United States Court of Appeals 

for the Federal Circuit ______________________ 

CIRCUIT CHECK INC.,

Plaintiff-Appellant

v.

QXQ INC.,

Defendant-Appellee

______________________ 

2015-1155

______________________ 

Appeal from the United States District Court for the 

Eastern District of Wisconsin in No. 1:12-cv-01211-WCG, 

Judge William C. Griesbach.

______________________ 

Decided: July 28, 2015

______________________ 

COURTLAND COLLINSON MERRILL, Anthony Ostlund 

Baer & Louwagi P.A., Minneapolis, MN, argued for plaintiff-appellant. Also represented by DANIEL RYAN HALL.

MICHAEL LEE HARRISON, Michael L. Harrison Attorney at Law, Los Gatos, CA, argued for defendantappellee. 

______________________ 

Before LOURIE, DYK, and MOORE, Circuit Judges.
2 CIRCUIT CHECK INC. v. QXQ INC. 

MOORE, Circuit Judge. 

Circuit Check, Inc. appeals from the Eastern District 

of Wisconsin’s judgment as a matter of law after a jury 

verdict that claims of U.S. Patent Nos. 7,592,796; 

7,695,766; and 7,749,566 are invalid as obvious. We 

reverse the court’s judgment as a matter of law and remand. 

BACKGROUND

Manufacturers of circuit boards, which are used in 

various electronic devices, use circuit board testers to test 

circuit boards before the boards are integrated into finished products. Many testers require an interface plate, 

which is a plastic grid with holes that permit connections 

between the tester and the circuit board. In order to align 

circuit boards during testing, it is advantageous to mark 

certain holes on the interface plate. Prior art methods of 

marking interface plates included placing Mylar masks on 

the surface of the interface plate, painting the surface of 

interface plates, and making shallow drill marks on 

interface plates. 

The patents at issue claim systems and methods related to marking interface plates. Claim 1 of the ’796 

patent is representative:

1. An indicator interface plate configured to provide readily visible identification of predetermined 

holes, the plate comprising:

a surface including a plurality of holes having visually discernable markings to allow a user to visually determine which of said plurality of holes 

are to be populated, wherein a region of the plate 

said plurality of holes have a first predetermined 

indicia covering the surface surrounding said plurality of holes, the plate further comprising: a 

second removable indicia overlying said first predetermined indicia, said
CIRCUIT CHECK INC. v. QXQ INC. 3

second indicia being different from said first predetermined indicia, wherein said second indicia is 

removed from areas of said plate adjacent each of 

said predetermined holes, said predetermined 

holes are visually identifiable to a user by the appearance of the first indicia.

’796 patent col.6 ll.36–51 (emphases added).

Circuit Check sued QXQ, Inc., alleging that QXQ’s 

interface plates infringed its patents. QXQ stipulated to 

infringement and the parties stipulated that three references describing interface plate marking techniques were 

prior art to the patents: the TTCI Specifications; the 

Plexus Specification; and the method depicted in Figure 1 

of the ’796 patent and described in its specification (collectively, the “stipulated prior art”). J.A. 1983–84. These 

documents disclosed several marking techniques, such as 

painting near the hole or drilling near the hole and painting over the drill mark. QXQ concedes in its briefing that 

the stipulated prior art does not disclose an interface 

plate comprising “a second removable indicia overlying 

said first predetermined indicia . . . wherein said second 

indicia is removed from areas of said plate adjacent each 

of said predetermined holes.” ’796 patent col.6 ll.45–50.

At trial, QXQ argued that three additional references—rock carvings, engraved signage, and a machining 

technique known as Prussian Blue (collectively, the 

“disputed prior art”)—disclose the limitation not present 

in the stipulated prior art and constitute analogous prior 

art. Circuit Check argued that the references were not 

analogous. With respect to rock carvings, in which a 

varnish is applied to rocks and then scrapped off to make 

designs, Circuit Check presented testimony that a skilled 

artisan at the time of the invention would not have considered rock carvings to have been reasonably pertinent 

to the marking problem. J.A. 1388, 1447. With respect to 

engraved signage, in which the top layer of a multi-layer 
4 CIRCUIT CHECK INC. v. QXQ INC. 

product is removed to expose a bottom layer, Circuit 

Check presented testimony that engraved signage was not 

relevant to the problem solved by the patents. J.A. 1388, 

1434. And with respect to Prussian Blue, a machining 

technique whereby dye is applied to a workpiece and then 

removed by a scribe or drill, Circuit Check presented 

testimony that Prussian Blue could not be used to make 

the claimed invention and had no connection to the problem solved by the patents. J.A. 1387–88, 1397, 1430–32, 

1443–44.

The validity of claims 1, 2, 3, 5, 6, 8, 10, 11, 13, and 14 

of the ’796 patent; claims 1, 2, 3, 5, 7, 8, 9, 11, 12, and 14 

of the ’766 patent; and claims 1, 2, 3, 5, 7, 8, 9, 11, and 12 

of the ’566 patent was submitted to the jury. The jury 

found the asserted claims not invalid for obviousness. 

J.A. 1995–96. The jury also found that the infringement 

was willful and awarded damages. J.A. 1996–97.

After the jury verdict, QXQ filed a motion for judgment as a matter of law that the asserted claims are

invalid as obvious. The district court granted QXQ’s 

motion, acknowledging that QXQ’s “obviousness argument is not premised on citing specific examples of prior 

art in the applicable field, nor does it rely on nuanced 

discussion about the level of ordinary skill in that particular field.” J.A. 6. It found that although there was no 

doubt that rock carvings “are not technically pertinent to 

the ‘field’ of circuit testers,” and “witnesses credibly 

testified that Prussian Blue dye had not been used on 

alignment plates,” “any layman” would have understood 

that interface plates could be marked using the techniques described in the disputed prior art. J.A. 8. It 

further noted that “any vandal who has ‘keyed’ a car 

knows that stripping the paint with a key will result in 

the underlying metal color showing through.” J.A. 5. It 

found that none of the objective considerations affected its 

conclusion that the asserted claims would have been 

obvious. J.A. 13. With respect to claims 5 and 11 of the 
CIRCUIT CHECK INC. v. QXQ INC. 5

’796 patent, the court determined that even though QXQ 

did not present evidence that the additional limitations of 

the claims would have been obvious, those additional 

limitations were too trivial to support nonobviousness. 

Circuit Check appeals. We have jurisdiction under 28 

U.S.C. § 1295(a)(1).

DISCUSSION

Judgment as a matter of law is permitted on an issue 

following jury trial if “the court finds that a reasonable 

jury would not have a legally sufficient evidentiary basis 

to find for the party on that issue.” Fed. R. Civ. P. 50(a). 

We review a district court’s grant of judgment as a matter 

of law after a jury verdict de novo. Spectralytics, Inc. v. 

Cordis Corp., 649 F.3d 1336, 1341 (Fed. Cir. 2011). Under 

Seventh Circuit law, we can overturn a jury’s decision 

only if no rational jury could have come to the same 

conclusion. E.E.O.C. v. AutoZone, Inc., 707 F.3d 824, 

834–35 (7th Cir. 2013). In reviewing a jury’s obviousness 

verdict, “[w]e first presume that the jury resolved the 

underlying factual disputes in favor of the verdict winner 

and leave those presumed findings undisturbed if they are 

supported by substantial evidence. Then we examine the 

legal conclusion de novo to see whether it is correct in 

light of the presumed jury fact findings.” Jurgens v. 

McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991) (citations 

omitted). 

A patent is invalid for obviousness “if the differences 

between the subject matter sought to be patented 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 art to which 

said subject matter pertains.” 35 U.S.C. § 103(a) (2006).1 

1 Because the patents were filed before the effective 

date of the America Invents Act, the earlier, pre-Act 

 
6 CIRCUIT CHECK INC. v. QXQ INC. 

“Obviousness is a question of law based on underlying 

factual findings . . . .” Kinetic Concepts, Inc. v. Smith & 

Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). The 

underlying factual inquiries include: (1) the scope and 

content of the prior art, (2) the differences between the 

prior art and the claims at issue, (3) the level of ordinary 

skill in the art, and (4) any relevant objective considerations, such as commercial success, long felt but unsolved 

needs, and the failure of others. Graham v. John Deere 

Co., 383 U.S. 1, 17–18 (1966). 

By finding the claims nonobvious, the jury presumably found that the disputed prior art is not analogous and 

therefore not within the scope of the prior art. See 

Jurgens, 927 F.2d at 1557. Substantial evidence supports 

the jury’s presumed finding. To be considered within the 

prior art for purposes of the obviousness analysis, a 

reference must be analogous. Wang Labs., Inc. v. Toshiba 

Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). Whether a 

reference is analogous art is a question of fact. Wyers v. 

Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). 

Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular 

problem the inventor is trying to solve. Id.

The jury was instructed that “the field of the invention is circuit board testers and test fixtures used in the 

manufacture of electronics.” J.A. 1984. The disputed 

prior art—rock carvings, engraved signage, and Prussian 

Blue—is not part of the field of circuit board testers and 

test figures. Therefore, the disputed prior art can be 

analogous only if it is reasonably pertinent to the particular problem solved by the inventor. Wyers, 616 F.3d at 

1237. Although “familiar items may have obvious uses 

version of § 103(a) applies. See Leahy–Smith America 

Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 293 

(2011).

 
CIRCUIT CHECK INC. v. QXQ INC. 7

beyond their primary purposes,” KSR Int’l Co. v. Teleflex, 

Inc., 550 U.S. 398, 420 (2007), a reference is only reasonably pertinent when it “logically would have commended 

itself to an inventor’s attention in considering his problem,” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The 

jury heard testimony that a person of ordinary skill in the 

art would not have thought about rock carvings, engraved 

signage, or Prussian Blue in considering how to mark 

interface plates. J.A. 1387–88, 1397, 1430–32, 1434, 

1443–44, 1447. The jury was entitled to weigh this testimony, find that an ordinarily skilled artisan would not 

find that the disputed prior art “logically would have 

commended itself to an inventor’s attention,” and thus 

find the disputed prior art not analogous. See In re Clay, 

966 F.2d at 659.

Just because keying a car, for example, is within the 

common knowledge of humankind does not mean that 

keying a car is analogous art. An alleged infringer should 

not be able to transform all systems and methods within 

the common knowledge into analogous prior art simply by 

stating that anyone would have known of such a system 

or method. The question is not whether simple concepts 

such as rock carvings, engraved signage, or Prussian Blue 

dye are within the knowledge of lay people or even within 

the knowledge of a person of ordinary skill in the art. 

Rather, the question is whether an inventor would look to 

this particular art to solve the particular problem at 

hand. Here, Circuit Check put forward evidence that an 

inventor would not have considered the disputed prior art 

when trying to improve marking. It is not hard to arrive 

at that conclusion. Even though an inventor may be 

aware of rock carvings, it is not surprising that the inventor would not have looked to rock carvings to improve the 

process of painting small dots on interface plates for 

expensive circuit board testers. And, even though an 

inventor may work in an office with engraved signage, the

inventor would not necessarily have considered using the 
8 CIRCUIT CHECK INC. v. QXQ INC. 

techniques disclosed in engraved signage to solve the 

problem of marking circuit board tester interface plates. 

Finally, even though an inventor in this case was aware of 

Prussian Blue, it is not surprising that one of skill in the 

art would not consider using a machining technique that 

employed removable dye on interface plates where such 

dye could fall into and interfere with the underlying 

electronics of the circuit board testers. Because the jury’s 

presumed finding that the disputed references are not 

analogous is supported by substantial evidence, the only 

references within the scope of the prior art are the stipulated prior art. 

Substantial evidence also supports the jury’s presumed finding that the differences between the stipulated

prior art and the claims were significant. The nature of 

the differences between the prior art and the claims is a 

question of fact. Graham, 383 U.S. at 17–18. Indeed, as 

QXQ acknowledges, the stipulated prior art fails to disclose an interface plate with the claimed “second removable indicia.” Appellee’s Br. 29. A reasonable jury could

have concluded that QXQ did not prove by clear and 

convincing evidence that the differences between the prior 

art and the claimed invention were insignificant. The 

stipulated prior art does not disclose what makes the 

patented claims unique: placing a second removable 

indicia on top of the interface plate and then selectively 

removing that layer to identify certain holes on the interface plate. Additionally, Circuit Check presented testimony that the stipulated prior art taught away from the 

invention. The jury heard testimony that manufacturer 

specifications contemplated minimizing the amount of 

paint on interface plates because paint had a tendency to 

chip off and fall into the tester, which caused serious 

problems. J.A. 1362, 1372. It also heard testimony that 

the specifications counselled against covering the entire 

interface plate with paint. J.A. 1372–73. Thus, substantial evidence supports the jury’s presumed finding that 
CIRCUIT CHECK INC. v. QXQ INC. 9

one of skill would not have been motivated to use more 

paint to cover the entire surface of the interface plate.2

Substantial evidence supports the jury’s presumed 

findings that objective considerations existed to support 

nonobviousness. Whether objective considerations support a conclusion of nonobviousness is a question of fact. 

Graham, 383 U.S. at 17–18. Because the jury rendered a 

general verdict that the claims were not obvious, we must 

presume that they found in favor of Circuit Check on all 

relevant questions supported by substantial evidence. See 

Jurgens, 927 F.2d at 1557. Circuit Check presented 

evidence of copying, long-felt need, commercial success, 

skepticism, and unexpected results. With respect to 

copying, the jury heard testimony that QXQ developed its 

infringing plates after a customer saw Circuit Check 

products embodying the invention and asked QXQ to 

mark its interface plates by painting the surface and then 

selectively removing the paint. J.A. 1409–10, 1520-21. 

With respect to long-felt need, the jury heard testimony 

that the industry tried multiple prior art marking methods preceding Circuit Check’s invention. J.A. 1359–62. 

With respect to commercial success, the jury heard testimony that once Circuit Check’s customers received products embodying the patents, they refused to return to 

interface plates using the prior art marking methods. 

2 Although the parties propose slightly different 

levels of ordinary skill in the art, they only dispute the 

level of skill to affect the scope and content of the prior 

art. See Appellant’s Br. 43–44; Appellee’s Br. 47–48. 

Under either level of ordinary skill, however, the jury’s 

presumed finding about the content of the prior art is 

supported by substantial evidence. This record provides 

substantial evidence for the jury’s presumed finding that 

rock carvings, engraved signage, and Prussian Blue dye 

were not analogous arts.

 
10 CIRCUIT CHECK INC. v. QXQ INC. 

J.A. 1409. With respect to skepticism, the jury heard 

testimony that Circuit Check’s customers were worried 

about using the new interface plates because the claimed 

method increased the amount of paint on the interface 

plate and therefore increased the likelihood that paint 

would flake off and damage the testers. J.A. 1373, 1405. 

And with respect to unexpected results, the jury heard 

testimony that a skilled artisan would have been surprised that, because paint was likely to fall into the 

tester, increasing the amount of paint used would produce 

desirable interface plates. J.A. 1370–71, 1373, 1379–80. 

Having been presented with this testimony, the jury is 

entrusted to weigh evidence and credibility in making its 

findings. The jury’s presumed findings regarding objective considerations are therefore supported by substantial 

evidence. 

Regarding the legal conclusion of obviousness, the jury’s presumed findings regarding the scope and content of 

the prior art, differences between the claimed invention 

and the stipulated prior art, and objective considerations

of nonobviousness are supported by substantial evidence. 

Under these circumstances, a reasonable jury could have 

concluded that the subject matter as a whole would not 

have been obvious at the time of the invention. The court 

erred by granting judgment as a matter of law.

Finally, the court erred by invalidating dependent 

claims 5 and 11. Although the court acknowledged that 

QXQ presented no evidence that the additional limitations in those claims were present in the prior art and 

presented no evidence that the additional limitations 

were trivial, it concluded that these claims were obvious 

because Circuit Check, the patentee, did not explain why 

the additional limitations rendered the claims nonobvious. J.A. 22. The court erred in shifting the burden 

of production to disprove invalidity. “Each claim of a 

patent . . . shall be presumed valid independently of the 

validity of other claims; dependent or multiple dependent 
CIRCUIT CHECK INC. v. QXQ INC. 11

claims shall be presumed valid even though dependent 

upon an invalid claim.” 35 U.S.C. § 282. Additionally, 

“[t]he burden of establishing invalidity of a patent or any 

claim thereof shall rest on the party asserting such invalidity.” Id. Although “in many cases a person of ordinary 

skill will be able to fit the teachings of multiple patents 

together like pieces of a puzzle,” there must be evidence 

presented on the obviousness of the claim as a whole. 

KSR, 550 U.S. at 420. Even assuming that the claims 

from which these claims depend are invalid, it was improper for the court to invalidate the claims absent any 

evidence regarding the additional limitations of these 

claims. 

Whatever doubts we have about these patents, the jury verdict was supported by substantial evidence. We 

therefore reverse the district court’s grant of judgment as 

a matter of law and remand for further proceedings 

consistent with this opinion.

REVERSED AND REMANDED 

COSTS

No Costs.