The opinion of the court was delivered by: M. James Lorenz United States District Court Judge
AND RELATED COUNTERCLAIMS.
ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT ON INVALIDITY [doc. #182] DENYING PLAINTIFFS' MOTION FOR SUMMARY JUDGMENT ON VALIDITY [doc. #178]; GRANTING DEFENDANT'S MOTION RE: NONINFRINGEMENT AND DENYING PLAINTIFFS' MOTION RE: INFRINGEMENT [doc. #180]; and DIRECTING ENTRY OF JUDGMENT
Currently pending are the parties' cross motions for summary judgment seeking to find the patent-at-issue valid or invalid on the ground of obviousness; and to find whether defendant infringed or did not infringe the patent. The motions were fully briefed and oral argument held on the issue of the validity of the patent.
SUMMARY JUDGMENT STANDARD
Summary adjudication is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." FED. R. CIV. P. 56(c). When "the moving party for summary judgment meets its initial burden of identifying for the court those portions of the materials on file that it believes demonstrate the absence of any genuine issues of material fact, the burden of production then shifts so that the non-moving party must set forth, by affidavit or as otherwise provided in Rule 56, specific facts showing that there is a genuine issue for trial." See T.W. Elec. Service, Inc., v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.1987) (citing Celotex Corp. v. Catrett, 477 U.S. 317 (1986)). In considering evidence at the summary judgment stage, the Court does not make credibility determinations or weigh conflicting evidence, and draws all inferences in the light most favorable to the non-moving party. See id. at 630-31 (citing Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)).
MOTIONS CONCERNING VALIDITY/INVALIDITY
The parties dispute whether the '148 patent is valid. An issued patent is entitled to the presumption of validity and therefore, invalidity must be established by clear and convincing evidence. See Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir. 2007); Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Contrary to plaintiffs' assertion, invalidity does not require a higher level of proof; however, a challenger's burden to show invalidity is more difficult to satisfy when prior art references have been presented to the PTO. Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447 (Fed. Cir. 1986).
In seeking to invalidate the '148 patent, defendant argues that the patent is obvious.*fn1 A patent is considered obvious if the differences between it and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. 35 U.S.C. § 103(a).
"Obviousness is a question of law based on underlying findings of fact." In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). Even though there are factual issues underlying the ultimate obviousness decision, summary judgment 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." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). A factual dispute as to any one of these elements will defeat a motion for summary judgment. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000).
The relevant question "is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art." KSR, 550 U.S. at 420. The "combination of familiar elements according to known methods" is likely to be obvious when it "does no more than yield predictable results." KSR, 550 U.S. at 416. In assessing obviousness, hindsight bias and ex post reasoning are to be avoided. Id. at 421, 127 S.Ct. 1727; see also Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1088 (Fed. Cir. 2008).
To determine the issue of obviousness/non-obviousness, the court may "to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art," in order to determine "whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." KSR at 418, 127 S.Ct. 1727. But the court "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." In re Translogic Tech., Inc., 504 F.3d 1249, 1262 (Fed. Cir. 2007) (quoting KSR at 418, 127 S.Ct. 1727)).
Further, "[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KRS at 420-21, 127 S.Ct. 1727. "[T]he common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).
a. Obviousness/Non-obviousness Test Restated
To determine whether a patent is "obvious," and thus invalid, the court must examine: (1) the scope and the content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) the objective evidence of nonobviousness. 35 U.S.C.A. § 103(a).
b. Ordinary Skill in the Art
As an initial matter, the level of ordinary skill in the art is not in dispute here. Defendant defines a person of ordinary skill in the art relevant to the '148 Patent as someone who would not need any "specific formal education beyond High School graduation requirements," would be "familiar with knitting and with the operation and capabilities of knitting machines," and that "familiarity could be obtained through training, work experience in the field of knitting and through literature." (Defendant's Exh. D at D296.) Plaintiffs state that "[a] person of ordinary skill in the relevant art has at least a high school education and at least one year of experience working in the knitting industry." (Plaintiffs' Claim Construction Brief at 8, doc. no. 55.)
In their Opening Claim Construction brief, plaintiffs state that "[t]here are two distinct yet overlapping technical arts involved in the patent in suit: the 'knitting' arts and the 'meat encasements' art." (Plaintiffs' Opening Claim Construction brief at 1, doc. no. 55.) Yet in their motion for summary judgment re validity, plaintiffs appear to adopt defendant's definition of the person of ordinary skill. (Plaintiffs' MP&As at 11.) They specifically do not advance their suggestion that a person of ordinary skill in the relevant art is one who is both familiar with knitting and knitting machines and who is familiar with the meat industry.*fn2
The claims at issue in this case read as follows:
1. An elongated tubular casing structure for encasing meat products, said elongated structure having a longitudinal direction and a transverse lateral direction, said casing structure comprising: a stockinette member comprising a closely knit tubular member formed of closely knit threads and having a first stretch capacity; a knitted netting arrangement having a second stretch capacity and comprising a first plurality of spaced strands extending in said longitudinal direction and a second plurality of spaced strands extending in said lateral direction; the longitudinal and lateral strands of said netting arrangement each intersecting in locking engagement with one another to form a grid-like pattern comprising a plurality of four-sided shapes; said strands of said netting arrangement being knit into the threads of said stockinette member, whereby said netting arrangement and said stockinette member are integrally formed so that said casing structure comprises an integrally formed structure; said first stretch capacity being greater than said second stretch capacity; WHEREBY when a meat product is stuffed into said casing structure under pressure, said meat product forms a bulge within each of said four-sided shapes to thereby define a checker-board pattern on the surface thereof, said stockinette member forming a shield to prevent the adherence of adjacent meat product bulges over said strands of said netting arrangement.
4. A casing structure as defined in claim 3 wherein each loop is interlaced with an adjacent preceding loop and an adjacent following loop; whereby to form a plurality of aligned interlaced loops; each longitudinal strand comprising one of said aligned interlaced loops.
(Plaintiffs' Exh. A at 6-7.)
The Court issued its construction order with respect to the following claim terms:
integrally formed formed as a unit stockinette member a closely knit tube netting arrangement longitudinal and lateral strands that intersect in locking engagement to form a grid-like pattern with less stretch capacity than the threads of the stockinette member strand a yarn or yarns used in forming the lateral and longitudinal structures of the netting arrangement thread a yarn or yarns used in forming the stockinette member longitudinal strand strand or strands which run in the lengthwise direction of the tubular casing lateral strand strand or strands which run perpendicularly to longitudinal strand(s) around the circumference of the tubular casing locking engagement fixed at each intersection checkerboard pattern parallel vertical and horizontal impressions approximately equidistant and crossing at right angles which result in a four-sided impression
(Order filed February 13, 2009, doc. no. 134.)
The Court notes that the Joint Claim Construction Statement originally presented 16 terms and phrases requiring construction: "for encasing meat products"; "stockinette member"; "tubular"; "closely knit"; "stretch capacity"; "knitted"; "netting arrangement"; "strand"; "longitudinal strands"; "lateral strands"; "intersecting"; "locking engagement"; "integrally formed"; "whereby"; "checker-board pattern"; and "interlaced". The parties narrowed that ...