February 16, 2017

Hindsight Cannot be the Thread that Stitches the Prior Art Patches into the Claimed Invention

In Metalcraft of Mayville, Inc., v. The Toro Company, [2016-2433, 2016-2514] (February 16, 2017), the Federal Circuit affirmed a modified preliminary injunction against Toro’s continued infringement of U.S. Patent No. 8,186,475 on platform suspension systems for lawnmowers.

The claims required “an operator platform that supports the seat and an entire body of an operator during use of the utility vehicle,” while Toro maintained that because part of the user’s body was supported by the controls, which were not mounted on the operator platform, its accused lawnmowers do not meet the limitation “an entire body of an operator.”

On appeal, Toro argued that the district court’s construction of “an entire body of an operator” was improper because it excludes the operator’s hands and arms.  The Federal Circuit disagreed, finding that nowhere did the district court conclude that “an entire body of an operator” excluded the operator’s arms and hands.  The Federal Circuit said that the patent makes clear that it is the suspended operator platform that supports “an entire body of an operator” and that the operator platform is a separate and distinct element from the steering controls. However this really did not address Toro’s argument that if the controls are connected to the platform, then the platform supports the users entire body, but when the controls are attached to something else, something else helps support the user’s body.

Toro also argued that if the steering controls are not mounted on the operator platform, the operator’s hands will not be isolated from shock loads. However, the Federal Circuit rejected this argument as importing limitations into the claims.

On the question of validity, the district court rejected Toro’s obviousness contention because a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.  The district court said that Toro provided “no reason, and the Court cannot imagine one, that a person of ordinary skill in this field would combine a motorcycle shock with a suspended truck cab and come up with a suspended operator platform.”

The Federal Circuit agreed that Toro provided no explanation or reasoning for concluding that one of skill in the art would have combined these particular references to produce the claimed invention.  Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.  The Federal Circuit said that while it understands that the obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, it also recognizes that it “cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”

The Federal CIrcuit also agreed with the district court that there was irreparable harm, because “it is impossible to quantify the damages caused by the loss of a potentially lifelong customer.”

Finally, the Federal Circuit agreed with the scope of the injunction, rejecting Toro’s argument that that it was too broad.