By Audrey Millemann

The first case the Federal Circuit Court of Appeals has decided under obviousness since the United States Supreme Court’s decision on April 30, 2007 in KSR International Co. v. Teleflex, Inc., 1727 S.Ct. 127 (2007) came just nine days later: LeapFrog Enterprises, Inc. v. Fisher-Price, Inc. (2007 WL 1345333; May 9, 2007).

United States patent no. 5,813,861, owned by LeapFrog, discloses a talking electronic toy or learning device called LeapPad that makes sounds in response to the user selecting a letter. The toy helps teach children phonics. Fisher-Price makes a toy called PowerTouch that performs some of the same functions as LeapFrog’s toy. The PowerTouch device includes a processor in a device that holds a special type of book used with the device, such that when the child selects a word on the page, the device audibly pronounces the word, then pronounces each phoneme of the word, and then pronounces the word again.

In October 2003, LeapFrog filed its suit for patent infringement against Fisher-Price in the District Court of Delaware, seeking $78 million in damages. In April 2005, the case was tried to a jury, who deadlocked. LeapFrog and Fisher-Price then agreed to allow the court to decide the case. 

In March 2006, the district court entered judgment in favor of Fisher-Price. The court held that Fisher-Price had not infringed LeapFrog’s patent because the PowerTouch toy did not allow the child to select letters, only words. The court also held that LeapFrog’s patent was invalid as obvious based on an old patent for an electro-mechanical toy (to Bevan), a Texas Instruments device, and the knowledge of one skilled in the art. 

LeapFrog appealed to the Federal Circuit. The court affirmed the trial court’s judgment for Fisher-Price.

On appeal, LeapFrog argued that the district court improperly relied on hindsight in determining obviousness, did not have enough evidence of motivation to combine the prior art references, and ignored the secondary considerations of obviousness. Fisher-Price argued that the ‘861 patent was merely a modern version of the Bevan device (updated with electronics), no specific motivation to combine the references is required, and the evidence of secondary considerations of nonobviousness could not overcome the evidence of obviousness.

The appellate court agreed with the district court’s finding that the ‘861 patent was obvious based on Bevan, the Texas Instruments device, and the knowledge of one skilled in the art. According to the court, “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.” The court of appeals quoted the Supreme Court in KSR, supra: “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” The appellate court found that “[a]ccommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.”

In conclusion, the court stated: “[t]he combination is thus the adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art ([the Texas Instruments device]). 

Apparently, the Federal Circuit clearly understood the Supreme Court’s comment that the appellate court had been “too rigid” in applying the obviousness test and took seriously the Court’s implied message that too many patents have been granted for obvious inventions.