The nature of the problem provided the motivation to combine prior art references and establish a strong prima facie case of obviousness that could not be overcome by secondary indicia of non-obviousness.

The patentee sued its competitor for infringement of patents related to a child safety device for lighters. The alleged infringer stipulated to infringement of several claims and moved for summary judgment of invalidity based on obviousness. Although it had not provided an expert report in discovery, the patentee presented an expert declaration to refute the motion for summary judgment. The district court excluded the declaration and granted the motion for summary judgment, and the patentee appealed. The Federal Circuit affirmed over Judge Newman’s dissent.

On appeal, the patentee argued that the district court abused its discretion in not considering the expert declaration because as the expert was the patentee’s employee, no expert report was required. The court found that the district court’s exclusion was not an abuse of discretion. In particular, the patentee failed to present evidence that the expert qualified for the employee-expert exception to the written report requirement.

Considering the first three Graham factors, the court found a strong prima facie case of obviousness. In particular, it was undisputed that each of the claim elements existed in the prior art. Further, the prior art recognized a need for the claimed invention, and this recognized need provided a definite reason to modify the prior art to achieve the claimed invention. As with other simpler mechanical technologies, the nature of the problem provided a motivation to combine prior art references. This combination of the prior art references compelled a strong prima facie case of obviousness.

Further, the court rejected the patentee’s contentions that secondary indicia of non-obviousness could overcome this strong prima facie case of obviousness. Although commercial success “may have relevancy” to the obviousness determination, “a nexus must exist between the commercial success and the claimed invention.” As a result, “[i]f commercial success is due to an element in the prior art, no nexus exists.” Here, the patentee did not establish that its sales were associated with the child safety feature of the claimed invention. Hence, commercial success was not relevant.

Similarly, the patentee’s evidence of copying, which is another secondary indicia of non-obviousness, was not relevant. The evidence of copying was limited to the alleged infringer’s stipulation to infringement. “Copying requires evidence of efforts to replicate a specific product. A stipulation of infringement, taken alone, is not probative of copying.”

A copy of the opinion can be found here.