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An Invention Is Obvious When It Is a Combination of Known Elements with No More Than Expected Results

November 14, 2012

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Last Month at the Federal Circuit - December 2012

Judges: Lourie, Linn (author), Moore (dissenting)

[Appealed from: ITC]

In Norgren Inc. v. International Trade Commission, No. 11-1349 (Fed. Cir. Nov. 14, 2012), the Federal Circuit affirmed the ITC’s determination of no violation of 19 U.S.C. § 1337 (“section 337”) by Respondents SMC Corporation and SMC Corporation of America’s (collectively “SMC”) importation or sale of devices alleged to infringe Norgren Inc.’s (“Norgren”) U.S. Patent No. 5,372,392 (“the ’392 patent”) based on the ITC’s conclusion that the asserted claims of the ’392 patent are invalid as obvious. The Court found the ITC’s findings were supported by substantial evidence and consistent with the law.

The ’392 patent discloses a “four-sided, generally rectangular clamp” for connecting two fluid flow elements, especially the fluid flow elements used in compressed air systems—filters, regulators, and lubricators. The objective of the invention was to “provide a simple, relatively inexpensive, preferably unitary connecting means.” Slip op. at 3 (citation omitted).

Norgren asserted in the ITC that the importation or sale of SMC devices infringed the ’392 patent in violation of section 337. The ALJ found no section 337 violation, finding the claims nonobvious. In a prior appeal, the Federal Circuit reversed, construing “generally rectangular” to not be limited to “having four projecting rims.” See Norgren Inc. v. Int’l Trade Comm’n, 336 F. App’x 991, 995-96 (Fed. Cir. 2009) (nonprecedential) (“Norgren I”). The Court vacated the ITC’s determination and remanded for a new trial consistent with the new construction, allowing the ITC to revisit obviousness and review the ALJ’s findings de novo. On remand, the ALJ found the asserted claims not obvious. The ITC reversed, finding the claims obvious over a prior art SMC clamp (“old-style SMC connector”), finding secondary considerations did not support a finding of nonobviousness, and finding no section 337 violation.

Norgren appealed. As the old-style SMC connector is not a “precise rectangle,” but is missing corners, the primary dispute on appeal was whether the ITC’s determination that the old-style SMC connector is “four-sided and generally rectangular” was correct. Slip op. at 9, 12. Norgren argued that there was insufficient evidence that the old-style SMC connector met the claim limitations of “four-sided” and “generally rectangular,” and further argued that it would not have been obvious to one of ordinary skill in the art to solve the problems of loose parts and ease of replacement by adding a hinge. Norgren also argued that SMC’s expert witness was “over-qualified” and argued that secondary considerations support a finding of nonobviousness. Id. at 6-7.

In upholding the ITC’s determination, the Federal Circuit applied the “flexible teaching, suggestion, or motivation test” of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), indicating that common sense and ordinary creativity of a person having ordinary skill in the art are also part of obviousness. The Court looked to its previous claim construction of the “generally rectangular” claim term. Although Norgren argued otherwise, the Court found that substantial evidence supported the ITC’s determination that the old-style SMC connector was prior art, and that “a reasonable mind might accept” that it is four-sided and generally rectangular per the claims. Slip op. at 12 (citation omitted). The Court concluded that the invention in the ’392 patent was a combination of known elements with no more than expected results. The Court found that the ITC properly relied on the testimony of both parties’ experts and an assessment of the physical exhibit of the prior art connector in making its determination. The Court also noted that in Norgren I, it was undisputed that the term “generally rectangular” covers flanges, even where sloped sides replaced corners of the rectangle. And the ITC recognized that the old-style SMC connector was characterized by the same type of deviation from a “precise rectangle,” as specifically addressed in Norgren I, and therefore fell within the scope of the claim.

As the only difference between the claimed invention and the prior art was the inclusion of a hinge, the parties also disputed whether it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the old-style SMC connector to incorporate a hinge. The Court relied on the teachings of KSR to uphold the ITC’s finding that a hinge was an obvious solution in the prior art to solve the problem of avoiding loose parts and ease of use. Adding a hinge was a “common sense solution” in the mechanical arts Id. at 14-15.

Lastly, the Court found that nothing presented by Norgren relating to secondary considerations undercut the conclusion of obviousness. The Court upheld the ITC’s finding that testimony on surprise and skepticism, and evidence of long-felt need, failure by others, and commercial success was not sufficiently supported by the evidence.

Judge Moore dissented, concluding that the claims would not have been obvious to one of skill in the art in light of the prior art old-style SMC connector because the prior art clamp is not “a four-sided, generally rectangular clamp.” Because the old-style SMC connector has sloped corners, even if it is “generally rectangular,” in Judge Moore’s view, it is not “four-sided.” Moore Dissent at 4. She explained that “[w]e must look to the precise claim language and be ever vigilant not to strip away patent rights by eliminating claim limitations.” Id. She noted the majority’s interpretation “conflicts with the plain language of the claim,” and therefore dissented. Id. at 5.

Summary authored by Victoria S. Lee, Esq.