquiry is a factual one, requiring inquiry
into the similarities of the problems and the closeness of
the subject matter as viewed by a person of ordinary
skill.”). Importantly, this analysis must be carried out from
the vantage point of a PHOSITA who is considering turn-
ing to the teachings of references outside her field of en-
deavor. See Clay,
966 F.2d at 660 (concluding that a
reference was not reasonably pertinent where a PHOSITA
“would not reasonably have expected to solve the [relevant]
problem . . . by considering” that reference). Such a
PHOSITA—resigned to considering art outside her field of
endeavor—would thus not identify the problems so nar-
rowly so as to rule out all such art. 1 The Board’s
1 One exception that has been contemplated, but not
solidified, by our case law is where the problem a reference
solves is so specific to its particular field of endeavor that a
PHOSITA could not possibly describe the problem the ref-
erence solves other than in a manner that rules out all art
outside that field. See Sci. Plastic, 766 F.3d at 1360. Nei-
ther party contends, nor do we believe, that this is such a
case.
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10 DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC
characterization of the problem to which the claimed inven-
tion relates effectively collapses the field-of-endeavor and
reasonable-pertinence inquiries and ignores that the rea-
sonable-pertinence analysis must be carried out through
the lens of a PHOSITA who is considering turning to art
outside her field of endeavor.
Later in its decision, the Board mentioned “a problem
with cable routing and placement for effects pedal boards
in 1999 or 2000.” Decision,
2019 WL 4020204, at *10. By
this statement, it is unclear whether the Board attempted
to articulate a second purpose of or problem addressed by
the ’023 patent, whether it disavowed its originally articu-
lated purpose, or whether it was merely acknowledging
Donner’s position on the matter. In any event, the Board
never meaningfully engaged with this articulation, com-
pared this problem with any problems addressed by Mul-
len, or otherwise assessed whether Mullen was reasonably
pertinent to this problem. Furthermore, it is unclear the
extent to which the Board would have concluded that ref-
erences outside the ’023 patent’s field of endeavor might
reasonably pertain to this problem.
Nor did the Board ever identify the problems to which
Mullen relates. Because the Board failed to identify and
compare the problems to which the ’023 patent and Mullen
relate, the Board failed to apply the proper standard.
The remainder of the Board’s analysis does not change
our conclusion. For example, the Board identified a num-
ber of “significant differences between Mullen and the ’023
patent.” Decision,
2019 WL 4020204, at *9–10. But a ref-
erence can be analogous art with respect to a patent even
if there are significant differences between the two refer-
ences. See, e.g., ICON,
496 F.3d at 1380 (concluding that
“[a]nalogous art to Icon’s application,” which related to “a
treadmill with a folding mechanism and a means for re-
taining that mechanism in the folded position,” included
“any area describing hinges, springs, latches,
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DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC 11
counterweights, or other similar mechanisms—such as the
folding bed in” the prior art). Indeed, there will frequently
be significant differences between a patent and a reference
from a different field of endeavor. But it does not follow
that such a reference is, for that reason alone, not reason-
ably pertinent to one or more problems to which the
claimed invention relates. Importantly, the Board did not
attempt to explain how the differences it mentioned estab-
lish that the references were not directed to solving a sim-
ilar problem.
The Board also explained that the relevant PHOSITA
would have a “relatively low level” of skill and would have
“had a poor understanding of Mullen’s relay technology.”
Decision,
2019 WL 4020204, at *9–10. While the level of
skill in the art is certainly relevant to this inquiry and will
continue to remain relevant on remand, the Board’s find-
ings are, standing alone, insufficient to determine whether
Mullen is analogous art. The relevant question is whether
a PHOSITA “would reasonably have consulted” the refer-
ence in solving the relevant problem. Heidelberger
Druckmaschinen AG v. Hantscho Com. Prods., Inc.,
21 F.3d
1068, 1071 (Fed. Cir. 1994). A PHOSITA might reasonably
choose to consult a reference even if she would not under-
stand every last detail of that reference, so long as she
would understand the portions of the reference relevant to
solving her problem well enough to glean useful infor-
mation. 2
2 For example, here Donner need not show that a
PHOSITA would understand the entirety of Mullen for
Mullen to qualify as analogous art. Rather, the question is
whether a PHOSITA would understand the relevant teach-
ings of Mullen—i.e., the improved support structure as de-
picted in Figures 1 and 4—sufficiently well to use those
teachings to solve her problem.
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12 DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC
Furthermore, to the extent the Board relied on the dif-
ferences in age between the ’023 patent and Mullen in con-
cluding that a PHOSITA would not have turned to Mullen,
the Board did not adequately explain how Mullen’s age re-
lates to the problem Mullen solves or why a PHOSITA
would not turn to Mullen’s teachings.
Accordingly, we conclude that the Board applied the
wrong standard when assessing whether Mullen was anal-
ogous art. We end this portion of our analysis by noting
that the Board itself acknowledged that there may be “per-
tinent similarities” between Mullen and the ’023 patent but
concluded that those similarities, even if credited, did “not
establish why [a PHOSITA] would have considered a refer-
ence from a different technology and time.” Decision,
2019
WL 4020204, at *9. To the contrary, if the two references
have “pertinent similarities” such that Mullen is reasona-
bly pertinent to one or more of the problems to which the
’023 patent pertains, then Mullen is analogous art.
II
Having concluded that the Board erred, we must now
decide how to dispose of the appeal. Donner asks us to hold
in the first instance that Mullen is analogous art because,
in Donner’s view, substantial evidence supports that con-
clusion. But, in general, appellate courts can rule on an
issue of fact in the first instance only where “no reasonable
fact finder could find otherwise.” Fox Factory, Inc. v.
SRAM, LLC,
944 F.3d 1366, 1374 (Fed. Cir. 2019). Alt-
hough we conclude that the Board applied the wrong stand-
ard and might have failed to analyze certain arguments
and evidence, we do not further hold that “no reasonable
fact finder could conclude, under the proper standard,” that
Mullen is not analogous art.
Id. Accordingly, we leave this
factual issue for the Board to resolve on remand.
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DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC 13
CONCLUSION
We have considered the parties’ remaining arguments
but find them unpersuasive. For the foregoing reasons, we
vacate and remand for further proceedings consistent with
this opinion.
VACATED AND REMANDED
COSTS
Costs to Donner.
