Thursday, December 13, 2012

CAFC emphasizes need for record to allow meaningful appellate review

The outcome in Osram v. American Induction

OSRAM SYLVANIA, Inc., (“OSRAM”) appeals the district
court’s grant of summary judgment of invalidity of
claims 1, 17, 25, 27, and 32 of U.S. Patent No. 5,834,905
(the “’905 patent”), issued to Valery A. Godyak et al., and
assigned to OSRAM. Because we find genuine issues of
material fact that preclude a finding of anticipation and
obviousness on summary judgment, and because we find
that the district court erred in failing to consider objective
indicia of nonobviousness, we reverse and remand for
proceedings in accordance with this ruling.

Of burden:

We begin by addressing the district court’s finding
that the Anderson ’334 patent anticipates claim 32 of the
’905 patent. A patent claim is anticipated if each and
every limitation is found in a single prior art reference.
35 U.S.C. § 102. Patents are presumed to be valid and
invalidity must be proven by clear and convincing evidence.
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238,
2242, 180 L. Ed. 2d 131 (2011). OSRAM argues that AITI
faced an enhanced burden in establishing anticipation
because the examiner considered the Anderson ’334
patent during the prosecution of the ’905 patent. While
prior consideration of a reference during prosecution may
carry some weight, the burden to prove invalidity does not
change; at all times, it remains a showing “by clear and
convincing evidence.” Id.; see also Tokai, 632 F.3d at

Of a genus anticipating a species:

AITI primarily relies on the legal argument that
“the disclosure of a small genus may anticipate the species
of that genus even if the species are not themselves
recited.” Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001). Referencing
our decisions in Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991 (Fed. Cir. 2006) and ClearValue, Inc. v.
Pearl River Polymers, Inc., 668 F.3d 1340 (Fed. Cir. 2012),
AITI asserts that the range in the Anderson ’334 patent,
which completely encompasses the range in the ’905
patent, is sufficient to disclose the claimed buffer gas
pressure in the ’905 patent.

The CAFC noted the law:

We disagree. While it is true that an earlier disclosed
genus may, in certain circumstances, anticipate a later
species, this inquiry necessarily includes a factual component.
See, e.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008) (“[W]hether a generic disclosure
necessarily anticipates everything within the genus .
. . depends on the factual aspects of the specific disclosure
and the particular products at issue.”); Atofina, 441 F.3d
at 999; In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994). For
example, in Atofina we analyzed a patent claiming a
method of synthesizing difluoromethane at a temperature
between 330-450 degrees Celsius. Atofina, 441 F.3d at
993. The prior art, in contrast, disclosed a broad temperature
range of 100-500 degrees Celsius. Id. at 999. In
Atofina, we reversed the district court’s finding of anticipation
following a bench trial and we explained that our
holding was premised on the “considerable difference
between the claimed [temperature] range and the range
in the prior art.” Id. Our decision in Atofina clarified
that the prior art’s teaching of a broad genus does not
necessarily disclose every species within that genus. Id.
Under the circumstances presented in Atofina, “no reasonable
fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to
anticipate this limitation of the claim.” Id.

Note "how" the CAFC handled "reasonable expectation of success":

Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1361 (Fed. Cir. 2007); see also Amgen, Inc. v. F.
Hoffmann-La Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir.
2009) (“An obviousness determination requires that a
skilled artisan would have perceived a reasonable expectation
of success in making the invention in light of the
prior art.” (citations omitted)). The Supreme Court has
warned, however, that, while an analysis of any teaching,
suggestion, or motivation to combine known elements is
useful to an obviousness analysis, the overall obviousness
inquiry must be expansive and flexible. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 415, 419 (2007).


as OSRAM correctly
notes, both this Circuit and the Ninth Circuit repeatedly
have made clear that a trial court must at least provide
its analysis and grounds for entering judgment somewhere
in the record. AITI counters that the district
court’s findings are ascertainable from the parties’ own
arguments and again contends that, because we review
judgments not opinions, we are free to affirm on any
ground supported by the record.


It is not our role to scour the record and search for
something to justify a lower court’s conclusions, particularly
at the summary judgment stage. Whether dealing
with an issue of law like claim construction or an issue of
fact such as infringement, this court must be furnished
“sufficient findings and reasoning to permit meaningful
appellate scrutiny.” Nazomi Communs., Inc. v. Arm
Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005)
(quoting Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed.
Cir. 1997)). Where, as here, the record is devoid of meaningful
analysis, we will not conduct such an analysis in
the first instance. Id; see also Research Corp. Techs. v.
Microsoft Corp., 536 F.3d 1247, 1254 (Fed. Cir. 2008)
(“Microsoft’s motions for summary judgment were granted
without a proper analysis regarding inequitable conduct.
This court therefore lacks findings and conclusions for
adequate review.”). We previously have had occasion to
remind this very district court of these important principles;
we do so once more here.


AITI tries to limit TriMed to scenarios where the
district court explicitly references only “common sense” as
the basis for its obviousness findings. There is no justification
for limiting TriMed in that fashion, however. The
point made there, as here, is that the trial court must
explain how it reached the conclusions it does, particularly
where there is evidence in the record supporting the
non-movant’s position. AITI’s request that we forgive the
lower court’s failure to explain its ruling—and insistence
that we should review the record in the first instance to
ascertain what the lower court might have been thinking—
rings particularly hollow given AITI’s failure to
respond to the trial court’s order to submit findings of fact
and conclusions of law.


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