Friday, August 20, 2010

"Bundle breaker" patent broken

The patentee lost in Martin v. Alliance, with claims
found obvious:

Following a trial for patent infringement that resulted
in a hung jury, the United States District Court for the
Northern District of California ruled as a matter of law
that U.S. Patent No. 6,655,566 (the “’566 patent”) would
have been obvious at the time of invention. Geo. M.
Martin Co. v. Alliance Mach. Sys. Int’l, LLC, 634 F. Supp.
2d 1024 (2008) (JMOL Opinion). Because the record
supports the trial court’s judgment, this court affirms.

The patent was about bundle breakers ["“bundle breaker” is a
machine used to separate
stacked sheets of corrugated board. " ]

KSR played a role in this obviousness case:

Bottom versus top is exactly the type of “finite
number of identified, predictable solutions” that justifies
a legal conclusion that the result, when expected, is “the
product not of innovation but of ordinary skill and com-
mon sense.” KSR, 550 U.S. at 421.

References under 103 do not have to be enabled as to the
invention in question:

Under an obviousness analysis, a refer-
ence need not work to qualify as prior art; “it qualifies as
prior art, regardless, for whatever is disclosed therein.”
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1357 (Fed. Cir. 2003). “Even if a reference discloses
an inoperative device, it is prior art for all that it
teaches.” Beckman Instruments, Inc. v. LKB Produkter
AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).


To be clear, prior art must teach a person of ordinary
skill to make an apparatus that works for its intended
purpose. Beckman Instruments, 892 F.2d at 1551. If the
Visy machine did not do so on its own, Alliance would
have needed to establish that a person of ordinary skill
would have nonetheless been able to make a working
In this case, however, the record shows that
the Visy machine did work, insofar as it was able to do
what the preamble of claim 1 required, namely, “sepa-
rate[] bundles from a log.” Even Mr. Fankhauser testified
that the Visy machine was able to break bundles without
denting the topciently small.”

The term "comprising" was discussed:

Although “the fact that the
patentee has chosen the Jepson form of the claim evi-
dences the intention to use the preamble to define, in
part, the structural elements of his claimed invention,”
Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d
1022, 1029 (Fed. Cir. 2002) (internal quotation marks
omitted), the extent of the claimed “improvement” is
defined only by the body of the claim. After all, the tran-
sition of the claim contains the phrase “said improvement
comprising.” “Comprising” is a term of art that indicates
that only what follows is essential. Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus, if
the patentee intended to claim an improvement that
included a structure for “reliable breaking” measured
against some kind of commercial production standard, it
should have explicitly done so or argued on appeal for a
construction of “compliance structure” that contains such
a standard.

As to secondary considerations:

Secondary considerations of non-obviousness must be
considered when present. Sud-Chemie, Inc. v. Multisorb
Techs., Inc., 554 F.3d 1001, 1008 (Fed. Cir. 2009). As the
Supreme Court recently reaffirmed, “‘[s]uch secondary
considerations as commercial success, long felt but un-
solved needs, failure of others, etc., might be utilized to
give light to the circumstances surrounding the origin of
the subject matter sought to be patented.’” KSR, 550 U.S.
at 406 (quoting Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966)). In some rare instances, the
secondary consideration of simultaneous invention might
also supply “indicia of ‘obviousness.’” Ecolochem, Inc. v.
S. Cal. Edison Co., 227 F.3d 1361, 1376, 79 (Fed. Cir.
2000) (quoting Graham, 383 U.S. at 17-18).


The commercial success of a product is relevant to the
non-obviousness of a claim only insofar as the success of
the product is due to the claimed invention. Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006).
Here, Alliance conclusively established that much of
George Martin’s commercial success was due to Martin’s
pre-existing market share in the stacker market, which,
according to Martin’s president, gave it a “huge advan-
tage” in selling other products because it allowed Martin
to sell a “single-source system.” Thus, this factor carries
little weight.

Where the differences
between the prior art and the claimed invention are as
minimal as they are here, however, it cannot be said that
any long-felt need was unsolved.

Internal email evidence arose:

Industry praise must also be linked to the patented
invention. Power-One, Inc. v. Artesyn Techs., Inc., 599
F.3d 1343, 1352 (Fed. Cir. 2010). The only evidence of
industry praise on which the Trust reasonably relies―as
opposed to self-serving statements by Martin’s president
that the patented feature offers “increased productivity
and increased profitability”―is an internal Alliance email
in which an Alliance employee reports a customer’s
statement that “the Martin breaker is the cat’s meow.”
But that same email notes that the customer also chose
the Martin Quik-Break because “[t]he interface between
the stacker and the breaker will be handled by a single
vendor.” As with the commercial success factor, this
reference to Martin’s market share in the stacker market
reduces the impact that this evidence could have in establishing industry praise.

Evidence of copying arose in this case:

Finally, the Trust points to evidence that Alliance cop-
ied the claimed invention, namely, Alliance’s internal
“Bundle Breaker Action Plan” wherein Alliance analyzed
the “Geo Martin concept,” notes that the design is pat-
ented, and then proposes adding its own “floating platens
capability” to its bundle breaker. This court has noted,
however, “that a showing of copying is only equivocal
evidence of non-obviousness in the absence of more com-
pelling objective indicia of other secondary considera-
tions.” Echolochem, 227 F.3d at 1380. The Trust’s
evidence is hardly compelling here, where the same
internal memorandum suggested that Alliance’s proposed
design was the “same [as the] Pallmac platen concept” but
“flipped.” Thus, this evidence does not provide much help
to the Trust.

The topic of simultaneous invention was discussed:

Independently made, simultaneous inventions, made
“within a comparatively short space of time,” are persua-
sive evidence that the claimed apparatus “was the prod-
uct only of ordinary mechanical or engineering skill.”
Concrete Appliances Co. v. Gomery, 269 U.S. 177, 184
(1925). But see Lindemann Maschinenfabrik GMBH v.
Am. Hoist & Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir.
1984) (“Because the statute, 35 U.S.C. § 135, (establishing
and governing interference practice) recognizes the possi-
bility of near simultaneous invention by two or more
equally talented inventors working independently, that
occurrence may or may not be an indication of obvious-
ness when considered in light of all the circumstances.”).
The Trust takes issue with the district court’s reliance on
the invention of the Tecasa machine as a simultaneous

[One needs to ponder this as to the transistor.]

One gets a high school (grade school?) discussion of physics:

The district court
held that the “simple solution” of enlarging the surface
area of the platens would have been apparent to one
having ordinary skill in the art based on the “fundamen-
tal and basic principle of physics” that Force = Pressure ×
Area. JMOL Opinion, 634 F. Supp. 2d at 1037. This
court again agrees with the district court. The Trust
argues that if the solution were so simple, someone at
Visy or Alliance would have suggested it. The record only
shows that Visy and Alliance employees tried to trouble-
shoot or repair the Visy machine, not redesign it. Thus,
their failure to suggest a redesign does not create a rea-
sonable dispute. Indeed, Visy’s Mr. Fankhauser testified
that the relationship between pressure and area was


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