District Court's Pre-KSR Obviousness Analysis Flawed for Applying the "Unduly Rigid" Teaching, Suggestion, and Motivation Test

In Commonwealth Sci. & Indus. Research Organisation v. Buffalo Tech. (No. 2007-1449; Sept. 19, 2008), Commonwealth sued Buffalo for infringement of U.S. Patent No. 5,487,069, which involves the transmission of data over a wireless local area network by using multiple frequencies. The district court granted Commonwealth's motion for summary judgment of validity finding no anticipation, no obviousness, and no new matter. The district court also granted summary judgment in favor of Commonwealth on the issue of infringement. On appeal, Buffalo argues that the district court erred in all respects. The Federal Circuit affirms the district court decisions in all but one respect, obviousness.

First, on the issue of validity, Buffalo makes numerous arguments on appeal with respect to anticipation and new matter, including (1) the district court improperly found the preamble to be limiting; (2) the purported anticipating reference incorporates by reference (via a footnote) the elements that the district court found were missing; and (3) the applicant impermissibly added new matter and broadened the scope of the claims with an amendment that replaced the phrase "frequencies in excess of 10GHZ" with "radio frequencies," which include frequencies in the range of 3 KHz to 300GHz. The Federal Circuit rejects all of Buffalo's arguments and finds that Buffalo did not preserve its preamble arguments for appeal, a footnote to a citation without comment is insufficient to incorporate by reference for purposes of anticipation, and the original disclosure sufficiently disclosed frequencies in the amended range.

On the issue of obviousness, however, the Federal Circuit vacates the district court's pre-KSR finding of no obviousness because the court applied the "unduly rigid" teaching, suggestion, and motivation test. The district court found that Buffalo failed to identify any specific evidence in the combination of references that suggests combining them in a manner that results in the claimed subject matter. The Federal Circuit finds that the district court's reasoning is flawed because in light of KSR, "any need or problem known in the field of endeavor at the time or invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Thus, because each of the references combined address the same problem known in the field (i.e., propagation issues in transmission over a wireless network), the Federal Circuit holds that there is sufficient motivation to combine and summary judgment of no obviousness was improper.