Obvious Obviousness: The Federal Circuit Rejects Jury's Verdict Of Nonobviousness

Obviousness is a mixed question of law and fact. Thus, when a jury reaches a verdict on the issue of obviousness, the Federal Circuit defers to the jury's factual findings that are supported by substantial evidence. Practitioners should take note when the Federal Circuit overturns a jury's finding of obviousness or nonobviousness. These situations, as demonstrated in the recent case of ABT Systems, LLC v. Emerson Electric Co., Nos. 2014-1618, -1700 (Fed. Cir. Aug. 19, 2015), often involve a strong showing of obviousness or nonobviousness that can highlight how practitioners may invoke or defend against 35 U.S.C. § 103 in their own cases.

The asserted patent in this case, U.S. Patent No. 5,547,017 (“the 017 patent”), titled “Air Distribution Fan Recycling Control,” is directed to techniques for running an HVAC system fan intermittently during periods when a thermostat is not requesting heating or cooling. As described in the '017 patent, this “recycle control” feature involves periodic fan operation when the system is not heating or cooling, where the fan operation begins “a preselected time period” after the fan stops at the end of a heating or cooling cycle, or after the termination of a “constant fan mode” operation. The purported benefits of this technique, as described in the specification, include reduced air stagnation, dilution of point sources of indoor air pollution, improved air cleaning, and reduced energy consumption.

The '017 patent was assigned from the inventor to the University of Central Florida, which in turn licensed the patent to ABT Systems, LLC. The University and ABT sued several defendants for alleged infringement of the '017 patent, including Emerson Electric Co. In particular, they alleged that the Comfort Circulating Fan Feature of Emerson's “Big Blue” thermostat infringed the '017 patent.

During a jury trial, Emerson challenged the '017 patent as being obvious in view of four prior art references. In particular, Emerson argued that the claims of the '017 patent would have been obvious in view of U.S. Patent No. 2,013,136 (Cornelius); U.S. Patent No. 4,838,482 (Vogelzang); U.S. Patent No. 2,953,908 (Petrone); and/or U.S. Patent No. 5,020,332 (Nakatsuno). They jury rejected this invalidity defense and found the asserted claims of the '017 patent infringed by Emerson. Following the verdict, Emerson filed a motion for judgment as a matter of law (JMOL) to set aside the verdict, which the district court denied...