Federal Circuit finds Patent Obvious in view of Common Sense despite Objective Evidence

In Wyers v. Master Lock Co., 95 USPQ2d 1525 (Fed. Cir. 2010), plaintiff Philip W. Wyers (Wyers) sued defendant Master Lock Company (Master) for infringement of its patents for hitch pin locks.  Hitch pin locks are typically used to secure draw bars or tow-ball mount to a hitch receiver attached to a motor vehicle.  Wyers’ patents describe a barbell-shaped lock with a stop portion on one end, a locking head on the other end, and a shank portion which passes through the aligned apertures of the hitch receiver and the tow-ball mount.

The use of barbell-shaped locks and locks on trailer hitch receivers was well known in prior art.  Specifically, the prior art had examples of locks with a lock head, a shackle having a stop member, a shank, and a latch.  Moreover, the prior art also had examples of barbell-shaped locks being used as a trailer hitch receiver lock.

Wyers’ patents claim improvements to the prior art locks; mainly a removable sleeve to increase the shank’s diameter.  The removable sleeve allows adjusting the diameter of the shank which can be used with trailer hitch receivers of different apertures sizes.  The patent claims also include an external seal designed to protect the locking mechanism from contaminants.

At the trial level, the two main questions the court asked were “whether the use of the removable sleeve to adjust the operative thickness of a shank would have been obvious;” and “whether Master Lock presented clear and convincing evidence that the use of the external flat flange seal would have been obvious.” JMOL Order, 2009 WL 1309774 at 3 and 5.  The district court found held that plaintiff’s patents were not obvious and awarded $5.35 million in damages, $1.1 million in interest, and a 24% royalty for any infringing products Master sold based on Wyers’ patent.

On appeal, the parties agreed that the case turned on whether the claims were obvious based on prior art.  The court said that the issues in dispute were, “(1) whether the prior art references are in the same field of endeavor as the patented invention; (2) whether there was sufficient motivation to combine the references; (3) the existence and significance of pertinent secondary considerations.”

In reviewing the first question, the Federal Circuit noted that the test of whether the art is from the same field of endeavor is “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)).”  The Federal Circuit noted that the jury at the trial court applied the wrong standard.  The correct standard is whether a person of ordinary skill in the field of locksmithing would find this improvement to be obvious, not the standard of a layman on a jury.  The appellate court, also said the prior art was relevant because the prior art was within the “same field of endeavor.”  The prior art was directed towards trailer-towing applications, as were most of Wyers’ patents.

On the second question as to whether there was motivation to combine the adjustable sleeve with the prior art barbell locks and whether there was motivation to combine the prior art locks with an external sealing mechanism, the Federal Circuit noted that the test is no longer strictly one of express motivations to combine.  KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007).  “Common sense” is one standard when looking for a reason to combine references.  Moreover, the Federal Circuit noted that, while the facts supporting obviousness are to be determined by a jury, the ultimate question of whether the facts support “common sense” or reasons to make combinations are susceptible to resolution at summary judgment and motions JMOL.

In applying this standard, the Federal Circuit said that sleeves were used in prior art in a towing arrangement similar to a hitch receiver/tow bar arrangement, and could be combined with a barbell-shaped hitch pin lock in order to address different aperture sizes in standard hitch receivers.  In addition, the Federal Circuit noted prior art in the Down patent that “sleeves of different external diameter may be provided for the attachment of trailer towing eyes of different internal diameter.  When the sleeve is used, the pin accommodates larger diameter towing eyes; without the sleeve, the pin fits smaller ones.”    Thus, a person of ordinary skill in the art of locksmithing would have been likely put these two designs together.

The Federal Circuit concluded that “it was a mater of common sense to combine the Down patent with the prior art barbell locks in order to arrive at the invention claimed in the [Wyers’ patents], and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so.”

Furthermore, the Federal Circuit noted that “it is a matter of common sense that a flat external seal used in the prior art padlocks could be combined with a barbell-shaped hitch pin lock.”  This is because prior to Wyers’ filing, the concept of using external or internal seals to protect a lock’s head from contaminants, was widely known.

Lastly, in evaluating the effect of secondary considerations, the Federal Circuit noted that for objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention. In re Huang, 100 F.3d 135 (Fed. Cir. 1996); In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995).  Here, plaintiff could not prove that Master’s $20 million in sales of the accused product were the result of any of the supposed features of Wyers’ patents.  Further, there was no evidence of copying of Wyers’ design.  Thus, any secondary considerations here can not overcome a strong prima facie case of obviousness, as was the case here.

Significance for Patent Applicants and Owners

Rejections under 35 U.S.C. §103 using common sense as a basis are particularly perplexing for patent practitioners as what constitutes common sense appears to be a subjective test.  As is evident from the Federal Circuit’s analysis, the use of common sense is based upon an analysis of prior art within the record.  While such a robust record is expected in inter partes proceedings, however, it is unclear as to how Patent Examiners performing examination in an ex parte process would be able to develop a sufficient record to substantiate a prima facie burden.  Moreover, the United States Patent and Trademark Office has not provided examples of how such a conclusion would be made in its proposed Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v.Teleflex, Fed. Reg. Vol. 75, No. 169, pp. 53643 (September 1, 2010).  Thus, patent applicants should be mindful that, when faced with a rejection based upon common sense, the Examiner must still provide evidence supporting this conclusion and require this evidence as grounds of traversing the rejection.

 

Federal Circuit Finds Well Known But Undefined Claim Element Definite and Evidence of Copying a Secondary Consideration for Non-obviousness

Power-One, Inc. v. Artesyn Technologies, Inc., Docket No. 08-1501 & -1507 (Fed. Cir. March 30, 2010), Power-One, Inc. (“Power-One”) owns U.S. Patent No. 7,000,125 (the ‘125 patent).  The ‘125 patent relates to power supply systems which control, program and monitor point-of-load (POL) regulators. Each of the claims recites the use of POL regulators, but the specification does not specifically define the term “POL regulator”.

Artesyn Technologies, Inc. (“Artesyn”) sells a competing power control system, which Power-One asserts infringes the ‘125 patent.  At trial, the District Court defined the term “POL regulator” to be a “dc/dc switching voltage regulator designed to receive power from a voltage bus on a printed circuit board and adapted to power a portion of the devices on the board and to be placed near the one or more devices being powered as part of a distributed board-level power system.”  Based upon this definition, the jury found that the ‘125 patent was a valid patent, and that Artesyn infringed the ‘125 patent.

On appeal, Artesyn contended that the District Court’s definition of the POL regulator was unduly broad and that the term is indefinite.  Moreover, Artesyn appealed the District Court’s decision that the ‘125 was non-obvious.

Undue Breadth of District Court Definition

On the issue of whether the District Court’s definition was unduly broad, the Federal Circuit first cited to Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) for the rule that claim terms are “generally given their ordinary and customary meaning,” which is the meaning “a person of ordinary skill in the art . . . at the time of the invention” would give to a particular claim term.  In reviewing the specification, the Federal Circuit noted that the definition of POL regulator was supported by the intrinsic record.  Importantly, the Federal Circuit found that the definition adopted by the District Court provided sufficient meaningful guidance to the jury as to be definite and not unduly broad.  Specifically, the Federal Circuit has found that the terms “adapted to” and “near” can be definite, and the District Court was entitled to utilize these terms without rendering the resulting definition unduly broad as these terms are understandable in light of the ‘125 patent specification.  As noted by the Federal Circuit, “[t]he fact that the claim is not defined using a precise numerical measurement does not render it incapable of providing meaningful guidance to the jury because the claim language, when taken in context of the entire patent, provides a sufficiently reasonable meaning to one skilled in the art of distributed power systems.”

Definiteness of Undefined, Well-known Claim Term

Consistent with this holding, the Federal Circuit also found that the term “POL regulator” was definite for purposes of 35 U.S.C. §112, paragraph 2.  In making this determination, the Federal Circuit outlined the test for definiteness as being whether the claim boundaries are discernible to a skilled artisan based on the language of the claim, the specification, and the prosecution history, as well as the artisan’s knowledge of the relevant field of art. See Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1249-51 (Fed. Cir. 2008).”  The mere fact that the claim term may be difficult to understand or subject to some disagreement is not enough to find a claim indefinite.  Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1373 (Fed. Cir. 2001) (“if the meaning of the claim is discernible, even though the task may be formidable and the conclusions may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.”).

In applying this standard, the Federal Circuit found that the intrinsic record did support the recited term “POL regulator”.  Specifically, the Federal Circuit found that the intrinsic record showed that POL regulators are well known devices in the field.  Since one of ordinary skill in the art would understand what a POL regulator does and how it operates, the Federal Circuit upheld the District Court’s decision that the term “POL regulator” is definite despite any express definition in the specification.

Nonobviousness of claims

On the issue of obviousness, the Federal Circuit upheld the District Court’s decision that the ‘125 patent was nonobviousness.  During trial, Artesyn asserted that the ‘125 patent was obvious based upon seven pieces of prior art, and testimony of its expert.   Power-One provided its own expert, as well as secondary considerations of non-obviousness.  The Federal Circuit found that the jury was entitled to credit Power-One’s expert at the expense of Artesyn’s expert on the issue of obviousness.

Further, the Federal Circuit noted that Artesyn’s primary argument was that each of the recited elements were known in the prior art.  In rejecting this argument, the Federal Circuit quoted the Supreme Court for the proposition that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements is, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).  As such, to show obviousness, there needs to be evidence as to why the known arguments would have been combined.

Lastly, the Federal Circuit noted that the jury was entitled to take into account secondary considerations.  Specifically, Power-One put into evidence that Artesyn had copied Power-One’s patented design, which Artesyn then touted as an advancement in the industry on introduction of its copied product.  According to the Federal Circuit, “Artesyn’s contemporaneous reaction to Power-One’s invention, and the industry’s reaction, demonstrate the unobviousness of the invention disclosed in the ’125 patent.”  See Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092 (Fed. Cir. 1987) (praise in the industry for a patented invention, and specifically praise from a competitor tends to “indicat[e] that the invention was not obvious”).  As such, the evidence of copying, as well as Artesyn’s own advertising represented an admission usable as a secondary consideration of nonobviousness.

Significance for Patent Owners and Applicants

In Power-One, the Federal Circuit provides a reminder that tests such as definiteness under 35 U.S.C. §112 and obviousness under 35 U.S.C. §103 are primarily factual inquiries to be based upon evidence, not formulaic rules.  Thus, claim terms are not rendered indefinite merely because they are undefined specifically in the specification so long as there is evidence that one skilled in the art would understand the meaning of the term.  Moreover, merely because each claim element is known does not render a claim obvious without evidence as to why the particular recited combination would be made.  Lastly, it is interesting to note that the Federal Circuit based its nonobviousness ruling, at least in part, on the fact that the infringer had copied the patented design as evidence of copying is not classically considered a secondary consideration.

Federal Circuit Finds Obviousness Despite Evidence of Commercial Success

In Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed Cir. 2009), Steven D. Ritchie and H. David Reynard own a medical device patent, U.S. Patent No. Re 38,924, which is a reissue of U.S. Patent No. 6,132,366 (hereinafter the ‘924 patent).  They also own a device manufacturer, Know Mind Enterprises, that manufactures medical devices for sexual purposes.  The defendant, Vast Resources, Inc., owns Topco Sales, a manufacturer producing the same category of medical devices.  The devices manufactured by the two parties are generally shaped into a rod made of rubber, plastic, glass or other similar materials or a combination of such materials.  Prior to the plaintiff manufacturing the device of the ‘924 patent, such glass devices were typically manufactured from soda-lime glass.  However, the plaintiff manufactures such devices using an “oxide of boron” or borosilicate glass as the ‘924 patent claims a device “fabricated of generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial absorptions.” 

The plaintiffs sued Vast Resources for patent infringement.  Plaintiff offered evidence of commercial success as evidence of nonobviousness, but did not otherwise offer evidence of nonobviousness.  The U.S. District Court, Middle District of Florida, found the patent valid and ruled in favor of the plaintiffs.  The defendants appealed the decision, challenging the patent’s validity and the plaintiffs cross-appealed on the matter of the amount of relief the District Court granted.  The Federal Circuit Court, hearing the appeal, reversed the District Court judgment with instructions to dismiss the suit. 

The Federal Circuit Court only considered whether the invention of the ‘924 patent would have been obvious to a person of ordinary skill in the art, as per 35 U.S.C. §103(a).  In analyzing the claimed invention of the ‘924 patent, the Federal Circuit looked at the use of and features attributed to borosilicate glass, which in the device of the ’924 patent is substituted for soda-lime glass as compared to the conventional art.  Specifically, since it was not contested as to the well known nature of each component in the claimed invention, the Federal Circuit focused on the use and features of the substituted element, the borosilicate glass, and the effect of evidence of commercial success as evidence of nonobviousness when using well known components. 

As an initial point, the Federal Circuit interpreted “lubricious” to include borosilicate glass, which is smoother than soda-lime glass, and thus, the borosilicate glass becomes slippery with less lubricant when compared to soda-lime glass.  The Federal Circuit noted that the term “appreciable amount,” as recited in the ‘924 patent, while vague, can be interpreted and defined to mean an amount of boron oxide usually found in borosilicate glass.  As such, the amount of boron oxide would be known to those of ordinary skill in the art.

Since no other evidence was contested related to obviousness, the Federal Circuit focused on the extent to which commercial success, which was not contested, is useful for showing nonobviousness.  In discussing the commercial success of the invention of the ‘924 patent, the Federal Circuit noted that borosilicate glass has been used in glassware for nearly 100 years as Pyrex glassware, manufactured by Corning, Inc. (previously Corning Glass Works).  AlthoughCorningnow also manufactures Pyrex using tempered soda-lime glass, borosilicate glass has been used in the glassware market since in 1893, when borosilicate glass was invented.  The Federal Circuit acknowledged that borosilicate glass has the properties recited in the ‘924 patent, and this fact was not contested on appeal.  The Federal Circuit also stated that even if the device is useful due to the recited properties, the invention would not be patentable as it was obvious “to a person having relevant technical skills.” 

The Federal Circuit noted that because the device of the ‘924 patent has commercial value, to call the device obvious “may seem the triumph of hindsight over insight.”  However, because borosilicate glass has been commercially available and used since 1893 and was otherwise very well known, the Federal Circuit proceeded to weigh whether commercial success was an indicator of nonobviousness as per the ‘924 patent. 

The Federal Circuit acknowledged that commercial value is an indicator of nonobviousness (citing Graham v. John Deere, 383 U.S. 1, 17-18 (1966); Simmons Fastener Corp. v. Illinois Tool Works, Inc. 739 F.2d 1573, 1575-76 (Fed. Cir. 1984)).  However, this evidence can work both ways.  Where an invention with commercial value appears on the market soon after the idea or impetus behind the invention appears, this is evidence of obviousness.  In contrast, the delayed appearance of the invention on the market, despite the commercial value, is evidence that an invention was not obvious.  Nonetheless, commercial success is considered as a “secondary” indicator of nonobviousness.  The Federal Circuit cited Graham v. John Deere Co., supra, 383 U.S. at 18; Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483-84 (Fed. Cir. 1997)), as per commercial success being a secondary indicator and noted that commercial success is reliant upon many factors unrelated to patentable inventiveness, such as the marketing of a product or invention.  Thus, commercial success is not sufficient in and of itself to show nonobviousness. 

Also, the Federal Circuit stated that inventions deemed obvious are those that are “modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value…but do not involve sufficient inventiveness to merit patent protection.”  The Court went on to state that “[t]his class of inventions in well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known…This is such a case.”  As per the recitation of “an appreciable amount of an oxide of boron,” the Federal Circuit Court noted that the ‘924 patent “does not claim any variant of off-the-shelf borosilicate glass.”  Furthermore, the Court stated that because borosilicate glass is a standard product with well known properties, substituting borosilicate glass for ordinary glass, in the device category of the ‘924 patent, “was not a venture into the unknown.” 

The Federal Circuit Court went on to state that the present case exemplifies the Supreme Court’s analysis in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), wherein the Supreme Court stated:

“[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.  If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.  For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id.at 417.  

The Federal Circuit stated that the final sentence of the above quotation describes the present case, and further quoted the Supreme Court, which stated that a court need not “seek out precise teaching directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”  Id at 418. 

With respect to supporting the Federal Circuit’s statement as per inventions that are “incremental improvements of an existing product or process that confer commercial value…but do not involve sufficient inventiveness to merit patent protection,” the Federal Circuit cited cases involving substitution of one feature or element for another.  The cases the Federal Circuit cited include Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535-38 (Fed. Cir. 1983) and Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740, 749-750 (7th Cir. 1982).  Thus, in the case where well known materials are substituted from one another, there needs to be some evidence that the substitution is more than routine in the art.

In summary, the Federal Circuit Court said that commercial value of an invention is an indicator of nonobviousness.  However, while an indicator, it is only one secondary consideration and commercial success can be attributed to a variety of factors unrelated to patentable inventiveness, such as successful marketing.  Furthermore, the Court stated that the present case exemplifies the Supreme Court’s analysis in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), which states that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”  Thus, as no other evidence of nonobviousness was on appeal, the Federal Circuit reversed the District Court’s judgment with instructions to dismiss the suit.

Significance for Patent Applicants

On one level, Ritchie stands for the proposition that, under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), substitutions of well known components is obvious.  However, what is more problematic in Ritchie is that the Federal Circuit gives scant weight to evidence of commercial success, which Graham v. John Deere, 383 U.S. 1 (1966) cites as evidence of non-obviousness.  While the Federal Circuit noted that there were many potential reasons for commercial success, the Federal Circuit in Ritchie chose not too give this evidence much weight in comparison with the evidence that the materials were all well known.  Little explanation was given as to why the commercial success evidence was of little evidentiary value, or why the evidence of being well known was of such greater value to eclipse the evidence of commercial success in the context of an analysis under Graham v. John Deere, 383 U.S. 1 (1966).  In light of the ruling in Ritchie, it is therefore doubtful that evidence of commercial success will be deemed a deciding factor in finding nonobviousness even where the evidence of obviousness itself is scant.

Federal Circuit Rejects Ensnarement Defense and Finds that the Ensnarement Defense is an Issue of Law

In DePuy Spine, Inc. v. Medtronic, Inc., Civ. Case Nos. 90 USPQ2d 1865 (Fed. Cir. 2009), DePuy owns U.S. Pat. No. 5,207, 678 (the ‘678 patent).  The ‘678 patent is directed to a medical device that is a pedicle screw used in spinal surgeries.  DePuy sued Medtronic, accusing Medtronic of infringing the ‘678 patent with Medtronic’s Vertex pedicle screws.  The U.S. District Court for the District of Massachusetts denied Medtronic’s ensnarement defense, found that Medtronic engaged in litigation misconduct, with both decisions being appealed before the Federal Circuit Court.  Additionally, DePuy cross-appeals from the District Court’s granting of Medtronic’s motion for judgment as a matter of law (JMOL) of no willful infringement and from the denial of DePuy’s motion for a new trial for reasonable royalty damages. 

In a prior appeal, the Federal Circuit Court upheld the District Court’s granting of summary judgment as per Medtronic not literally infringing the ‘678 patent with Medtronic’s Vertex pedicle screws.  However, the Federal Circuit Court reversed the District Court’s granting of summary judgment of noninfringement under the doctrine of equivalents.  In the prior appeal, the Federal Circuit Court remanded the case because it found a question of fact existed on whether the Vertex screw’s conical shape was insubstantially different from the ‘678 patent’s screw having a limitation in claim 1 of the patent reciting a “spherically-shaped portion.  In the remanded case, Medtronic asserted an “ensnarement” defense against the doctrine of equivalents issue, wherein the Medtronic asserted that the scope of equivalency of the ‘678 patent would “ensnare” the prior art.  Continue reading