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June 9, 2010

Fractured

TriMed sued Stryker in 2006 for infringing 5,931,839, which claims "an implantable device used to set bone fractures." The district court granted summary judgment of noninfringement. Appeal reversed and remanded for an incorrect claim construction. Stryker then struck pay dirt with summary judgment invalidity. The appeals court was less than thrilled.

TriMed v. Stryker (CAFC 2009-1423) precedential

Summary judgment is proper "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). In assessing summary judgment, the evidence is viewed "through the prism of the evidentiary standard of proof that would pertain at a trial on the merits." SRAM Corp. v. AD-II Eng'g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006). Because patents are presumed valid, "a moving party seeking to invalidate a patent at summary judg-ment must submit such clear and convincing evidence of facts underlying invalidity that no reasonable jury could find otherwise." Id.

TriMed argues that the district court improperly re-solved a number of material factual disputes in favor of Stryker.

We agree with TriMed. A patent is invalid "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). Whether the claimed subject matter would have been obvious at the time of invention to one of ordinary skill in the pertinent art is a question of law based on underlying facts. Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000). The relevant factual inquiries include the oft-cited Graham factors:

(1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) any relevant secondary considerations . . ..

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006) (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). Summary judgment of obviousness is appropriate if "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007).

When determining whether a patent claiming a combination of known elements would have been obvious, we "must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. at 417. This inquiry is factual in nature. Cf. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that whether there is "a reasonable expectation of success in making the invention via" a combination of prior art elements is a question of fact). Answering this question usually entails considering the "interrelated teachings of multiple pat-ents; 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, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." KSR, 550 U.S. at 418. What a reference teaches, whether there is a trend or demand in the relevant marketplace or design community, the background knowledge of one of skill in the art--these are all questions reserved for the finder of fact. See Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1316 (Fed. Cir. 2006) ("[W]hat a reference teaches is a question of fact . . . ."); Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 882 (Fed. Cir. 1998) ("Whether the prior art discloses a 'trend' is a question of fact."); Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1363 (Fed. Cir. 1999) (concluding that a genuine issue of material fact existed regarding the background knowledge of one of skill in the art). These factual questions are not separate and distinct from those set out in Graham; rather, they fall comfortably within those familiar categories of factual inquires. See, e.g., Dystar, 464 F.3d at 1360 (noting that what the prior art teaches is a subsidiary determination of the scope and content of the prior art).

Many of these factual questions are in dispute here.

Stryker attempts to circumvent these genuine issues of material fact by suggesting that the claimed subject matter would have been obvious because it is, at least in part, a commonsense solution to a known problem. As we explained in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009), an obviousness analysis "may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion." Although reliance on common sense does not require a specific evidentiary basis, "on summary judgment, to invoke 'common sense' or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review." Id. at 1330. See also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). While Rule 52(a)(3) of the Federal Rules of Civil Procedure contains the pertinent qualification that a "court is not required to state findings or conclusions when ruling on a motion under Rule 12 or 56," that rule "does not relieve a court of the burden of stating its reasons somewhere in the record when its underlying holdings would otherwise be ambiguous or inascertainable [sic]," Couveau v. Am. Airlines, Inc., 218 F.3d 1078, 1081 n.3 (9th Cir. 2000) (citation omitted). "Assuredly, to know the reasoning a district court used in deciding to grant summary judgment facilitates the task of a review-ing court, and there does exist a risk in complicated cases of an unnecessary reversal if the logic that resulted in the grant of summary judgment cannot be discerned." Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F2d. 1015, 1020 (Fed. Cir. 1985), overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999). Both the record in this case and the order granting Stryker's motion for summary judgment are devoid of such reasoning. Instead of supporting its obviousness analysis with cogent reasoning, the order merely states that "[a] common sense [sic] solution to this problem [i.e., pin migration] involves stabilizing the pin against . . . displacement . . . [and] the logical solution would be to select a prior art plate that had holes with an appropriate diameter . . . ." Order Granting Stryker's Mot. For Summ. J. of Invalidity 14. Neither the record before us nor the order of the district court explains why one of ordinary skill in the art at the time of the invention would have found replacing a cast normally used to stabilize a pin with a subcutaneous metal plate to be a logical, commonsense solution to this problem. Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so.

The record also fails to explain why the district court summarily dismissed the evidence of secondary considerations of nonobviousness submitted by TriMed. We have repeatedly held that evidence of secondary considerations must be considered if present. See, e.g., Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000) ("Our precedents clearly hold that secondary considerations, when present, must be considered in determining obvi-ousness."). There is no indication in the record that, as required by our precedent, the court considered at all the evidence of secondary considerations offered by TriMed.

Because there are genuine issues of material fact and because the record fails to provide a reasoned basis to support the district court's grant of summary judgment, we conclude that the court's grant of summary judgment of invalidity was inappropriate and must be reversed.

TriMed requested that the district court judge be replaced. The CAFC agreed. Highly unusual.

We evaluate a request to reassign a matter to a different judge under the law of the relevant regional circuit, Research Corp. Technologies. v. Microsoft Corp., 536 F.3d 1247, 1255 (Fed. Cir. 2008), here, the Ninth Circuit. In the Ninth Circuit, reassignment is appropriate if personal bias or unusual circumstances are shown. Smith v. Mulvaney, 827 F.2d 558, 562 (9th Cir. 1987). When determining whether unusual circumstances exist, the Ninth Circuit considers the following factors:

(1) whether the original judge would reasonably be expected upon remand to have substantial dif-ficulty in putting out of his or her mind previously-expressed views or findings determined to be erroneous or based on evidence that must be rejected, (2) whether reassignment is advisable to preserve the appearance of justice, and (3) whether reassignment would entail waste and duplication out of proportion to any gain in pre-serving the appearance of fairness.

Id. at 563.

We conclude that reassignment is warranted here. The district court has now been reversed twice after entering summary judgment against TriMed, in both instances simply signing Stryker's proposed statement of law and facts relevant to the decided issues, a disfavored practice in the Ninth Circuit, see Living Designs, Inc. v. E.I. Dupont De Nemours & Co., 431 F.3d 353, 373 (9th Cir. 2005) (noting that the Ninth Circuit has "criticized district courts that 'engaged in the "regrettable practice" of adopting the findings drafted by the prevailing party wholesale.'" (citation omitted)). Although mindful of the burden reassignment places on judicial resources, given the particular circumstances present here, we are con-vinced that reassigning this matter to a different judge is necessary to preserve the appearance of justice. Thus, pursuant to our supervisory authority under 28 U.S.C. § 2106, we remand this case to the Chief Judge of the United States District Court for the Central District of California to determine the reassignment of this case to a different district judge.

Reversed and remanded.

Posted by Patent Hawk at June 9, 2010 10:13 PM | Prior Art

Comments

Can anybody reading this help this European reader to understand. I read that this case is "highly unusual". What explanations (serious or otherwise) can readers dream up, to explain the unusual conduct of the DC judge unfortunate enough to have been allocated a real patents case? Is he not enjoying his job? Would he be happier doing something else entirely?

Posted by: MaxDrei at June 9, 2010 10:42 PM

Posted by: fliptop at June 9, 2010 11:32 PM

Fliptop that link helps mightily. For me, life's "rich tapestry" just got even richer. Perhaps I worry too much about the Presumption of Validity. You have a problem with that? Just put a Real man on, to judge the case.

The invalidity issue is fascinating. Take novelty. When is a guidewire a "pin" that penetrates bone? When does a hole that doesn't stabilise turn into a hole that does stabilise? Suppose that the only bits and pieces available to the surgeon were the prior art bits and pieces, could that surgeon stabilise the bone fracture with those bits and pieces alone?

The claimed subject matter strikes me as meritorious. Is this not a case where, once the claim is novel, it is hard (in any other court than this one) to prove it obvious. Trimed must be rather upset with Manny Real (but I gather from the link that, for Judge Real, people getting upset is par for the course).

Posted by: MaxDrei at June 10, 2010 3:01 AM

Fliptop that link helps mightily. For me, life's "rich tapestry" just got even richer. Perhaps I worry too much about the Presumption of Validity. You have a problem with that? Just put a Real man on, to judge the case.

The invalidity issue is fascinating. Take novelty. When is a guidewire a "pin" that penetrates bone? When does a hole that doesn't stabilise turn into a hole that does stabilise? Suppose that the only bits and pieces available to the surgeon were the prior art bits and pieces, could that surgeon stabilise the bone fracture with those bits and pieces alone?

The claimed subject matter strikes me as meritorious. Is this not a case where, once the claim is novel, it is hard (in any other court than this one) to prove it obvious. Trimed must be rather upset with Manny Real (but I gather from the link that, for Judge Real, people getting upset is par for the course).

Posted by: MaxDrei at June 10, 2010 3:02 AM

MaxDrei,

I'm pretty sure I'd heard of Judge Real before this case, and he is one judge who has no business being on the federal bench, be it a patent case or otherwise. The linked article shows that clearly.

Another like Real who retired finally in 1985 (fortunately) was Judge Miles Lord (District Court of Minnesota). See http://en.wikipedia.org/wiki/Miles_Lord. Lord was a "character" and that's putting it charitably.

Posted by: EG at June 14, 2010 4:20 AM