Donner Technology, LLC v. Pro Stage Gear, LLC

On November 9, 2020, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded an inter partes review (IPR) decision from the U.S. Patent Trial and Appeal Board (PTAB) for Pro Stage Gear”™s patent for guitar effects pedals. The PTAB had rejected obviousness challenges by Donner on the ground that Donner did not prove that a prior art reference is analogous art.

Background

Pro Stage Gear”™s patent U.S. Patent No. 6,459,023 (”™023 patent) describes improvements to guitar effects pedals. The “Background of the Invention” portion of the specification of the ”™023 patent states a prior art solution for a problem of cable management is to cover the cables by foam so that the cables are not exposed, but that this prior art solution ”restricts the ability to change out or one effect for another or add an additional effect because the foam must be removed to uncover the cable connections, the effect removed from the board, the cables repositioned for the new effect, the new effect positioned on the board, the cables rerouted, and the foam re-cut or replaced for the new effect.”

The “Summary of the Invention” portion of the ‘023 patent describes “a cable connection opening which is adapted to allow the cable to pass from the adapter on the guitar effect through the effect mounting surface into a cable routing and storage area which allows for the cable to be kept contained and out of the way during use of the effect pedals”.

In the PTAB IPR proceeding, Donner challenged various claims of the ”˜023 patent as obvious in view of U.S. Patent No 3,504,311 (Mullen). Mullen is directed to providing ”an improved support for supporting one or more relay structures and for providing wiring-channel space for receiving wires that would be connected to the relay structures to connect the relay structures in various control circuits.” Donner asserted Mullen”™s structure is analogous to the claimed structure in the ”˜023 patent. The PTAB determined that Donner”™s obviousness challenge failed because Donner had not proven that Mullen is analogous art.

CAFC’s Analysis

The CAFC stated ”It is undisputed that the ”™023 patent and Mullen are not from the same field of endeavor. Therefore, the only question is whether Mullen is reasonably pertinent to one or more of the particular problems to which the ”™023 patent relates.” The CAFC identifies the proper standard for the ”problem” analysis as “the problems to which the claimed invention and reference at issue relate must be identified and compared from the perspective of a person having ordinary skill in the art”.

The CAFC then stated the PTAB may not have ”meaningfully considered all of Donner”™s arguments and evidence” including detailed expert testimony, and ”failed to properly identify and compare the purposes or problems to which Mullen and the ”™023 patent relate”. Accordingly, the CAFC concluded that ”because the Board failed to identify and compare the problems to which the ”™023 patent and Mullen relate, the Board failed to apply the proper standard.”

S&H”™s Analysis

The precedential Donner decision reinforces the proposition that the PTAB ”must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.”. In Donner, the CAFC identified the proper standard for the ”problem” analysis in analogous art as “the problems to which the claimed invention and reference at issue relate must be identified and compared from the perspective of a person having ordinary skill in the art”. Therefore, Applicants may wish to take the Donner decision into consideration when drafting a specification to avoid potentially analogous art, or when making non-analogous art arguments during prosecution of an application.