Monday, October 17, 2011

Del Zotto wins via obviousness defense over Stone Strong

Of the value of experts:

At trial, both sides presented expert testimony as to obvious-ness. This testimony, however, was largely conclusory and so truncated as to be unhelpful. Nevertheless, be-cause the technology at issue is “easily understandable,” expert testimony is not necessary. Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010) (internal quota-tion marks omitted).

Of KSR and common sense:

In particular, the Court emphasized the role of “common sense”: “[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it.” Id. at 421.

Following KSR we held that the legal determination of obviousness, especially where the technology at issue is “easily understandable,” “may include recourse to logic, judgment, and common sense, in lieu of expert testi-mony.” Wyers, 616 F.3d at 1239, 1242. “Thus, in appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of ‘common sense.’” Id. at 1240.

Of combinations of known elements:

In particular, our cases emphasize that “where all of the limitations of the patent were present in the prior art references, and the invention was addressed to a ‘known problem,’ ‘KSR . . . compels [a determination of] obvious-
ness.’” Wyers, 616 F.3d at 1240 (citing Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)). As KSR stated,
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordi-nary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
550 U.S. at 421.

Of references not before the examiner:

Notably, the prior art patents, the ’642 and ’818 patents, were not before the examiner during prosecution, and thus, under KSR, “the rationale underlying the presumption [of validity] . . . seems much diminished.” 550 U.S. at 426; see also Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 2250–51 (2011).

Here, KSR indicates obviousness:

We conclude that, because the ’098 and ’304 patents represent no more than the predictable use of prior art elements to address a known problem, their claims are obvious as a matter of law. See KSR, 550 U.S. at 417, 421. Stone Strong’s own expert testified that, at the time the invention was made, there was a known problem with lifting devices interfering with retaining wall blocks


A skilled artisan would also have perceived a reasonable expecta-tion of success as a result of combining these two ele-ments of the prior art. Wyers, 616 F.3d at 1242 (citing In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reason-able expectation of success.”)). Therefore, it would have been a matter of common sense to combine the lifting device and the alignment mechanism. See Wyers, 616 F.3d at 1241

Of intentional copying:

At trial, as a secondary consideration of nonobviousness, Stone Strong presented evidence that Del Zotto had intentionally copied aspects of its marketing brochure for its patented block system.


In any event, “secondary considerations of nonobviousness . . . simply cannot overcome a strong prima facie case of obviousness.” Wyers, 616 F.3d at 1246. “[W]here the inventions repre-sent[] no more than ‘the predictable use of prior art ele-ments according to their established functions,’ the secondary considerations are inadequate to establish nonobviousness as a matter of law.” Id. (quoting KSR, 550 U.S. at 417). The secondary consideration of copying, even if established by Stone Strong at trial, is insufficient to overcome the strong prima facie case of obviousness discussed above.


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