CSIRO v. Buffalo (CAFC 2007-1449)

Commonwealth Scientific and Industrial Research Organisation ("CSIRO") is Australia's national science agency. It engages in a range of basic and applied scientific research in diverse fields. One of its research projects has been directed to solving problems presented by indoor wireless local area networks ("WLANs").

The denouement from the CAFC:

With respect to the issue of validity, we uphold the court's entry of summary judgment that the '069 patent was not anticipated. We also uphold the district court's entry of summary judgment that the '069 patent was not invalid because of the addition of new matter to the application or because the asserted claims lacked a sufficient written description in the original specification. With respect to the issue of obviousness, however, we conclude that the district court erred by entering summary judgment against Buffalo because we hold that there was a disputed issue of material fact as to whether the prior art references that were before the district court were combinable in a manner that would have rendered the asserted claims of the '069 patent obvious.

Somewhat oddly, there was stipulation to factual issues, letting the judge decide.

The summary judgment proceedings in this case were unusual in that the parties stipulated that the district court could make findings of fact with respect to disputed factual issues in the course of deciding the cross-motions for summary judgment. At the summary judgment hearing on August 15, 2006, the trial judge asked the parties to confirm "with respect to the issue of infringement and with respect to the issue of validity that both sides agree that the Court has before it all of the record that it needs to determine both of these issues, whichever way it might ultimately determine to go." Both parties agreed.

But it didn't turn out that easy. Buffalo wanted a mulligan if it lost on obviousness.

After a brief colloquy between the court and counsel, it was agreed that the court would not make findings of fact on obviousness, but instead would decide on summary judgment whether Buffalo had met its burden of "presenting enough evidence to raise a fact issue sufficient to get to a jury on the question of obviousness."

Buffalo blew it in district court, not arguing all that it could with respect to prior art validity. Buffalo argued that two references anticipated, but one did not incorporate another, so that failed.

On obviousness, the district court relied upon the old CAFC standard, the "teaching, suggestion, and motivation" ("TSM") test.

Invoking the so-called "teaching, suggestion, and motivation" ("TSM") test, the district court held that the evidence was insufficient to show a sufficient teaching, suggestion, or motivation to combine those references. The court based its conclusion on the ground that there is "an important distinction between the general motivation to address a problem and the motivation to create a particular solution to the problem." According to the court, Buffalo did not "proffer[] specific evidence as to the source of a teaching, suggestion, or motivation to combine the prior art references." What the court found lacking in Buffalo's submission was "identification of any specific evidence in the combination of references (or anywhere else in the record) that suggests combining them in a manner that results in the claimed subject matter."

Buffalo argues that the district court's analysis of the evidence submitted on summary judgment and its reliance on the absence of any specific teaching, suggestion, or motivation to combine the prior art references was erroneous, particularly in light of the Supreme Court's recent decision in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007). In KSR, which was decided after the district court entered its summary judgment order in this case, the Supreme Court criticized this court's application of the TSM test for being unduly rigid. The KSR case involved the same kind of problem that is presented here--the question of obviousness as applied to an invention that consists of a combination of elements, all of which are found in prior art references. In that setting, the Court stated, a "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Id. at 1739.

In addressing the TSM test, the Supreme Court acknowledged that "it 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," but the Court warned against converting that inquiry into a "rigid and mandatory formula[]." KSR, 127 S. Ct. at 1741. The Court criticized this court's application of the TSM test as focusing only on the precise problem the patentee was trying to solve. Under the correct analysis, the Court wrote, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 1742.

In light of the analytical framework set forth by the Supreme Court in KSR, the district court's analysis of the summary judgment dispute was flawed.

The factual nature of obviousness gets respect.

CSIRO's argument is highly factual and underscores the factual nature of the dispute that is at the core of the obviousness issue presented in this case. While the ultimate question of patent validity is a question of law, the proper resolution of that ultimate question typically turns on underlying factual inquiries, including the scope and content of the prior art and the differences between the prior art and the claims at issue. See Graham v. John Deere Co., 383 U.S. 1, 17 (1966).

So, summary judgment was not appropriate. But "ordinary skill in the art" as Einstein makes combinations easy as LEGO®.

CSIRO's argument also fails to take sufficient account of the Supreme Court's ruling in KSR that "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." 127 S. Ct. at 1742.

The CAFC, wafting nostalgic...

Even before KSR, this court had made clear that the motivation to combine particular references could be found in the nature of the problem to be solved. In re Gartside, 203 F.3d 1305, 1320-21 (Fed. Cir. 2000); Pro-Mold Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (motivation to combine "may also come from the nature of a problem to be solved, leading inventors to look to references relating to possible solutions to that problem"). In that regard, this court's decision in Cross Medical Products v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005), is instructive. In that case, as in this one, the district court granted summary judgment of nonobviousness over the accused infringer's objections. This court reversed the summary judgment, holding that there was sufficient evidence to create a triable issue of fact as to whether a person of ordinary skill in the art would have been motivated by the nature of the problem to combine references that offered ways to solve it. The problem in Cross Medical was that a particular surgical device used in back surgery was widely recognized as presenting difficulties to surgeons. That problem, the court held, "provided sufficient motivation to navigate the prior art in the spinal implant field in search of a teaching on how one might modify the [prior art] device" in the manner achieved in the patent. 424 F.3d at 1322. In the course of its discussion, the Cross Medical court rejected the argument that the problem addressed by the patent differed somewhat from the problem encountered by surgeons who used the prior art device. "One of ordinary skill in the art," the court wrote, "need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings." Id. at 1323.

As in Cross Medical, the problems addressed by the references are sufficiently similar to the problem presented by high-speed indoor wireless LANs that there is a factual question whether a person of skill in the art would have looked to the teaching of those references in seeking to solve the multipath problem for a wireless indoor LAN. See In re Translogic Tech., Inc., 504 F.3d 124, 1262 (Fed. Cir. 2007) ("court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"; a person of ordinary skill in the art "would have solved this design need by pursuing known options within his or her technical grasp"); In re Dillon, 919 F.2d 688, 694 (Fed. Cir. 1990) (en banc) (a reference is not from non-analogous art if "the reference is reasonably pertinent to the particular problem with which the inventor was involved"). Thus, as in Cross Medical, there is a factual issue as to the motivation to combine prior art references that requires that we vacate the district court's order of summary judgment with respect to obviousness.

Thus the CAFC vacated "the district court's order of summary judgment with respect to obviousness."

CSIRO argued secondary considerations, which may have merit, but not enough to be ispo facto dispositive.

CSIRO argues that the secondary considerations addressed in its experts' declarations show that the claims of the '069 patent would not have been obvious. In Graham, the Supreme Court held that secondary considerations such as "commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented" and "may have relevancy" as indicia of obviousness or nonobviousness. 383 U.S. at 17-18.

The secondary consideration evidence offered by CSIRO's experts would be useful to a trier of fact in determining whether the invention of the '069 patent would have been obvious to a person of ordinary skill at the time of the invention, as we have recognized that such evidence "constitutes independent evidence of nonobviousness." Ortho-McNeil Pharm., Inc. v. Mylan Labs., 520 F.3d 1358, 1365 (Fed. Cir. 2008); see also Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579 (Fed. Cir. 1997). But it does not justify the entry of summary judgment in CSIRO's favor in light of the evidence Buffalo introduced as to the primary considerations bearing on obviousness.

Buffalo also argued that new matter had been added, thus pushing forward the priority date, which would have allow more prior art out of the barn.

The question whether new matter has been added to an application is a question of fact. Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1574 (Fed. Cir. 1992). As noted above, the trial court was authorized by the parties to act as the finder of fact with regard to any disputed facts relating to the section 132 validity issue.

[I]n the context of a validity challenge based on new matter, the fact that the United States Patent and Trademark Office ("PTO") has allowed an amendment without objection "is entitled to an especially weighty presumption of correctness" in a subsequent validity challenge based on the alleged introduction of new matter. Brooktree, 977 F.2d at 1574-75 (citations omitted). Buffalo therefore not only must overcome the clear error standard, but it must do so in the face of a presumption of validity based on the PTO's issuance of the patent despite the amendments.

Buffalo didn't muster enough scratch to make the CAFC itch on new matter. And its non-infringement appeal arguments fell flat as well.

Remanded over obviousness.