The U.S. Court of Appeals for the Federal Circuit reversed a district court's denial of Woodstreams judgment as a matter of law (JMOL) of obviousness of Agrizap's patent to electronic rodent killing devices. The Court's ruling was noteworthy given Agrizap's patent issued over the very same invalidating prior art and Agrizap submitted substantial evidence at trial of secondary considerations of non-obviousness that did not save the patent from extermination. Agrizap Inc. v. Woodstream Corp., Case Nos. 07-1415, -1421 (Fed. Cir., March 28, 2008) (Moore, J.).
Agrizap sued Woodstream in the U.S. District Court for the Eastern District of Pennsylvania, alleging, in part, that Woodstreams Electronic Mouse and Rat Trap products infringed its '636 patent. Woodstream alleged that the '636 patent was unenforceable and invalid on several grounds, including obviousness in view of the combination of three prior art patents that were before the U.S. Patent and Trademark Office (USPTO) during the prosecution of the '636 patent. The jury found that Woodstream infringed and did not find the '636 patent invalid. The district court overturned the jury verdict finding that Woodstream did not infringe, but also denied Woodstreams JMOL of the '636 patent invalidity.
On appeal, the Federal Circuit held that the jury could not have had a legally sufficient basis to find against Woodstream on obviousness. During prosecution, the primary prior art reference was Agrizap's own '091 patent, which disclosed all but one of the elements of the '636 patent. The '091 patent disclosed a mechanical switch, whereas the '636 patent claimed a resistive switch that senses the rodent within the trap. The secondary references disclosed resistance sensing electrodes. Agrizap dodged the '091 patent as prior art during prosecution by adding a common inventor to the pending application.
However, Agrizap could not circumvent the public disclosure of a commercial embodiment of the '091 patent (Gopher Zapper) more than a year before the '636 patent filing date. The Gopher Zapper also disclosed all elements of the '636 patent claims except the resistive switch. In combination with the same secondary references, the Court found the substitution of a mechanical switch for a resistive one a combination of familiar elements leading to predictable results, citing to KSR.
The Court noted that it found itself in the curious position of reviewing the same prior art that the USPTO relied upon to reject the asserted claims. While a presumption of validity usually arises where prior art was already considered and overcome at the USPTO, the Court did not find the granting of the '636 patent over the '091 patent dispositive. Nor did the Court find Agrizap's evidence of commercial success based copying by Woodstream and long-felt need for electronic traps presented to the jury sufficient to overcome its obviousness determination, as was the case in Leapfrog Int'l.
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