After a protracted investigation that involved two separate appellate opinions, the U.S. Court of Appeals for the Federal Circuit affirmed a final determination by the International Trade Commission (ITC) that the asserted claims were invalid due to obviousness. The underlying ITC investigation was initiated when complainant Norgren filed a complaint in October 2006 alleging a violation of Section 337 by respondent SMC based on the infringement of a single patent. Norgren Inc. v. Int’l Trade Comm’n, Case No. 11-1349 (Fed. Cir., Nov. 14, 2012) (Norgren II) (Linn, J.) (Moore, J., dissenting).
The patent at issue relates to structures that connect fluid-conditioning units in a compressed air pipeline. The administrative law judge (ALJ) assigned to the investigation concluded that the accused connectors made by SMC did not infringe the asserted patent, and the ITC declined to review that initial determination. In a prior non-precedential opinion, the Federal Circuit reversed the ALJ’s construction of the term “generally rectangular ported flange,” applied the correct construction and reversed the ITC’s non-infringement determination. Norgren Inc. v. Int’l Trade Comm’n, Case No. 08-11415 (Fed. Cir., May 26, 2009) (Norgren I). The panel thereafter remanded the investigation so that the ALJ could evaluate the question of obviousness of the asserted claims in the first instance under the proper claim construction—i.e., one that does not require a flange having projections on all four sides.
On remand, the ALJ, focusing on the separate claim limitation “a four-sided, generally rectangular clamp,” found that the asserted claims were not invalid under 35 U.S.C. § 103. The ITC, however, reversed the decision of the ALJ, finding that the asserted claims were indeed obvious and thus once again finding no Section 337 violation. The ITC found that a prior art SMC clamp (“old-style SMC connector”) was both four-sided and generally rectangular, that the addition of a hinge to this old-style SMC connector would have been obvious to a person of ordinary skill in the art and that the evidence failed to show secondary considerations to support a finding of non-obviousness. The ITC also found that the additional limitations of the asserted dependent claims did not render them nonobvious. Norgren again appealed to the Federal Circuit.
In the second appeal, the Federal Circuit affirmed the ITC’s determination of obviousness. Although Norgren I addressed similar claim language related to the “flange” limitation, the panel in Norgren II recognized—consistent with the Federal Circuit’s prior claim construction—that the “clamp as a whole, and not merely portions of it, must be four-sided and generally rectangular.” The dispute in Norgren II therefore centered on the factual question of whether the old-style SMC connector is four-sided and generally rectangular. The panel in Norgren II found that there was substantial evidence supporting the ITC’s underlying factual determination that the only difference between the claimed invention and the prior art connector was the existence of the hinge. In particular, because the old-style SMC connector was characterized by the same type of deviation from a “precise rectangle,” i.e., missing corners, as were the accused flanges in Norgren I, the Court once again found that the absence of corners in the prior art clamp did not detract from its pertinence to a claim limitation requiring a “generally rectangular” configuration. The Court therefore concluded that the claimed invention was obvious because the prior art recognized that adding a hinge to pipe couplings eliminated loose parts and made the connector easier to use.
In dissent, Judge Moore, who authored the panel opinion in Norgren I, argued that the ITC’s obviousness determination was not supported by substantial evidence because the prior art did not teach a “four-sided” clamp. She asserted that, if the claim limitation was only a “generally rectangular clamp,” she would not dissent on this point. She could not, however, agree with the majority’s conclusion that that the prior art SMC connector, which had sixteen different sides, met the claim limitation of a “four-sided generally rectangular clamp.”