On September 1, 2010, the USPTO published an update to its examination guidelines on obviousness.
CAFC Discusses Obviousness & General Jury Verdicts in Colorado Case
On July 22, 2010 the Federal Circuit Court of Appeals issued a decision in Wyers v. Master Lock Company, a patent infringement suit appealed from Colorado District Court. The case involved size-adjustable hitch pin locks to secure trailers to cars and SUVs. Wyers’ patents added two claimed features to the prior art: a series of sleeves that could be placed over the shank in order to increase its diameter, and an external seal designed to keep dirt out of the locking mechanism. Because the district court granted Wyers’ motion for JMOL on the issue of infringement, the only question submitted to the jury was whether or not two claimed features would have been obvious. The jury returned a general verdict finding the asserted claims not obvious. A Federal Circuit panel reversed.
Obviousness is a question of law but it is based on underlying factual findings. The Federal Circuit boiled down the factual issues in dispute to three questions: whether the prior art was analogous, whether there was sufficient motivation to combine, and whether there were the secondary considerations. After determining that the prior art was within the same field or at least reasonably pertinent, the court went on to the crucial question of motivation to combine, basing its analysis on KSR v. Teleflex, 550 U.S. 398 (2007), and its “expansive and flexible approach” to the question of obviousness. When the technology at issue is “easily understandable” no expert testimony is necessary and the ultimate inference as to motivation to combine references may boil down to a question of “common sense” appropriate for resolution on summary judgment or JMOL. Given the fact that different aperture sizes in standard hitch receivers was a known problem, the court concluded 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…and that one with ordinary skill in the art would have had a reasonable expectation of success in doing so.”
Slip Op. at 23. The court made a similar determination with respect to the external seal feature then moved on to secondary considerations. Each asserted secondary consideration—commercial success, copying and unexpected results—Wyers failed to fully establish, and even these could not overcome a strong prima facie case of obviousness.
Judge Linn penned a concurring opinion to encourage the use of special interrogatories in obviousness determinations due to the mixed question of law and fact. Without knowing exactly what factual questions the jury considered at how it decided them, a reviewing court must presume that the jury resolved the factual questions in favor of the verdict winner. It then leaves those findings undisturbed if they are supported by substantial evidence and it looks to the ultimate legal determination de novo. Using a special interrogatory would not only “facilitate review” but it would also “reveal more clearly the jury’s underlying factual findings.” Slip. op., concurrence at 4. Here, the panel found no substantial factual issues in dispute and thus reversed the verdict.
Special thanks to Kate Knowles, a law clerk at Sheridan Ross PC and a third year law student at the University of Colorado School of Law for preparing this summary.
On June 2, 2010, Judge Brimmer’s issued a claim construction Order in connection with City of Aurora et al. v. PS Systems, Inc. and RAR Group, LLC. Relying heavily on Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005), Judge Brimmer construed four of the five independent claims of U.S. Patent No. 6,840,710 (“the ‘710 Patent”) and U.S. Patent No. 7,192,218 (“the ‘218 Patent”), including terms such as “a slurry wall”, “a closed boundary” and “a pump pumping water from the aquifer into the underground reservoir” in a manner that strongly suggests that the City of Aurora will prevail on its pending motions. This Order, which comes almost two years from the filing of Aurora’s motions for summary judgment, must come with some relief to Aurora considering its Prairie Waters Project in Brighton, Colorado, begun in 2004, has been temporarily on hold pending this litigation. The following is a summary of Judge Brimmer’s Order.
Aurora’s first motion for summary judgment required the court to construe independent claims 1 and 14 of the ‘710 Patent. Claim 1 includes “a slurry wall defining a closed boundary for the underground reservoir, the slurry wall extending from a surface level to an aquiclude beneath the reservoir…to form a substantially and permeable water seal between the slurry wall and the aquiclude….” Aurora urged the Court to construe this claim language to require “a single, uninterrupted slurry wall that completely surrounds the underground reservoir (or alluvial deposits) in an uninterrupted manner.” The City of Aurora’s Prairie Waters Project includes an underground reservoir that has walls constructed mostly of a slurry mixture. However, two wall segments consist entirely of a grout material. Judge Brimmer ruled partially in favor of defendants, finding that claim 1 and 14 may include “one or more slurry walls.” However, Judge Brimmer also ruled that the boundary of the reservoir must be “closed” (i.e., although the floor of the reservoir may consist of a natural barrier, none of the walls may). Therefore, the slurry wall excludes any structures, natural or manmade, that are not slurry walls, and requires surrounding slurry walls in an uninterrupted manner. Although there may be multiple walls, or walls that have other materials layered up on top of the walls, every wall must be made of slurry and must connect only into another slurry wall. Aurora’s second motion challenges portions of claim 1 of the ‘218 Patent that address the connection between the underground reservoir and an aquifer well. Aurora argued that these portions require “pumping of alluvial water into injection wells and pumping between an aquifer and a reservoir well.” Judge Brimmer concluded that the claim requires an uninterrupted piped connection between the aquifer well and the underground reservoir, which actively moves water along its entirety by mechanical means. This construction was based, in part, on the use of a noun “pump” in the limitation “a pump pumping water”, which implies that movement is achieved through a mechanical device. Aurora also argued that the term coupled in claim 1 signifies a direct connection between the aquifer well and the underground water storage reservoir, while the defendants urged that this connection may be direct or indirect, and encompass infiltration ditches, ponds, or other bodies of water above the underground reservoir. Judge Brimmer held that one skilled in the art would not understand piping, as the term is used in the ‘218 Patent, to include infiltration ponds or infiltration ditches and therefore sided with the City of Aurora.
Special thanks to Ian Walsworth of Sheridan Ross PC for preparing this summary.
Today, 5 days before trial was set to begin, the U.S. District Court for the District of Colorado (Blackburn, J.) granted summary judgment to Amazon.com, dismissing a trademark infringement case brought by Video Professor, Inc. (VPI).
VPI’s claims were based on Amazon’s keyword advertising practices. Specifically, VPI argued that Amazon’s use of “video professor” to generate sponsored links was infringing because the links took users to a landing page on the Amazon website displaying not only Video Professor computer learning products, but also related competing products. Amazon moved for summary judgment primarily on the ground that VPI, a former Amazon vendor, had licensed Amazon to use its trademark as part of its vendor agreement with Amazon. The Court agreed: “[N]othing in the plain language of the trademark license provision prohibits Amazon from using VPI’s trademark, “video professor,” to promote VPI’s products along with other competing products, as VPI contends Amazon did on the Amazon landing page.” Amazon was awarded judgment dismissing VPI’s complaint with prejudice.
Please click here to view the order.
Special thanks to Natalie Hanlon-Leh of Faegre & Benson for preparing this summary.
At the September 23, 2009 IP Section Luncheon, the IP Section membership approved a set of proposed bylaws. The approved bylaws were forwarded to the Colorado Bar Association Board of Governors for final review and approval.
The IP Section Leadership is pleased to announce that the Bylaws were unanimously approved at the November 7, 2009 Board of Governors meeting. Announcements about the selections for Advisory Board will follow shortly. The bylaws as approved by the membership and the Board of Governors are available for download by clicking here.
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