Although merely exemplifying the burden imposed on an appellant by the Federal Circuit’s substantial evidence standard of review over decisions by the U.S. Patent and Trademark Office regarding the facts underlying legal decisions on obvious, an inter partes review of patents directed to capturing feral pigs provides enough of a curiosity to provoke a post, in Jager Pro, Inc. v. W-W Manufacturing Co.
The case arose over two decisions by the Patent Trial and Appeal Board (PTAB) where all challenged claims of U.S. Patent Nos. 9,814,228 and 10,098,339 were held unpatentable as obvious. These claims were directed to apparatus and methods for capturing feral pigs. Claim 1 of the ‘228 patent was set forth in the opinion as representative:
1. A method for capturing a plurality of feral pigs, comprising:
[a] moving at least one portion of an enclosure from an open position that permits passage of a plurality of feral pigs into the enclosure to a closed position that restricts passage of the plurality of feral pigs out of the enclosure, [b] wherein in the closed position, the enclosure cooperates with a ground surface to define an enclosure area in which the plurality of feral pigs are trapped, [c] and wherein the ground surface extends continuously from within the enclosure area to areas surrounding the enclosure,
[d] wherein the enclosure comprises a release mechanism that effects movement of the at least one portion of the enclosure from the open position to the closed position,
[e] wherein the release mechanism effects movement of the at least one portion of the enclosure from the open position to the closed position upon receipt of a release signal from a control mechanism that is in communication with a display device, [f] wherein the display device is in communication with a camera assembly and configured to:
receive a wireless detection signal from the camera assembly; and
[g] transmit a wireless control signal upon receipt of the wireless detection signal from the camera assembly, wherein the wireless control signal corresponds to an instruction to the control mechanism to generate the release signal, and
[h] wherein, upon detection of a presence of the plurality of feral pigs within the enclosure by the camera assembly, the camera assembly transmits the wireless detection signal to the display device.
Challenger W-W Manufacturing asserted the combination of an archived webpage to Texas Boars which included teachings regarding the preamble of claim 1 and bracketed limitations 1[a]–1[e] and Korean Patent No. 10-0688143 which contained this figure which taught or at least suggested “wireless transmission of signals from a camera assembly to a display device as well as from the display device to a control mechanism”:
The Board also considered Jager Pro’s assertion of certain objective indicia of non-obviousness to be inadequate because the patentee did not provide any evidence of there being a nexus between the evidence adduced and the objective indicia, nor was their argument entitled to a presumption that such a nexus existed.
The Federal Circuit affirmed, in an opinion by Judge Chen joined by Judges Lourie and Reyna. The panel rejected patentee’s arguments that the Board’s obviousness determinations were not supported by substantial evidence, that the Board did not articulate a basis for there to have been a motivation to combine the cited references, nor that the skilled worker would have had a reasonable expectation of success. On the contrary, the Federal Circuit relied on there being a “simple substitution” of an animal-instigated closure (through a trip wire) and human-instigated closure (pushing a button in response to received images of the animals), which in the Board’s opinion was motivated by the advantages resulting from this substitution. Such advantages of the substitution that the skilled worker would have recognized include increased control and chance for success in trapping the animals. These considerations were supported by substantial evidence on the record in the Board’s opinion, unrebutted by patentee.
The panel also rejected Jager Pro’s arguments regarding deficiencies in the asserted references because (in the Court’s view) the references were argued individually rather than the asserted combination of the references. Specifically, the opinion takes issue with the purported absence of wireless connection embodiments in the ‘134 patent because the panel interpreted broken lines in the Figure above to indicate such wireless embodiments.
With regard to the objective indicia and the nexus vel non with the claims, Jager Pro argued entitlement to this presumption due to the display device of their commercial product “transmit[ting] a wireless signal directly to the release mechanism, which then releases the gate” (emphasis in opinion). The Federal Circuit agreed with the Board that this feature was not a requirement of the claims, which had the complication that the wireless signal was sent from the display to a controller which then sent another signal to a mechanism that opens the gate. The Board had found Jager Pro’s instruction manual regarding use of the apparatus to be inconclusive because it contained no explanation of how the control box was controlled according to limitation 1[e]. This Board finding was also supported by substantial evidence according to the panel opinion.
The panel held that the substantial evidence standard was satisfied by the Board for the factual questions at issue supporting its obviousness determination of the challenged claims and thus affirmed the Board determination that the challenged claims were obvious.
Jager Pro, Inc. v. W-W Manufacturing Co. (Fed. Cir. 2023)
Panel: Circuit Judges Lourie, Reyna, and Chen
Opinion by Circuit Judge Chen