Wednesday, December 24, 2008

KSR Grinch steals Sundance's Christmas

On Dec. 24, 2008, the CAFC ruled that ED Mich erred in granting patentee-Sundance's motion for
judgment as a matter of law (JMOL) that the ’109 patent was not invalid AND reversed the district
court’s judgment that the asserted claims are nonobvious as a matter of law AND held as a matter of law
that claim 1 of the ’109 patent is invalid for obviousness

The CAFC noted:

In a decision rendered before the Supreme Court’s holding in KSR, the district
court granted Sundance’s motion for JMOL, ruling that “there was not sufficient
evidence for the jury to conclude that one skilled in the art would have combined Hall
and Cramaro so as to arrive at the invention—a segmented tarp used for truck covers.”
Sundance, Inc. v. DeMonte Fabricating Ltd., No. 02-73543, 2006 WL 2708541, at *5
(E.D. Mich. Sept. 20, 2006). In particular, the district court concluded that Hall was
“prior art outside of the truck environment which used segmented tarps,” “a segmented
pool cover,” and “a segmented non truck cover.” Id. at *3-4.

Footnote 1 set out an issue that was discussed in great detail in part I of the opinion, which
was not about obviousness-->

Sundance objected to the admission of the testimony of Mr. Bliss on the
issues of invalidity and noninfringement, arguing that Mr. Bliss was not qualified as a
technical expert, but merely a patent law expert. As explained below, the district court
erroneously admitted the testimony over Sundance’s objection.
Note also:
Mr. Bliss “was not asked to testify in general on patent office practice and procedure.”
Oral Arg. 1:23-1:27, available at

The CAFC noted-->

Admitting testimony from a person such as Mr. Bliss, with no skill in the pertinent
art, serves only to cause mischief and confuse the factfinder. Unless a patent lawyer is
also a qualified technical expert, his testimony on these kinds of technical issues is
improper and thus inadmissible. Because Mr. Bliss was never offered as a technical
expert, and in fact was not qualified as a technical expert, it was an abuse of discretion
for the district court to permit him to testify as an expert on the issues of
noninfringement or invalidity.

Having smoked the use of Mr. Bliss by defendant, the CAFC got to the point
that the "expert" didn't matter.

Thus, Part II of the decision got to the issue of considering the district court’s entry of
JMOL overturning the jury verdict of obviousness.

Initially, the CAFC determined a combination of Hall and Cramaro
satisfies every limitation of claim 1 of the ’109 patent and turned to whether the
combination would have been obvious at the time of the invention.

KSR enters the picture: “[I]n many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR, 127 S. Ct. at 1742. Such a
combination is more likely to be obvious where it “‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields no more
than one would expect from such an arrangement.” Id. at 1740

Contemplate the CAFC line: Secondary considerations of nonobviousness—considered here by the district
court—simply cannot overcome this strong prima facie case of obviousness.


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