i4i disputed that it would have been obvious to combine Kugimiya with Rita or
translation) than Rita, DeRose, or the ’449 patent, which address document editing. i4i
also presented evidence of secondary considerations, including long-felt need, failure of
others, and commercial success. As to anticipation, i4i also argued that S4 did not
practice the ’449 patent because it did not create a “metacode map.”
Before the case was submitted to the jury, Microsoft moved for JMOL on
invalidity, arguing that i4i’s sale of S4 violated the on-sale bar under § 102(b). Microsoft
did not move for pre-verdict JMOL on obviousness or with regard to other prior art. The
verdict form did not require the jury to make separate findings for the different pieces of
evidence that any of the listed claims of the ’449 patent are invalid?” The jury was
instructed to answer “yes” if it found a particular claim invalid, but otherwise answer
“no.” The jury found all the asserted claims not invalid.
On appeal we must decide whether the ’449 patent would have been obvious in
light of some combination of Rita or DeRose with Kugimiya.
The Rita prior art is a software program that allows users to create and edit
documents using SGML, a markup language like XML. Rita stores the SGML tags and
document’s content in a “tree structure.” This tree stores the tags and content together.
DeRose discloses a system for generating, analyzing, and navigating electronic
navigation, DeRose and Rita use “pointers,” which allow the user to move between