Docket No. 2012-1642, 2013-1024
DYK, BRYSON, REYNA
November 15, 2013
Brief Summary: Collateral estoppel decision affirmed because no new issues raised; obviousness found where claimed numerical limits nothing other than “the exercise of routine skill”; improper SJ of no IE where genuine issues of material fact regarding materiality and intent was shown.
Summary: OWW filed suit against Alps for infringement of U.S. Pat. No. 5,830,237 related to cushioning devices for use with limb prosthetics. The DC granted summary judgment that OWW was collaterally estopped from challenging invalidity of claims 1, 2, 4, 15, 16 and 20 of the ‘237 patent; claims 19, 21, 22 and 23 (placing numerical limits on “gel composition” and “fabric”) were invalid for obviousness; and Alps failed to raise a genuine issue of material fact with respect to inequitable conduct (IE). Litigation was stayed during two reexamination proceedings. In the first, the Examiner allowed OWW’s claims clarifying “that the gel coating was only on the interior of the gel liners and, accordingly, excluded any liners with fabric that allowed gel to bleed through to the exterior surface.” In the second (which went to BPAI for appeal), Alps’ alleged that the amended claims of the first RE were invalid because the prior art did not have any gel on the exterior surface but the Board found the witness testimony uncorroborated. OWW sought reversal of the collateral estoppel issue because a related litigation found a continuation of the ‘237 patent (“substantially similar claims” but not the ‘237 patent itself) invalid for obviousness based on a prior art reference “and known techniques in the relevant field” (affirmed, OWW, FC 2011). The FC panel disagreed, however, explaining that “the mere use of different words in [similar] portions of the claims does not create a new issue of invalidity” and that OWW had not “explained how any alleged differences in claim scope alter the invalidity determination.” OWW also argued that the DC took an “improper ‘piecemeal’ approach…unduly focused on the mere presence of the dependent limitations within the prior art while failing to analyze the combination of dependent and independent claims in their entirety” to support SJ. While the FC panel acknowledged that policy (citing Sanofi, FC 2008), it determined that “nothing in the record indicates that…the recited numerical limits…was anything other than the exercise of routine skill” (“Each of these features were well-known in the prior art and their use would have been predictable by one of ordinary skill in the art” (Western Union, FC 2010 (“common sense of those skilled in the art demonstrates why some combinations would have been obvious”)). It also concluded that record showed some of the features OWW argued were not in the prior art actually were described. And the alleged secondary considerations were found non-persuasive (no nexus between secondary considerations and patented invention (In re GPAC, FC 1995)). The FC panel agreed with Alps that there were genuine issues of material fact regarding whether OWW committed IE during RE proceedings because a reasonable finder of fact could conclude OWW withheld evidence corroborating Alps’ witness testimony and misrepresented that witness to the BPAI. It also found genuine issues of material fact regarding intent (no dispute OWW’s counsel knew that if witness testimony was accepted, the ‘237 patent would not survive).