A grant of summary judgment, holding that patent claims were invalid as anticipated and obvious over prior art, was overturned because the existence of genuine issues of material fact precluded summary judgment and because the court failed to consider objective indicia of nonobviousness.
An assignee of an electrodeless lamp patent sued a manufacturer for infringement, and the manufacturer brought non-infringement, invalidity, and unenforceability counterclaims. Although the district court initially found that genuine issues of material fact precluded the parties’ cross-motions for summary judgment, upon reconsideration, the court declared the patent claims invalid due to anticipation and obviousness. The assignee appealed after a bench trial finding no inequitable conduct.
The Federal Circuit reversed and remanded because genuine issues of material fact precluded findings of anticipation and obviousness on summary judgment and because the court failed to consider objective indicia of nonobviousness. The anticipation inquiry required consideration of whether “an earlier disclosed genus may, in certain circumstances, anticipate a later species,” which consideration “necessarily includes a factual component.” Reviewing the evidence “in the light most favorable to the non-moving party,” reversal was required because the district court failed “to justify its complete rejection of [the assignee’s] expert testimony” and failed to support its statement that a limitation in prior art completely encompassed the patent at issue.
For obviousness, the district court failed to “make any specific findings of fact and gave no basis—other than an admission that it previously failed to consider submissions by the parties—for reversing its prior statement that disputed issues of fact existed.” Rather, “a trial court must at least provide its analysis and grounds for entering judgment somewhere in the record” and the Federal Circuit “must be furnished ‘sufficient findings and reasoning to permit meaningful appellate scrutiny.’”
Finally, reversal was also required on the issue of obviousness because the district court failed to consider the assignee’s unrebutted evidence of secondary considerations of non-obviousness, including long felt need, failure of others, and industry praise.
A copy of the opinion can be found here.