Some of Polaris Industries Inc.’s all-terrain vehicle patent claims were wrongfully invalidated in a challenge by Arctic Cat Inc., the U.S. Court of Appeals for the Federal Circuit said Feb. 9.
The Patent Trial and Appeal Board, the PTO body that decides validity challenges, said the claims were obvious in light of a combination of two earlier patents, but its reasoning had no basis in case law, the court said.
The ruling clarifies the law on the concept of teaching away, when the drafter of a patent or piece of research discourages or disavows a certain feature. The concept can be important when interpreting the scope of a patent or prior research, a possible factor in determining whether a patent is obvious or novel.
Low Center of Gravity
Polaris’ U.S. Patent No. 8,596,405 covers an ATV with two seats and a low center of gravity, which improves handling and stability. Arctic Cat petitioned for inter partes review of the patent, arguing the 405 patent is obvious in light of earlier patents.
The earlier patent, which the court called Denney, after the inventor, described an ATV frame with a low center of gravity. The other, the Furuhashi patent, described a buggy with a fuel tank underneath the driver’s seat. Furuhashi’s approach of putting a fuel tank beneath the seat would raise the vehicle’s center of gravity, and is incompatible with the Denney patent’s goal of having a low center of gravity, Polaris said. The PTAB rejected Polaris’s argument.
However, the PT ruled tht Polaris’ patent claims were obvious when Furuhashi and Denney are combined. Denney’s stated desire for a low center of gravity was just one of several “subjective preferences,” so it didn’t discourage—or teach away—the Furuhashi approach of putting components under the seats, the PTAB said.
But the Federal Circuit said the PTAB made a mistake rejecting Polaris’ argument that there was no motivation to combine the two earlier patents.
The Federal Circuit vacated the PTAB ruling and ordered it to review the claims again. The PTAB’s dismissal of the teaching away argument as “subjective preferences” is not supported by the law, and improperly disregards the prior inventions, the court said.
The PTAB’s approach has three problems, the court said. First, it encourages hindsight bias, where an invention is more likely to look obvious after the fact. Second, the PTAB’s approach fails to focus on the central question, which is whether a skilled person in the field would have been motivated to combine the prior inventions, the court said.
The third problem is that the PTAB’s approach encourages the examiner to disregard relevant evidence, the Federal Circuit said. In particular, if a statement is just a subjective preference, it is still relevant to issues such as whether there’s motivation to combine two pieces of prior art, the court said.
Judge Kathleen M. O’Malley wrote the decision Judges Alan D. Lourie and Todd M. Hughes joined. Carlson, Caspers, Vandenburgh, Lindquist & Shuman PA represented Polaris. Fish & Richardson PC represented Arctic Cat.
The case is Polaris Indus., Inc. v. Arctic Cat, Inc., 2018 BL 44586, Fed. Cir., No. 16-1807, 2/9/18.
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