Thursday, March 03, 2011

KSR and common sense crush patent in Cimline v. Crafco

Procedurally, this was an appeal of unsuccessful DJ action:

Plaintiff-Appellant Cimline, Inc. (“Cimline”) appeals
the district court’s dismissal of its complaint seeking,
inter alia, a declaration of invalidity or noninfringement
of U.S. Patent No. 5,967,375 (“’375 patent”) and the
court’s sua sponte entry of summary judgment in favor of
Defendant-Appellee Crafco, Inc. (“Crafco”) on its counter-
claim for infringement. Cimline, Inc. v. Crafco, Inc., 672
F. Supp. 2d 916 (D. Minn. 2009).

The appellant won at the CAFC. The patent was found obvious,
courtesy of common sense and KSR.

The CAFC noted:

As a preliminary matter, we find fault with the dis-
trict court’s reliance on pre-KSR decisions and its focus on
whether there existed explicit teachings as to “a reason
that would have prompted a person of ordinary skill in
the relevant field to combine” a powered conveyor with a
sealant melter. Cimline, 672 F. Supp. 2d at 926. The
Supreme Court set forth a flexible inquiry in KSR, which
allows for a court “to take account of ‘the inferences and
creative steps,’ or even routine steps, that an inventor
would employ.” Ball Aerosol & Spec. Container v. Ltd.
Brands, 555 F.3d 984, 993 (Fed. Cir. 2009). When taking
these inferences and creative or routine steps into ac-
count, it may be proper to conclude that the result of a
“combination [of prior art] would have been entirely
predictable and grounded in common sense” under the
proper set of facts. Id.

Our cases which have relied on “common sense” con-
sistently teach that “factfinders may use common sense in
addition to record evidence” to determine the legal issue
of obviousness. Perfect Web Tech., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009); see also Wyers v.
Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010);
Ball Aerosol, 555 F.3d at 993. In bridging the gap be-
tween prior art references and a conclusion of obvious-
ness, the factfinder may rely on the prior art references
themselves, the knowledge of those of ordinary skill in the
art, the nature of the problem to be solved, market forces,
design incentives, the “interrelated teachings of multiple
patents,” “any need or problem known in the field of
endeavor at the time of invention and addressed by the
patent,” or the background knowledge, creativity, and
common sense of the person of ordinary skill. KSR, 550
U.S. at 418–21; see also Ruiz v. A.B. Chance Co., 234 F.3d
654, 665 (Fed. Cir. 2000). While we note that the district
court was without the benefit of our opinions in Perfect
Web and Wyers at the time of its opinion,1 these cases on
“common sense” derive from the Supreme Court’s direc-
tion in KSR and we apply the law as it stands today.


Here, the technology is easily understandable,
even without the assistance of expert opinion. Centricut,
LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir.
2004). Thus, the district court erred in concluding that a
lack of evidence existed as to the underlying factual
considerations of the obviousness analysis. Cimline, 672
F. Supp. 2d at 926-27. The court further erred in apply-
ing the heightened burden placed on expert reports opin-
ing as to obviousness by Innogenetics. 512 F.3d at 1363
(requiring a heightened burden of explanation in an
expert report regarding motivation to combine references
for a technology involving the detection and classification
of hepatitis C genotypes in a biological sample). Our
cases distinguish the need for and breadth of required
expert disclosure when the underlying technology is
“easily understandable.” Compare Perfect Web, 587 F.3d
at 1329-30 with Innogenetics, 512 F.3d at 1363.

Of a procedural nuance:

This case presents the rare procedural occurrence in
which the Appellant, Cimline, failed to file a cross-motion
for summary judgment in response to Crafco’s motion for
summary judgment. The parties have had an opportunity
to be fully heard, however, and there are no disputed
issues of material fact regarding obviousness. Thus, the
legal determination of obviousness is amenable to com-
plete adjudication upon appellate review and we exercise
our authority and discretion to decide this case in the
interest of judicial economy. See Brown v. J.B. Hunt
Transp. Servs., Inc., 586 F.3d 1079, 1088 n.6 (8th Cir.
2009) (disposing of appellant’s claims on appellate review
despite appellant’s failure to file a cross-motion for sum-
mary judgment, where the facts were undisputed); 28
U.S.C. § 2106.

But recall text

The court's dismissal of Geisler's "common sense" argument as "just attorney argument" seems rather harsh. Geisler's argument seems to make good sense, and would seem to merit at least some substantive rejoinder as to why Geisler's results were not necessarily unexpected. Would the Federal Circuit dismiss as "just attorney argument" one that asserts that an invention that make the sun rise in the west and set in the east is an unexpected result? Indeed, Geisler's "common sense" argument would appear to have greater probative value than Soni's unsupported assertion that their improvement was much greater than would have been predicted. Instead of dogmatically in every case dismissing statements of counsel as not probative, one would hope that examiners and the PTO reviewing tribunals would be able to distinguish mere puffery which, I believe, is the type of attorney argument meant to be ignored, from observations that anyone would understand are truly unexpected.

from 86 J. Pat. & Trademark Off. Soc'y [JPTOS] 169 (2004)


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