Contemporaneous Recognition and Appreciation

ISCO International, Inc. v. Conductus, Inc., No. 04-1007, 1008, Federal Circuit, February 3, 2005, non-precedential, affirmed

A jury found that the asserted claims of ISCO's '215 patent, which was directed to a receiver front end for a cellular base station, to be invalid and not infringed. Following the trial, ISCO filed a motion for judgment as a matter of law, which was denied. This appeal followed.

To begin, the Federal Circuit reminded all of us just how difficult it is to get a jury verdict overturned. On appeal from a judgment denying a motion for judgment as a matter of law, the Court need only find that the jury's findings are supported by substantial evidence – in other words, the Federal Circuit has to find that no reasonable juror could have reached such a result in order to reverse. Uphill climb? You bet.

ISCO argued that (1) the jury was not entitled to consider the ARPA report as prior art; and (2) the jury could not have reasonably reached its conclusion of obviousness based on the evidence presented at trial.

This ARPA report was released in February 1995. ISCO vigorously argued that it was not prior art because ISCO's conception date was December 1994, and submitted drafts of a proposal created in December 1994 in support. However, the Court agreed that the draft did not show conception of the invention – there was no "definite and permanent idea" of a "complete" invention. Conspicuously absent was the appreciation of an automatic bypass circuit:

“It is well-settled that conception . . . cannot be established nunc pro tunc. There must be contemporaneous recognition and appreciation of the invention represented by the [claims].” Breen v. Henshaw, 472 F.2d 1398, 1401 (CCPA 1973). Because ISCO’s predecessor failed to appreciate certain inventive features at the time of the alleged conception, ISCO cannot rely on a later recognition of those features to retroactively cure an incomplete conception.

Regarding the jury's obviousness finding, ISCO argued that the ARPA reference did not suggest a motivation to modify its teachings to achieve the claimed invention. The Federal Circuit ixnayed that argument:

"However, the suggestion or motivation to modify a reference may be derived from the knowledge of those skilled in the art or from the nature of the problem to be solved. Considerable evidence was presented at trial of the knowledge of a skilled artisan in the relevant art and the nature of the problem, from which the jury could have reasonably discerned a motivation to modify the ARPA report to obtain the invention of claim 10."

Next, ISCO argued that another prior art reference was non-analogous prior art because it was directed to military, not cellular applications. However, ISCO was caught with their foot in their mouth when the Federal Circuit noted that the aforementioned December 1994 draft proposal referred to both civilian and military communications systems.

In short, the Federal Circuit affirmed.