Docket Nos. 2016-1577, -1611
WALLACH, CHEN, HUGHES
January 5, 2018
Brief summary: DC finding that jury obviousness determination was supported by substantial evidence and its conclusion that the requisite intent for inequitable conduct affirmed.
Summary: Everlight brought DJ suit against Nichia regarding US 5,998,925 and 7,531,960 related to light-emitting diodes (LEDs), alleging invalidity for obviousness (pre-AIA § 103) and inequitable conduct. A jury found certain claims to be obvious and after a bench trial the DC found no inequitable conduct (IC). Nichia’s motion for JMOL of validity and/or a new tral was denied, the DC finding the jury verdict supported by substantial evidence, and Nichia appealed. Everlight appealed the DC’s finding of no inequitable conduct. The FC panel explained that denial of JMOL is reviewed under the law of the regional circuit (Comcast, FC 2017; de novo in the Sixth Circuit), and a “jury’s conclusions on obviousness de novo, and the underlying findings of fact, whether explicity or implicit in the verdict, for substantial evidence” (Pregis, FC 2012; Consol. Ed., US 1938 (substantial evidence is that which “a reasonable mind might accept as adequate”); In re Gartside, FC 2000 (“[o]bviousness is a question of law based on underlying findings of fact”); Graham, US 1966 (“scope and content of the prior art”, “differences between the prior art and the claims at issue”, “the level of ordinary skill in the pertinent art”, secondary considerations)). The DC found the jury verdict of obviousness of the ‘925 claims to be supported by evidence that the prior art showed the claimed combinations of blue LEDs with phosphors were “well known in the art”, that “a person of ordinary skill in the art would have desired to combine a blue-to-yellow phosphor with a blue LED to produce a white LED” (e.g., “large market demand”, “blue LED naturally led to the use of a blue-to-yellow phosphor to produce a white LED”, “limited number of blue-to-yellow phosphors”) (“combination of familiar elements according to known methods” to “yield predictable results” (KSR, US 2007)), and that “a reasonable jury could have found secondary considerations to fail to weigh in favor of patentability” (e.g., “credible doubts…as to the nexus between the patented features and the success” (Pregis, FC 2012)). The FC panel agreed with the DC, finding “[a] reasonable jury could have drawn a variety of conclusions regarding the strength and credibility of the evidence” (e.g., “limited number of available blue-to-yellow phosphors…we have never required a party to prove that all possible problems solved by an invention were known in the prior art”, no teaching away (In re Mouttet, FC 2012)) and explained that it “will not reweigh the evidence here” (Inland Steel, FC 2001). The FC panel similarly agreed with the DC’s obviousness conclusion regarding the ‘960 patent. The FC panel also explained that it reviews the DC’s factual findings regarding IC “for clear error, and the ultimate decision…for abuse of discretion” (Star Sci., FC 2008; Am. Calcar, FC 2011). To prove IC, it must be shown “that the applicant…misrepresented or omitted material information” (“but-for materiality”) “with specific intent to deceive” the USPTO (Therasense, FC 2011 (“single most reasonable inference”)). Here, the FC agreed with the DC that Everlight had not shown the requisite intent. The DC decision was therefore affirmed.