American Innotek, Inc. v. United States
706 F. App'x 686
| Fed. Cir. | 2017Background
- American Innotek owns U.S. Patent No. 5,116,139 and sued the United States under 28 U.S.C. § 1498 for unauthorized use of claims 1–4 and 17.
- The Court of Federal Claims held a trial and found the asserted claims invalid for obviousness under 35 U.S.C. § 103, entering judgment for the United States.
- The trial court found the prior art disclosed the relevant elements, differences between the prior art and the ’139 patent were material, and there was a motivation to combine with a reasonable expectation of success.
- The Court of Federal Claims considered objective indicia (secondary considerations) but concluded they did not overcome the strong prima facie showing of obviousness.
- On appeal, the Federal Circuit reviewed factual findings for clear error, weighed the objective indicia together with the prior-art evidence, and affirmed the Court of Federal Claims’ judgment of obviousness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claims 1–4 and 17 of the ’139 patent are obvious under 35 U.S.C. § 103 | Patent not obvious; objective indicia show non-obviousness | Prior art renders claims obvious; motivation to combine and expectation of success exist | Affirmed: claims were obvious on the full record |
| Scope/content of prior art and differences to the patent | Prior art does not disclose the claimed combination/limitations | Prior art discloses elements and supports combination to achieve claimed result | Trial court findings on prior art scope and differences not clearly erroneous |
| Whether there was motivation to combine prior-art references with reasonable expectation of success | Argued lack of motivation/expectation undermines obviousness | Argued clear motivation and reasonable expectation of success to combine | Court’s finding of motivation and expectation upheld |
| Weight of objective indicia (secondary considerations) against obviousness | Objective indicia are strong and should overcome prima facie obviousness | Objective indicia insufficient to overcome strong prior-art showing | Court weighed indicia case-specifically and found them not dispositive; affirmed obviousness |
Key Cases Cited
- Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034 (Fed. Cir. 2016) (en banc) (objective indicia must be considered in every case where present)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (warning against rigid formulas in obviousness analysis; emphasize case-specific inquiry)
- ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350 (Fed. Cir. 2015) (example of weighing secondary considerations case-specifically)
- Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008) (noting secondary considerations do not always overcome a strong prima facie showing of obviousness)