Asyst Technologies v. Emtrak, Jenoptik et al (CAFC 2007-1554)

4,974,166 was also in suit, at least for the first round.

First round, the trial court found non-infringement on both patents. On appeal, remanded for a bum claim construction by the district judge.

Second round, '166 dropped out. '421 again went down on non-infringement on summary judgment. Second appeal left that decision partially reversed, and remanded again.

On second remand, a jury found the asserted claims valid and infringed. The judge threw out the jury verdict just after Obzilla stalked into the country, finding the patent obvious.

On appeal, the CAFC concurred with the judge, sifting through the rubble as a trier of fact. The lead prior art reference was by Hessler.

As the Supreme Court explained in KSR, "[I]f 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." 127 S. Ct. at 1740.

Although the jury found that a person of skill in the art would not have been motivated to combine the system of Hesser with a multiplexer in place of a bus, we agree with the district court that the jury's finding is not supported by substantial evidence.

Asyst also argues that the jury found objective indicia of nonobviousness--commercial success, long-felt need, and industry praise--and that the trial court was wrong to discount those findings. The trial court concluded that Asyst failed to link the objective indicia to the claimed invention and that Asyst's evidence "lacks a nexus to any part of the [commercial embodiment] that is not disclosed in Hesser."

So, a claim is obvious, not necessarily via analysis of the claim itself in light of the prior art, but by the accused embodiment. That's nowhere to be found in the statute.

In In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983), this court stated that "objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support." See also Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006); Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983). Therefore, even though commercial embodiments of the '421 invention may have enjoyed commercial success, Asyst's failure to link that commercial success to the features of its invention that were not disclosed in Hesser undermines the probative force of the evidence pertaining to the success of Asyst's and Jenoptik's products. See J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) ("asserted commercial success of the product must be due to the merits of the claimed invention beyond what was readily available in the prior art").

Besides, secondary evidence of non-obviousness is, well, secondary.

Moreover, as we have often held, evidence of secondary considerations does not always overcome a strong prima facie showing of obviousness. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 719-20 (Fed. Cir. 1991); Newell Cos. v. Kennedy Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). The secondary consideration evidence in this case does not overcome the strong case of obviousness in the substitution of the multiplexer, a known alternative to Hesser's bus, where the multiplexer operates in a well-known manner.

A bit more rigging. Courts have "broad discretion" of case management.

As a procedural matter, Asyst argues that the trial court abused its discretion by allowing Jenoptik to "assert new invalidity theories nearly ten years into the lawsuit." In particular, Asyst complains that the court should not have allowed Jenoptik to assert its invalidity defense based on Hesser at this stage of the litigation. Asyst argues that the delay was prejudicial because it had limited time to depose Jenoptik's expert regarding Hesser and because it could not amend its complaint to assert different claims based on the expert's report regarding Hesser. Jenoptik counters that on the second appeal this court "expanded the claim scope" and that "new prior art became potentially relevant to the validity of those claims." See Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1357 (Fed. Cir. 1988).

We hold that the district court did not abuse its discretion in concluding that the change in claim construction resulting from this court's decision on appeal "changed the rules of the game," CellPro, 152 F.3d at 1357, and that Jenoptik was therefore properly permitted to amend its defenses. Asyst has not made a sufficient showing to warrant reversal on this issue of case management, on which district courts enjoy broad discretion.

The district court found that Jenoptik raised its invalidity defense in a June 3, 2005, case management conference, less than three months after we issued our second opinion in this case. Based on that finding, the trial court ruled that Asyst "had notice as of June 2005 that Jenoptik believed that new prior art would be relevant to the invalidity question." Although Asyst contends that Jenoptik's statements at the conference were "vague and incomplete," the trial court is in the best position to assess what was conveyed by Jenoptik's statements, and we see no reason to overrule the trial court on that issue.

While the appeals court is more than happy, as a matter of law, to sift over the facts decided by a jury, a matter of law decided by the trial court isn't to be second-guessed.

Affirmed. Obzilla puts another notch in his bedpost.