Thomas Horstemeyer Secures Victory in Federal Circuit Decision Finding that the PTAB Misapplied the “Pertinent-Problem” Test for Analogous Art

In a victory secured by Thomas Horstemeyer for its client, Donner Technology, the Federal Circuit has ruled in a precedential decision that the PTAB erred in finding that a prior art reference did not constitute analogous art. As a result, the Court has vacated the PTAB’s decision and remanded it for further proceedings.

In early 2017, Pro Stage Gear sued Donner in the Eastern District of Tennessee, alleging infringement of U.S. Patent No. 6,459,023 directed to a guitar pedal board. In response, Donner petitioned for IPR of the ‘023 Patent, arguing that the claims were obvious in view of various combinations involving U.S. Patent No. 3,504,311 (“Mullen”), a reference relating to support structures that provide wiring-channel space for receiving wires.

The PTAB initially denied review, finding that Mullen was not analogous art. However, Donner moved for reconsideration on the ground that the PTAB had not applied the proper test for references, such as Mullen, that were not in the same field of endeavor as the challenged patent. Specifically, Donner argued that the PTAB had overlooked and misapprehended its argument that Mullen was analogous because it was pertinent to a particular problem that the ‘023 Patent faced. The PTAB agreed that rehearing was warranted, made an initial determination that Mullen was analogous art, and instituted IPR on the challenged claims.

However, in its final written decision, the PTAB reversed course, once again ruling that Mullen did not constitute analogous art. Because the PTAB applied an incorrect standard for analogous art and the evidence did not support the PTAB’s decision, Donner appealed.

In reviewing the PTAB’s decision, the Federal Circuit first found that Donner “argued in its petition and reply that Mullen was analogous art, supporting that argument with expert testimony and evidence from both the ’023 Patent and Mullen.” The Federal Circuit held, however, that even if the PTAB considered the arguments and evidence, the PTAB erred by failing to properly identify and compare the purposes or problems to which Mullen and the ’023 Patent relate from the perspective of a person of ordinary skill in the art. As the Federal Circuit recognized, the PTAB’s analysis had effectively collapsed the two separate “field-of-endeavor” and “pertinent-problem” tests into a single test, which was improper. “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.”

The issue of whether Mullen constitutes analogous art will now be remanded to the PTAB.

Thomas Horstemeyer partners Scott Amy, Jason Perilla, and Robert Gravois, and former associate Wesley Roberts, secured the victory for Donner Technology on appeal.

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