Docket No. 2014-1618, 2014-1700
PROST, CLEVENGER, SCHALL
August 19, 2015
Brief Summary: DC denial of JMOL was vacated and the obviousness judgment reversed because claimed invention “would have been naturally implemented by a person skilled in the art” and secondary considerations were not tied to the claimed invention.
Summary: ABT, licensee of UCF’s US 5,547,017 relating to heating/ventilation/air conditioning (HVAC) systems, appealed the DC’s damages rulings but this is not addressed in this opinion. Emerson cross-appealed DC denial of its motion for JMOL that claims 1-5 of the ‘017 are invalid for obviousness, and this issue was addressed here. The ‘017 patent claims a forced central AC system with a “recycle control for periodically activating and deactivating only the circulating fan after a preselected time period, since the central air conditioning system has been deactivated, or the circulating fan has been deactivated from the selectable constant fan mode.” Emerson’s Big Blue thermostat provides a Comfort Circulating Fan Feature (CCFF) that was alleged to infringe the ‘017 patent claims. Emerson argued the claims were obvious in view of four prior art US patents but the jury disagreed based on its determination of a long-felt need and the DC denied its motion for JMOL on that point. This opinion notes that the FC reviews the jury’s “explicit and implicit factual findings for substantial evidence” and “the legal conclusion [on the issue] de novo to determine whether it is correct in light of the factual finds that we find adequately supported” (Kinetic Concepts, FC 2012). The opinion explains that “the issue of nonobviousness revolves around the ‘recycle control’ limitation of claim 1…whether, at the time of the…invention, a person of ordinary skill would have combined elements from the several prior art references” (“whether a person of skill would have combined references that disclose ‘single-shot’ fan operation as a function of time when heating or cooling cycles end with references that teach periodic fan cycles during periods of time when there is no call for heating or cooling”). Two of the prior art patents (Vogelzang and Cornelius) were found not to “teach necessarily setting the timing device as a function of the end of the heating cycle”. But one (the Nakatsuno patent) was found to “disclose operation of a system at a predetermined time following the deactivation of an air conditioning compressor”. The FC panel concluded that “setting a delay timer or control based on the end of the heating or cooling cycle, similar to the concept in Nakatsuno or Petrone, would have been naturally implemented by a person skilled in the art” (“the nature of the problem to be solved in both the ‘017 patent and Vogelzang (as well as Cornelius and Nakatsuno) is to alleviate air stagnation during periods of no heating or cooling”) and, therefore, obvious. The opinion cites KSR’s finding that “even where references do not explicitly convey a motivation to combine, ‘any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed’” (and “a court…may find a motivation to combine prior art references in the nature of the problem to be solved”, “this form of motivation to combine evidence is particularly relevant with simpler mechanical technologies” (Ruiz, FC 2004)). Evidence of a long-felt need was not found persuasive as it was “in large part, advertisements and press releases for Mr. Rudd’s products, not market share information or industry praise or recognition for” the claimed invention, and the licenses granted were not shown to be “based on the merits of the invention claimed”. ABT’s long-felt need arguments were also not found persuasive because those “ignore the scope of claim 1”. The DC denial of JMOL was therefore vacated and the obviousness judgment reversed.