In re Schweickert, Case No. 2016-2099 (Fed. Circ. May 7, 2018):
In re Schweickert 676 Fed. Appx. 988 (unpublished opinion of the Court of Appeals for the Federal Circuit); decided January 26, 2017.
The Court of Appeals for the Federal Circuit ("CAFC") held, in In re Schweickert, that the U.S. Patent and Trademark (USPTO) Patent Trial and Appeal Board (PTAB), did not sufficiently justify a combination of references in a rejection under 35 U.S.C. § 103 (obviousness).
The problem addressed by the underlying patent, U.S. Patent No. 7,574,276 (the '276 Patent), is a motor that spins a memory disk and dominates power consumption in a music player. Please see an annotated version of FIG. 1 of the '276 Patent below. A person listens to music; a waveform that conveys the music is produced by a codec. The codec reads bits from a buffer, and a motor spins a memory disk in a storage when the buffer needs to be replenished. The inventors of the '276 Patent implemented a memory lock on the buffer to prevent the motor from spinning up too often. The memory lock improves the battery life of the music player. The claims of the '276 Patent are directed to the memory lock.
The PTAB, in an ex parte reexamination of the '276 Patent, found the claims of the '276 Patent invalid as obvious under 35 U.S.C. § 103 over a primary reference U.S. Patent No. 6,332,175 to Birrell et al. (hereinafter "Birrell") as modified by U.S. Patent No. 5,842,015 to Cunniff (hereinafter "Cunniff").
Birrell included a mechanism for refilling unplayed data when an amount of unplayed data in a memory buffer passed below a law water mark. Birrell FIG. 3. Cunniff discloses a semaphore mechanism to arbitrate access to a shared memory. Cunniff FIG. 4. The PTAB combination required removal of this mechanism from Birrell and insertion of Cunniff's semaphore.
The CAFC found "this substitution is illogical as it would leave Birrell void of the mechanism it relies on[.]" In re Schweickert at 994. The CAFC also found the PTAB did not identify a reason that would have prompted [a skilled artisan] to combine the elements in the way the claimed new invention does. In re Schweickert at 995 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418). Thus, the PTAB did not adequately explain why and did not explain how a person having ordinary skill in the art would form a combination of Birrell modified by Cunniff.
The CAFC found the combination was a step backward for the primary reference because Birrell worked without the semaphore of Cunniff and the modification would add additional complexity and computations. In re Schweickert at 995.
Finally, the CAFC found that the PTAB result, based on a "broadly-stated conclusion suffers from hindsight bias." In re Schweickert at 996.