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A New Obviousness Case: Reversing Summary Judgment of Noninvalidity
The federal circuit provided evidence today that summary judgment may remain a lofty goal in at least some cases involving the question of obviousness. See Summary Judgment after KSR. In an opinion that emphasizes the significance of expert testimony in defeating summary judgment, the court rejected a district court’s interpretation of the prior art and undisputed facts, reversing a summary judgment of noninvalidity granted on the ground that claims are nonobvious.
Omegaflex, Inc., v. Parker-Hannifin Corp., No. 07-1044 (June 18, 2007), involves claims related to pipe fitting technology and particularly to the use a “locating sleeve” that permits fittings to be more easily and reliably connected with pipe.
The district court determined that a person of ordinary skill in the art would have no motivation to combine prior art that included a pipe fitting to which a locating sleeve might be optionally attached because the asserted prior art fitting did not evidence a problem in need of remedy with a locating sleeve. Moreover, according to the district court, no reasonable expectation of success in making the combination existed because skilled artisans like the defendant’s engineers had before considered and rejected the improvement of a locating sleeve for cost and efficiency reasons. Finally, according to the court, the objective indicia of nonobviousness supported noninvalidity because there was skepticism in the field concerning the need for the invention, the accused fitting and sleeve is like the patentee’s product and is as taught by the patent, and the patented fitting and sleeve fulfilled a long felt need for a means of establishing a reliable metal-to-metal fitting without the use of special tools.
In reversing the summary judgment the federal circuit reemphasized the importance of having a reason to combine prior art, but citing KSR, held that the trial court erred by failing to look far enough beyond the teachings of the prior art asserted by the defendants for a motivation to combine. According to the federal circuit, the opinion of the expert for the defendant that a person of ordinary skill in the art would have recognized the significance of adding a locating sleeve to the prior art fitting was sufficient to establish a genuine issue of material fact. Moreover, according to the court, the evidence provided by the defendant’s expert that a person of ordinary skill in the art would have expected success in adding a locating sleeve established a genuine issue of material fact. Finally, relying again on the defendant’s expert, the federal circuit found a variety of errors in the trial court’s interpretation of the evidence pertaining to the secondary considerations, ultimately, going so far to suggest that when viewed as a whole the defendant’s production of a fitting and locating sleeve like the one claimed in the patent actually supported a finding of obviousness rather than a finding of nonobviousness:
In addition, Parker's later decision to add such a sleeve to the FastMate fitting actually seems to support a finding of obviousness rather than non-obviousness. When construed in Parker's favor, the FastMate fitting's history is undisputed evidence that the idea of incorporating a locating sleeve to improve alignment capability was discussed and well within the knowledge of skilled artisans at an early stage.
On the whole, this opinion seems consistent with the general advice given by the high Court in KSR, namely, that lower courts should avoid being too strict in assessing the teachings of prior art. See The Supreme Court and the Modern Obviousness Standard. This case, written for the court by the Chief Judge, upsets a summary judgment of noninvalidity. Whether the emphasis on the liberal and flexible interpretation of prior art, and whether expert evidence will carry such weight in cases where a district court grants summary judgment that claims are invalid remains to be seen.
Posted by at June 19, 2007 12:06 PM in | Permalink
