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Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., et al.

Posted in Opinion Commentary by Jake Ward on May 30, 2007

 Substantial Evidence of Secondary Considerations Were Not Sufficient to Overcome a Strong Prima Facie Showing of Obviousness.

(Fed. Cir. 2007, 06-1402)

 lettergame 

On appeal to the CAFC, Leapfrog contested the holding of the District Court (D. Del.) that Claim 25 of Leapfrog’s U.S. Patent 5,813,861 (“the ’861 patent”) was invalid as obvious.  Specifically, the court concluded that Claim 25 was invalid as obvious in view of the combination of U.S. Pat. No. 3,748,748 to Bevan, a Texas Instruments Super Speak & Read (“SSR”) device, and the knowledge of one of ordinary skill in the art as represented by the testimony of Fisher-Price’s technical expert. The CAFC affirmed.

The technology of the ’861 patent relates to a learning device to help young children read phonetically.  Claim 25 recites:

An interactive learning device, comprising: a housing including a plurality of switches; a sound production device in communication with the switches and including a processor and a memory; at least one depiction of a sequence of letters, each letter being associable with a switch; and a reader configured to communicate the identity of the depiction to the processor, wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter, the sound being determined by a position of the letter in the sequence of letters.

The accused PowerTouch device by Fisher-Price consists of a hinged plastic housing containing electronics and a speaker that opens to lie flat.   In phonics mode, when the user touches one of the words on the page of the PowerTouch device, the device pronounces the word.

Among the arguments presented by Leapfrog were:  1) improper hindsight in reaching a conclusion of obviousness; 2) a clearly erroneous finding that the Bevan device has the same functionality as claim 25, because the components of Bevan’s device are mechanical and not electrical; 3) inadequate evidence in the record to support a motivation to combine Bevan, the Texas Instruments SSR, and a reader to arrive at the invention of claim 25; and 4) lack of proper consideration of strong evidence of secondary considerations of nonobviousness.  The CAFC disagreed with all points, first by stating: 

An 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. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837, at *12 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). . . .  Accommodating 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.

The CAFC also found motivation to combine the references, stating that one of ordinary skill in the art “would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.”

The CAFC noted that the combination of the SSR device and Bevan did lack the “reader” element of Claim 25.  However, “readers were well-known in the art at the time of the invention.”  This conclusion was not rebutted because Leapfrog did not present evidence that the inclusion of a reader “was uniquely challenging or difficult for one of ordinary skill in the art. See KSR, 2007 WL 1237837, at *15.”  Nor did Leapfrog “present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art.” (Emphasis mine).

Finally, with respect to consideration of secondary considerations, the CAFC stated:

The district court explicitly stated in its opinion that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious. We have no basis to disagree with the district court’s conclusion.

Affirmed in favor of Fisher-Price.

JW Note:  This opinion was apparently the first CAFC opinion to cite KSR v. Teleflex.  Notably, the finding of obviousness was affirmed.

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