In Wyers v. Master Lock Co., 95 USPQ2d 1525 (Fed. Cir. 2010), plaintiff Philip W. Wyers (Wyers) sued defendant Master Lock Company (Master) for infringement of its patents for hitch pin locks. Hitch pin locks are typically used to secure draw bars or tow-ball mount to a hitch receiver attached to a motor vehicle. Wyers’ patents describe a barbell-shaped lock with a stop portion on one end, a locking head on the other end, and a shank portion which passes through the aligned apertures of the hitch receiver and the tow-ball mount.
The use of barbell-shaped locks and locks on trailer hitch receivers was well known in prior art. Specifically, the prior art had examples of locks with a lock head, a shackle having a stop member, a shank, and a latch. Moreover, the prior art also had examples of barbell-shaped locks being used as a trailer hitch receiver lock.
Wyers’ patents claim improvements to the prior art locks; mainly a removable sleeve to increase the shank’s diameter. The removable sleeve allows adjusting the diameter of the shank which can be used with trailer hitch receivers of different apertures sizes. The patent claims also include an external seal designed to protect the locking mechanism from contaminants.
At the trial level, the two main questions the court asked were “whether the use of the removable sleeve to adjust the operative thickness of a shank would have been obvious;” and “whether Master Lock presented clear and convincing evidence that the use of the external flat flange seal would have been obvious.” JMOL Order, 2009 WL 1309774 at 3 and 5. The district court found held that plaintiff’s patents were not obvious and awarded $5.35 million in damages, $1.1 million in interest, and a 24% royalty for any infringing products Master sold based on Wyers’ patent.
On appeal, the parties agreed that the case turned on whether the claims were obvious based on prior art. The court said that the issues in dispute were, “(1) whether the prior art references are in the same field of endeavor as the patented invention; (2) whether there was sufficient motivation to combine the references; (3) the existence and significance of pertinent secondary considerations.”
In reviewing the first question, the Federal Circuit noted that the test of whether the art is from the same field of endeavor is “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)).” The Federal Circuit noted that the jury at the trial court applied the wrong standard. The correct standard is whether a person of ordinary skill in the field of locksmithing would find this improvement to be obvious, not the standard of a layman on a jury. The appellate court, also said the prior art was relevant because the prior art was within the “same field of endeavor.” The prior art was directed towards trailer-towing applications, as were most of Wyers’ patents.
On the second question as to whether there was motivation to combine the adjustable sleeve with the prior art barbell locks and whether there was motivation to combine the prior art locks with an external sealing mechanism, the Federal Circuit noted that the test is no longer strictly one of express motivations to combine. KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). “Common sense” is one standard when looking for a reason to combine references. Moreover, the Federal Circuit noted that, while the facts supporting obviousness are to be determined by a jury, the ultimate question of whether the facts support “common sense” or reasons to make combinations are susceptible to resolution at summary judgment and motions JMOL.
In applying this standard, the Federal Circuit said that sleeves were used in prior art in a towing arrangement similar to a hitch receiver/tow bar arrangement, and could be combined with a barbell-shaped hitch pin lock in order to address different aperture sizes in standard hitch receivers. In addition, the Federal Circuit noted prior art in the Down patent that “sleeves of different external diameter may be provided for the attachment of trailer towing eyes of different internal diameter. When the sleeve is used, the pin accommodates larger diameter towing eyes; without the sleeve, the pin fits smaller ones.” Thus, a person of ordinary skill in the art of locksmithing would have been likely put these two designs together.
The Federal Circuit concluded that “it was a mater of common sense to combine the Down patent with the prior art barbell locks in order to arrive at the invention claimed in the [Wyers’ patents], and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so.”
Furthermore, the Federal Circuit noted that “it is a matter of common sense that a flat external seal used in the prior art padlocks could be combined with a barbell-shaped hitch pin lock.” This is because prior to Wyers’ filing, the concept of using external or internal seals to protect a lock’s head from contaminants, was widely known.
Lastly, in evaluating the effect of secondary considerations, the Federal Circuit noted that for objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention. In re Huang, 100 F.3d 135 (Fed. Cir. 1996); In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995). Here, plaintiff could not prove that Master’s $20 million in sales of the accused product were the result of any of the supposed features of Wyers’ patents. Further, there was no evidence of copying of Wyers’ design. Thus, any secondary considerations here can not overcome a strong prima facie case of obviousness, as was the case here.
Significance for Patent Applicants and Owners
Rejections under 35 U.S.C. §103 using common sense as a basis are particularly perplexing for patent practitioners as what constitutes common sense appears to be a subjective test. As is evident from the Federal Circuit’s analysis, the use of common sense is based upon an analysis of prior art within the record. While such a robust record is expected in inter partes proceedings, however, it is unclear as to how Patent Examiners performing examination in an ex parte process would be able to develop a sufficient record to substantiate a prima facie burden. Moreover, the United States Patent and Trademark Office has not provided examples of how such a conclusion would be made in its proposed Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v.Teleflex, Fed. Reg. Vol. 75, No. 169, pp. 53643 (September 1, 2010). Thus, patent applicants should be mindful that, when faced with a rejection based upon common sense, the Examiner must still provide evidence supporting this conclusion and require this evidence as grounds of traversing the rejection.