Grant of SJ That Prior Art References Are Not “Analogous Art” Affirmed
September 06, 2012
Last Month at the Federal Circuit - October 2012
Judges: Newman, Lourie (author), Prost
[Appealed from: D. Utah, Judge Campbell]
In K-TEC, Inc. v. Vita-Mix Corp., Nos. 11-1244, -1484, -1512 (Fed. Cir. Sept. 6, 2012), the Federal Circuit affirmed the district court’s SJ determinations that Vita-Mix Corporation (“Vita-Mix”) infringed the asserted patents, that two prior art references were not analogous art for purposes of obviousness, that substantial evidence supported the jury’s findings that the asserted claims were not invalid, that Vita-Mix’s infringement was willful, and that K-TEC, Inc. (“K-TEC”) was entitled to damages.
K-TEC owns U.S. Patent Nos. 6,979,117 (“the ’117 patent”) and 7,281,842 (“the ’842 patent”), which are directed to blending systems having a specific geometry. The claimed geometry includes a four-walled container also having a fifth truncated wall to reduce cavitation during blending. The fifth truncated wall is positioned between two of the side walls, in essence “truncating” one of the corners, to create a five-sided container. The shared specification of the ’117 and ’842 patents discloses that the truncated wall may be planar or curved. After K-TEC began selling blenders with this geometry, Vita-Mix introduced its “MP” containers in 2003, which Vita-Mix personnel admitted were copies of K-TEC’s five-sided container. K-TEC notified Vita-Mix in March 2005 that the MP containers infringed the parent of the ’117 and ’842 patents. Vita-Mix attempted to design around the ’117 patent and, after considering over a dozen noninfringing designs, Vita-Mix decided on the “XP” container design in which the fifth wall was curved instead of flat. After altering the design, Vita-Mix maintained the same part numbers for the XP containers as it had for the MP containers, and concluded that most customers would “never even notice the change.” Slip op. at 7 (citation omitted).
K-TEC sued Vita-Mix for infringement of the ’117 patent by Vita-Mix’s MP containers and of the ’842 patent by the XP containers. The district court construed the “fifth truncated wall” limitation to mean “a wall (planar or non-planar) that truncates, in essence, the typical corner that would otherwise be formed between two side walls.” Id. (citation omitted). The district court also granted K-TEC’s motion for SJ that the XP containers infringed the asserted claims. The district court partially granted K-TEC’s motion that the asserted claims are not invalid because two prior art references, referred to as “Hobbs” and “Grimes,” are not analogous art. The district court subsequently clarified its construction of the fifth truncated wall to explain that “the term ‘typical corner’ refers to a corner that, but for the addition of the truncated wall, would otherwise be typical—or in other words identical—to the other corners of the blending jar.” Id. at 8 (citation omitted). A jury found in favor of K-TEC on all issues of invalidity, willfulness, and damages, and the district court denied Vita-Mix’s post-trial motions. Vita-Mix appealed.
On appeal, the Federal Circuit first addressed the district court’s grant of SJ that the XP containers infringed the asserted claims. The Court rejected Vita-Mix’s argument that its expert testimony showed that, under the court’s construction, the XP container had only three walls, not four side walls and a fifth truncated wall, as recited in the asserted claims. The Federal Circuit concluded that there was no genuine dispute that the XP container has four side walls and a fifth truncated wall, and, therefore, there was no genuine dispute that the XP container’s geometry falls within the asserted claims.
Next, the Federal Circuit turned to the district court’s SJ determination that Grimes and Hobbs are not analogous art for purposes of invalidity. The Court rejected Vita-Mix’s arguments because Vita-Mix did not dispute that Hobbs and Grimes are not the same field of endeavor as the asserted patents, and because Vita-Mix failed to raise a genuine issue of material fact that the references would have been reasonably pertinent to the inventor in considering the problem to be solved. The Court concluded that it was Vita-Mix’s burden to proffer evidence that a reasonable juror could find the asserted patents invalid and that Vita-Mix failed to meet that burden.
The Federal Circuit then concluded that the district court did not deny Vita-Mix a fair trial on four grounds set forth by Vita-Mix: (1) the district court instructed the jury that the PTO considered an “Ash” reference, when the PTO did not consider it during prosecution, only during an ongoing reexamination; (2) the district court changed its construction of the claim term “truncated wall” prior to trial; (3) the district court allowed K-TEC to cross-examine Vita-Mix’s witness using the prosecution history from one of the witness’s related patents; and (4) the district court erred in instructing the jury regarding a “Miller” reference.
Next, the Federal Circuit considered whether the district court erred in denying Vita-Mix’s motion that the Ash reference invalidated the asserted claims as a matter of law. The Court agreed that Vita-Mix was not entitled to JMOL because K-TEC presented substantial evidence from which the jury could find that Ash did not disclose the “fifth truncated wall.” The Court identified, as examples, testimony from K-TEC’s expert that the walls in Ash did not truncate an otherwise typical corner, and that even if there were truncated walls, the Ash reference would then fail to disclose corners formed by the four sidewalls because the reference would contain only truncated corners. The Court therefore reasoned that Ash did not anticipate the claims of the asserted patents. The Court also rejected Vita-Mix’s argument that Ash rendered the asserted claims obvious because it would have been obvious to modify the Ash reference to add a handle. Thus, the Court upheld the district court’s denial of Vita-Mix’s motion for JMOL that the asserted claims are invalid.
The Court next rejected Vita-Mix’s argument that the district court erred in denying JMOL that Vita-Mix did not willfully infringe the asserted patents. Specifically, the Court observed that K-TEC had presented evidence that Vita-Mix’s original MP container was a direct copy of K-TEC’s five-sided jar and that the XP container contained only a trivial change. The Court also noted that K-TEC proffered evidence that
Vita-Mix did not opt for one of its numerous noninfringing designs, instead adopting a design that functioned in the same way as the MP containers, and was a design that its customers would not be able to distinguish from the MP container. The Court further observed that K-TEC presented evidence that Vita-Mix knew of the objectively high risk of infringing K-TEC’s patents. The Federal Circuit therefore upheld the district court’s determination of willful infringement.
Finally, the Federal Circuit held that the district court did not err in denying Vita-Mix’s motion for JMOL that K-TEC failed to adequately prove damages dating back to December 2005. The Court stated that
K-TEC provided notice that the MP containers infringed the parent of the ’117 patent in March 2005, that
K-TEC provided evidence that the MP container infringed the ’117 patent in October 2005, that Vita-Mix had actual notice of infringement of the ’117 patent when the patent issued in December 2005, and that Vita-Mix treated the MP and XP products as related. Based on this evidence, the Court determined that the district court did not err in denying Vita-Mix’s motion for JMOL on damages.
Summary authored by Kevin D. Rodkey, Esq.