Having previously remanded this patent dispute on claim construction and infringement questions, the U.S. Court of Appeals for the Federal Circuit again reversed a district court for issuing an order that simply adopted a defendant’s version of facts and conclusions of law in support of its motion for summary judgment of invalidity based on obviousness. TriMed Inc. v. Stryker Corp., Case No. 09-1423 (Fed. Cir., June 9, 2010) (Linn, J.).
TriMed sued Stryker for infringement of a patent that covers an implantable device used to set bone fractures. After completion of discovery, the district court granted Stryker’s motion for summary judgment of non-infringement by simply signing Stryker’s Statement of Uncontested Facts and Conclusions of Law. TriMed appealed. In that appeal, the Federal Circuit reversed and remanded on the basis that the district court incorrectly construed a claim term.
On remand, Stryker moved for summary judgment on the grounds of anticipation and obviousness in light of two prior art references. In response, TriMed filed a memorandum contesting nearly every aspect of Stryker’s motion and specifically Stryker’s arguments of obviousness, by arguing that the claimed invention was not a “logical, commonsense solution to a known problem, nor were the results achieved by the invention predictable” from the two prior art references. The district court disregarded TriMed’s arguments and the factual disputes on nearly every issue of Stryker’s motion for summary judgment and, instead, granted Stryker’s motion for summary judgment by simply signing Stryker’s Statement of Uncontested Facts and Conclusions of Law without any changes except for crossing out the anticipation section. TriMed appealed again.
In this appeal, the TriMed argued that the district court improperly resolved a number of material factual disputes regarding obviousness when it granted Stryker’s motion for summary judgment. The Federal Circuit agreed and noted that “[w]hen determining whether a patent claiming a combination of known elements would have been obvious, we ‘must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.’ … This inquiry is factual in nature.” The Federal Circuit noted that the inquiry into whether a combination of known elements would have been obvious entails a consideration of the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace and the background knowledge possessed by a person having ordinary skill in the art—all questions reserved for the finder of fact. Applying these rules of law to TriMed’s appeal, the Federal Circuit deemed that many of these factual inquiries are in dispute and not ripe for summary adjudication.
In an attempt to circumvent these various factual issues, Stryker suggested that the claimed invention would have been obvious because it is a commonsense solution to a known problem. The district court, however, sabotaged Stryker’s ability to pursue this argument on appeal by failing to provide any reasoning for granting Stryker’s motion for summary judgment based on obviousness. The Federal Circuit noted that in order for a district court to invoke “common sense or any other basis for extrapolating from prior art to a conclusion of obviousness” as a basis for granting or denying a motion for summary judgment, it must state in its order its reasoning for finding obviousness. According to the Court, both the record and order granting Stryker’s second motion for summary judgment lack any such reasoning. The Court similarly found the lack of an explanation in the record and order as to why the district court dismissed the evidence of secondary considerations of non-obviousness to be a direct violation of the Federal Circuit’s repeated holdings that evidence of secondary considerations must be considered if present.
In the end, the Federal Circuit reversed the district court’s grant of summary judgment, but did not stop there. The Federal Circuit also remanded the case to the district’s chief judge to determine reassignment to a different district judge to “preserve the appearance of justice” in view of the district court having been reversed twice for simply signing Stryker’s proposed statement of law and facts, a disfavored practice in the Ninth Circuit.