The Federal Circuit found claims directed to an improvement to an industrial bundle breaker to be obvious after weighing teachings of prior art machines and considering secondary considerations of non-obviousness. Arguments that one particular prior art machine would require extensive reengineering to meet the claims in question were deemed irrelevant because the claims do not recite engineering details related to such a redesign. Further arguments that another particular prior art machine did not meet the improvements of the claim were dismissed because any production standards defining such an improvement were not recited in the claims. The court also considered evidence of secondary considerations of non-obviousness, but found it did not weigh against obviousness.
Following a trial that resulted in a hung jury, the United States District Court for the Northern District of California ruled as a matter of law that U.S. Patent No. 6,655,566 (the “‘566 patent”) would have been obvious at the time of invention. Geo. M. Martin Co. v. Alliance Mach. Sys. Intl, LLC, 634 F. Supp. 2d 1024 (2008) (JMOL Opinion). After rejecting all of Martin’s non-obviousness arguments, the Federal Circuit affirmed.
The ‘566 patent describes an improvement to a bundle breaker used to separate stacked sheets of corrugated board along perforations. A series of pneumatic actuators are positioned above the sheets to accommodate any difference in heights of the stacks. One prior art machine provided a pneumatic adjusting system below the stacks. The trial court found that, as a matter of law, the differences between the prior art and the claimed improvement were minimal. The Trust’s expert admitted that there were only a discrete number of possible design options for choosing the location of the pneumatic actuators, the top, the bottom, or both top and bottom. As such, the court found the difference between a bottom-up approach in the prior art design and a top-down approach in the ‘566 patent to be obvious. The difference was exactly the type of “finite number of identified, predictable solutions” that justified a legal conclusion that the result, when expected, is “the product not of innovation but of ordinary skill and common sense.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). The Trust argued that one could not simply flip the placement of the actuators of the prior art machine from bottom to top without overcoming significant engineering obstacles. The court dismissed such reasoning as irrelevant because no engineering details related to such a redesign were required in the claims.
The Trust also argued that another prior art machine could not render the claimed “improvement” obvious, as it failed to operate at commercially acceptable speeds. The court found, however, that if the patentee intended to claim an improvement to be measured against a commercial production standard, it should have explicitly done so in the claims or argued on appeal for a construction of the claimed structure that contains such a standard.
The court also addressed evidence of secondary considerations of non-obviousness, including commercial success, long felt but unsolved needs, industry praise, copying, and failure of others. To the extent that any evidence could have weighed in favor of patentability, the court reasoned that such evidence was not due to the claimed invention, but rather due to pre-existing market share or unclaimed features.
In view of Martin v. Alliance Machine, patent applicants should consider including disclosure describing, and at least some narrower claims covering, the full capabilities, including control or operational features, of the product to be protected. In less complex or crowded technology areas, when formulating claims, applicants should consider including details related to any particular difficulties overcome in product development.