Friday, September 02, 2011

“Broad conclusory statements” alone are insufficient to establish obviousness

Mytee sought a DJ that its "banana glide" vacuum product did not infringe Harris's two patents, and that the two patents were invalid. As to claim construction, Mytee proposed that the term “apertures” be construed to mean “any holes, slots or openings that serve as liquid extraction nozzles,” and the district court adopted that construc tion. Things then went downhill for Mytee, the plaintiff in the DJ action.

The nub of Mytee's problem on anticipation:

First, Mytee has failed to point to any evidence demonstrating that the Campbell device would be inherently capable of fluid extraction. Instead, Mytee relies on what it contends is a presumption of inherency recognized by this court in In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), given that Campbell’s structure is similar to the structure of the patented device. The Schreiber case, however, did not establish a presumption of inherency for issued patents. It held only that after establishing a prima facie case of anticipation, an examiner can shift the burden to the applicant “to show that the prior art structure did not inherently possess the functionally defined limitations of the claimed apparatus.” Id. at 1478. Second, Mytee’s argument, if accepted, would enable it to circumvent a limitation that Mytee itself proposed during claim construction. Al- though “the recitation of a new intended use for an old product does not make a claim to that old product patentable,” id. at 1477, Mytee waived any inherency argu- ments when it proposed a functional definition for a structural limitation.

And, as to summary judgment on an issue of obviousness:

Mytee has misstated the standard that applies to the party moving for summary judgment when the non- moving party bears the ultimate burden of proof at trial. As the moving party, Harris bore “the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Harris met that burden by informing the court that Mytee had offered no evidence or reasoned argument explaining why it would have been obvious to combine the teachings of at least two of the Wood, Bjorkman, Rowan, and Campbell references. At that point, the burden shifted to Mytee, as the party with the ultimate burden of proof on obviousness, to demonstrate why it would have been obvious to combine the references. That does not mean that Mytee was necessarily required to submit expert testimony. Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004). But “[b]road conclusory statements” alone are insufficient. Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000). Upon review of Mytee’s submissions, we agree with the district court’s characterization that its obviousness arguments are nothing more than “conclusory assertions, gross generalities, and unsupported assumptions made by counsel.” Mytee failed to provide any reason why a person of ordinary skill would have been motivated to combine the references.

Hmm, what happened to the common sense approach of KSR v. Teleflex?

And, an EE as a carpet cleaner?

Mr. Richards stated that a person of ordinary skill in the art would have a high school diploma and two years of experience in the carpet cleaning industry. Harris acknowledges that Mr. Richards did not qualify as a person of ordinary skill in the art under that definition because he had no experience in the carpet cleaning industry. However, Mr. Richards had additional qualifications, including a degree in electrical engineering and experience prosecuting patents for mechanical devices. The district court reviewed Mr. Richards’ expertise and concluded that notwithstanding his lack of experience in carpet cleaning, his experience with mechanical devices would “provide relevant technical expertise in the pertinent art.”


See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (expert testimony admissible where testimony established an “adequate relationship” between witness’s experience and the claimed invention), aff’d, 131 S. Ct. 2060 (May 31, 2011).

AND "hoisted on its own petard" -->

At the summary judgment stage, Mytee proposed that the level of skill in the art could be that of “an ordinary layman with average intelligence.”

Of permanent injunctions:

District court decisions to grant or deny permanent injunctive relief are reviewed for abuse of discretion. eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). Mytee argues that the district court abused its discretion in entering an injunction, because the court’s finding that Harris would be irreparably harmed was based on insufficient evidence.

Of indirect competition:

Mytee sells its Banana Glides to independent carpet cleaners that compete directly with Harris’s franchisees.
The court found that the indirect competition would cause irreparable harm to Harris because Harris’s pat- ented technology was almost exclusively used by its franchisees. Moreover, its franchisees used the technol- ogy as their primary tool for cleaning carpets.

Relying on patented technology:

But Harris submitted evidence demonstrating that its franchisees relied on the advantages of its patented technology to gain an edge in the marketplace. Based on that showing, it was not an abuse of discretion for the court to conclude that the market share enjoyed by Harris’s franchisees would be threatened by the presence of a competitor using the same technology.

Timing in seeking an injunction:

While we have held that delay in seeking an injunction is a factor to be considered in determining whether to issue a preliminary injunction, we have never held that failure to seek a preliminary injunction must be considered as a factor weighing against a court’s issuance of a permanent injunction. See Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1457 (Fed. Cir. 1988) (“The period of delay exercised by a party prior to seeking a preliminary injunction . . . . is but one cir- cumstance that the district court must consider in the context of the totality of the circumstances [in entering a preliminary injunction].”). Mytee has failed to persuade us that we should adopt such a rule. There are significant differences in the requirements and uses of preliminary and permanent injunctions. See Lermer Ger. GmbH v. Lermer Corp., 94 F.3d 1575, 1577 (Fed. Cir. 1996) (“[Pre- liminary and permanent injunctions] are distinct forms of equitable relief that have different prerequisites and serve entirely different purposes.”). Moreover, adopting a rule such as that proposed by Mytee would likely result in a substantial increase in the number of requests for preliminary injunctions; in many cases, such requests would be filed not because of the need for preliminary injunctive relief, but merely to protect the patent owner’s ultimate right to a permanent injunction.

**Cross-reference. In re Mousa (BPAI) involves an In re Best issue: there is citation in the BPAI decision to In re Best, 562 F2d 1252, as to shifting the burden to applicant to demonstrate differences from the prior art.

From IPBiz on In re Kite:

In re Best is cited:

Where the claimed and prior art products are identical or substantially
identical, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of the
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).


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