Tuesday, May 14, 2013

Metso loses at CAFC

Related to Metso Minerals v. Powerscreen

Of the technology involved:

This case concerns industrial machines known as
“screeners” that use progressively smaller openings to
sort rocks and other forms of aggregate material into piles
of similarly-sized material, such as sand or gravel. An
illustration of a screener with all of its components is
shown below.

Of the matter of obviousness

The case then was submitted to the jury. On the issue
of obviousness, over Powerscreen’s objection, the jury was
instructed that Powerscreen must “prove by clear and
convincing evidence” that any applicable prior art machine
“was fully operational and functional” prior to
September 7, 1993. J.A. 12,953. The jury determined that
“[c]laims 1 to 7 and 9 of [Metso’s] ’618 patent [we]re not
invalid as obvious under 35 U.S.C. § 103 in view of the
prior art.”


See Metso Minerals,
Inc. v. Powerscreen Int’l Distrib. Ltd., 833 F. Supp. 2d 282
(E.D.N.Y. 2011). Though the court admitted that its jury
instruction on obviousness requiring prior art to be fully
functional and operational was in error, it reasoned that
the error did not “result[] in substantial prejudice” because
“the clear implication of [the trial] testimony [was]
that the[] [relevant prior art] conveyors were fully operational
and functional,” and that a new trial was not
warranted because “there was still sufficient evidence
from which the jury could conclude that the ’618 patent
was not obvious in view of” the prior art. Id. at 304.

The CAFC did not agree about the impact of the improper jury

We agree with Powerscreen that the district court’s
instruction was erroneous. A prior art reference does not
need to be fully functional to qualify as prior art; indeed, a
prior art reference “need not work” and may even be
“‘inoperative.’” Geo M. Martin Co. v. Alliance Machine
Sys. Int’l LLC, 618 F.3d 1294, 1302 (Fed. Cir. 2010)
(quoting Beckman Instruments, Inc. v. LKB Produkter AB,
892 F.2d 1547, 1551 (Fed. Cir. 1989)).
This error was not harmless. The district court’s error
is only harmless if the erroneous jury instruction “could
not have changed the result.” CytoLogix Corp. v. Ventana
Med. Sys., Inc., 424 F.3d 1168, 1174 (Fed. Cir. 2005)
(quotation marks omitted); Sulzer Textil A.G. v. Picanol
N.V., 358 F.3d 1356, 1364 (Fed. Cir. 2004) (quotation
marks omitted).

Of the procedure for obviousness:

As we have held, “[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.’” Wyers,
616 F.3d at 1237 (quoting 35 U.S.C. § 103). Two inquiries—
the prima facie case and secondary considerations—
therefore guide a determination of obviousness. See id.
(citing Graham v. John Deere Co. of Kan. City, 383 U.S. 1

Here, the parties dispute the strength of the
prima facie case of obviousness, and Metso argues that
various secondary considerations including commercial
success, unexpected results, and alleged copying counsel
against an overall obviousness finding.


We therefore conclude that Powerscreen’s prima facie
case of obviousness is strong
, even viewing the evidence in
a light favorable to Metso. This is because, following KSR,
this is a case where, in our view, “market demand . . .
dr[ove] design trends,” 550 U.S. at 419, “there [wa]s a
design need or market pressure to solve a problem,” and
“there [were] a finite number of . . . solutions” that could
have produced the desired outcome, id. at 421. Here, the
apparent solution to maintain a compact machine for
transport while increasing the screener’s output capacity
required a machine that folded the lateral conveyors in as
compact a manner as possible.

As to unexpected results:

Metso next argues that “[t]he double-fold, L design of
the ’618 patent had the new and unexpected result of
enabling dramatically higher product output and longer
lateral conveyors.” Metso Br. 49. However, this allegedly
unexpected result was the result of manufacturing
screeners with wider central conveyors (as opposed to the
side-folded lateral conveyors at issue here). This widening
of the central conveyor allowed more material to be sorted
and distributed to the lateral delivery conveyors, but the
width of the central conveyor is not part of the limitations
of the claimed invention
. This factor therefore does nothing
to undermine Powerscreen’s obviousness claim.

As to copying

The last secondary consideration Metso emphasizes is
copying. It notes the district court’s finding that “the
Defendants willfully and deliberately copied the ’618
patent” and “evinced ostrich-like, head-in-the-sand behavior”
when creating the its infringing screener


that “[o]ur case law holds that copying requires evidence
of efforts to replicate a specific product,” Wyers, 616 F.3d
at 1246, copying has not been established here.


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