First Federal Circuit Decision on Obviousness After KSR

Leaprfog Enterprises, Inc. v. Fisher-Price, Inc., [06-1402](May 9, 2007)[LOURIE, Mayer, Dyk] The Federal Circuit affirmed judgment of noninfringement and invalidity of claim 25 on an interactive learning device.
SIGNIFICANCE: It may be obvious to convert a mechanicallly operated device to an electrically operated device.
BRIEF: LOF: Infringement is a question of fact, reviewed for clear error. Leapfrog fell well short of supporting a definite and firm conviction that a mistake had been made on the question of infringement. LOF: Obviousness is a question of law, reviewed de novo based upon underlying factual questions which are reviewed for clear error. In the first post-KSR obviousness case, the Federal Circuit affirmed the finding of obviousness, noting that “An obviousness determination is not the result of a rigid formula disassociated form the consideration fo the facts of a case. Indeed the common sense of those skilled in the art demonstrates why some combination would have been obvious where others would not.” The Federal Circuit said that “Accomodating a prior art mechanical device that accomplishes a goal to modern electronics would have been reasonably obvious to one of ordinary skill in desigining children’s learning devices.” adding that “Applying modern electronics to older mechanical devices has been commonplace in recent years.” The Federal Circuit concluded that one of ordinary skill in the art would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased sized, increased reliability, simplified operation, and reduced costs. The only difference between the combination of prior art and the claimed invention was the addition of a reader, which was found to be commonplace at the time of the invention. The Federal Circuit noted there was no evidence that the inclusion of a reader was uniquely challenging or difficult for one of ordinary skill, nor was there any other evidence that the inclusion of a commonly used device represented an unobvious step over the prior art. The conclusion was reinforced by the fact that the inventor did not have a technical background, and could not have built the prototype himself.