decided on January 4, 2018 by the Court of Appeals for the Federal Circuit
review by J. Matt Buchanan | published February 6, 2018 | updated February 18, 2018
In Everlight Electronics, the Court of Appeals for the Federal Circuit affirmed a verdict of invalidity rendered by a jury in a declaratory judgment action. The Court agreed with the lower court's determination that the jury verdict was supported by substantial evidence. The Court's opinion touches on several obviousness-related issues, including combination of known elements, motivation to combine references, commercial success as a secondary consideration of non-obviousness, and teaching away. The Court also found that the district court did not err in denying Everlight's claim that Nichia had committed inequitable conduct during prosecution of one of the patents-in-suit before the United States Patent and Trademark Office. Affirmed on all counts.
'Desirability of combining' and 'awareness of utility' as sufficient evidence to support conclusion of obviousness
The Court agreed with the district court that substantial evidence supported the jury verdict of invalidity for lack of non-obviousness because every element of the claimed invention was separately present in the prior art and "the jury heard evidence that a person of ordinary skill at the time of the invention would have desired to combine a blue-to-yellow phosphor with a blue LED to produce white light, and would have been aware of YAG as a useful blue-to-yellow phosphur." This evidence of a 'desirability of combining' and 'awareness of utility' was sufficient, the Court noted, "for a reasonable jury to conclude that the asserted claims would have been obvious."
Refusal to reweigh evidence of secondary considerations
Reviewing a jury verdict under a substantial evidence standard, the Court refused to reweigh evidence that was presented to the jury on secondary considerations of non-obviousness. The Court noted that “the jury heard evidence which weighed in both directions and evidence attacking the credibility of the various asserted secondary considerations.” A reasonable jury, the Court explained, “could have drawn a variety of conclusions regarding the strength and credibility of the evidence.”
Applying a sufficient evidence standard of review, the Court was clearly unwilling to significantly question the jury’s assessment of the evidence on secondary considerations.
Prior art need not teach exact approach taken by a claimed invention; recognition that combination is possible is sufficient
Applying a substantial evidence standard of review, the Court explained that the prior art does not need to teach the exact approach taken by a claimed invention that includes a combination of known elements to support a conclusion of obviousness. Rather, it is sufficient, at least under this standard of review, that the prior art recognize that a combination of the elements is possible.
It is important to note, though, that here, the Court made note of the existence of a strong market demand for the claimed invention, too:
“First, it is not necessary that the prior art teach a two-color solution in order for the jury verdict to be supported by substantial evidence. It is sufficient that the prior art recognize that blue LEDs can be combined with phosphors to produce varying light profiles, that combination with a blue-to-yellow phosphor would yield white light, and that a strong market demand existed for a white LED.” (emphasis added)
Motivation to combine does not require a showing that all possible problems solved by an invention were known in the prior art
The Court rejected an argument that a person having ordinary skill in the art needed to be aware of a particular beneficial property of one of the references used in the combination to satisfy the motivation to combine requirement, and, ultimately, to support the conclusion of obviousness.
The Court explained:
“[g]iven [the] significant motivation to use [the prior art element at issue], it does not matter that [the element] may provide properties unappreciated at the time of invention which are superior to other [prior art elements].”
In arguing motivation to combine, therefore, a party is not required to show that all possible problems solved by an invention were known in the prior art. “Proof of one motivation to combine…is sufficient.”
Reasonable to conclude that a skilled artisan would combine references despite statements about disadvantages when pursuing a highly desired goal
The Court dismissed an argument that statements in the prior art about a perceived disadvantage of one of the prior art elements taught away from the claimed invention. Reviewing a jury verdict of obviousness, the Court explained that it is reasonable to conclude that a person having ordinary skill in the art could look to combine references despite their statements about potential disadvantages.
Interestingly, the Court links its conclusion on this issue to the “highly desired” nature of the claimed invention:
“A person of ordinary skill desiring to create a white LED could plausibly look to the cited prior art references despite their statements on color rendition because they aided in the creation of a white LED, which was a highly desired goal. Without additional evidence, the jury could reasonably have found that the color rendition properties of the prior art would not have taught away from the creation of a white LED.” (Emphasis added)
A mere showing that documents should have been submitted, without evidence of intent to deceive, does to produce the specific intent required for inequitable conduct
The Court agreed with the district court that the party pleading inequitable conduct had failed to produce the required showing of specific intent. As a result, the Court did not address the question of but-for materiality under the inequitable conduct analysis.
The court explained that "a mere showing that documents should have been submitted to the USPTO...without a showing of additional facts probative of intent to deceive, does not rise to the level of specific intent under this court’s precedent."