Malico Inc. v. Cooler Master USA Inc.
Addressing the need for factual findings to support a finding of obviousness, the U.S. Court of Appeals for the Federal Circuit vacated the lower court’s decision invalidating a patent, determining that the requisite findings to support an invalidity determination of obviousness were not made. Malico Inc. v. Cooler Master USA Inc., Case No. 13-1680 (Fed. Cir., Nov. 17, 2014) (Chen, J.) (non-precedential).
Malico sued Cooler Master and LSI Logic for infringement of its patented heat sink technology for cooling electronic components. Cooler Master and LSI introduced prior art and expert testimony that Malico’s patent was obvious in view of pre-existing heat sink technology and moved for summary judgment on invalidity. In opposing defendants’ motion, Malico offered no rebuttal expert testimony and failed to present admissible evidence of secondary conditions. The district court granted defendants’ motion for summary judgment of invalidity and concluded that Malico’s patent was merely an obvious improvement over the prior art. Malico appealed.
Reviewing the invalidity determination, the Federal Circuit found that the district court failed to explain how the prior art either disclosed or could be modified in an obvious manner to meet three limitations recited in the claims of the Malico patent. The Federal Circuit stated that its precedent is clear that obviousness is a question of law based on underlying factual findings. Even when the prior art does not teach each claim limitation, a claimed invention may be obvious so long as the record contains some reason that would cause one of skill in the art to make the modifications needed to obtain the claimed invention.
The Federal Circuit observed that the district court made no factual findings comparing certain claim elements of the Malico patent with the prior art, and that no analysis of why a skilled artisan would modify the prior art was performed. Though some invalidity analysis was provided in defendants’ expert report, the district court did not adopt the expert’s opinions as its own. But even if it had, the Federal Circuit explained that where the expert’s analysis fell short, the district court must make findings sufficient to support its determination that Malico’s patent was an obvious improvement over the prior art. Consequently, the Federal Circuit remanded the invalidity portion of the case.