October 20, 2014
PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention
A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in favor of Patent Owner that the art-at-issue was not analogous and, thus, disqualifying its use in the IPR proceeding.
The ‘561 patent relates to shelving which has a hydrophobic top surface arranged in a pattern to contain spills. At issue in the petition was whether Petitioner had established that a reference which relates to microscope slides was analogous art. The Board noted two factors in this determination, either of which is sufficient to establish a reference as analogous:
- if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed; or
- if the reference, even though not within the field of the claimed invention, is reasonably pertinent to the problem with which the inventor is involved.
Further, the Board noted that the purpose of the claimed invention and the purpose of the prior art reference are important to the inquiry of whether the reference is analogous art.
That the reference was not in the same field of endeavor as the ‘561 claimed invention was not in dispute. Both parties agreed that shelving and microscope slides were not in the same field. However, Petitioner argued that the reference was reasonably pertinent to the problem faced by the inventor of the ‘561 patent. Specifically, Petitioner argued that both the reference and the ‘561 patent pertained to the problem of how to contain a liquid in a predetermined area using a thin structure that extends minimally from a surface.
Patent Owner argued that the reference was not analogous because the reference (related to microscope slides) did not pertain to containment of spills (construed as “an accidental or unintentional release of liquid” by the Board) because liquids are intentionally put on microscope slides. The Board agreed with Patent Owner, citing the recitation of a “spill containment” pattern in the ‘561 claims and considerable support for a spill containment feature in the ‘561 specification. Therefore, the reference and the ‘561 invention did not address the same problem.
Further, the Board explained that even if the reference qualified as prior art, it was different enough from other cited references that one skilled in the art would not have been familiar enough with the reference to combine it with others to mount a successful obviousness challenge. Therefore, the Board dismissed the obviousness challenge.