Thursday, June 10, 2010

Judge using "common sense" shorthand bounced by CAFC

In an obviousness determination:

the inquiry of whether the improvement is more than the
predictable use of prior art elements according to their
established functions.” (...) is factual
in nature.

The CAFC noted:

Answering this question usually entails
considering the “interrelated teachings of multiple pat-
ents; the effects of demands known to the design commu-
nity or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in
the art, all in order to determine whether there was an
apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” KSR, 550 U.S. at
418. What a reference teaches, whether there is a trend
or demand in the relevant marketplace or design commu-
nity, the background knowledge of one of skill in the art—
these are all questions reserved for the finder of fact. See
Digital Control, Inc. v. Charles Mach. Works, 437 F.3d
1309, 1316 (Fed. Cir. 2006) (“[W]hat a reference teaches is
a question of fact . . . .”); Monarch Knitting Mach. Corp. v.
Sulzer Morat GmbH, 139 F.3d 877, 882 (Fed. Cir. 1998)
(“Whether the prior art discloses a ‘trend’ is a question of
fact.”); Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1363
(Fed. Cir. 1999) (concluding that a genuine issue of mate-
rial fact existed regarding the background knowledge of
one of skill in the art). These factual questions are not
separate and distinct from those set out in Graham;
rather, they fall comfortably within those familiar catego-
ries of factual inquires. See, e.g., Dystar, 464 F.3d at 1360
(noting that what the prior art teaches is a subsidiary
determination of the scope and content of the prior art).

The "common sense" matter from KSR arises:

Stryker attempts to circumvent these genuine issues
of material fact by suggesting that the claimed subject
matter would have been obvious because it is, at least in
part, a commonsense solution to a known problem. As we
explained in Perfect Web Technologies, Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009), an obviousness
analysis “may include recourse to logic, judgment, and
common sense available to the person of ordinary skill
that do not necessarily require explication in any refer-
ence or expert opinion.” Although reliance on common
sense does not require a specific evidentiary basis, “on
summary judgment, to invoke ‘common sense’ or any
other basis for extrapolating from prior art to a conclusion
of obviousness, a district court must articulate its reason-
ing with sufficient clarity for review.” Id. at 1330. See
also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[T]here must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness.”). While Rule 52(a)(3) of the Federal Rules
of Civil Procedure contains the pertinent qualification
that a “court is not required to state findings or conclu-
sions when ruling on a motion under Rule 12 or 56,” that
rule “does not relieve a court of the burden of stating its
reasons somewhere in the record when its underlying
holdings would otherwise be ambiguous or inascertain-
able [sic],” Couveau v. Am. Airlines, Inc., 218 F.3d 1078,
1081 n.3 (9th Cir. 2000) (citation omitted). “Assuredly, to
know the reasoning a district court used in deciding to
grant summary judgment facilitates the task of a review-
ing court, and there does exist a risk in complicated cases
of an unnecessary reversal if the logic that resulted in the
grant of summary judgment cannot be discerned.” Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F2d. 1015, 1020
(Fed. Cir. 1985), overruled on other grounds by Midwest
Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed.
Cir. 1999). Both the record in this case and the order
granting Stryker’s motion for summary judgment are
devoid of such reasoning. Instead of supporting its obvi-
ousness analysis with cogent reasoning, the order merely
states that “[a] common sense [sic] solution to this prob-
lem [i.e., pin migration] involves stabilizing the pin
against . . . displacement . . . [and] the logical solution
would be to select a prior art plate that had holes with an
appropriate diameter . . . .” Order Granting Stryker’s
Mot. For Summ. J. of Invalidity 14. Neither the record
before us nor the order of the district court explains why
one of ordinary skill in the art at the time of the invention
would have found replacing a cast normally used to
stabilize a pin with a subcutaneous metal plate to be a
logical, commonsense solution to this problem. Merely
saying that an invention is a logical, commonsense solu-
tion to a known problem does not make it so.

As to the judge:

We evaluate a request to reassign a matter to a differ-
ent judge under the law of the relevant regional circuit,
Research Corp. Technologies. v. Microsoft Corp., 536 F.3d
1247, 1255 (Fed. Cir. 2008), here, the Ninth Circuit. In
the Ninth Circuit, reassignment is appropriate if personal
bias or unusual circumstances are shown. Smith v.
Mulvaney, 827 F.2d 558, 562 (9th Cir. 1987). When
determining whether unusual circumstances exist, the
Ninth Circuit considers the following factors:
(1) whether the original judge would reasonably
be expected upon remand to have substantial dif-
ficulty in putting out of his or her mind previ-
ously-expressed views or findings determined to
be erroneous or based on evidence that must be
rejected, (2) whether reassignment is advisable to
preserve the appearance of justice, and (3)
whether reassignment would entail waste and
duplication out of proportion to any gain in pre-
serving the appearance of fairness.
Id. at 563.
We conclude that reassignment is warranted here.
The district court has now been reversed twice after
entering summary judgment against TriMed, in both
instances simply signing Stryker’s proposed statement of
law and facts relevant to the decided issues, a disfavored
practice in the Ninth Circuit, see Living Designs, Inc. v.
E.I. Dupont De Nemours & Co., 431 F.3d 353, 373 (9th
Cir. 2005) (noting that the Ninth Circuit has “criticized
district courts that ‘engaged in the “regrettable practice”
of adopting the findings drafted by the prevailing party
wholesale.’” (citation omitted)). Although mindful of the
burden reassignment places on judicial resources, given
the particular circumstances present here, we are con-
vinced that reassigning this matter to a different judge is
necessary to preserve the appearance of justice. Thus,
pursuant to our supervisory authority under 28 U.S.C. §
2106, we remand this case to the Chief Judge of the
United States District Court for the Central District of
California to determine different district judge.


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