Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
688 F.3d 1342
| Fed. Cir. | 2012Background
- Wake Forest appeals JMOL overturning a jury finding of nonobviousness for S&N’s negative-pressure wound therapy patents.
- Patents-at-issue: U.S. 5,645,081 ('081) and 7,216,651 ('651), covering apparatus/methods for treating wounds with negative pressure.
- Prior art categories: Bagautdinov (drainage with negative pressure), Zamierowski (wound dressing system with suction), Chariker-Jeter (closed suction drainage; public use).
- Prior Blue Sky litigation framed the scope of “wound” and the Chariker-Jeter disclosures; the district court construed “wound” to exclude fistulae/pus pockets and held the claims required negative pressure to heal/treat a wound.
- Jury returned a nonobviousness verdict; district court nevertheless granted JMOL, holding the art rendered the claims obvious; this appeal follows.
- The panel reverses JMOL and remands, applying substantial-evidence review to the jury findings and de novo review to the ultimate obviousness determination.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court erred in granting JMOL on obviousness given the jury’s Graham-factor findings | Wake Forest asserts substantial evidence supports the jury’s differences and nonobviousness | S&N contends advisory verdict contains no binding implied facts and deference is inappropriate | JMOL reversal; jury findings must be respected and legal conclusion reconsidered de novo |
| Whether the jury’s advisory verdict on obviousness binds the district court’s findings | Jury results support nonobviousness, including implicit Graham-factor findings | Advisory verdict means no binding implied facts; court may resolve all facts | District court erred; implied facts must be reviewed for substantial evidence; de novo review of obviousness warranted |
| Whether the court properly construed the healing limitations and their impact on prior art | Claims require negative pressure to heal; prior art discloses healing under negative pressure | No claim-time-minimum; healing can be progress toward healing; no need for full closure | Remand for proper construction; the majority’s implicit assumptions about “healing” were erroneous |
| Whether there was sufficient motivation to combine the prior art | Wake Forest presented testimony of no motivation to combine Zamierowski with Chariker-Jeter | Any motivation to combine is a factual issue; evidence insufficient to prove lack of motivation | Substantial evidence supports lack of motivation to combine; but given proper claim construction, still nonobvious |
| Whether objective indicia of nonobviousness support the jury’s verdict | Commercial success, long-felt need, copying, etc. indicate nonobviousness | Secondary considerations may be outweighed by prior art if claim scope is broad | Objective indicia weigh in favor of nonobviousness; supports reversal of JMOL |
| Whether the district court should have deferred to the jury’s factual findings under Rule 52/49 when reviewing obviousness | Factual findings implicit in the verdict should be given deference | Rule 39/49 framework controls; advisory status limits deference | Sustained deference to jury findings; de novo review of the ultimate question proper |
Key Cases Cited
- KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (U.S. 2007) (flexible, expansive approach to obviousness; not a rigid teaching-suggestion-motivation test)
- Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) (clear-and-convincing standard; motivation to combine)
- In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) (gives guidance on Graham factors and underlying fact findings)
- Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) (objective indicia as probative nonobviousness evidence)
- Jurgens v. McKasy, 927 F.2d 1552 (Fed. Cir. 1991) (standard for reviewing mixed questions of law/fact; defer to jury on factual findings)
- Blue Sky Medical Group, Inc. v. Kinetic Concepts, Inc., 554 F.3d 1010 (Fed. Cir. 2009) (construction of wound and Chariker-Jeter references in context of prior art)
- Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010) (recognizes importance of underlying factual issues in obviousness)
- Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed. Cir. 1983) (Rule 49/Rule 52 framework for implied factual findings)
- Gaia Techs. Inc. v. Recycled Prods. Corp., 175 F.3d 365 (Fed. Cir. 1999) (Rule 49/Rule 52 treatment of implicit findings when using Rule 49(b))
- Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009) (waiver of jury construction disputes; Rule-based adjudication)