Addressing secondary considerations in an obviousness challenge, the U.S. Court of Appeals for the Federal Circuit held that another invention was a “simultaneous invention” and supplied indicia of obviousness—even though it occurred a year after the earliest possible reduction-to-practice date of the claimed invention. Geo M. Martin Co. v. Alliance Mach. Sys. Int’l, LLC, Case No. 09-1132, -1151 (Fed. Cir., Aug. 20, 2010) (Rader, J.).
Following a trial that resulted in a hung jury, the district court ruled as a matter of law that the patent-in-suit is invalid based on obviousness. The Federal Circuit affirmed. The patent related to an improvement to a bundle breaker, a machine used to separate stacked sheets of corrugated board. Having concluded that the claimed improvement for simultaneously separating multiple stacks of different heights was minimal in view of the prior art machines, the Court turned to secondary considerations. Citing KSR, the Court reiterated that secondary considerations such as commercial success, long felt but unresolved needs and failure of others can shed light on the circumstances surrounding the origin of the subject matter sought to be patented. The Court added that, “[i]n some rare instances, the secondary consideration of simultaneous invention might also supply ‘indicia of obviousness.’”
Relying on the 1925 Supreme Court case of Concrete Appliances, the Court applied the standard that “[i]ndependently made, simultaneous inventions, occurring ‘within a comparatively short space of time,’ are persuasive evidence that the claimed apparatus ‘was the product only of ordinary mechanical or engineering skill.’” The Court, however, noted that it had previously recognized that the statutory patent law governing interferences contemplates “the possibility of near simultaneous invention by two or more equally talented inventors working independently” and that “that occurrence may or may not be an indication of obviousness when considered in light of all the circumstances.”
Here, the claimed invention was reduced to practice as early as 2001. The asserted “simultaneous invention,” the Tecasa machine, met every limitation of every asserted claim of the patent-in-suit and was first known in the United States in June 2002. Rejecting the argument that this timing could not constitute “contemporaneous” invention as a matter of law, the Court held that the inventions were “within a comparatively short space of time,” when compared to the dates of the closest prior art. Specifically, one of the two prior art machines was installed in 1998, while the other one was first sold in 1996. In light of the fact that the claimed invention was allegedly reduced to practice after approximately three and five years, respectively of the prior art machines, the Court found that the invention of the Tecasa machine a year later was “simultaneous.” Accordingly, the Court held that Tecasa machine, “though not determinative of statutory obviousness, [is] strong evidence of what constitutes the level of ordinary skill in the art.”