Federal Circuit post-KSR: Combination of familiar elements obvious when yielding predictable resultsMay 10, 2007

In this matter before the Federal Circuit, the Court affirmed the district court's grant of judgment that Fisher-Price's PowerTouch device did not infringe claim 25 of LeapFrog's U.S. Patent 5,813,861 ("the '861 patent") and that claim 25 of the '861 patent was invalid as obvious. Notably, the court cited the Supreme Court's KSR decision for the first time in a precedential opinion relating to its application to the determination of obviousness, and found that a combination of two pieces of prior art, along with the "common sense of those skilled in the art" rendered the asserted claim obvious.

The court also affirmed the finding of noninfringement. The devices at issue involved children's interactive learning devices by both LeapFrog and Fisher-Price which pronounced letters or words when initiated by the user. The Court held that the accused PowerTouch device could not practice the "selection of a depicted letter" because it only allowed selection of words rather than letters.

More detail after the leap.

Before the Court were learning devices to assist young children to read. LeapFrog's device related specifically to "an interactive learning device having one or more preferably touch sensitive three dimensional indicia bearing units each representing a number or letter which on touching activates voice synthesis circuitry to audibly produce the name and/or phonetic sounds associated with the indicia bearing unit." The essence of the '861 patent is a device that allows a child to learn the relationships between letters or number and the sounds that are made when saying those letters or numbers. PowerTouch's device was also a learning device to help young children read wherein a child could select a word on the page and the device would pronounce the word, pronounce each phoneme of the word in sequence, and pronounce the word again.

As for the finding of obviousness, the Federal Circuit agreed with the district court concluding that the subject matter of claim 25 of the '861 patent would have been obvious in view of the combination of a prior patent to Bevan, Texas Instruments' Super Speak & Read (SSR), and the knowledge of one of ordinary skill in the art. The Bevan device included a phonograph record as a voice storage means, a speaker for playing sounds from the voice storage means, and an actuated electric motor to turn the record. Uniquely shaped puzzle pieces fit into correspondingly shaped openings in the top of the housing. In one embodiment, each puzzle piece was imprinted with one letter from a word, and pressing the piece produced the sound of a single letter. The SSR was a more modern type of learning toy where a book was placed into a recess in the housing and a child could press the first letter of a word and hear the sound of that letter. The Federal Circuit found that these two devices in combination was an adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art (the SSR). Specifically, the court noted that:

Accommodating a prior art mechanical device that accomplishes [the goal of the prior art device] to modern electronics would have been reasonably obvious to one of ordinary skill in designing children's learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.

As a result, this application of "common sense," in the form of updating an old device with modern technology, rendered the claimed invention obvious. The court also noted, once again citing KSR, that there was no evidence of particular difficulty in making the adaptation of the old device to new technology:

Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. [KSR cite] Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children's toys, represented an unobvious step over the prior art.

In addition, the fact that the inventor did not have a technical background and instead relied on the assistance of one more familiar with the art also supported the conclusion of obviousness. The court also found that although there was strong evidence of secondary considerations of nonobviousness, that did not overcome the "strength of the prima facie obviousness showing," and the finding of obviousness was affirmed.

This will likely be the first is a series of cases where the Federal Circuit (as instructed by the Supreme Court) will set out scenarios where an invention is obvious absent some additional showing by the inventor of unexpected results, overcoming difficulty, or some other reason why the invention is not simply an ordinary application of knowledge and common sense. As these cases are decided, it will hopefully provide much-needed guidance both for practitioners and the USPTO for how to apply the newly-minted obviousness standard from KSR.

The court also affirmed the judgment of noninfringment. At issue there was the claim construction of a term in claim 25 of the '861 patent; specifically the phrase "selection of a depicted letter." The district court construed the term to mean "choosing a particular depicted letter from the depicted sequence of letters by contacting or coming into proximity to that particular depicted letter." On appeal, neither party challenged the district court's construction of the phrase "selection of a depicted letter." In affirming the district court's grand of judgment of non-infringement, the Federal Circuit held that the PowerTouch device did not generate a corresponding sound associated with a selected letter, but rather enunciated all the letters of a word no matter which letter was selected by the user. Thus, the PowerTouch device did not infringe claim 25 of the '861 patent.

To read the full text of the opinion in LeapFrog Enterprises, Inc. v. Fisher-Price, Inc., click here.

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