NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

INVENTIO AG, 

Plaintiff-Appellant, 

v. 

OTIS ELEVATOR COMPANY, 

Defendant-Cross Appellant. 

__________________________ 

2011-1615, 2012-1108 

__________________________ 

Appeals from the United States District Court for the 

Southern District of New York in case no. 06-CV-5377, 

Judge Colleen McMahon. 

__________________________ 

Decided: November 27, 2012 

__________________________ 

JOSEPH R. RE, Knobbe, Martens, Olson & Bear, LLP, 

of Irvine, California, argued for the plaintiff-appellant. 

With him on the brief were JON W. GURKA, JOSEPH S.

CIANFRANI and CHERYL T. BURGESS; and KAREN V. WEIL 

and REZA MIRZAIE, of Los Angeles, California. 

ANDREW C. BAAK, Bartlit Beck Herman Palenchar & 

Scott, LLP, of Chicago, Illinois, argued for the defendant-
INVENTIO AG v. OTIS ELEVATOR 2

cross appellant. With him on the brief were MARK L.

LEVINE and KATHERINE G. MINARIK. Of counsel was 

STEPHEN J. COWEN. 

__________________________ 

Before LINN, REYNA and WALLACH, Circuit Judges. 

REYNA, Circuit Judge.

Inventio AG and Otis Elevator Co. (“Otis”) both seek 

review of different parts of a judgment entered by the 

United States District Court for the Southern District of 

New York which followed a jury trial where Otis was 

found to infringe Inventio’s patent. Because we conclude 

that Inventio’s asserted patent is obvious as a matter of 

law, and that the district court improperly denied Otis’ 

motion to that effect, we reverse-in-part, vacate-in-part, 

and remand.

I. Background 

In 1992, Schindler Elevator Corp., and its intellectualproperty holding company, Inventio AG (collectively 

“Inventio”), introduced an elevator “destination dispatching” system where a user enters a destination floor on a 

10-button keypad in the lobby or hallway before being 

directed to a particular elevator to travel to that floor. 

This obviated conventional requirements of pushing the 

“up” or “down” button to call the elevator and pushing the 

button for a particular floor once inside. 

Before Inventio introduced its system, its head of research and development, Dr. Joris Schroeder, published 

an article in the March 1990 issue of Elevator World

entitled “Advanced Dispatching” (“the Schroeder Article”), 

which described destination dispatching. Joint App’x at 

4807-10. In addition to 10-button keypads, Dr. Schroe-
3 INVENTIO AG v. OTIS ELEVATOR

der’s article described a system where “cards are entered 

into readers and will automatically register a destination 

call for a specific floor.” Id. at 4808. By 1994, in addition 

to the integrated circuit (IC) cards and magnetic-strip 

cards disclosed in the Schroeder Article, other recognition 

devices had been developed, including backscatter Radio 

Frequency Identification (RFID), bar code, proximity card, 

remote control, and capacitive coupling. Also in 1994, 

Inventio refined its destination dispatching system, 

replacing the cards with passenger-carried RFID transmitters that allow the system to automatically recognize 

the user and dispatch an elevator. Inventio named this 

new system utilizing RFID cards “Schindler ID.” 

In 1995, Inventio filed a patent application on its improved destination dispatching system using RFID 

transmitters. The patent, covering an “Elevator Installation,” issued as U.S. Patent No. 5,689,094 (“the ’094 

patent”) on November 18, 1997. According to the ’094 

patent, once the passenger brings an information transmitter (e.g., a RFID transmitter) within range of a recognition device,1 the device activates the transmitter, and 

the transmitter sends a unique passenger identification 

code to the device. ’094 patent col. 3 l. 22 to col. 4 l. 34. 

Using an information storage device and a control device, 

the system then identifies the user’s default destination 

floor, calls an elevator, and informs the passenger of 

which elevator to board. Id. The storage device can also 

 1 This court construed “information transmitter” to 

mean “a device that communicates with a recognition 

device via electromagnetic waves, after being actuated by 

that recognition device,” and likewise “recognition device” 

to mean “a device that actuates and reads data transmitted by an information transmitter.” Schindler Elevator 

Corp. v. Otis Elevator Co., 593 F.3d 1275, 1280, 1286 

(Fed. Cir. 2010). 
INVENTIO AG v. OTIS ELEVATOR 4

identify whether the passenger has access to certain 

floors. Id. col. 4 ll. 58-63. Claim 1 of the ’094 patent is 

illustrative: 

An elevator installation having a plurality of elevators comprising: 

a recognition device for recognizing elevator calls 

entered at an entry location by an information 

transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey; 

a control device receiving the recognized elevator 

call and allocating an elevator to respond to the 

elevator call, through a predetermined allocating 

algorithm; 

a call acknowledging device comprising one of a 

display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the 

elevator user; 

the recognition device, mounted in the access area 

in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that 

independently reads data transmitted from the information transmitter carried by the elevator user 

and a storage device coupled between the unit and 

the control device: 

the recognition device one of transmitting proposed destination floor data, based upon the data 

transmitted from the information transmitter, to 

the control device, and, transmitting elevator user 
5 INVENTIO AG v. OTIS ELEVATOR

specific data. [sic] based upon individual features 

of the elevator user stored in the storage device, to 

the control device. 

Id. at col. 6 ll. 10-36.2

In late 2002, Inventio’s competitor, Otis began developing its own destination dispatching system. Its engineers reviewed a definitive article by Mr. Leo Port, who 

first proposed the idea of destination dispatching in 1968. 

In the fall of 2003, at the request of the site developer, 

Larry Silverstein, Otis substituted its newly-developed 

destination dispatching system, “Compass with Seamless 

Entry,” for the conventional elevator installation Mr. 

Silverstein had ordered for 7 World Trade Center. Otis 

completed installation of this Compass system in 2006, 

which made it the first destination-dispatching elevator 

installation in the United States. Otis subsequently 

installed Compass with Seamless Entry into seven other 

buildings across the country. 

In 2006, Inventio sued Otis for infringement of the 

’094 patent, asserting independent claims 1 and 14 as 

well as dependent claims 2, 7, 9, 11, 12, and 13. The court 

construed the claims and granted Otis’ motion for summary judgment of noninfringement based on its construction. See Schindler Elevator Corp. v. Otis Elevator Co., 

586 F. Supp. 2d 231 (S.D.N.Y. 2008). This court reversed 

the pertinent portions of the district court’s claim con-

 2 The other independent claim at issue, claim 14, 

only differs from claim 1 in that the last limitation (i.e., 

“the recognition device one of . . .”) is replaced by the 

following limitation: “the recognition device transmitting 

the data through the storage device and to the control 

device.” Compare ’094 patent col. 6 ll.10-36, with col.7 l.3 

to col.8 l.11. 
INVENTIO AG v. OTIS ELEVATOR 6

struction and vacated its corresponding noninfringement 

decision. Schindler Elevator Corp. v. Otis Elevator Co., 

593 F.3d 1275 (Fed. Cir. 2010).3

On remand, the district court bifurcated the liability 

and damages phases of the trial. In the first phase of the 

trial dealing with infringement and validity, Otis attempted to show that the ’094 patent was obvious in view 

of the Schroeder Article in combination with prior art 

teaching the use of RFID card readers (“RFID prior art”). 

Both parties treated the validity of the dependent claims 

as rising and falling with the independent ones. 

The RFID prior art Otis offered included U.S. Patent 

Nos. 5,030,807 (“Landt”), which discloses a toll collection 

system (e.g., EZPass) using backscatter RFID tags, and 

4,822,990 (“Tamada”), which describes the use of cards 

that communicate via electromagnetic waves to open 

admissions gates at events like the Olympics To the 

extent the other references did not disclose a “storage 

device coupled between the [recognition device] and the 

control device” as required by claims 1 and 14, Otis offered Yamagishi, a published Japanese patent application, which discloses incorporating a database that stores 

passenger details into a system that uses cards to place 

elevator calls. 

Inventio’s expert, Dr. Eric Dowling, opined that the 

’094 patent was nonobvious, but admitted that the RFID 

prior art would have been known to persons of ordinary 

skill in the art when the patent was filed in 1994. In this 

 3 This court did not consider the district court’s construction of “coupled between” to mean “linked directly” 

because the district court did not reach Otis’ alternative 

noninfringement theory based on this construction. 

Schindler, 593 F.3d at 1287. 
7 INVENTIO AG v. OTIS ELEVATOR

regard, the court charged the jury: “To qualify as prior art 

relative to the ’094 patent[,] references must be reasonably related to the claimed invention in the patent. A 

reference is reasonably related if it is in the same field as 

the claimed invention or is from another field to which a 

person of ordinary skill in the art would look to try to 

solve a known problem.” Joint App’x at 1135. According 

to the court, Inventio did not dispute that a number of 

items qualified as prior art, including Landt, Tamada, 

and Yamagishi. Notwithstanding the court’s charge, the 

jury upheld the validity of the ’094 patent as nonobvious. 

The jury also found that Otis infringed every asserted 

claim, literally and under the doctrine of equivalents, and 

that Otis induced or contributed to infringement at each 

infringing installation. Otis moved for judgment as a 

matter of law (JMOL) concerning invalidity and noninfringement, but the court denied those motions. 

While the jury was deliberating following the liability 

trial, the court reaffirmed an earlier damages ruling that 

effectively eviscerated Inventio’s damages case. Inventio 

had no alternative theories on which to rely. Rather than 

pursue a de minimis damages award, Inventio opted to 

forgo the damages trial. The court also refused to enter a 

broad injunction proposed by Inventio, instead adopting 

Otis’ narrower proposal. Dissatisfied with the damages 

ruling and the scope of the district court’s injunction, 

Inventio appealed to this court.4 Otis cross-appealed the 

judge’s denial of its JMOL motions on invalidity and 

noninfringement. We have jurisdiction over these consolidated appeals pursuant to 28 U.S.C. §§ 1291, 

1292(c)(1), and 1295(a)(1). 

 4 Because we conclude that the ’094 patent is invalid, we do not address the issues Inventio raises related to 

the damages calculation and the scope of the injunction. 
INVENTIO AG v. OTIS ELEVATOR 8

II. Standard of Review 

Obviousness is a question of law, so this court “review[s] the jury’s conclusions . . . without deference, and 

the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence.” Boston 

Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 990 

(Fed. Cir. 2009). Because a special verdict or interrogatories were not used, this court must review the jury’s 

implicit factual findings for substantial evidence and 

assume that the jury found all factual questions in favor 

of Inventio. Kinetic Concepts, Inc. v. Smith & Nephew, 

Inc., 688 F.3d 1342, 1359–60 (Fed. Cir. 2012); see also

Kinetic Concepts, Inc. v. Blue Sky Med. Grp., 554 F.3d 

1010, 1021 (Fed. Cir. 2009). Otis is challenging the jury’s 

nonobviousness determination on a JMOL motion so it 

must show that “there [is] no legally sufficient evidentiary 

basis for a reasonable jury to find in favor of the nonmoving party.” Nimely v. City of New York, 414 F.3d 381, 

390 (2d Cir. 2003) (quoting Fed. R. Civ. P. 50(a)) (internal 

quotation marks omitted). 

III. Discussion 

“A claimed invention is unpatentable if the differences 

between it and the prior art are such that the subject 

matter as a whole would have been obvious at the time 

the invention was made to a person having ordinary skill 

in the pertinent art.” Tokai Corp. v. Easton Enters. Inc., 

632 F.3d 1358, 1366 (Fed. Cir. 2011) (citing 35 U.S.C. 

§ 103(a) (2006)). While the ultimate ruling on this issue 

is a matter of law, that ruling necessarily depends on 

factual findings. See Boston Scientific, 554 F.3d at 990. 

The underlying factual inquiry in an obviousness determination includes four factors: the scope and content of 

the prior art; the differences between the prior art and 
9 INVENTIO AG v. OTIS ELEVATOR

the claims at issue; the level of ordinary skill in the 

pertinent art; and secondary conditions of nonobviousness 

such as commercial success, long-felt but unsolved need, 

and the failure of others. Graham v. John Deere Co., 383 

U.S. 1, 17 (1966). Other factual questions concern the 

presence or absence of a motivation to combine, and 

whether a reference constitutes analogous prior art. See

In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Obviousness must be proven by clear and convincing evidence. 

Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 

(2011). The parties focus their arguments on the scope 

and content of the art, the differences between the prior 

art and the claims, and secondary considerations. We 

address each in turn. 

Inventio argues that the Schroeder Article makes no 

mention of RFID cards, so it discloses neither an information transmitter nor a recognition device as required by 

the independent claims. But as Inventio’s expert admitted, RFID card readers were widely known when the ’094 

patent was filed, and Otis introduced examples such as 

Landt and Tamada. Inventio contends, however, that 

Landt and Tamada are nonanalogous art, do not concern 

the same problem addressed by the ’094 patent, and thus 

are not eligible prior art. As we have observed, “[a] 

reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the 

claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. 

Cir. 2011). When a reference is from a field of endeavor 

different from the patent, it must be “reasonably pertinent to the particular problem with which the inventor is 

involved.” Innovention Toys, LLC v. MGA Entm’t, Inc., 

637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting In re Bigio, 

381 F.3d at 1325). As Inventio’s expert admitted, a 

skilled artisan would no doubt be aware of the RFID prior 

art that disclosed seamlessly controlling access to sport-
INVENTIO AG v. OTIS ELEVATOR 10

ing events and toll roads. So how could it not “logically . . 

. commend[] itself to [the ’094] inventor’s attention in 

considering his problem” of seamlessly controlling access 

to elevators? See id.; see also Wyers v. Master Lock Co., 

616 F.3d 1231, 1238 (Fed. Cir. 2010). We need not decide 

the question because, based on the jury charge, a reasonable juror could not conclude that the RFID prior art was 

nonanalogous. 

After instructing the jury on the standard for prior 

art, and within that definition, analogous prior art, the 

court clearly stated that “the parties don’t dispute a 

number of items of prior art . . . [including] . . . the Landt 

patent, the Tamada patent, . . . and Yamagishi patent 

application.” Joint App’x at 1135–36 (emphasis added). 

In light of this instruction, a reasonable juror would have 

to find that not only were Landt and Tamada prior art, 

they were also analogous prior art. Inventio maintains 

that it only agreed to the “prior-ness” of the art; that is, 

that it existed before the ’094 patent’s critical date. But 

its stipulation reflected in the court’s jury instruction 

suggests otherwise, and it is to that stipulation Inventio 

is bound. Fisher v. First Stamford Bank & Trust Co., 751 

F.2d 519, 523 (2d Cir. 1984) (“[A] stipulation of fact that is 

fairly entered into is controlling on the parties and the 

court is bound to enforce it.”). Furthermore, Inventio did 

not object to the court’s clear jury instruction, thereby 

waiving any later challenge. John Wiley & Sons, Inc. v. 

Kirtsaeng, 654 F.3d 210, 223 (2d Cir. 2011) (“[F]ailure to 

object to a jury instruction . . . prior to the jury retiring 

results in a waiver of that objection.” (alteration in original)), cert. granted, 132 S. Ct. 1905 (2012); Funai Electric 

Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1374 (Fed. Cir. 

2010); see also Fed. R. Civ. P. 51. 
11 INVENTIO AG v. OTIS ELEVATOR

Because the jury should have found the RFID prior 

art analogous, the conclusion becomes inescapable that 

’094 patent is a clear example of a “combination of familiar elements according to known methods [yielding] no 

more than . . . predictable results.” KSR Int’l Co. v. 

Teleflex Inc., 550 U.S. 398, 415 (2007). In particular, the 

Schroeder Article discloses a destination dispatching 

system using card reader technology while the RFID prior 

art discloses the required information transmitter and 

recognition device in the form of a RFID transmitter and 

receiver. Because RFID, along with IC, bar code, proximity, magnetic strip, remote control, and capacitive 

coupling, were among the “number of identified, predictable solutions, a person of ordinary skill ha[d] good reason 

to pursue the[se] known options within his or her technical grasp.” Id. at 421. Replacing the older card reader in 

the Schroeder Article’s destination dispatching system 

with the modern RFID transmitter was well within the 

abilities of a person of ordinary skill in the art. Leapfrog 

Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. 

Cir. 2007) (“Applying modern electronics to older mechanical devices has been commonplace in recent years.”); 

see also Western Union Co. v. MoneyGram Payment Sys., 

626 F.3d 1361, 1369–70 (Fed. Cir. 2010) (overturning a 

jury’s nonobviousness verdict when the claimed invention 

simply replaced a fax machine with a more sophisticated 

keypad and interface in an otherwise known system for 

making money transfers). Rather than a product of 

innovation, the ’094 patent becomes an application “of 

ordinary skill and common sense” that was obvious to try 

and had a reasonable expectation of success. KSR, 550 

U.S. at 421; Wyers, 616 F.3d at 1242. A reasonable juror 

could not conclude otherwise. 

To the extent Inventio argues that the jury could have 

found that the combination of the Schroeder Article and 
INVENTIO AG v. OTIS ELEVATOR 12

the RFID prior art does not disclose a “storage device 

coupled between the [recognition device] and the control 

device,” it is incorrect. The Schroeder Article itself disclosed the idea of integrating a security database into the 

destination dispatching system, which could be linked to 

the elevator supervisory controller. Another prior art 

reference Inventio stipulated to, Yamagishi, unquestionably discloses a database that stores passenger details into 

a system that uses cards to place elevator calls. Inventio 

cannot overcome this art by suggesting that the claim 

limitation requires a particular arrangement of elements 

when the district court construed “coupled between” to 

mean “linked directly,” which is the precise arrangement 

disclosed in the Schroeder Article. See Schindler Elevator 

Corp. v. Otis Elevator Co., 561 F. Supp. 2d 352, 365 

(S.D.N.Y. 2008). A juror could not reasonably conclude 

that the prior art does not disclose this limitation. 

Secondary considerations do not alter our conclusion. 

Inventio asserts that commercial success, industry praise, 

and failure of others suggest that the ’094 patent is 

nonobvious. Regarding commercial success, Inventio 

merely identified the number of Schindler ID® units sold, 

but “evidence related solely to the number of units sold 

provides a very weak showing of commercial success, if 

any.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). It 

also failed to establish a nexus between the patented 

invention and either commercial success or industry 

praise. Western Union, 626 F.3d at 1372–73 (Fed. Cir. 

2010) (“[T]he patentee must establish a nexus between 

the evidence of commercial success and the patented 

invention.”). In particular, Inventio did not link the sales 

or praise directly to the patented feature as opposed to 

destination dispatching more generally. Inventio’s evidence of failure of others is likewise insubstantial, pointing to a single contemporaneous patent application filed 
13 INVENTIO AG v. OTIS ELEVATOR

by an Otis employee claiming something other than 

destination dispatching with RFID technology. Whatever 

this may be evidence of, it is not substantial evidence of 

failure of others. In sum, we conclude that the ’094 

patent is obvious as a matter of law and the jury’s verdict 

to the contrary lacks substantial evidentiary support. 

IV. Conclusion 

Because the ’094 patent is invalid for obviousness as a 

matter of law, we reverse the district court’s denial of 

Otis’ JMOL motion. Given our holding on the issue of 

obviousness, the other issues appealed by the parties are 

moot. Accordingly, we vacate the remainder of the district court’s decision and remand for further proceedings 

consistent with this opinion. 

REVERSED-IN-PART, VACATED-IN-PART, AND 

REMANDED 

COSTS

Costs to Otis.