“The obviousness inquiry does not require that the prior art combination is the ‘preferred, or the most desirable’ configuration.” – CAFC
On March 10, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB’s) obviousness determination and its denial of patent owner Hoyt Fleming’s motion to amend the asserted claims of the U.S. Patent No. RE47,474.
Cirrus Design Corp. petitioned for inter partes review of multiple claims, including claims 135-139, of the ’474 patent. During the proceeding, Fleming moved to amend, seeking to replace the asserted claims with proposed substitute claims. The Board concluded that claims 137-139 were unpatentable as obvious over the combination of Cirrus Design’s Pilot Operation Handbook for the SR22, Revision A7, (Oct. 10, 2003) (POH) and U.S. Patent No. 6,460,810 (James).
The Board further found that Fleming’s proposed amended claims did not meet the statutory and regulatory requirements for patentability because they lacked written description support and thus constituted new matter.
On appeal, Fleming argued the Board erred in determining that the asserted claims are unpatentable and in denying his motion to amend.
The ’474 Patent
The ’474 patent describes ballistic parachute systems on aircraft, where the “ballistic parachutes use a rocket to quickly deploy a parachute, slowing the fall of a crashing aircraft” and potentially saving lives. Unsurprisingly, this ballistic parachute is most successful under conditions “when it can become fully inflated and functional[,]” such as a higher aircraft altitude upon deployment.
Specifically, the specification discloses that “that it is preferred to reach key operating parameters—like certain speed, altitude, and pitch—before (or, if time requires, while) deploying a ballistic parachute.” The ’474 patent is directed to “intelligent ballistic parachute systems” which is “capable of performing pre-activation and post-activation actions[,]” intended to help the aircraft reach desired operating parameters for deploying a ballistic parachute without the direct involvement of a pilot. Such actions include: (1) increase altitude; (2) fly at a level attitude; (3) reduce speed; and (4) enable or disable “reefing control.”
Additionally, the specification discloses that, “upon receiving a parachute activation request from an ‘activation interface,’ ‘one or more processors’ determine whether a pre-activation action must be performed before deploying the parachute.” If so, the processors command performance of the pre-activation action. The processors may also command performance of a post-activation action. The written description also includes an “intelligence override interface,” which “allows an aircraft occupant to manually by-pass the processor-controlled operations to immediately deploy the parachute, for example by pulling a pull-handle or pressing a button.”
Specifically, the representative Claim 137 of the ’474 patent teaches that upon the receipt of the whole-aircraft ballistic parachute deployment request, the autopilot is commanded to “increase aircraft pitch.” Claims 138 and 139 are identical except the autopilot is commanded to “reduce aircraft roll” and to “change the attitude of the aircraft,” respectively.
In its final written decision, the PTAB determined that claims 137–139 of the ’474 patent would have been obvious over a combination of POH and James.
POH is a pilot’s operating handbook which describes the operation of the Cirrus Airframe Parachute System (CAPS), a ballistic parachute system installed on the Cirrus SR22 airplane. POH includes certain factors pilots should consider before activating the system and deploying the parachute. For example, POH suggests the parachute should be activated from a “wings-level, upright attitude” and the chances of successful deployment increase with altitude.
James discloses that in response to a request to deploy a parachute, an aircraft may automatically initiate shut down procedures, including deploying a parachute. It teaches the use of an autopilot to take certain actions in an emergency situation, including, for example, “shutting off all engines, terminating all flight functions, [and] deploying an emergency recovery parachute.”
Obvious to Combine
On appeal, Fleming made two arguments. First, he challenged the Board’s obviousness determination, “arguing that none of the prior art discloses commanding an aircraft’s autopilot to increase pitch, reduce roll, or change attitude based on the aircraft’s receipt of a parachute deployment request, as required by claims 137–139.”
The CAFC agreed with the PTAB’s obviousness determination. While the Board acknowledged that neither references specifically teach this element, the Board nevertheless found that “a person of ordinary skill would have been motivated to program James’ autopilot in view of POH so that upon the receipt of a parachute deployment request, James’ autopilot would seek to ensure safety by following POH’s guidance for safe parachute deployment, including changing the aircraft’s pitch, reducing aircraft roll, and/or achieving a level of attitude as needed. Thus, the CAFC added, the proposed combination of these references discloses the disputed claim limitation.
The Board also recognized it was well known that “aircraft autopilots are programmable to perform certain actions, for example increasing aircraft pitch and deploying a parachute.” In addition, James discloses that upon receiving a signal, “an aircraft may automatically initiate shut down procedures, including deploying an emergency parachute” and can perform certain flight maneuvers on an aircraft.
The Board explained that POH emphasizes that “these standard autopilot maneuvers—slowing aircraft speed, maintaining a steady attitude, and changing aircraft pitch—should preferably be completed before deploying an emergency parachute.”
Lastly, the CAFC explained that “it is appropriate to consider the knowledge, creativity, and common sense of a skilled artisan in an obviousness determination.” While the Supreme Court has cautioned against the misuse of these considerations, it has continued to approach the obviousness inquiry with the flexibility required by KSR. Thus, the CAFC found that the Board’s conclusion is the “result of a faithful application of our law on obviousness.”
Second, Fleming argued that the prior art teaches away from the claimed invention in the ’474 patent and that the combination of POH and James would be unsafe. Specifically, Fleming argued that “the prior art cautioned that autopilots should not be used in certain emergency situations where a ballistic parachute may be needed[,]” such as upon takeoff and landing or when the aircraft is below a certain altitude.
But the Board found, and the CAFC agreed, that the prior art did not teach away. The CAFC said that “a reasonable fact-finder could nonetheless conclude that the prior art does not suggest to the skilled artisan that an autopilot should never be used in any emergency situation for any aircraft.” For example, James discloses that the continuous use of an autopilot is of particular benefit for unmanned aerial vehicles. POH discloses that the use of the ballistic parachute system would be appropriate in the event of pilot incapacitation, suggesting use of an autopilot to deploy the ballistic parachute system.
Fleming also argued on appeal that a skilled artisan would have been dissuaded from making the proposed combination because “using James’s autopilot would be unsafe in many emergency situations.” However, the CAFC sided with the Board’s reasoning that “the obviousness inquiry does not require that the prior art combination is the ‘preferred, or the most desirable’ configuration.” Because the prior art cautioned pilots not to use an autopilot in some emergency situations does not mean that the skilled artisan would have been dissuaded from doing so in all emergency situations.
Lack of Written Description and Indefiniteness
Fleming challenged the Board’s denial of his motion to amend after concluding that the claims lacked sufficient written description and were indefinite.
The proposed amended claims require that the aircraft use at least a portion of the distributed processing system to select one of two procedures. The claims further require that the aircraft may activate—again using at least a portion of the distributed processing system and based on an occupant pulling the pull handle—the selected procedure. In other words, the proposed amended claims require that the aircraft itself be capable of automatically performing certain functions.
After reviewing Fleming’s citations to the written description, the Board found, and the CAFC agreed, that the cited portions did not disclose the limitations of the proposed amended claims and these claims lacked written description support and were thus unpatentable as indefinite. Thus, the CAFC held that the Board did not abuse its discretion in denying Fleming’s motion to amend.