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Court Affirms JMOL of Invalidity for Obviousness

June 09, 2005

Decision icon Decision

Last Month at the Federal Circuit - July 2005

Judges: Rader (author), Schall, and Gajarsa

In Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., No. 04-1493 (Fed. Cir. June 9, 2005), the Federal Circuit upheld the district court’s JMOL in favor of Beckman Coulter, Inc. (“Beckman”) that the asserted patent was invalid for obviousness.

Princeton Biochemicals, Inc. (“Princeton”) filed suit against Beckman, alleging that several capillaryelectrophoresis devices manufactured by Beckman infringed U.S. Patent No. 5,045,172 (“the ‘172 patent”). A jury found in favor of Princeton, but the district court granted JMOL to Beckman on the ground that the jury’s verdict was not supported by substantial evidence because the claim at issue was obvious and, therefore, invalid.

The claim at issue covered a capillaryelectrophoresis device comprising a combination of features that were conceded by Princeton to have been disclosed in the prior art before the filing date of the ‘172 patent, albeit in several references. The only issue was whether one of ordinary skill in the art would have been motivated to combine the features of the prior art so as to arrive at the claimed invention.

The Court noted that 35 U.S.C. § 103 requires that the claimed invention be considered as a whole. This assessment requires a showing that one of ordinary skill in the art at the time the invention was made would have been motivated to select various elements from the prior art and combine them in the claimed manner. The district court found that the requisite motivation can be found in the content of the public prior art, the nature of the problem addressed by the invention, and the knowledge of one of ordinary skill in the art.

Moreover, Beckman’s expert’s testimony on obviousness was unrebutted and supported by the evidence. Accordingly, the Federal Circuit affirmed the JMOL of invalidity.