Patent Watch: Norgren, Inc. v. Int'l Trade Commission

by BakerHostetler
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Because the person having ordinary skill in the art is a "theoretical construct" and is "not descriptive of some particular individual," "a person of exceptional skill in the art" should not be disqualified because he or she is "not ordinary enough."

On November 14, 2012, in Norgren, Inc. v. Int'l Trade Commission, the U.S. Court of Appeals for the Federal Circuit (Lourie, Linn,* Moore) affirmed the Commission's determination that U.S. Patent No. 5,372,392, which related to a four-sided, generally rectangular clamp for connecting two fluid flow elements, especially the fluid flow elements used in compressed air systems such as filters, regulators and lubricators, was invalid for obviousness, and thus SMC Corporation did not violate 19 U.S.C. § 1337. The Federal Circuit stated:

An invention may not be patented if it would have been obvious at the time of the invention to a person having ordinary skill in the art. [S]everal factual inquiries underlie the determination of obviousness: the scope and content of the prior art, the differences between the claims and the prior art, the level of ordinary skill in the art, and secondary considerations. The burden is on the challenger of the patent to prove by clear and convincing evidence that the patent claims are invalid. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious. However, "the obviousness analysis cannot be confined" to a rigid application of the teaching, suggestion, or motivation test. The common sense and ordinary creativity of a person having ordinary skill in the art are also part of the analysis. Moreover, "[o]ne of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims."

"[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." This includes, but is not limited to, the problem motivating the patentee. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

[S]ubstantial evidence supports the finding that the old-style SMC connector was in existence prior to 1993. The Commission's finding that the old-style SMC connector is both four-sided and generally rectangular is also supported by substantial evidence. First, Norgren's expert, James Wiskamp ("Wiskamp"), in the first Commission proceeding admitted in a deposition that the only difference between the invention claimed in the '392 Patent and the old-style SMC connector was the hinge.

While Wiskamp later described the shape of the old-style SMC connector differently, the ALJ in the initial proceeding considered Wiskamp's attempt to distance himself from his deposition statement not credible, and the Commission on remand found no reason to depart from that finding. The Commission had an adequate basis on which to make such a finding. Second, the Commission properly relied on Trumper's testimony that the four sides of the old-style SMC connector are those required for its function and that the shape formed by those sides is generally rectangular. This court rejects Norgren's argument that Trumper was not an appropriate expert because he was not familiar with the relevant industry and was overly-qualified. The person of ordinary skill in the art was determined to be "someone who would have had several years of industry experience working with [Filters, Regulators, and Lubricators] and connectors or would have had an engineering degree with two years of industry experience." Trumper was a professor of mechanical engineering at MIT and had experience with pneumatic systems and mechanical connections. Because the person having ordinary skill in the art is a "theoretical construct" and is "not descriptive of some particular individual," "a person of exceptional skill in the art" should not be disqualified because he or she is "not ordinary enough." Additionally, Trumper was accepted as an expert in the first proceeding before the ALJ without objection. Thus, the Commission was within its discretion to allow Trumper to testify as an expert and to credit his testimony.

Third, the Commission based its conclusion on an examination of the physical exhibit of the old-style SMC connector. . . . The responsibility of this court is not to re-weigh de novo the evidence on close factual questions; it is to review the decision of the Commission for substantial evidence. This court concludes that the Commission's findings are supported by substantial evidence because "a reasonable mind might accept" that the old-style SMC connector is four-sided and generally rectangular. This court finds no basis to disturb the decision of the Commission.

In this case, the Commission properly found the claims obvious based on evidence of known problems and an obvious solution. Nothing presented by Norgren relating to secondary considerations undercuts this conclusion. Contrary to Norgren's arguments, the evidence presented on secondary considerations does not merit a finding of nonobviousness. The Commission agreed with the ALJ that Wiskamp's testimony on surprise and skepticism following the release of Norgren's clamp was lacking in detail and lacking support in the record. The Commission also found the evidence insufficient to show long-felt need, and the testimony Norgren cites does not necessitate the opposite conclusion. While Norgren argued that the expert testimony indicating ways to modify the prior art showed failure by others, the Commission found that the testimony did not show that others tried and failed and that Wolfe conceded that the clamp claimed in the '392 Patent could have been made at the time of the invention. The Commission found that Norgren failed to establish commercial success and failed to show a nexus between any success and the features claimed in the '392 Patent. Finally, the Commission rejected Norgren's assertion of copying because the clamp accused of being a copy was excluded from the remand proceeding because Norgren failed to provide a foundation. The Commission's determination of obviousness, including its assessment of secondary considerations, is supported by substantial evidence and is consistent with the law. The invention in the '392 Patent was a combination of known elements with no more than expected results.

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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