Reversing a jury verdict that found three patents covering locks for trailer towing were not obvious in view of the prior art, the U.S. Court of Appeals for the Federal Circuit held that the prior art rendered the patents-in-suit obvious as a matter of law. Wyers v. Master Lock Co., Case No. 09-1412 (Fed. Cir., July 22, 2010) (Dyk, J.) (Linn, J., concurring).
Wyers brought a patent infringement action against Master Lock, asserting infringement of three patents relating to hitch pin locks that secure a draw bar to a hitch receiver of a vehicle for towing a trailer. A jury found that Master Lock failed to show the patents were obvious, and the district court declined to grant Master Lock’s request for a judgment as a matter of law (JMOL) that the patents were obvious. Master Lock appealed.
Invoking the time honored Graham v. John Deere analysis, the Federal Circuit first looked to differences between the claimed inventions and the prior art. Two of the patents asserted claimed improvements in the form of a series of selectable sleeves to allow the hitch pin lock to be used with trailer hitch receivers that have different sized apertures, while the third asserted patent claimed an external seal to prevent foreign materials from entering the lock. During the trial, Wyers admitted that prior art hitch pin locks showed all of the limitations except for the selectable sleeves and the external seals. However, selectable sleeves and external seals were found in other (non-hitch-pin) prior art. Reiterating that prior art is analogous if it is from the same field or is reasonably pertinent to the problem the inventor is looking to solve, the Court determined that several prior art patents for locks or for tow hitches were pertinent prior art.
Next the Federal Circuit analyzed whether there was motivation to combine the teaching of the prior art references. Citing KSR, the panel found that summary judgment, or JMOL, can be appropriate for a determination of the motivation to combine references and that logic, judgment and common sense can replace the need for expert testimony for a motivation to combine references in some straightforward technologies. In this instance, the panel found that combining of the prior art references in a manner that would teach all of the limitations of the asserted patents “was a matter of common sense” and that a skilled artisan “would have perceived a reasonable expectation of success” in doing so.
Wyers argued that secondary considerations of non-obviousness supported the jury verdict. However, the Federal Circuit noted that a nexus is required between the commercial success and the claimed invention, and Wyers had not shown such a relationship. Wyers also did not establish copying, as the evidence did not show Master Lock was trying to replicate a specific product. Finally, the Federal Circuit noted that secondary considerations of non-obviousness can not overcome a strong prima facie case of obviousness.
In a concurring opinion Judge Linn noted that obviousness is a question of law based on underlying factual findings. When a jury is not given special interrogatories on obviousness, a court must presume certain findings of fact based on the jury’s decision. Thus, the appellate court must first presume that the jury resolved factual disputes in favor of the winning party and accept those findings if supported by substantial evidence. As Judge Linn explained, the appellate court then performs a de novo review of the legal issues in light of the presumed factual findings.