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March 5, 2010

Cool Analogy

5,955,955 claims a computer drive bay fan, meant to cool the hard drives right in their own living room. '955 owner Comaper sued Antec for infringement. Trial found Antec willfully infringing some claims. Some claims were obvious to the jury, others validly novel. Appeal found that "irreconcilably inconsistent." The CAFC resolution was to define analogous art as either "from the same field of endeavor," or "reasonably pertinent to the particular problem with which the inventor is involved." Upon that the CAFC created its own reconcilable inconsistency.

Comaper v. Antec et al (CAFC 2009-1248, -1249) precedential

Summary Judgment Motion

Antec wanted a mulligan on its summary judgment motion. No mulligans once the hole has been played and the ball is in the cup.

Antec first contends that the district court erred in denying Antec's motions for summary judgment of noninfringement and invalidity due to obviousness. The district court denied Antec's motions because it determined that genuine issues of material fact existed. See Summary Judgment Order, 2007 WL 2811092, at *4-5. A denial of summary judgment is not properly reviewable on an appeal from a final judgment entered after trial. See Hopp v. City of Pittsburgh, 194 F.3d 434, 439 n.3 (3d Cir. 1999); Baughman v. Cooper-Jarrett, Inc., 530 F.2d 529, 532 (3d Cir. 1976), overruled on other grounds by Croker v. Boeing Co., 662 F.2d 975 (3d Cir. 1981); see also State Contracting & Eng'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed. Cir. 2003); Glaros v. H.H. Robertson Co., 797 F.2d 1564, 1573 (Fed. Cir. 1986). Antec's challenge to the district court's denial of summary judgment is therefore improper.

Claim Construction

Claim construction terms were aired out, leaving them intact. First, "case." A broad reading, relying on a general dictionary, is sustained.

With regard to the term "case" in the '955 patent, the district court construed it to mean "a structure for containing and holding something."2 Claim Construction Order, 2006 WL 2709382, at *6. Antec argues that the district court's claim construction is too broad, and that a "case" requires at least some type of enclosure. We disagree. While the embodiment disclosed in the '955 patent includes a six-sided rectangular enclosure, this court has repeatedly cautioned against limiting claims to a preferred embodiment. See, e.g., Linear Tech. Corp. v. Int'l Trade Comm'n, 566 F.3d 1049, 1058 (Fed. Cir. 2009); Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). The patent specification does not assign or suggest a particular definition to the term "case." Therefore, in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance. See Phillips v. AWH Corp., 415 F.3d 1303, 1322-23 (Fed. Cir. 2005) (en banc). A "case" is generally defined, relevant to its use in the '955 patent, as "a box or receptacle to contain or hold something." Webster's Third New International Dictionary 346 (2002). The district court's construction of "case" as "a structure for containing and holding something" is thus appropriate.

Sloppy lawyering on both sides is (foot)noted.

2 Both parties on appeal misstate the district court's construction of "case," utilizing the disjunctive "or" in the construction instead of the conjunctive "and." The court's claim construction order and its instructions to the jury both stated that "case" meant "a structure for containing and holding something." See Claim Construction Order, 2006 WL 2709382, at *6 (emphasis added); Transcript at 62, Comaper Corp. v. Antec, Inc., No. 05-CV-1103 (E.D. Pa. Oct. 5, 2007).

Next, "drive bay slot," construed as "the relatively narrow opening in the housing of the computer that leads to the drive bay."

Antec essentially asks us to equate the terms "drive bay" and "drive bay slot," despite their separate use in the '955 patent. There is an inference, however, that two different terms used in a patent have different meanings. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996). While this inference is not conclusive, Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004), the intrinsic evidence supports the district court's construction that "drive bay" and "drive bay slot" have different meanings.

The meaning of the term "drive bay slot" was made clear during prosecution.

The term "second opening" got a second look, which it didn't need.

Inconsistent Verdicts

The jury found dependent claims obvious, but not their independents. Antec wanted a new trial over it.

The jury found that independent claims 1 and 12 of the '955 patent were not obvious. However, it also found that claims 2 and 7, which depend from claim 1, and claim 13, which depends from claim 12, were invalid as obvious. These verdicts are plainly inconsistent, as both the district court and Comaper recognize. JMOL Order, 2008 WL 4140384, at *5 ("[T]he jury's verdict was inconsistent."); Pl.-Cross Appellant's Br. 7 ("[T]he verdict did contain an inconsistency with respect to the obviousness of dependent claims 2, 7, and 13 . . . ."). "A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness." Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (citing Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)).

The district court tried to square the circle by throwing out the obviousness finding.

Here, the district court concluded that the evidence would not support a verdict of obviousness as to claims 2, 7, and 13 of the '955 patent, and resolved the inconsistency in the jury verdicts by granting Comaper's renewed motion for JMOL. See JMOL Order, 2008 WL 41440384, at *12. See generally Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1325-26 (Fed. Cir. 2001). The court determined that the evidence was insufficient to support verdicts of obviousness with respect to claims 2, 7, and 13 because the asserted prior art was not analogous to the invention of the '955 patent and the prior art was not sufficiently similar to the claims of the '955 patent. JMOL Order, 2008 WL 4140384, at *10-12. We disagree.

The district court erred in concluding that the prior art asserted by Antec was not analogous prior art; indeed, Comaper itself did not make this argument.

The stiff wind in the decision is a find of definition refined of what qualifies as analogous art.

"Analogous art is that which is relevant to a consideration of obviousness under [35 U.S.C. § 103]." Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). Two criteria are relevant in determining whether prior art is analogous: "(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." In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).

Antec's art was in the same technology area, hence analogous.

The district court confused anticipation with obviousness, rejecting Antec's obviousness invalidity argument because it didn't fully anticipate in a single reference.

The CAFC riding shotgun to Obzilla sees that the toll booth still takes TSM as currency.

Determining obviousness requires considering whether two or more pieces of prior art could be combined, or a single piece of prior art could be modified, to produce the claimed invention. This analysis typically invokes the familiar teaching-suggestion-motivation ("TSM") test, asking whether a person having ordinary skill in the art would have found some teaching, suggestion, or motivation to combine or modify the prior art references. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1362 (Fed. Cir. 2007); see also Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir. 2008) (noting that the TSM test, flexibly applied, remains an important tool in an obviousness analysis). The Supreme Court in KSR International Co. v. Teleflex, Inc. emphasized that "[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." 550 U.S. 398, 420 (2007). Thus,

[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under [35 U.S.C.] § 103.

Id. at 421.

With the correct test in mind, there is no question that there is ample evidence in the record supporting the jury's verdicts that claims 2, 7, and 13 of the '955 patent would have been obvious.

Bizarrely, having found the dependent claims obvious, rather than just damning their independent claims, the CAFC created its own reconcilable inconsistency of jurisprudential diseconomy by vacating and remanding for a new trial on invalidity.

Posted by Patent Hawk at March 5, 2010 9:10 PM | Prior Art

Comments

My working hypothesis, to explain the jury verdict, is that what the jury found obvious was not the dependent claim as such but, rather, the feature that it added to the independent claim. But that what a dep adds is not inventive in itself is true of most every dependent claim, in every litigated patent. So, presumably, the Instructions to the Jury make great efforts to help a jury understand that the obviousness of a dependent claim is NOT a verdict on whether it is an obvious further increment in the subject matter of the independent claim.

BTW, now I see why US patents have so many independent claims and such useless dependent claims. It's because juries do not understand dependent claims.

Posted by: MaxDrei at March 6, 2010 3:24 AM

"My working hypothesis,"

My working hypothesis is that juries are rtarded and shouldn't be allowed anywhere near a patent case. It's like asking your friendly neighborhood McDonalds worker to fix a piece of industrial manufacturing equipment. Not going to end well.

Posted by: 6000 at March 8, 2010 11:33 AM

Hey guys, is Hawk a gazzilionaire yet or what? How goeth his quest for treasure?

Posted by: 6000 at March 9, 2010 1:37 PM

This case is another one to add to the list of "Oops, I guess it was never true in the first place" --you know, the notion that there is wisdom in the crowd (i.e. 12 angry and st*pid jury men)

Posted by: step back at March 10, 2010 3:25 AM

I am not a big fan of removing juries - our legal system has benefitted from this arrangement and I know well other systems where juries are not used - and I hate those. But in a patent case, it seems very hard to produce good results. I am not sure what the true solution is. I guess 'expert juries' might be considered.

Posted by: Joseph Page at March 16, 2010 12:29 PM

Expert juries? How about the German Federal Patents Court? Five judges for a Decision at first instance? So, how come last year in the blockbuster olanzapine litigation the District Court judge in Duesseldorf trying infringement enjoined the infringer even though the jury of five had already revoked the patent? The Supreme Court will undoubtedly reverse the decision of the Federal Court, said the intrepid District Court judge.

And give him credit; it duly did so.

Posted by: MaxDrei at March 16, 2010 3:09 PM