Tuesday, January 31, 2012

KRIPPELZ loses to Ford at CAFC

The conclusion:

Because claim 2 of the ’903 patent is invalid, we need not reach the other issues put forward by the parties, i.e., the district court’s summary judgment of infringement and its willfulness analysis. Those decisions are now moot and as such are vacated.

We therefore reverse the district court’s denial of JMOL of invalidity, vacate its summary judgment of infringement and its willfulness analysis, and remand for entry of judgment of non-liability for Ford.

The CAFC issued a reminder about the impact of drawings:

This court has repeatedly cautioned against overreliance on drawings that are neither expressly to scale nor linked to quantitative values in the specification. See Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005); Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000); In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). However, Ford does not appeal, and so we do not take up, the trial court’s denial of Ford’s motion to exclude Dr. Hansler’s ray trace diagrams. See Tr. of Dec. 8, 2008 Proceedings, at 39:19–22, J.A. 8349, 8387. In light of Ford’s decision to not appeal the admis- sion of this evidence, it was properly before the jury. On the basis of Dr. Hansler’s testimony, we cannot say that no reasonable jury could have concluded that Figure 17’s disclosure was not anticipating.

Ford won for a different reason:

DuBois expressly states that other embodiments could use lamps in addition to the one disclosed in its figures, including “a headlight, parking light, or other body light.” DuBois at 2, J.A. 13432. The evidence at trial—including testimony from Dr. Hansler himself—was that a headlight (as that word was used in DuBois) creates a “beam of light.” Trial Tr. 531:25–532:2, J.A. 9033–34. Dr. Hansler’s “ray trace” diagrams of figure 17 notwithstanding, there is no question that DuBois’s disclosure of a “headlight” teaches the required “beam of light.”

Dr. Hansler also opined to the jury that any beam in DuBois, even if it was a beam, did not anticipate because it was not necessarily “conical.” He pointed to DuBois’s discussion of “lighting the pavement obliquely on the surface of a rectangle” adjacent to the vehicle. JMOL Op., 750 F. Supp. 2d at 945; see also DuBois (trans.) at 2, J.A. 13432. Dr. Hansler testified that it is “not possible” for a conical beam of light to illuminate a rectangle. Trial Tr. 555:14–19, J.A. 9957. While expressing some skepticism about this reasoning, the district court nevertheless held that a jury could reasonably agree with it.

We disagree as a matter of law. While DuBois discusses illuminating the area within a rectangle on the pavement next to the car, nowhere does it require that such illumination be only with non-conical light beams. Indeed, many figures in DuBois depict triangles of light extending from various lamps to the surface of the ground. There is no language in DuBois disavowing the most natural interpretation of those triangles, i.e., as two- dimensional depictions of light cones.

The district court made a legal error as to "teaching away" -->

First and foremost, teaching away is not relevant to an anticipation analysis; it is only a component of an obviousness analysis. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Secondly, the opinions of Dr. Hansler are not a substitute for the actual DuBois disclosure. When all elements of the device are shown in a single prior art reference, as here, the question of “teaching away” does not arise.

The concept of "obvious design choice" arose in a footnote:

Though it is unnecessary to reach the issue here, we further believe that the requirement of a light beam that is “conical” (ignoring, for the moment, the reasons just discussed why DuBois satisfies that limitation) would almost certainly be an obvious modification to DuBois precluding patentability under 35 U.S.C. § 103.


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