Docket No. 2011-1244, -1484, -1512
NEWMAN, LOURIE, PROST
September 6, 2012
Brief Summary: Expert declaration alone regarding simple technology may not be enough to raise genuine issue of material fact and analogous prior art is that which “logically would have commended itself to an inventor’s attention in considering his problem.”
Summary: Vita-Mix appealed Utah DC final judgment that it willfully infringed K-Tec’s patents (U.S. Patents 6,979,117 and 7,281,842) related to commercial beverage blenders and owed approximately $11 million in reasonable royalty and lost profits damages. The claimed blenders have a specific geometry (“blending element which rotates on a central axis…the fifth truncated wall is positioned closer to the central axis than corners formed by the four side walls”). This geometry causes a vortex to be formed which “reduces cavitation in the container, increasing the speed and efficiency with which smoothies and other beverages can be made”. Regarding willfulness, the district court found that Vita-Mix’s CEO knew of at least one of K-Tec’s patents as of the issue date and the Vita-Mix had been attempting a design-around. In this appeal, Vita-Mix unsuccessfully attempted to argue that the DC erred by granting SJ because its expert declaration raised a genuine issue of material fact. The FC disagreed, concluding that this is incorrect where an expert declaration asserts “‘that something is black’ when no reasonable juror reviewing the evidence could reach such a conclusion” (Invitrogen, FC 2005) especially where, as here, “the technology will be ‘easily understandable without the need for expert explanatory testimony'” (Centricut, FC 2004). Vita-Mix also argued with the DC conclusion that two prior art documents are not analogous art, but the FC disagreed. The opinion noted that, to be analogous art, the reference “must satisfy one of the following conditions: (1) the reference must be from the same field of endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved” such that it “logically would have commended itself to an inventor’s attention in considering his problem.” (Innovention Toys, LLC (FC 2011)) The FC disagreed because the inventor’s testimony was not convincing, Vita-Mix was “silent on the question of why [the inventor] would have looked to non-blending containers to discover the commonplace designs”, the post-judgment BPAI decision in a co-pending reexamination proceeding that the references were analogous art was not relevant (Marine Polymer, FC 2012), and Vita-Mix could not otherwise show it was denied a fair trial. Thus, the DC decision was affirmed.