Patent Watch: OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc.

by BakerHostetler
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[W]e have emphatically rejected any formal burden-shifting framework in evaluating the four Graham factors [including the objective considerations of nonobviousness]. The district court's failure to consider the evidence requires reversal.

On December 13, 2012, in OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., the U.S. Court of Appeals for the Federal Circuit (O'Malley,* Plager, Reyna) reversed and remanded the district court's summary judgment that U.S. Patent No. 5,834,905, which related to a closed-loop tubular electrodeless lamp, was invalid as for anticipation and obviousness. The Federal Circuit stated:

We begin by addressing the district court's finding that the Anderson '334 patent anticipates claim 32 of the '905 patent. A patent claim is anticipated if each and every limitation is found in a single prior art reference. . . . The parties' dispute centers on whether the Anderson '334 patent discloses a buffer gas pressure of less than 0.5 torr. AITI primarily relies on the legal argument that "the disclosure of a small genus may anticipate the species of that genus even if the species are not themselves recited." . . . While it is true that an earlier disclosed genus may, in certain circumstances, anticipate a later species, this inquiry necessarily includes a factual component. [T]he prior art's teaching of a broad genus does not necessarily disclose every species within that genus. . . .

OSRAM contends -- and presented expert testimony and evidence to support its contention -- that the limitation of less than 0.5 torr is central to the invention claimed in the '905 patent and that a lamp would operate differently at various points within the range disclosed in the Anderson '334 patent. Specifically, the patent itself claims that prior lamps, including those disclosed in the Anderson '334 patent, are inefficient and impractical as compared to the '905 lamp precisely because they use pressure well above that claimed in the '905 patent. . . . How one of ordinary skill in the art would understand the scope of the disclosure or, stated differently, how one of ordinary skill in the art would understand the relative size of a genus or species in a particular technology is of critical importance. And the district court's failure to explain or support its statement that "the buffer gas pressure disclosed in the Anderson '334 patent completely encompasses that disclosed in the '905 patent within a relatively narrow range," or to justify its complete rejection of OSRAM's expert testimony, complicates our review. We have no choice but to reverse the district court's finding of anticipation on this record. . . .

A patent may not issue "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Obviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective considerations of nonobviousness. Generally, a party seeking to invalidate a patent as obvious must demonstrate "by clear and convincing evidence that a skilled artisan would have been motivated to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so." [W]hile an analysis of any teaching, suggestion, or motivation to combine known elements is useful to an obviousness analysis, the overall obviousness inquiry must be expansive and flexible. . . .

The court did not 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. [A] trial court must at least provide its analysis and grounds for entering judgment somewhere in the record. AITI counters that the district court's findings are ascertainable from the parties' own arguments and again contends that, because we review judgments not opinions, we are free to affirm on any ground supported by the record.

It is not our role to scour the record and search for something to justify a lower court's conclusions, particularly at the summary judgment stage. Whether dealing with an issue of law like claim construction or an issue of fact such as infringement, this court must be furnished "sufficient findings and reasoning to permit meaningful appellate scrutiny." Where, as here, the record is devoid of meaningful analysis, we will not conduct such an analysis in the first instance. We previously have had occasion to remind this very district court of these important principles; we do so once more here. . . .

Separately, and in addition, nothing in the record indicates that the court considered OSRAM's evidence of secondary considerations of nonobviousness. At summary judgment, OSRAM submitted evidence of long felt need, failure of others, and industry praise, evidence which AITI did not rebut below. AITI makes no effort to argue that the district court considered this evidence, or even to claim that it did rebut OSRAM's proffered evidence.

Instead, AITI asks that we reject OSRAM's evidence of secondary considerations by finding in the first instance that OSRAM's evidence is not tied adequately to the full scope of the asserted claims. AITI's arguments are without merit. Despite AITI's contentions, we have emphatically rejected any formal burden-shifting framework in evaluating the four Graham factors and the district court's failure to consider the evidence requires reversal. On remand, the district court must, in the first instance, consider secondary considerations before finding a claim obvious.

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung ( lsung@bakerlaw.com or 202.861.1537) or any member of our Intellectual Property Team.

See information regarding BakerHostetler's Patent Litigation and IP Prosecution and Portfolio Management practices.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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