Friday, September 27, 2013

Rexam wins appeal as to nonobiousness

Meadwestvaco v. Rexam

We find that the district court erred in granting summary
judgment of nonobviousness in favor of plaintiffs
MeadWestVaco Corporation and MeadWestVaco Calmar,
Inc. (collectively “MWV”), the assignees of the ’132
and ’819 patents, and therefore vacate the summary
judgment of nonobviousness. However, we affirm the
district court’s claim constructions, denial of Rexam’s
motion to exclude, and findings of infringement. We also
find that Rexam and Valois waived their indefiniteness
arguments by failing to pursue them at trial. Accordingly,
we affirm-in-part, vacate-in-part, and remand for
further proceedings consistent with this opinion.

Of obviousness

Prior to trial, MWV moved for, and the district court
granted, summary judgment of nonobviousness of the
asserted claims of both patents. Summ. J. Op., 809 F.
Supp. 2d at 474. Valois and Rexam both opposed summary
judgment, arguing that material issues of fact
necessitated a trial.
A patent claim is invalid as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter would have
been obvious at the time the invention was made to a
person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103(a).

The central problem with the district court’s analysis
is that it fails to treat claims 15 and 19, which are not
limited to fragrance products, differently from the asserted
fragrance-specific claims.4 Obviousness, like other
grounds of invalidity, must be analyzed on a claim-byclaim
basis. Ortho Pharm. Corp. v. Smith, 959 F.2d 936,
942 (Fed. Cir. 1992) (concluding that all grounds of invalidity
must be evaluated against individual claims, as
required by the plain language of 35 U.S.C. § 282). The
district court’s analysis of the secondary considerations of
nonobviousness involved only fragrance-specific uses, but
the claims now at issue are not fragrance-specific, and
“‘objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is
offered to support.’” Asyst Techs., Inc. v. Emtrak, Inc., 544
F.3d 1310, 1316 (Fed. Cir. 2008) (quoting In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983)). (...)

In addition to not analyzing claims 15 and 19 separately
from the fragrance-specific claims, the district court
resolved material issues of fact in favor of MWV, which is
inappropriate at the summary judgment stage. See
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1305 (Fed. Cir.
2010) (reversing grant of summary judgment of nonobviousness
for failure to view facts in the light most favorable
to the nonmoving party). For example, Valois
presented evidence contradicting MWV’s claims of commercial
success. Valois Br. 47 (explaining that at least
one large customer elected not to use the more expensive
invisible tube). Valois also cast doubt on MWV’s teaching
away evidence by presenting evidence that EFEP was
marketed for use in “water purification systems, biomedical
tubing, catheters, and food products.” Id. at 43-
44 (citing Daikin presentation materials). Finally, Valois
put forth evidence that one of ordinary skill in the art—a
polymer engineer—would not have believed EFEP was


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