In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 06-1402 (Fed. Cir. 2007) the Court of Appeals for the Federal Circuit’s (“CAFC”) first obviousness opinion since KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837 (2007) Leapfrog appealed the district court’s finding that the accused PowerTouch device did not infringe Leapfrog’s U.S. Patent No. 5,813,861 (“the ‘861 patent”) and that claim 25 of the ‘861 patent was invalid.  The CAFC affirmed the district court’s findings of noninfringement and invalidity based on obviousness with minimal reference to KSR and almost no guidance regarding the CAFC’s obviousness analysis going forward.

Focusing exclusively on the obviousness portion of the opinion, claim 25 of the ‘861 patent reads as follows:

Claim 25. 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 district court held claim 25 invalid as obvious in light of the combination of U.S. Patent No. 3,748,748 to Bevan (“Bevan patent”), Texas Instruments’ Super Speak & Read (“SSR”) device, and the knowledge of a person having ordinary skill in the art.  Leapfrog’s position before the CAFC was that the Bevan patent teaches a mechanical device, which is different in structure and function from the electronic components described in claim 25.  Leapfrog further argued that there was insufficient evidence presented to support a motivation to combine the teaching of the Bevan patent and SSR.

The Bevan patent teaches an electro-mechanical learning toy that associates letters with their sounds to encourage children to sound out words phonetically.  The preferred embodiment of the Bevan patent comprises a housing containing a phonograph record, a speaker to emit the voice sounds stored on the phonograph record, and a motor that rotates the record.  Uniquely-shaped puzzle pieces fit into the top of the housing that, when depressed, cause voice sounds corresponding to the puzzle pieces to emit through the speaker.  In one embodiment, the device is able to produce the letter-by-letter pronunciation of a given word where the depression of each puzzle piece causes the speaker to emit a voice recording of the phoneme of that single letter.  Thus, instead of the computer processor and other electronic components of claim 25 of the ‘861 patent, the Bevan patent teaches the use of an electric motor and other mechanical structures.

The SSR, in contrast, is a learning toy made with electronic components.  Specifically, the SSR has a recess in its housing to accept books with depictions that prompt the user to depress certain areas on each page.  The housing contains a computer processor, memory, a speaker and switches that can detect when a user has pressed a given area of a page.  The SSR’s speaker will emit voice sounds corresponding to the pronunciation of either the first letter of a word or the remaining letters of the word (e.g., “D” or “OG” for the word “DOG”) when those portions of the written word are depressed in the book.  The SSR does not allow for the letter-by-letter pronunciation of any word.  The SSR also does not include the “reader” limitation of claim 25’s, which automatically identifies the particular book inserted in the housing; the SSR requires the user to press special icons (such as a star) which – according to the location of the icon – tells the unit which book has been inserted.

In an apparent response to Leapfrog’s point that the prior art lacked evidence to establish a motivation to combine the teaching of the Bevan patent and SSR, the CAFC explained that:


[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.  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.”).  Thus, we bear in mind that the goal of the claim 25 device was to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word.  In this way, the child would both associate the sound of the letter with the letter itself and be able to sound out the word one letter at a time to learn to read phonetically.  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. (emphasis added).

The CAFC agreed with the district court that,

one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update [the Bevan device] 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.  [A person having ordinary skill in the art] could have utilized the electronics of the SSR device, with the method of operation taught by Bevan, to allow a child to press each individual letter in a word and hear the individual phonemes associated with each letter to sound out the words. (emphasis added).

Acknowledging that this combination still lacks the “reader” limitation of claim 25, the CAFC found ample evidence in the record to support the district court’s ruling that,

readers were well-known in the art at the time of the invention. . . . Furthermore, the reasons for adding a reader to the Bevan/SSR combination are the same as those for using readers in other children’s toys—namely, providing an added benefit and simplified use of the toy for the child in order to increase its marketability.”

Leapfrog provided no evidence to suggest that adding a reader to this type of device was beyond the skill and knowledge of a person having ordinary skill in the art or that adding a reader was an unobvious step over the prior art.

Leapfrog further argued that the district court failed to adequately consider secondary considerations.  The CAFC stated that it had no basis to disagree with the district court’s conclusion that “Leapfrog[’s] . . . substantial evidence of commercial success, praise, and long-felt need, . . . given the strength of the prima facie obviousness showing, . . . was inadequate to overcome a final conclusion that claim 25 would have been obvious.” 

Whether the CAFC will seek to reestablish the teaching, suggestion or motivation to combine test – or something else – under those circumstances where the combination of separate prior art disclosures is not a matter of common sense (i.e., not merely a combination of familiar elements according to known methods to yield predictable results) is one of many questions left unanswered by Leapfrog.