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Obviousness, a Question of Law and Fact, Is Reviewable on JMOL in Certain Cases

July 22, 2010

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Last Month at the Federal Circuit - August 2010

Judges: Lourie, Linn (concurring), Dyk (author)

[Appealed from: D. Colo., Senior Judge Babcock]

In Wyers v. Master Lock Co., No. 09-1412 (Fed. Cir. July 22, 2010), the Federal Circuit reversed the district court’s JMOL of nonobviousness in favor of Philip W. Wyers and Wyers Products Group, Inc. (collectively “Wyers”). 

Wyers owns three patents directed to hitch pin locks that secure trailers to cars and sport utility vehicles.  The hitch pin passes through aligned holes in the trailer hitch receiver, which is attached to the vehicle, and the draw bar, which is attached to the trailer.  The hitch pin is barbell-shaped with a stop portion on one end, a locking head on the other end, and a shank portion that passes through the two holes.  Two of the patents, U.S. Patent Nos. 6,672,115 and 7,165,426 (collectively “the sleeve patents”), claimed improvements to similar locks known in the art, those improvements dealing with a removable sleeve to cover the hitch pin’s shank.  Wyers did not claim that the removable sleeve improves the locking or towing function of the hitch pin lock, but rather that the sleeve was desirable because it allows for a single locking unit to be used for a number of varied size locking requirements, thus saving retailers the shelf space for locks having shanks of different sizes.  The third patent, U.S. Patent No. 7,225,649 (“the seal patent”), claimed an improved locking device with an external seal designed to insulate the locking mechanism from contaminants such as dirt.

The use of a lock in a trailer hitch receiver was well known in the art.  For example, U.S. Patent No. 5,664,445 (“the Chang patent”) discloses a lock with a lock head, a shackle having a stop member, a shank, and a latch.  The Chang patent also teaches a lock for use as a hitch pin lock.  The use of barbell-shaped locks was also known in the art.  U.S. Patent No. 4,711,106 (“the Johnson patent”) shows a barbell-shaped lock used as a trailer hitch receiver lock.  In addition, Wyers’s own patent, U.S. Patent No. 6,055,832 (“the ’832 patent”), teaches a barbell-shaped locking device comprising a locking head, a shackle with a stop member, a shank, and a latch, and teaches the use of that device as a hitch pin lock in a way very similar to the Johnson patent.    

Master Lock Company LLC (“Master Lock”) offered for sale locks that allegedly fell within the scope of Wyers’s three patents.  Wyers filed suit in district court, alleging infringement.  At the close of evidence, the district court granted Wyers’s motions for JMOL of infringement.  Master Lock argued that the allegedly infringed claims were obvious over the prior art.  During trial, Wyers admitted that the Chang patent and the Johnson patent disclosed every element of the sleeve patent claims except the use of a sleeve to adjust the operative thickness of the shank.  Similarly, Wyers did not dispute that its own barbell-shaped locks, on sale prior to the priority date of the sleeve patents, contained every element of the claims except for the removable sleeve.  Master Lock argued that the claims of the sleeve patents would have been obvious in light of the Johnson and Chang patents in combination with U.S. Patent No. 3,963,264 (“the Down patent”) or Master Lock’s 37D padlock.  Thus, the district court considered whether Master Lock presented clear and convincing evidence that the use of a sleeve to adjust the operative thickness of a shank would have been obvious.

Regarding the seal patent, Wyers conceded that the external seal was the only feature that distinguished the claims from the Chang patent and the ’832 patent.  Master Lock contended that the claims of the seal patent would have been obvious in light of either patent in further view of Master Lock’s 6121 padlock, U.S. Patent No. 5,156,029 (“the Heald patent”), U.S. Patent No. 3,858,419 (“the Hampton patent”), and U.S. Patent No. 3,848,440 (“the Manuel patent”).  Thus, the district court considered whether Master Lock presented clear and convincing evidence that the use of an external flat flange seal would have been obvious. 

The jury considered the question of obviousness, finding that the claims of Wyers’s three patents would not have been obvious and that Master Lock’s products infringed these claims.  After trial, Master Lock renewed its motion for JMOL based on obviousness and the district court denied the motion, upholding the jury’s verdict.  Master Lock appealed.

The Federal Circuit began its analysis of obviousness based on the Graham factors:  (1) scope and content of the prior art, (2) the difference between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations, including commercial success, long-felt but unsolved need, and the failure of others.  Finding that factors (1) and (3) were not in dispute, the Court focused on three specific factual issues:  (1) whether the prior art references were in the same field of endeavor as the invention, (2) whether there was sufficient motivation to combine the references, and (3) the existence and significance of secondary considerations.

“Thus, in appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of ‘common sense,’ appropriate for resolution on summary judgment or JMOL.”  Slip op. at 16.

Regarding the first issue, whether the prior art was in the same field of endeavor as the claims, the Court considered the Down patent in the context of the sleeve patents.  The Court noted that the Down patent was specifically directed to a trailer-towing application adaptable to an automobile for towing by fitting a rear towing attachment for attaching the tow bar of a trailer.  Based on this teaching, the Court concluded that the Down patent was clearly in the same field of endeavor as the sleeve patents.  As for the seal patent, the Court focused on prior art relating to padlock technology.  Given that the district judge instructed the jury that the relevant field of endeavor was locksmithing, the Court concluded that padlocks were part of the relevant prior art against the seal patent’s claims.  And, the Court reasoned, even if the padlocks were not in the same field of endeavor, they were reasonably pertinent to the problem that the inventors of the seal patent tried to solve—preventing environmental contaminants from entering the locking mechanism.  Thus, the Down patent and the padlock seals were pertinent prior art against the seal patent.

Regarding the second issue, whether sufficient motivation to combine existed, the Court began with KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), and its subsequent case law to show that motivation to combine could be addressed on JMOL.  KSR instructs courts to take a more expansive and flexible approach in determining whether a patented invention is obvious, emphasizing the role of common sense in making that determination.  Prior to KSR, the Court explained, the question of motivation to combine was treated as a question of fact.  While KSR did not change that rule, it and subsequent Federal Circuit case law established that motivation may be addressed on JMOL.  Specifically, in KSR, the Supreme Court explained that the ultimate judgment of obviousness is a legal determination.  KSR and later Federal Circuit cases established that the legal determination of obviousness may include reliance on logic, judgment, and common sense in lieu of expert testimony, especially where the technology at issue was easily understandable.  Citing Sundance Inc. v. DeMonte Fabricating, Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008), the Court noted that where the factual inquiries underlying the determination of obviousness are not in dispute, obviousness may be determined as a matter of law.

With this legal premise in mind, the Court considered whether there was motivation to combine a removable sleeve with the prior art barbell locks.  Considering the teachings of the prior art, the Court concluded that it was a matter of common sense that Down’s sleeve could be used with a barbell-shaped hitch pin lock to address the problem of different hole sizes.  Likewise, the Court also concluded that one of ordinary skill in the art would have had a reasonable expectation of success in making this combination.  In so doing, the Court rejected Master Lock’s arguments.

The Court also considered whether there was motivation to combine the prior art locks with an external sealing mechanism.  Both the ’832 patent and the Chang patent disclose internal sealing mechanisms.  In addition, the Master Lock 6121 series padlock and the Hampton patent include an external seal at the entry point of the shackle into the lock head or covering the lock head.  The Heald patent also discloses an external flange seal that forms a weatherproof seal.  Based on these teachings, the Court observed that there were two known ways to protect a lock’s locking head, either by an external seal or an internal seal.  Both design options were widely used in the prior art, and Wyers admitted that an external flange seal would work the same way on a padlock as it would on a barbell-shaped lock.  Thus, the Court concluded, it was a matter of common sense that a flat external seal used in the prior art padlocks could be combined with a barbell-shaped hitch pin lock.

Regarding the final issue, the significance of secondary considerations, the Court considered evidence from Wyers as to commercial success, copying by competitors, and unexpected results.  Wyers argued that Master Lock’s success in selling its infringing product demonstrated commercial success.  The Court, however, found that Wyers failed to establish a nexus between the success in sales and the specific claimed feature of an external seal or a removable sleeve.  Wyers also failed to establish copying, as not every competing product that arguably falls within the scope of a patent is evidence of copying.  Instead, copying requires more substantial evidence, such as internal company documents of the competitor, direct evidence of a competitor reverse-engineering an invention, or photographing the invention’s features and using the picture as a blueprint to build a replica.  Notably, the Court explained that secondary considerations of nonobviousness cannot overcome a strong prima facie case of obviousness.  In sum, the Court viewed Wyers’s inventions as no more than the predictable use of prior art elements according to their established functions.  As such, the Court reversed the district court and concluded that Wyers’s three patents were invalid for obviousness.

In a concurring opinion, Judge Linn wrote to address concerns raised following the Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), with respect to general verdicts relating to obviousness.  Judge Linn stated that the Court has established precedent permitting the submission of obviousness questions to a jury for a general verdict, provided the jury has received proper instruction on the law.  Judge Linn noted, however, that to facilitate review and reveal more clearly the jury’s underlying factual findings, the Federal Circuit has encouraged trial court judges to provide juries with special interrogatories on obviousness.  Absent any such special interrogatories, the Court must presume the “existence of findings necessary to support the verdict the jury reached.”  Linn Concurrence at 4 (citation omitted).  Judge Linn added, “Because there is no way to determine from a general verdict on obviousness the specific findings of fact made by a jury on the factual questions underlying its verdict, the court in examining the first part of the obviousness question is left to infer whether substantial evidence existed from which the jury could have made the factual findings necessary to support the verdict.”  Id. at 4-5.  In this case, Judge Linn concluded that the majority examined the record and, after considering the factual inferences, concluded that support was lacking and that the claims at issue would have been obvious as a matter of law.  Accordingly, he concurred with the majority’s analysis and conclusion.