July 2010
Court Reverses SJ of Invalidity and Orders Assignment to New Judge
| Judges: Lourie, Linn (author), Moore |
| [Appealed from C.D. Cal., Judge Real] |
In TriMed, Inc. v. Stryker Corp., No. 09-1423 (Fed. Cir. June 9, 2010), the Federal Circuit held that a district court judge improperly resolved genuine issues of material fact on SJ, and reversed and remanded with an instruction to reassign the case to a different judge.
TriMed, Incorporated (“TriMed”) is the owner of U.S. Patent No. 5,931,839 (“the ’839 patent”), which covers an implantable device used to set bone fractures. TriMed initiated the underlying action against Stryker Corporation (“Stryker”), asserting that a wrist fixation device manufactured and sold by Stryker infringed certain claims of the ’839 patent.
In a previous appeal, the Federal Circuit reversed and remanded the district court’s grant of Stryker’s motion for SJ of noninfringement. In that grant of SJ, the district court judge had simply signed Stryker’s proposed statement of law and facts. On remand, Stryker again moved for SJ—this time for invalidity based on several prior art references. In response, TriMed filed a memorandum contesting nearly every aspect of Stryker’s motion for SJ. The district court granted SJ of invalidity in favor of Stryker and again simply signed Stryker’s proposed statement of law and facts without any changes other than crossing out the anticipation section.
On appeal, TriMed argued that the district court improperly resolved a number of material factual disputes in favor of Stryker, including whether the prior art references anticipated the claims. TriMed further contended that the district court ignored its evidence of secondary considerations of nonobviousness. TriMed also contended that the district court improperly characterized its claimed subject matter as a common-sense, predictable combination of known elements.
“Merely saying that an invention is a logical, common[-]sense solution to a known problem does not make it so.” Slip op. at 15.
Quoting KSR, the Court held that SJ of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors.” Slip op. at 11 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007)). The Court held that many factual questions are in dispute. For instance, the parties dispute what the asserted prior art teaches, and whether the claimed invention achieves predictable results and uses prior art elements according to their established functions.
Although reliance on common sense does not require a specific evidentiary basis, the Court held, “on summary judgment, to invoke ‘common sense’ or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.” Id. at 14 (quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009)). In this case, the Court held, neither the record nor the order of the district court explains why one of ordinary skill in the art at the time of the invention would have found replacing a cast normally used to stabilize a pin with a subcutaneous metal plate to be a logical, common-sense solution to the problem of pin migration.
The Court held that the record also fails to explain why the district court summarily dismissed the evidence of secondary considerations of nonobviousness submitted by TriMed. The Court emphasized that evidence of secondary considerations must be considered, if present. According to the Court, SJ was inappropriate because there are genuine issues of material fact and because the record fails to provide a reasoned basis for the district court’s decision.
Finally, the Federal Circuit concluded that reassignment to a different district court judge was necessary to preserve the appearance of justice. The Court noted that the district court has now been reversed twice after entering SJ against TriMed, in both instances simply signing Stryker’s proposed statement of law and facts relevant to the decided issues, which is a disfavored practice in the Ninth Circuit.
