OmegaFlex (OFI) went pipe-hitting against Parker-Hannifin with pipe-fitting patents 6,079,749 and 6,428,052. The disputed claims went to a "locating sleeve" into the fitting to succor alignment, and so achieve a leak-free seal.

Parker alleges that both of the asserted patents are obvious in light of its U.S. Patent No. 6,036,237 ("Sweeney patent") in combination with a product sold by Parker called the Parker Compression Fitting ("PCF").

The district court held that nothing in the Sweeney patent "suggests achieving proper alignment might prove problematic," and that a skilled artisan would see no reason to "improve the alignment capabilities of an invention that purported to effectuate a leak-tight seal," thus no motivation to combine the Sweeney patent with the PCF existed. While the PCF and its marketing does contemplate alignment problems, the district court held that "a skilled artisan would not have been motivated to add [the PCF's locating sleeve] to [the Sweeney patent's fitting] that refused to recognize the possibility of an alignment problem."

The district court further held that a person of ordinary skill would not have perceived a reasonable expectation of success in adding the PCF's locating sleeve to the Sweeney patent's fitting. The basis for this finding was that Parker's engineers had considered adding a locating sleeve to the original FastMate fitting but concluded that doing so might impede the flow of gas through the fitting and thus compromise performance, as well as costing more.

Finally, the district court held that objective indicia of obviousness weigh in favor of non-obviousness. First, the district court held that there was skepticism among artisans that the locating sleeve would be a valuable addition to the Sweeney fitting, citing the same evidence as for the lack of a reasonable expectation of success. Second, the district court held that the fact that the FastMate fitting was ultimately modified to include a locating sleeve like that of OFI's AutoFlare fittings, and as taught by the asserted patents, "debilitated" Parker's defense of obviousness. Finally, the district court held that the invention of the asserted patents had fulfilled a long-felt need, citing as evidence a letter sent to OFI by a distributor, Arthur Weirauch, who lauded OFI's AutoFlare fitting as a breakthrough. Specifically, Weirauch wrote that the AutoFlare fitting's ability to establish a good metal-to-metal seal without the use of special tools was "what has been needed since the very beginning."

Motivation

Obviousness has become akin to trashy movie making: a bad method actor asking "what's my motivation?," and the director replying, "You don't need a motivation. You just need a reason to be."

The first issue before us is whether the district court erred in holding that a skilled artisan would not have perceived any reason to combine the Sweeney reference with the locating sleeve of the PCF. The Supreme Court recently explained that "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Id. In identifying such a "reason," the Court cautioned that "the analysis need not seek out precise teachings [in the prior art] directed to the specific subject matter of the challenged claim." Id.; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) ("[W]e have stated explicitly that evidence of a motivation to combine need not be found in the prior art themselves," citing In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)) (emphasis in original). Rather, courts must also "look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." KSR Int'l, 127 S. Ct. at 1740-41; see also DyStar, 464 F.3d at 1366-67 (holding that a reason to combine may come from "the knowledge of one of ordinary skill in the art," "the nature of the problem to be solved," or "common knowledge and common sense") (internal quotations and citations omitted).

The district court's considered decision not to buy the testimony of Parker's hired gun, David Geary, was disparaged by the skeptical CAFC.

Further, while the district court ostensibly looked beyond merely the prior art for a reason to add a locating sleeve to Sweeney by also examining the nature of the problem, the court's analysis was too narrow in scope and failed to account for evidence regarding the knowledge of a skilled artisan. The Geary evidence certainly raises a genuine issue of material fact as to whether a person of ordinary skill in the art would have had reason to add the PCF's locating sleeve to the Sweeney fitting.

Reasonable Expectation of Success

The district court's holding that a skilled artisan would not have had a reasonable expectation of success in combining the Sweeney patent with a locating sleeve is based almost entirely on the deposition testimony of John Greco, a Parker employee during the development of the original FastMate fitting. Greco testified that Parker had even considered incorporating a locating sleeve in the FastMate fitting at that time, but the decision was made to omit the sleeve because of the heightened costs of manufacturing a fitting with a locating sleeve and the "small amount of flow restriction" that the sleeve would cause. J.A. at 1162. Thus, the argument goes, skilled artisans like Parker's engineers did not believe adding a sleeve would be successful.

Again, in the face of historical facts, the CAFC likes the defendant's hired gun hypothesizing, finding everything in a light most favorable to Parker.

Secondary Indicators of Non-Obviousness

[T]here is evidence from Geary and the PCF that the use of locating sleeves as alignment aids in other applications was well-established. Certainly there is at least a genuine issue of material fact as to whether such skepticism existed.

To the CAFC, the fact that Parker infringed the patented feature after the fact supported "a finding of obviousness rather than non-obviousness."

Given that Weirauch does not mention alignment in his letter, it is difficult to ascertain whether the need he identified inherently includes a subservient need for an alignment mechanism like the locating sleeve. But there is at least a triable issue of fact as to whether there truly was a long-felt need for such a mechanism.

Hindsight now knows no bounds. Reversed and remanded.