Polaris v. Artic Cat, Obviously, there are still more 103 lessons to learn
Section 103 continues to be a portion of the US Code that proves the adage true that the law never stops teaching. In a recent precedential decision out of the Court of Appeals for the Federal Circuit a panel reversed in-part the §103 obviousness findings of the Patent Trial and Appeal Board in two inter partes reviews related to one patent. Polaris Industries v. Artic Cat, Case Nos: 2016-1807 & -2280 (Fed. Cir. Feb. 09, 2018). The Patent Trial and Appeal Board found all the subject claims obvious under §103 over one combination of the prior art, but not the other.
Polaris involved an invention directed towards multi-seater, all-terrain vehicles (or “ATVs”). The claimed ATVs managed the center of gravity of the vehicle to mitigate role-over by claiming a spatial relationship between various components, e.g., positioning the battery and fuel tank closer to the vehicle frame. An accused infringer of the issued patents, Artic Cat, filed for inter partes review asserting that all thirty-eight claims in the patent were obvious under §103. A claimed invention is obvious under §103 if “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious… to a person having ordinary skill in the art…” (2011).
At the CAFC, the Court of Appeals panel affirmed the Patent Trial and Appeal Board’s determination of obviousness with respect to claims 15-16 finding substantial support for the Board’s claim construction on key terms. For claim 15 and 16, adequate (claim construction) support was found in the specification’s teachings as well as Artic Cat’s expert testimony as to a POSITA likely considering the relevant elements taught or achievable in one or more of the primary references.
However, with respect to claims 17-19, the Court of Appeals panel remanded the case back to the Board for failure to consider uncontested evidence that skilled artisans might not have been motivated to alter the prior art to achieve the claimed configurations. The Board dismissed some of the teachings of the prior art as “subjective preferences,” not teach-away evidence and irrelevant to obviousness. The litmus for whether a reference teaches away from the claimed combination is whether a POSITA, “upon reading [the prior art reference], would be discouraged from following the path set out in [the prior art], or would be led in a direction divergent from the path that was taken by the applicant.” citing In re Fulton. In Polaris, the primary reference (Denney) taught the desirability of a lower center of gravity for stability with vehicles having a shorter wheel base, for maneuverability. Thus, it was argued that Denney taught away from any configuration that would raise the vehicle’s center of gravity, e.g., positioning the fuel tank or battery beneath seating as claimed thus requiring a higher occupant position. By not considering whether Denney taught away from the claimed combination under the Fulton standard, the Board erred, increasing the likelihood of hindsight bias, asking what a POSITA was able to do versus what a POSITA would have been motivated to do and dismissing Denney’s criticisms as irrelevant preferences. at 18-23. Regardless of whether Denney taught away from the claimed improvement, the Board was nevertheless to consider the teachings or “preferences” of Denney because the same were relevant to what a POSITA might have been motivated to do at the time of invention. Id. “[E]ven if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.” citing Apple v. Samsung (2016)(en banc).
The Court of Appeals panel further remanded the case to the Board with respect to claims 34 and 36-38 for re-treatment of objective indicia of non-obviousness, namely Polaris’ commercial success. Polaris presented evidence of $1.5B in commercial sales tied to a specific product that was the claimed invention. The Board dismissed Polaris’ expert’s testimony on commercial success as conclusory. However, this evidence was entitled to a presumption of nexus between the commercial success and the invention disclosed in the patent since the product was the invention disclosed in the patent. citing WBIP, LLC v. Kohler.
Polaris v. Artic Cat provides more details about the nuances of §103 that are not to be taken for granted. Particularly, Polaris highlights the relevance of preferences taught in the prior art that might not rise to the level of “teaching away” but are still probative of what a POSITA might (or might not) have been motivated to do. The unfoolish know – school is obviously still in session.
