Abt Systems, LLC v. Emerson Electric Co.
797 F.3d 1350
Fed. Cir.2015Background
- The University of Central Florida owns the ’017 patent on a fan recycling control for CAC systems and licensed it to ABT.
- ABT and the University sued Emerson and others in ND Illinois for infringement of claims 1–5 of the ’017 patent.
- The case was transferred to the ED Missouri and tried against Emerson; the jury found the claims not invalid and infringed.
- Damages were awarded at $2.25 per unit for 138,891 thermostats, totaling $311,379, based on Emerson’s Big Blue thermostat sales.
- Emerson moved for JMOL of invalidity; the district court denied the motion, upholding nonobviousness.
- On appeal, the Federal Circuit reverses, vacates the judgment of infringement, and remands for dismissal; ABT’s cross-appeal is moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court erred in denying JMOL on obviousness | ABT contends jury validly found nonobvious; district denial should stand. | Emerson argues claims 1–5 would have been obvious in view of prior art. | JMOL of invalidity reversed; claims 1–5 obvious as a matter of law. |
| Whether the combination of prior art renders claim 1–5 obvious | ABT argues nonobviousness due to narrow enablement/teaching away of references. | Emerson contends a motivated combination yields a predictable result under KSR. | Yes; prior art teaches and motivates a combined, end-of-cycle periodic fan control, making the claims obvious. |
| Whether secondary considerations support nonobviousness | ABT points to long-felt need and commercial success. | Emerson asserts no nexus or insufficient evidence for secondary considerations. | Secondary considerations fail to overcome obviousness; no nexus shown. |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (flexible approach to combining prior art; obviousness requires more than predictable results)
- Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) (mixed questions of fact and law; de novo review of obviousness with substantial evidence standard)
- Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015) (clear and convincing standard; statutory presumption of validity maintained)
- Ruiz v. A.B. Chance Co., 357 F.3d 1270 (Fed. Cir. 2004) (secondary considerations must be weighed with nexus to the claims)