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June 8, 2010

Lights Please

B-K Lighting sued FVC for infringing RE39,084, which claims an adjustable mount for a sealed light fixture. After giving the B-K's expert short shrift, the district court granted summary judgment of invalidity by obviousness for the asserted claims. The per curiam appeal pitched it back to the district court, because of "the conflicting testimony of the parties' experts" about whether a prior art reference disclosed a critical feature. In dissent, Judge Newman put the spotlight on spotty reasoning.

B-K Lighting v. Fresno Valvles & Castings (CAFC 2008-1537) nonprecedential

Judge Newman's dissent:

The panel majority now holds, solely for the reason that there were opposing expert opinions, that the question of obviousness could not be resolved on summary judgment. This is an unnecessary departure from the procedure that this court and the Supreme Court have accepted and endorsed, in the interest of efficient resolution of patent disputes:

In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007), the Court stated that while a "court can and should take into account expert testimony, which may resolve or keep open certain questions of fact," summary judgment should not be withheld whenever parties present contradictory expert opinions, thereby manufacturing a "conflict," however attenuated. My colleagues on this panel hold that since there were opposing expert opinions, without more, the question of obviousness requires trial. If this procedure is to be the rule in patent cases let us be clear, to avoid the expensive redundancy that is today achieved, whereby the parties and the district court pursued the procedures of summary judgment through depositions, briefs, written opinion, final judgment, and appeal. It is not a trivial matter to require the parties, the trial judge, and perhaps ultimately this court, to repeat in the trial context much of what they have already done.

The record of the summary judgment proceeding contained extensive documentary and testimonial evidence, undisputed except for the expert witnesses' opinion concerning a prior art device.

While agreeing that the district court erred in attributing a feature to the prior art which it lacked, the "question arising from the expert testimony is readily reviewed on appeal, for the issue is not of credibility, but of substance. See KSR, 550 U.S. at 427 (deciding the question of obviousness on appeal)."

[T]his court's absence of discussion of the references in connection with the proposed remand produces the same error for which we criticize the district court; that is, a conclusory ruling devoid of explanation.

Judge Newman then went on to "comment on two errors of application of the law of obviousness, lest legal error be tacitly perpetuated:"

The first error was treating secondary considerations of non-obviousness as mere "icing on the cake."

First, the district court erred in its understanding of the law governing the role of the "objective indicia" or "secondary considerations" in the analysis of obviousness. B-K Lighting had pointed to the commercial success and FVC's copying of the device of the '084 patent, as evidence to be considered. However, the district court ruled that, as a matter of law, the factors of copying, commercial success, and unexpected results are not to be considered at all, when there is a "strong prima facie case of obviousness" based on prior art alone. B-K Lighting, Inc. v. Fresno Valves & Castings, Inc., No. 06- CV-02825, slip op. at 44 (C.D. Cal. May 23, 2008) ("Summary Judgment Order"). Thus the district court declined to consider B-K Lighting's evidence of these factors. My colleagues on this panel support this holding, although it is contrary to the Supreme Court's and the Federal Circuit's long-standing precedent.

The Court in KSR confirmed the Court's earlier holding in Graham v. John Deere Co., 383 U.S. 1 (1966) that "commercial success, long felt but unsolved needs, failure of others, etc.," are an integral part of the obviousness analysis, and serve as a check against "the use of hindsight," 550 U.S. at 421 (quoting Graham, 383 U.S. at 36). The correct focus is not whether such evidence can be invoked to rebut a prima facie case based on prior art; the focus is whether a prima facie case is established at all when such evidence is considered. See Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 958 (Fed. Cir. 1986) ("Under Graham, a district court makes proper fact findings on those four inquiries and then assesses the ultimate legal question of nonobviousness."); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1380 (Fed. Cir. 1986) ("Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely 'icing on the cake,' as the district court stated at trial." (emphasis in original)); Minnesota Mining and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1573 (Fed. Cir. 1992) (same).

The district court's ruling that the evidence of commercial success and unexpected results would not be considered at all, in view of the court's conclusion that there was a "strong prima facie case" based on prior art, is contrary to precedent embodied in dozens of holdings, for the reasons explained in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983):

Evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not. It is to be considered as part of all the evidence, not just when the decisionmaker remains in doubt after reviewing the art.

Id. at 1538-39 (internal citations omitted). See also Knoll Pharm. Co., Inc. v. Teva Pharms. USA, Inc., 367 F.3d 1381, 1385 (Fed. Cir. 2004) ("The so-called 'objective' criteria must always be considered and given whatever weight is warranted by the evidence presented."); Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984) ("In determining the question of obviousness, inquiry should always be made into whatever objective evidence of nonobviousness there may be."); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150 (Fed. Cir. 1983) ("[A]ll evidence touching the obvious- nonobvious issue must be fully considered before a conclusion is reached on that issue"). The objective evidence must be considered in determining whether a prima facie case of obviousness had been made.

Numerous decisions have reinforced this rule, as the court "has repeatedly explained, [such evidence] is not just a cumulative or confirmatory part of the obviousness calculus but constitutes independent evidence of nonobviousness." Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008). In Ortho-McNeil the court reiterated that secondary considerations often provide some of the best "independent evidence of obviousness." Id.; see also Ruiz v. AB Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000) ("Our precedents clearly hold that secondary considerations, when present, must be considered in determining obviousness."). As described in Simmons Fastener Corp. v. Ill. Tool Works, Inc., 739 F.2d 1573, 1575 (Fed. Cir. 1984):

The section 103 test of nonobviousness set forth in Graham is a four part inquiry comprising not only the three familiar elements (scope and content of the prior art, differences between the prior art and the claims at issue, and level of ordinary skill in the pertinent art), but also evidence of secondary considerations when such evidence is, of course, present. Only after all evidence of nonobviousness has been considered can a conclusion on obviousness be reached. The trial court's error lies in its exclusion of such evidence in arriving at a conclusion on the obviousness of the claimed invention.

(citation omitted). See also Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1461 (Fed. Cir. 1984) ("All evidence must be considered before a conclusion on obviousness is reached."). In Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985), the court stated that:

Just as it is legal error for a district court to fail to consider relevant evidence going to secondary considerations, it may be legal error for a district court to presuppose that all evidence relating to secondary considerations, when considered with the other Graham indicia relating to the obviousness/nonobviousness issue, cannot be of sufficient probative value to elevate the subject matter of the claimed invention to the level of patentable invention.

(citations omitted). The matter was settled long ago. Let us not invite legal error by relying on the recent sprinkling or aberrant statements.

It is a bedrock principle of appellate review that earlier panel decisions prevail unless overturned by the court sitting en banc. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988). Such precedence to established law is demanded by the integrity of judicial process. Sacco v. Dep't of Justice, 317 F.3d 1384, 1386 (Fed. Cir. 2003). It appears that the district court was led into error, for the court cited recent contrary rulings of panels of this court, as are now cited in the Per Curiam opinion. These rulings are contrary to the precedent that binds us. The criteria by which obviousness is determined is not a matter of the draw of the panel; it is a matter of substantive patent law, and requires national uniformity.

The second error was in the district court putting the bar too high in expecting unexpected results of the claimed invention as a whole.

The district court held that B-K Lighting must show not that "a single element of the invention" produced an unexpected result, but that "viewed as a whole, the device . . . produced unexpected results." B-K Lighting, Summary Judgment Order at 43-44 & n.134.

Patentability of a new mechanical device indeed requires consideration of the invention as a whole as compared with the prior art. However, advantageous or unexpected properties are often due to a particular component of the device; it does not negate patentability of the device when the unexpected results are due to a particular component.

Posted by Patent Hawk at June 8, 2010 10:05 PM | Prior Art

Comments

Man, Pauline has gone absolutely schizo on us. This was not just a dissent, it was a bizarre dissent/concur. I mean, 16 pages of per curiam is pretty bizarre in itself.

Newman got it wrong in at least two places.

1. She is trying to make new law that says when the only dispute is between experts, SJ is automatically appropriate. That is not what KSR said and that is not the law.

The law is that if the only factual point of contention is between the experts, then SJ MAY be appropriate. This is an exception to the rule that says if there is a material factual dispute, SJ is not appropriate. You can't use paid experts to concoct a material dispute.

That was not the situation in this case and Newman is clearly out of it when she says SJ was reversed merely because there was differing expert opinion. The panel went to great pains to explain the importance of the difference between the experts' interpretation of the prior art.

2. Newman is not representing the correct relationship between prima facie obviousness case and secondary factors.

"The correct focus is not whether such evidence can be invoked to rebut a prima facie case based on prior art; the focus is whether a prima facie case is established at all when such evidence is considered." (And she includes secondary factors as part of the evidence required to make a prima facie case.)

My understanding is that if the combined art shows all of the elements/steps and limitations, or if the addition of missing limitations would be KSR-obvious, then a prima facie case has been made and the burden shifts to the proponent of the claim -- secondary factors may then be used to rebut the prima facie case. ("Sure, if you patch the art together you get the claim, but the obviousness obviously isn't there because nobody but me ever did it or made any money on it and now they're all copying me.")

What Newman is trying to do is put the burden of showing no secondary factors on the defendant/examiner in order to establish a prima facie case. And, again, her arguments are devious.

She cites a bunch of case law for the proposition:
“In determining the question of obviousness, inquiry should always be made into whatever objective evidence of nonobviousness there may be.”

But determining the question of obviousness is not the same as establishing a prima facie case. establishing obviousness is what you've done at the end of the whole process. Establishing a prima facie case is just the first step. If a prima facie case has never been made, then secondary factors are irrelevant and the actual existence of nonobviousness vel non will never be determined. By analogy, if there is not enough evidence for an indictment, then there is no determination of guilt.

A bedrock of American jurisprudence is that a proper case has to be made against you before you have any burden to defend. Pauline is, apparently, out to lunch on this.

Posted by: Babel Boy at June 9, 2010 10:02 AM

"2. Newman is not representing the correct relationship between prima facie obviousness case and secondary factors.

"The correct focus is not whether such evidence can be invoked to rebut a prima facie case based on prior art; the focus is whether a prima facie case is established at all when such evidence is considered." (And she includes secondary factors as part of the evidence required to make a prima facie case.)
"

Even babel boy picks up that this is blatantly wrong. This is the way I catch some examiners thinking about 2ndary factors. They have to then be set straight.

Posted by: 6000 at June 9, 2010 11:10 AM

Yes, 6000, thank you.

Your post reeks of envy, for Babel Boy scores yet another resounding victory for truth, justice, and the American Way. Pray for the day, lad, when you should know so much, or be so capable of great achievement.

And to the extent your envy includes penis envy (which it obviously does) . . . keep dreaming.

Posted by: Babel Boy at June 9, 2010 3:02 PM

LOL BB yeah right.

Also I just noticed that Hawk included:

"The second error was in the district court putting the bar to high in expecting unexpected results of the claimed invention as a whole."

I doubt the DC did that, they probably just found there was no nexus between the unexpected results and the claimed invention but forgot to put their decision down in those words. If they messed up at all.

Posted by: 6000 at June 9, 2010 4:07 PM

Newman is correct. Evidence of secondary considerations does not have to rebut, or "knock down," a prima facie case of obviousness. If evidence of secondary considerations is presented by the applicant/patentee, the determination of obviousness is to be done again, anew, and the determination made as to whether the evidence, when considered as a whole, establishes by a preponderance that the claim is unpatentable.

Posted by: pong at June 10, 2010 6:09 AM

"1. She is trying to make new law that says when the only dispute is between experts, SJ is automatically appropriate."

She never said that. In fact, she said the opposite. The majority stated that when there is conflicting expert testimony, SJ is never appropriate. That is wrong. Newman corrected her colleauges.

Posted by: pong at June 10, 2010 6:11 AM

pong -- neither one of your statements is accurate or makes any sense.

The majority did not say that when there is conflicting expert testimony SJ is never appropriate. Where did you get that? I know, from Newman's dissent.

The majority said, correctly, when the expert testimony presents a GENUINE ISSUE OF MATERIAL FACT, SJ gets reversed -- that is the standard SJ rule. Read the case:

"Because the conflicting testimony of the parties’ experts regarding whether the Hydrel 7100 disclosed frictional pivoting created a genuine issue of material fact, we vacate the
district court’s judgment . . . "

Do you see that???? "a genuine issue of material fact".

My 4th para above has an error. Second sentence should read "This is NOT an exception to the rule that says if there is a material factual dispute, SJ is not appropriate." If the expert's dispute is material, SJ is not appropriate.

You are just sopping up Newman's BS. Newman misrepresented the majority when she said they reversed SJ because there was a dispute between experts. They reversed because an issue of material fact was raised by the experts -- not merely because there was a dispute. It's the "material" that results in reversal. A non-material issue of fact raised by experts does not defeat SJ. By ignoring "material" Newman misstates the majority.

Here's what the Dissent Queen said:

"My colleagues on this panel hold that since there were opposing expert opinions, without more, the question of obviousness requires trial."

That is clearly a false representation of the majority's opinion -- and she ought to be called on it. If she were a lawyer, she'd get sanctioned for a misrepresentation like that.

I agree with her most of the time and I think her dissents will increasingly define patent jurisprudence in the US. But this dissent leaves a lot of reason to raise eyebrows.

Posted by: Babel Boy at June 10, 2010 7:41 AM

"Evidence of secondary considerations does not have to rebut, or "knock down," a prima facie case of obviousness. If evidence of secondary considerations is presented by the applicant/patentee, the determination of obviousness is to be done again, anew, and the determination made as to whether the evidence, when considered as a whole, establishes by a preponderance that the claim is unpatentable.
"

Your second sentence is how the thing you mentioned in your first sentence is accomplished tard.

Posted by: 6000 at June 10, 2010 9:04 AM

"Your second sentence is how the thing you mentioned in your first sentence is accomplished tard."

You are so dumb it is unbelievable.

Posted by: pong at June 10, 2010 9:13 AM

"You are so dumb it is unbelievable."

Says the tard that can't understand 2ndary considerations.

Posted by: 6000 at June 10, 2010 9:23 AM

"Says the tard that can't understand 2ndary considerations."

Says the tard who thinks secondary considerations are required to rebut a prima facie case of obviousness.

Posted by: pong at June 10, 2010 9:38 AM

"Says the tard who thinks secondary considerations are required to rebut a prima facie case of obviousness."

LOL wut? Prima facie cases of obviousness require no rebuttal tard. But assuming you wanted, for some reason, to make one you could rebut it many different ways.

Posted by: 6000 at June 10, 2010 10:11 AM

"LOL wut? Prima facie cases of obviousness require no rebuttal tard. But assuming you wanted, for some reason, to make one you could rebut it many different ways."

Dumber with each post.

As J. Newman correctly stated, "The correct focus is not whether such evidence can be invoked to rebut a prima facie case based on prior art; the focus is whether a prima facie case is established at all when such evidence is considered."

In other words, the examiner/APJ/USDC J cannot state that applicant's/patentee's evidence of secondary considerations has been considered but does not rebut the prima facie case of obviousness, as that would be legal error. The probative value of the evidence of secondary considerations does not have to be so high as to establish by a preponderance, and all by itself, the patentability of the claim. The probative value of the evidence of secondary considerations only has to be sufficient such that when all of the evidence and arguments, including the evidence of secondary considerations, is considered as a whole it (i.e. the evidence as a whole) establishes by a preponderance the patentability of the claim.

Feel free to go back to sniffing BB's jock.

Posted by: pong at June 10, 2010 10:26 AM

"In other words, the examiner/APJ/USDC J cannot state that applicant's/patentee's evidence of secondary considerations has been considered but does not rebut the prima facie case of obviousness, as that would be legal error."

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL.

Oh, so you'd rather them say that it was insufficient to successfully rebut the prima facie case? POP, whew, yeah, totally, they should word it correctly.

"including the evidence of secondary considerations, is considered as a whole it (i.e. the evidence as a whole) establishes by a preponderance the patentability of the claim"

Evidence never "establishes" the patentability of a claim in a 103 situation. Lack of evidence often leaves a claim patentable. And evidence might establish that a claim is not unpatentable over a given combination, but it never "establishes patentability".

Hey, you call the board on their sloppy use of terms, I'll call you out.

Posted by: 6000 at June 10, 2010 10:32 AM

"Evidence never 'establishes' the patentability of a claim in a 103 situation. Lack of evidence often leaves a claim patentable. And evidence might establish that a claim is not unpatentable over a given combination, but it never 'establishes patentability'."

You never tire of wallowing in your ignorance, do you?

Here's a little something from MPEP 2142, which you should be able to understand, but probably don't:

"When an applicant submits evidence, whether in the specification as originally filed or in reply to a rejection, the examiner must reconsider the patentability of the claimed invention. The decision on patentability must be made based upon consideration of all the evidence, including the evidence submitted by the examiner and the evidence submitted by the applicant. A decision to make or maintain a rejection in the face of all the evidence must show that it was based on the totality of the evidence. Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of obviousness was reached, not against the conclusion itself. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990)."

A little something else from MPEP 2142:

"If the examiner determines there is factual support for rejecting the claimed invention under 35 U.S.C. 103, the examiner must then consider any evidence supporting the patentability of the claimed invention, such as any evidence in the specification or any other evidence submitted by the applicant. The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The legal standard of 'a preponderance of evidence' requires the evidence to be more convincing than the evidence which is offered in opposition to it."

I've read enough Board decisions to know they understand this very simple concept. I've read enough of your posts to understand you don't. And never will.

Posted by: pong at June 10, 2010 10:43 AM

"Here's a little something from MPEP 2142, which you should be able to understand, but probably don't:"

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

quoting the MPEP are we now?

Gl with that padre.

By the by, that section supports what I said already tard.

Oh, and tard, I must have missed the part about evidence "establishing patentability".

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL.

There's always more evidence to be had that can very well take down patentability in a heartbeat, patentability over 103 can never be shown for sure. Even when you get around the easily found evidence it's always out there, lurking, waiting to strike your claims from the shadows.

Apparently you have a hard time understanding that.

Posted by: 6000 at June 10, 2010 1:12 PM

"I must have missed the part about evidence 'establishing patentability'."

Yes, you did. But given your elementary school level reading comprehension, it's not surprising.

Posted by: pong at June 10, 2010 1:42 PM

Go ahead and point it out for me tard.

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL.

Posted by: 6000 at June 10, 2010 2:19 PM