Wyers v. Master Lock Co., 2009-1412 (Fed. Cir. July 22, 2010).
A jury found that an accused infringer failed to show by clear and convincing evidence that claims of three patents covering barbell-shaped hitch pin locks that secure trailers to cars would have been obvious. The Federal Circuit reversed, finding that all of the claims would have been obvious as a matter of law.
Whether an invention would have been obvious at the time it was made is a mixed question of law and fact. In other words, the ultimate determination of obviousness is a question of law, and that determination is based on the following underlying factual determinations: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations, such as commercial success.
On (1), the Federal Circuit determined that as a matter of law, the district court erred in finding that a key prior art patent was not in the same field as the patents-in-suit. On (2), the Federal Circuit reiterated that the ultimate inference as to the existence of a motivation to combine references may boil down to a question of “common sense” appropriate for resolution on summary judgment. With these principles in mind, the Federal Circuit concluded that it was a matter of “common sense” to combine the key prior art patent with prior art barbell locks in order to arrive at the invention claimed in two of the patents-in-suit, and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. The court similarly concluded that it was a matter of common sense that a flat external seal used in the prior art pad-locks could be combined with a barbell-shaped hitch pin lock, thereby rendering the third patent-in-suit obvious.
The Federal Circuit rejected the patentee’s argument that the accused infringer itself did not consider the key prior art patent to be invalidating in its own patent application for a related technology—“Obviousness protects the public at large, not a particular infringer, and one is not estopped from asserting the invalidity of a patent by the fact that one has previously made an attempt to procure a patent for substantially the same invention.” It also found that the patentee failed to establish a nexus between the evidence of commercial success and the patented invention, and also failed to establish copying. According to the Federal Circuit, “not every competing product that arguably falls within the scope of a patent is evidence of copying; otherwise, every infringement suit would automatically confirm the nonobviousness of the patent.”
Judge Linn concurred, but wrote separately “to address concerns raised following the Supreme Court’s decision in KSR with respect to general verdicts relating to obviousness.” He noted that “to facilitate review and reveal more clearly the jury’s underlying factual findings,” the Federal Circuit encourages trial court judges to provide juries with special interrogatories on obviousness. But absent any such special interrogatories, the Federal Circuit must “first presume that the jury resolved the underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if they are supported by substantial evidence” and then “examine the legal conclusion de novo to see whether it is correct in light of the presumed jury fact findings.”
A copy of the opinion can be found here.