Key Points

  • The Federal Circuit vacated a Patent Trial and Appeal Board decision holding that Precision Planting failed to show claims 1-3, 7-12 and 16 of Maschio Gaspardo's U.S. Patent No. 8,770,121 would have been obvious.
  • The court held that no substantial evidence supported the board's finding that the Fiorido reference does not disclose a thrust-bearing element, because Fiorido's Fig. 2 clearly depicts contact between its driving disk and disk 13.
  • The court declined to accept expert testimony contradicting what Fiorido's figures clearly show as substantial evidence, citing Homeland Housewares and Krippelz.
  • The court did not reach Precision's motivation-to-combine challenges, held an alternative obviousness theory forfeited, and remanded for a new obviousness analysis under KSR.
  • The disposition is nonprecedential; Chief Judge Moore wrote for a panel with Judges Dyk and Taranto.

A federal appeals court on Oct. 30 threw out a Patent Trial and Appeal Board decision that had upheld Maschio Gaspardo S.p.A.'s patent on precision seed-drill technology, holding that the board could not rely on expert testimony that contradicted what a prior-art drawing plainly showed.

The U.S. Court of Appeals for the Federal Circuit vacated the board's finding that Precision Planting LLC had failed to prove ten of the patent's claims would have been obvious. Chief Judge Moore wrote for a panel that included Circuit Judges Dyk and Taranto. The decision is nonprecedential.

The ruling turns on a single figure in a European patent publication known as Fiorido. The board had found that Fiorido did not disclose a "thrust-bearing element," a part that absorbs some of the axial load that a spinning seed disc puts on a seal. The panel held that nothing in the record justified disregarding what the figure showed, so the board must redo its obviousness analysis on the premise that Fiorido discloses the element.

Maschio owns U.S. Patent No. 8,770,121, which covers a seed-distribution element for precision pneumatic seed drills. The patent describes a housing with fixed and movable portions, a motor-driven sowing disc with selector holes, and a pressure differential across the disc that holds seeds and releases them in a controlled way. The key claim language requires a thrust-bearing element "supported rotatably in the movable portion in order to withstand at least some of the axial load produced by the disc on the seal."

After Maschio sued Precision for patent infringement, Precision petitioned the board for inter partes review. Precision challenged claims 1-5, 7-14 and 16 on four grounds. The board instituted review and held all of the challenged claims not unpatentable.

Precision appealed only one ground: that claims 1-3, 7-12 and 16 would have been obvious in view of an Amazone operator's manual for precision airplanters, the Fiorido publication, a U.S. patent known as VenHuizen, and prior art the patent applicant had admitted.

The fight centered on whether Fiorido's driving disk, labeled 31 in its drawings, touches disk 13, which Precision identified as the sowing disc. Judge Moore noted that the parties did not dispute that if the two disks touch, a skilled artisan would have understood the driving disk to bear some axial load.

The board gave three reasons for finding no thrust-bearing element in Fiorido, and the panel rejected each. First, the board noted that Fiorido's text does not expressly say the disks touch and that contact was not needed for the embodiment's stated purpose. "This observation, of course, does not preclude contact between the driving disk (31) and the disk (13)," Judge Moore wrote. "And it certainly does not negate the existence of such contact when it is clearly depicted in Fiorido's Fig. 2."

By comparison, the panel pointed to In re Mraz, a 1972 decision explaining that "the teachings of patent drawings, even as to features unexplained by the specification" can prove "dispositive" in an obviousness analysis.

Second, the board reasoned that because Fiorido's figure also shows a sealing ring touching disk 13, a skilled artisan could just as well have understood the seal to absorb all of the load. The panel called that reasoning flawed, holding that the additional contact "does nothing to disprove the contact shown between the driving disk (31) and the disk (13)."

Third, the board leaned on deposition testimony from Dr. Dankowicz. The panel said it saw nothing in his testimony that "a reasonable mind might accept as adequate" to disregard the contact shown in the figure, the standard for substantial evidence.

Dr. Dankowicz had suggested the figure should not be taken at face value because it also appears to show contact between a perforated hub and the driving disk, contact he assumed did not exist because it would cause undesirable friction. The panel wrote that he "provided no similar rationale, however, for why a skilled artisan would have second-guessed the apparent contact" between the two disks.

He also testified that because Fiorido says the driving disk could be inserted from the opposite side of the mechanism, there was no reason to believe it bears any thrust. Judge Moore wrote that "the mere disclosure of an alternative embodiment where the driving disk (31) may not function as a thrust-bearing element cannot suffice to counteract the depicted embodiment where it does."

The panel quoted its 2017 decision in Homeland Housewares v. Whirlpool: "[W]e must disregard the testimony of an expert that is plainly inconsistent with the record." It also cited Krippelz v. Ford Motor Co., a 2012 decision holding that "conclusory testimony of an expert witness . . . cannot create an issue of fact if none otherwise exists."

The court did not decide Precision's other arguments, that the board wrongly found no motivation to combine Amazone with Fiorido and applied an overly rigid test. The panel said the board's motivation analysis rested on its unsupported reading of Fiorido. It also noted Precision's concession at oral argument that the board never addressed motivation to combine on the assumption that Fiorido teaches a thrust-bearing element.

In a footnote, the panel held forfeited an alternative obviousness theory, one not dependent on Fiorido disclosing the element, because Precision had not presented it to the board.

Scott R. Brown of Hovey Williams LLP argued for Precision. Peter Akawie Mazur of Devlin Law Firm LLC argued for Maschio.

The case now returns to the board, which must conduct a new obviousness analysis of claims 1-3, 7-12 and 16 based on Fiorido's disclosure of a thrust-bearing element. The panel instructed the board to apply the principles of the 2007 decision in KSR International Co. v. Teleflex Inc., which it said the board had "correctly espoused" in its original decision. The court awarded costs to Precision.