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July 22, 2010

Lock on Obzilla

Wyers sued Master Lock for infringing 6,672,115, 7,165,426, and 7,225,649, applicable to hitch pin locks for trailer towing. A jury found the patents nonobvious. Wyers secured an injunction along with $5.35 million in reasonable royalty damages. Master couldn't break the lock to obviousness post-trial, so it appealed. Herein, a thorough discussion of KSR, and case law that will be cited for years to come.

Wyers v. Master Lock (CAFC 2009-1412) precedential

The patents at issue in this case cover hitch pin locks that secure trailers to cars and sport utility vehicles. A hitch pin secures a draw bar or tow ball mount to a hitch receiver attached to a motor vehicle. The hitch pin passes through aligned apertures in the trailer hitch receiver and draw bar in order to secure the two members together. The patents describe a barbell-shaped lock with a stop portion on one end, a locking head on the other end, and a shank portion which passes through the aligned apertures of the hitch receiver and the towball mount.

Infringement was decided JMOL.

Master Lock argued prior art combinations to break the validity of '115 and '426.

A patent is invalid for obviousness "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. ยง 103(a). Obviousness is a question of law based on underlying findings of fact. In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying factual inquiries include: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Here the scope of the claims of the patents in suit are not at issue and the level of skill of one of ordinary skill in the art is not contested. The primary factual issues alleged to be in dispute are (1) whether the prior art references are in the same field of endeavor as the patented invention; (2) whether there was sufficient motivation to combine the references; and (3) the existence and significance of pertinent secondary considerations.

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 ad-dressed, 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." Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a reference in the prior art is "analogous" is a fact question. In re Clay, 966 F.2d at 658.

'115 and '426 claimed a sleeve for the hitch pin portion of the locking device.

The '115 patent and '426 patent (collectively, "the sleeve patents") claim a hitch pin lock having a removable sleeve to increase the shank's diameter, and a method for providing a hitch pin lock with a removable sleeve on the shank.

'649 went to a seal on a lock, to prevent contamination fouling the lock. Padlocks, "not within the same field of endeavor,"
"were clearly directed toward the same problem."

Even if the prior art padlocks were not within the same field of endeavor, they are nonetheless clearly "reasonably pertinent" to the problem that the inventor was trying to solve. See In re Clay, 966 F.2d at 659. The Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 402 (emphasis added). Here, the prior art padlocks were clearly directed toward the same problem the inventor was trying to solve in the '649 patent, namely, preventing the ingress of contaminants into the locking mechanism.

Motivation to combine as necessary to justify prior art combination went unappreciated in KSR. KSR instead only required "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness". The CAFC reintroduces motivation as an artifice, under the banner of common sense.

The second question for our consideration is whether there was motivation to combine the sleeve with the prior art barbell locks, and similarly, whether there was motivation to combine the prior art locks with an external sealing mechanism. Before the Supreme Court's decision in KSR, we required that a patent challenger show that a person of ordinary skill in the art would have had motivation to combine the prior art references and would have had a reasonable expectation of success in doing so. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007); Noelle v. Lederman, 355 F.3d 1343, 1351-52 (Fed. Cir. 2004). We had also held that "[t]he reason, suggestion, or motivation to combine may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved." Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000); see In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). KSR, however, instructs courts to take a more "expansive and flexible approach" in determining whether a patented invention was obvious at the time it was made. 550 U.S. at 415. In particular, the Court emphasized the role of "common sense": "[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it." Id. at 421.

Motivation, a fact issue, may be decided "on summary judgment or JMOL in appropriate circumstances."

Before KSR, we had also consistently treated the question of motivation to combine prior art references as a question of fact. See, e.g., Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006); In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). While KSR did not change this rule, KSR and our later cases establish that the question of motivation to combine may nonetheless be addressed on summary judgment or JMOL in appropriate circumstances. See KSR, 550 U.S. at 427; Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009); Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1325-26 (Fed. Cir. 2008); Sundance, Inc. v. DeMonte Fabricating, Ltd., 550 F.3d 1356, 1366-67 (Fed. Cir. 2008).

KSR gave experts a kick in the pants.

The Court also made clear that expert testimony concerning motivation to combine may be unnecessary and, even if present, will not necessarily create a genuine issue of material fact. See id. [KSR] at 427.

We [the CAFC] had noted that "[a]t the summary judgment stage of a proceeding, it is improper for a district court to make credibility determinations." Teleflex, 119 F. App'x. at 290. The Supreme Court disagreed:

In considering summary judgment on that question the district court can and should take into account expert testimony, which may resolve or keep open certain questions of fact. That is not the end of the issue, however. The ultimate judgment of obviousness is a legal determination. . . . Where, as here, 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, summary judgment is appropriate.

KSR, 550 U.S. at 427 (emphasis added).

Thus, in appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of "common sense," appropriate for resolution on summary judgment or JMOL. See Perfect Web, 587 F.3d at 1330. Other recent cases have confirmed the appropriateness of this approach. In Ball Aerosol, the sole disagreement between the parties and the basis for the district court's denial of the accused infringer's motion for summary judgment of obviousness was whether a motivation to combine the prior art references existed. 555 F.3d at 991. We held that where all of the limitations of the patent were present in the prior art references, and the invention was addressed to a "known problem," "KSR . . . compels the grant of summary judgment of obviousness." Id. at 993. Similarly, in Sundance, we reversed a denial of JMOL on the issue of obviousness, noting that the factual inquiries underlying the determination of obviousness were not in material dispute, and concluding that the patent, which combined two prior art references, was obvious as a matter of law. 550 F.3d at 1365.

[E]xpert testimony is not required when the references and the invention are easily understandable. Perfect Web, 587 F.3d at 1329.

In an interesting but ultimately moronic twist, Wyers tried to make something of the fact that Master Lock used a prior art reference for invalidation in this case that it did not consider invalidating for its own patent application.

However, Master Lock's '905 patent application, while claiming a convertible sleeve, see id. col.6 ll.50-52, did not claim that the sleeve represented a novel aspect of the invention. Moreover, Master Lock's patent application should be treated no differently than a patent application by a third party. Obviousness protects the public at large, not a particular infringer, and one is not estopped from asserting the invalidity of a patent by the fact that one has previously made an attempt to procure a patent for substantially the same invention. As the Supreme Court concluded in Haughey v. Lee, 151 U.S. 282, 332-33 (1894), "the defense of want of patentable invention in a patent operates, not merely to exonerate the defendant, but to relieve the public from an asserted monopoly, and the court cannot be prevented from so declaring by the fact that the defendant had ineffectually sought to secure the monopoly for himself." See also Paramount Publix Corp. v. Am. Tri-Ergon Corp., 294 U.S. 464, 477 (1935) ("How-ever inconsistent this early attempt to procure a patent may be with petitioner's present contention of its invalid-ity for want of invention, this Court has long recognized that such inconsistency affords no basis for an estoppel, nor precludes the court from relieving the alleged infringer and the public from the asserted monopoly when there is no invention."). The Master Lock application thus does not defeat an assertion of obviousness. The failure of Master Lock employees to cite the Down patent as prior art in internal idea disclosure forms when Master Lock was considering filing its own patent application similarly does not defeat an argument of obviousness. What Mas-ter Lock employees subjectively knew or believed at the time they were considering filing the '905 patent application is irrelevant. The relevant inquiry is what a hypothetical ordinarily skilled artisan would have gleaned from the prior art references at the time that the patent applications leading to the sleeve patents were filed. See, e.g., Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1364 (Fed. Cir. 2001).

The claimed invention of '115 and '426 got caught by the sleeve.

We conclude that it was a matter of common sense to combine the Down patent with the prior art barbell locks in order to arrive at the invention claimed in the '115 and '426 patents, and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so.

The lock seal patent's fate was sealed as well.

Thus, at the time of the invention, there were two known ways to protect a lock's locking head from the ingress of contaminants--an external or an internal seal--and both design options were common and widely used in locks in the prior art. It is a matter of common sense that a flat external seal used in the prior art pad-locks could be combined with a barbell-shaped hitch pin lock. Indeed, the district court described the difference between the invention of the '649 patent and the prior art as "slight indeed." Wyers v. Master Lock Co., No. 06-cv-00619, 2008 WL 2168977, at *12 (D. Colo. May 22, 2008). Wyers himself admitted that an external flange seal would work the same way on a padlock as it does on a barbell-shaped lock, and that the purpose of the seals was the same in the prior art padlocks as in the patented device. We conclude that the invention of the '649 patent represents no more than "the predictable use of prior art elements according to their established functions," KSR, 550 U.S. at 417, and as such, the claims of the '649 patent are obvious as a matter of law.

Secondary considerations could not "overcome a strong prima facie case of obviousness."

We reject Wyers' contention that secondary considerations of obviousness are sufficient to support the jury verdict of nonobviousness. Our case law clearly establishes that the patentee must establish a nexus between the evidence of commercial success and the patented invention. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (holding that the proponent must offer proof "that the sales were a direct result of the unique characteristics of the claimed invention") (emphasis added); In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) ("For objective [evidence of secondary considerations] to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.") (emphasis added). Here, Wyers essentially concedes that he is unable to prove a nexus to the seal patent, and provides no independent evidence for the commercial success of the seal patent. Even with respect to the sleeve patents, Wyers relies solely on Master Lock's $20 million in sales of the accused product, and established no direct nexus to the sleeve feature.

Moreover, secondary considerations of nonobviousness--considered here by the district court--simply cannot overcome a strong prima facie case of obviousness. See Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (holding that the objective considerations of nonobvious-ness presented, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006) ("The presence of certain secondary considerations of nonobvi-ousness are insufficient as a matter of law to overcome our conclusion that the evidence only supports a legal conclusion that claim 1 would have been obvious."). Here, where the inventions represented no more than "the predictable use of prior art elements according to their established functions," KSR, 550 U.S. at 417, the secondary considerations are inadequate to establish nonobviousness as a matter of law.

Reversed. Costs to Master Lock. (?)

Judge Linn piled on in a concurring opinion, getting in a few more case law licks for later citation.

While I concur both in the conclusion reached and the reasoning expressed in Judge Dyk's opinion for the Court, I write to address concerns raised following the Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) with respect to general verdicts relating to obviousness.

It is well established that whether an invention would have been obvious at the time the invention was made is a mixed question of law and fact. See, e.g., Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir. 2007). The ultimate determination of obviousness is a question of law, which we review de novo. Id. This determination is based on the underlying factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966), which we review for clear error. Id.

In KSR, the Supreme Court confirmed that "[t]he ultimate judgment of obviousness is a legal determination." 550 U.S. at 427. This acknowledgement did not change longstanding precedent permitting the submission of obviousness questions to a jury for a general verdict, provided the jury has received proper instruction on the law....

Posted by Patent Hawk at July 22, 2010 7:15 PM | Prior Art

Comments

sux

Posted by: fliptop at July 23, 2010 12:24 AM

Deriving "motivation" from "the nature of the problem to be solved" strongly reminds me of the EPO approach to the examination of obviousness which, after 30 years of consistent application, all the while under assault by ignorant snipers, is by now unassailable. It proceeds on the basis of TSM, avoiding hindsight, having objectively fixed what was the "objective technical problem" to be solved.

This is why opinions on patentability, written by the EPO as International Preliminary Examining Authority, carry such weight, around the world.

Could it be then, that the PTO is entering a new era, in which it will clear its backlog by using two very simple litmus tests, namely, MoT for 101 eligibility and EPO-PSA for 103 non-obviousness?

You see, EPO-PSA runs a sequence of logical steps that are in lockstep with the "common sense" of the relevant PHOSITA.

Posted by: MaxDrei at July 25, 2010 4:07 AM

I do believe that most anything, including a dog pooping on the sidewalk would remind MaxDrei of "strongly reminds me of the EPO approach..."

Who else is tired of hearing this MaxDrei character droning on and on about the EPO-PSA?


Also, in case you didn't hear about it, the US Supreme Court recently held that MoT cannot be used to rule something as ineligible for patenting. MoT is indeed a useful tool for showing patent eligibility though. It would be a very surprising new era would the PTO to do something expressly forbidden, now wouldn't it?

Posted by: Blah Blah Blah at July 25, 2010 7:09 AM

Blah, does the name Bahr mean anything to you. Hint: Memo to PTO Examiners to use MoT on 101.

I invite you to rejoin after you have read the thread on Patently-O about the Bahr Memo.

Sorry about EPO-PSA but thanks anyway for reading my contribution. I feel strongly about it because I want a hindsight-free dialogue about obviousness, not just for my app in the EPO but also in Japan (instead of their hindsight "the skilled man would have found it easy to invent") and at the USPTO (instead of the pure hindsight of "It is predictable, it was merely the application of common sense").

Posted by: MaxDrei at July 25, 2010 9:10 AM

MaxDrei,

Does the meaning of Law versus a departmental memo mean anything to you?

I have read the pertinent threads at Patently-O, IP Watchdog and various other popular blogs. Your position is suspect at best.

I invite you to ground your opinions in law rather than memos.

Posted by: Blah Blah Blah at July 25, 2010 9:24 AM

I ground them in pragmatism. Forgive me Blah, but I would never have guessed, from your offering there, that you had ever heard of Bahr.

Let's see what happens on the ground, at the coalface, shall we?

Posted by: MaxDrei at July 25, 2010 9:56 AM

MaxDrei,

When is it pragmatic to place the import of your profession on a guidance letter of the Office, which has even less authority than the MPEP, that august body that has such lovely quotes as "2100 Patentability - These Guidelines do not constitute substantive rulemaking and hence do not have the force and effect of law."

SO once again, I invite you to ground your opinions in law rather than memos - if only for your sense of professionalism.

Posted by: Blah Blah Blah at July 26, 2010 3:10 AM

This is another case in the Leapfrog vein: mechanical-type inventions are going to have a much more difficult time passing muster under 35 USC 103 in view of KSR International.

Posted by: EG at July 26, 2010 4:37 AM

EG: Exactly. That's one reason why I should like to see the USPTO adopting EPO-PSA. A Patent Office is a mechanism for granting patents. That's what Examiners want to do. With a fair 103 filter in place, they can get on, and do exactly that.

Blah, my sense of professionalism is just fine thanks.

Posted by: MaxDrei at July 26, 2010 4:58 AM

Blah: Who else is tired of hearing this MaxDrei character droning on and on about the EPO-PSA?

Not me. (At least not until he gets to comparing USA dog poop on the sidewalk to European dog poop on the sidewalk.)

EG: mechanical-type inventions are going to have a much more difficult time passing muster under 35 USC 103 in view of KSR International.

Seems to me the applicants' arguments have to shift from asserting that the combination is obvious to asserting that there is at least one claimed element that functions differently or produces different results than the same element does in the cited PA.

It's the same argument, but the words are different. When a previously known element functions differently in the new combination, it would not have been obvious to combine that element with the others, almost by definition.

However flawed this USSCt "logic" may be, we have to live with it for now. The examiner's rote "would have been obvious to combine" and the applicant's rote rejoinder "ain't so" both now have to be more element/function-specific.

Virtually every invention except the horseshoe is a combination of known elements. Exception: I once successfully patented an elongate piece of metal with a bend in one end and a hole in the other as an exercise to see how simple an invention I could get a patent on. Never could figure out how to dispense with the hole. But a hole and a bend are not elements and so there was no combination.

Posted by: Babel Boy at July 28, 2010 12:51 PM

I am struck by the Hawk's lead in quote from Thomas Jefferson of all people on the main blog page.

That quote doesn't seem to say that the combined ideas have to work somehow differently or unexpectedly.

Posted by: Pedantic Pete at July 29, 2010 2:45 AM

Pedantic Pete,

Thanks for the comment.

Glad somebody noticed the diametric quotes between Jefferson and KSR.

In recent times, so many patents were being granted of combinations where the individual components were previously known, which had little cleverness to them. This was particularly true with computer software and electronic circuits, and chemical/drug compositions. The CAFC TSM (teaching-suggestion-motivation) test wasn't quite comprehensive enough to separate the wheat from the chaff of novelty. It was difficult for Courts to try to distinguish between clever (novel) combinations and mundane ones, so KSR wiped them all out (new combinations of pieces with their "established functions").

In Jefferson's day, heavily oriented towards inventions mechanical and chemical, clever combinations probably were more the norm. Even withstanding that corruption is one human constant, maybe patents as a shakedown scam hadn't caught on to such a degree. Hence Jefferson's view.

Posted by: Patent Hawk at July 29, 2010 10:25 AM

"Glad somebody noticed the diametric quotes between Jefferson and KSR."

If you bother to read the old Journal of the Patent Office Society (issues 1-3 to be a bit more exact) you'll find all kinds of great Jefferson quotes. One that comes to mind is that a mere change in material used to construct an item is not a patentable difference. (back then they didn't have "obviousness" in the law/caselaw)

Posted by: 6000 at July 29, 2010 10:40 AM

You are Welcome Hawk - although a good debate can be possible about the cleverness factor, especially given the law's [103(a)] "Patentability shall not be negatived by the manner in which the invention was made."

Wow, 6000, thanks for not being observant and noticing the "of all people" qualifier.

Posted by: Pedantic Pete at July 29, 2010 11:45 AM