Summary Judgment granted where plaintiff did not rebut defendant's expert's opinion on obviousness

Judge Fawsett previously held in the Voter Verified v. Election Systems dispute that you can not infringe a surrendered patent. She's now had a chance to address defendant's further summary judgment motion, asking the Court to find one of the claims of the patent invalid for being obvious in view of the prior art.

First, plaintiff objected to the prior art defendant relied on. The court considered some of the art prior art, but found that other references did not qualify because they were not reasonably accessible to the public interested in the art. The reference that didn't make it was purportedly presented at the Fifth International Computer Virus and Security Conference. Defendant asked the court to find this article prior art on the basis that: (1) defendant's expert stated that the paper was presented at the conference; (2) the paper had a legend in the bottom corner of each page stating the conference name. But this wasn't enough. Specifically, there was no evidence in the record concerning the manner in which the paper was published, and how it was made available to persons of interest in the art. Thus, it didn't qualify as prior art for purposes of summary judgment consideration.

That small win, though, didn't carry the day for plaintiff, because the defendant had other art that was considered prior art. The summary judgment dispute turned on whether the claimed invention was obvious in light of the prior art. To resolve this, the court went through the Graham factors and found the subject claim obvious. Defendant's expert opined on each of the factors ((1) the scope and content of the prior art; (2) differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations such as commercial success and satisfaction of a long felt need). Plaintiff disagreed with the expert's conclusions, but does not have appeared to offer any evidence to the contrary. As such, summary judgment was appropriate.

Summary judgment granted. Claim held invalid for being obvious.

Voter Verified v. Election Systems & Software, Inc., Case No. 6:09-CV-01969 (M.D. Fla. Jan. 25, 2011) (J. Fawsett)

Microsoft's appeal brief in Microsoft Word injunction matter

Dennis Crouch at Patently-O has acquired and posted Microsoft's 101-page opening appellate brief in i4i v. Microsoft. Microsoft's argument reads as a who's who in many of patent law's latest major decisions, including

• KSR v. Teleflex -- obviousness of inventions
• Cardiac Pacemakers v. St. Jude Med -- 35 U.S.C. § 271(f) does not apply to method claims (although Microsoft argues in terms of § 271(c))
• In re Seagate -- willful infringement
• eBay v. MercExchange -- injunctions in patent cases

As you will recall, a Texas judge entered an injunction preventing Microsoft from selling versions of Word which can handle custom XML, and ordering Microsoft to pay $290 million in damages. Read my earlier posts here, here, and here.

Microsoft expressed its clear discontent with the proceedings below:

In patent cases, even more than most, the trial judge’s role as a gatekeeper is crucial. As gatekeeper, the judge must define the metes and bounds of a patent through claim construction and then ensure that the evidence presented by the parties’ numerous experts is both reliable and rooted in the facts of the case at hand. And after the jury has rendered its verdict, it is the judge who, before allowing that verdict to become an enforceable judgment, must ensure that the verdict is adequately supported by the evidence and supportable under the law. This gatekeeping function is especially important in patent cases because of the delicate balance struck by patent law to achieve its objective of promoting, rather than stifling, innovation. That balance can be lost if the district court does not protect the process, and patent litigation then becomes a tax on innovation rather than its guardian.

This case stands as a stark example of what can happen in a patent case when a judge abdicates those gatekeeping functions.

* * *

By the time the plaintiffs presented their damages case, the district court had abandoned even the semblance of gatekeeping. ...

* * *

At this point, if the district court had been more faithful to its role as gatekeeper, it should have recognized a trial run amok and interceded to prevent a miscarriage of justice ...

In sum, justice was denied, and the Constitution violated:

This is not justice. If district courts are free to admit theories of infringement that nullify a patent’s claim terms, specification, prosecution history, and title; if they will allow an inventor to validate his patent by testifying without corroboration that he lied about the date of conception; if they will not intercede to preclude manifestly unreliable—indeed, concededly manipulated—surveys of infringing use, or Georgia-Pacific analyses based on “benchmarks” bearing no rational relationship to the accused product, then patent litigation will be reduced to a free-for-all, unbounded by the requirements of the substantive law or the rules of evidence or trial procedure. While that mode of dispute resolution might enrich some plaintiffs and their investors, it hardly can be said to “promote the Progress of Science and the useful Arts.” U.S. Const. art. I, § 8.

Microsoft then presents a 5-pronged attack on the proceedings below:

1. Improper claim construction read a key limitation -- the word "distinct" out of the claims
2. The claims are invalid
3. Insufficient evidence to support indirect infringement finding
4. The $200 million damage award is not "reasonable"
5. Awarding an injunction here is improper

HP and Dell Amicus Briefs

HP and Dell also weighed in. HP and Dell both argued that enjoining sales of Word would impose large hardships, as both of these companies distribute Word. Both companies explained their process for creating images, which are then copied onto new computes. For those computers that include enjoined copies of Word (presumably this number is large, but the amicus briefs are redacted to protect this confidential information), HP and Dell would need to create and test new images, which would cost time and money.

We'll see how i4i responds....

Combining drugs -- "epitome of obviousness?"

Ortho-McNeil sells the pain reliever Ultracet®, which is a combination of acetaminophen (Tylenol®) and tramadol (an analgesic). Ortho sued Teva Pharmaceuticals and Caraco Pharmaceutical Laboratories for infringing U.S. Reissued Patent 39,221, which claims combinations of acetaminophen and tramadol in certain ratios.

The defendants prevailed at the trial level by arguing that the patent was invalid for anticipation and obviousness. Basically, the prior art disclosed a pain reliever made up of acetaminophen, tramadol, and 2 other compounds at varying ratios. The trial court agreed that this rendered the patent obvious and anticipated, and granted summary judgment in favor of the defendants. Ortho appealed.

Obviousness of combining only acetaminophen and tramadol

The Federal Circuit stated the law on obviousness:

Obviousness is ultimately a determination of law, though it is based on questions of fact. [Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc. 424 F.3d 1293, 1302 (Fed. Cir. 2005] Anticipation is a question of fact. Id. Because issued patents enjoy a presumption of validity, obviousness and anticipation must be proven by clear and convincing evidence. Impax Labs., Inc. v. Aventis Pharma., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). When the patent examiner has considered the asserted prior art and basis for the validity challenge during prosecution, the burden of proving invalidity is especially heavy. Id.; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1467 (Fed. Cir. 1990). ...

Inventions in most instances rely upon building blocks long since uncovered, and combine elements that are in some sense already known. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007). The combination of familiar elements according to known methods is likely to be obvious, however, when it does no more than yield predictable results. Id. at 1739. Each case must be decided in its particular context, including the characteristics of the science or technology, the nature of the choices available to one skilled in the art, the specificity of the prior art, and the predictability of results in the area of interest. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1352 (Fed. Cir. 2008).

The Court then relied upon Ortho's expert testimony in deciding that there is a question of fact as to whether or not the claimed combination was obvious, and thus the Court vacated summary judgment on this issue and remanded.

Anticipation of the claimed ratio

The district court improperly resolved disputed questions of fact in reaching this conclusion. What a reference discloses is a question of fact. Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).

Thus, because the parties don't agree as to what the prior art discloses, a question of fact remains.

Obviousness of the claimed ratio

Here, the Federal Circuit was not convinced by Ortho's expert, and agreed with the trial court that no genuine issue of fact existed as to whether or not the claimed ratio was obvious. As such, claim 6 remains invalid for being obvious in light of the prior art.

The dissent -- Judge Mayer

Most interesting in this case (to me at least) is Judge Mayer's dissent. A sampling of his language conveys his opinion this matter:

The claimed invention does nothing more than combine two well-known pain relievers—acetaminophen and tramadol—in a single tablet. Since the prior art clearly and unequivocally taught that these two analgesics could be combined for effective pain relief, the claimed invention is the epitome of obviousness. I therefore respectfully dissent.

Ortho-McNeil Pharmaceutical, Inc. (“Ortho”) did not invent acetaminophen and it did not invent tramadol. ...

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[A]s here, it was manifestly obvious to combine two well-known drugs -- which had previously been administered together -- in a single table...

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Expert opinions must be given short shriftwhen they fly in the face of explicit disclosures in the prior art....

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Simply put, there is nothing even arguably new about what Ortho claims to have invented. I would affirm.

(emphasis added, and citations omitted).

Ortho-McNeil Pharmaceutical, Inc. v. Teva Pharmaceuticals Industries, Inc., Case No. 2008-1549, -1550) (Fed. Cir. Aug. 26, 2009) (nonprecedential)

Jack (well, actually Larry) and the beanstalk

Ok, no actual beanstalk.

In 1994, Larry Proctor purchased in Mexico a package of dry beans, which contained beans of various colors and varieties, including yellow beans, which he brought back to the United States. Over the next three years, he planted and harvested the beans and their producing plants.

Mr. Proctor was issued U.S. Patent No. 5,894,079. A third-party requester (the giant, perhaps?) filed a petition for re-examination of the patent, hoping to invalidate it. The Board held that all of the claims in the '079 were invalid on several grounds, including obviousness.

The Federal Circuit affirmed the obviousness ruling:

One of ordinary skill in the art seeking to reproduce (and hopefully improve) the yellow beans that Proctor brought back from Mexico would have done what he did: plant the beans, harvest the resulting plants for their seeds, planting the latter seeds, and repeat the process two more times.

There is no indication that in taking these steps, Proctor sought to provide beans of the particular narrow range of yellow that the claims specified. To the contrary, it appears that all Proctor was attempting to do was to reproduce the yellow beans he had acquired in Mexico, and hopefully to improve them.

To do so, he followed normal and well-established agricultural methods and techniques for doing that. See KSR Int'l v. Teleflex, 550 U.S. 398, 418 ("a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.")

* * *

In KSR, 550 U.S. at 421, the Supreme Court pointed out that "rigid preventative rules that deny fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it." To reject the Board's obviousness ruling here, would be to deny the Board that very "recourse to common sense" that the Supreme Court there warned against.

In re POD-NERS, L.L.C., 2008-1492 (Re-examination No. 90/005,892)

In re: Mettke -- "On-Line Communication Terminal/Apparatus" is obvious

In a non-precedential decision, the Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and Interference's rejection of Mettke's claim 6 as being obvious in light of the cited references. See In re: Mettke, 2009-1125 (June 25, 2009). U.S. Patent No. 5,602,905 issued to Mettke. Mettke applied for reissue of the '905 patent, and this appeal followed.

Claim 6 provided:

A public on-line Internet terminal comprising:

a central processing unit (CPU);

a video display monitor coupled to the CPU;

a keyboard for providing user interface coupled to the CPU;

a credit card reader swipe device coupled to the CPU for accepting payment by a user;

means for accessing the Internet and allow for user interaction;

software installed into the CPU to allow interface with the Internet and credit card service centers; and

a printer coupled to the CPU.

Mettke argued (pro se) that the prior art was non-analogous because it was not limited solely to an "Internet termina." The Court rejected this argument.

Mettke argued that the his claim could not be used as a hindsight roadmap for piecing together the prior art to show his invention. The Court agreed ("A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)), but explained that the Board's analysis showed how the prior art taught Mettke's invention.

Finally, and the most interesting point from this case for me, Mettke argued that 93 other patents had cited the '905 patent as prior art. Mettke then argued that this indicated his patent was a technology leader, and thus this secondary (objective) consideration shows that his invention was not obvious. The Court responded:

"We draw no generalization about the significance of citations, for we agree with the Board that in this case, where every element of claim 6 is shown in the prior art, performing the same funcatino as in the claim, along with a reference showing a reason to combine the elements, this prima facie case of obviousness is not rebutted by the number of citations alone."

Board affirmed.