Background
Maschio Gaspardo S.p.A. owns U.S. Patent No. 8,770,121, which concerns precision pneumatic seed drills. The claimed seed-distribution element includes a rotating sowing disc, pneumatic chambers, a seal, and a rotatably supported thrust-bearing element that withstands at least some of the axial load the disc places on the seal.
After Maschio sued Precision Planting LLC for infringement, Precision sought inter partes review of claims 1–5, 7–14, and 16. The Patent Trial and Appeal Board held all challenged claims not unpatentable. On appeal, Precision disputed only the Board’s rejection of its obviousness challenge to claims 1–3, 7–12, and 16 based on Amazone, Fiorido, VenHuizen, and applicant-admitted prior art.
The Court’s Holding
The Federal Circuit held that substantial evidence did not support the Board’s finding that Fiorido failed to disclose the claimed thrust-bearing element. Fiorido’s Figure 2 clearly depicted contact between its driving disk and sowing disk, and the parties did not dispute that such contact would cause the driving disk to bear some axial load. Neither contact between the sowing disk and a separate sealing ring nor the patent owner’s expert testimony provided an adequate basis to disregard what the figure showed.
The court therefore vacated the Board’s determination that Precision failed to prove the disputed claims obvious and remanded for a new obviousness analysis treating Fiorido as disclosing a thrust-bearing element. It did not decide whether a skilled artisan would have been motivated to combine the references or whether the Board had used an overly rigid motivation-to-combine test, but instructed the Board to apply the principles of KSR International Co. v. Teleflex Inc. on remand.
Key Takeaways
- A patent drawing may establish a prior-art feature even when the specification does not expressly describe that feature in words.
- Expert testimony cannot supply substantial evidence when it is conclusory or plainly inconsistent with what the prior-art record clearly depicts.
- The Federal Circuit did not hold the disputed claims obvious; it required the Board to redo the obviousness analysis using the correct understanding of Fiorido’s disclosure.
Why It Matters
The nonprecedential decision underscores that the PTAB must evaluate the full disclosure of a prior-art reference, including features plainly shown in its drawings. A Board finding cannot survive substantial-evidence review when it discounts an illustrated feature without record-supported technical reasoning.
The ruling also preserves the distinction between identifying what prior art teaches and deciding whether a skilled artisan would have combined those teachings. The Board must now reconsider obviousness, including motivation to combine, from the corrected premise that Fiorido discloses a thrust-bearing element.