A patentee appealed the International Trade Commission’s determination that an accused infringer’s importation and sale of clamp devices did not violate section 337 of the Tariff Act of 1930. The Commission’s decision was affirmed because it was supported by substantial evidence that the asserted claims were obvious.
Holding a patent for a “four-sided, generally rectangular clamp,” the patentee filed a complaint with the International Trade Commission (Commission), asserting that the accused infringer’s importation and sale of clamp devices infringed its patent and thus violated section 337 of the Tariff Act of 1930. An administrative law judge found the asserted patent claims not invalid, but was reversed by the Commission. The Commission found the asserted claims obvious because a prior art clamp was four-sided and generally rectangular, the addition of a hinge would have been obvious to a person having ordinary skill in the art, and the evidence failed to show secondary considerations supporting a finding of nonobviousness. Thus, the Commission found no violation of section 337.
The Federal Circuit affirmed the Commission because its finding that a prior art clamp made the patent obvious was supported by “substantial evidence.” The prior art clamp was four-sided and generally rectangular, and the patentee’s own expert admitted that the only difference between the invention and the prior art clamp was a hinge. The Commission properly found that a hinge was the only difference between the claimed invention and the prior art, and the hinge “was a common sense solution,” which “would have been known to those of ordinary skill in the art to solve a loose parts problem.” In addition, secondary considerations did not merit a finding of nonobviousness because the evidence was insufficient to show a long-felt need or commercial success.
The dissent believed the patentee’s claims were not obvious over prior art. The dissent maintained that the prior art clamp was actually a sixteen-sided clamp with four outer sides that were generally rectangular, and argued that the majority “improperly combine[d] structural and functional claim limitations to conclude that only the operative portion of the clamp must be four-sided and generally rectangular.”
A copy of the opinion can be found here.