526 F. App'x 988
Fed. Cir.2013Background
- This case involves Powerscreen and Terex appealing a jury verdict that Metso’s ’618 patent is not obvious and that Powerscreen infringed the patent.
- The patent covers a mobile, road-hauled aggregate processing plant with lateral delivery conveyors that fold for transport and unfold for operation.
- The claimed invention features head and tail sections of a lateral conveyor connected by pivots allowing different folded configurations, including a transport-position arrangement not projecting beyond the chassis.
- Metso relied on two Rafferty prior-art screeners (Dominator and Masterstock 70/80) to argue obviousness; Masterstock taught a side-fold, potentially relevant to the 90° L-configuration.
- The district court instructed the jury that prior art had to be fully functional; the jury found non-obviousness and Metso’s infringement findings; on appeal the court reverses, holding the patent would have been obvious.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was the jury instruction requiring fully functional prior art erroneous? | Powerscreen argues the instruction was improper. | Metso argues functional prior art is appropriate. | Yes; the instruction was erroneous and prejudicial. |
| Are the asserted claims of the ’618 patent obvious as a matter of law in view of Dominator and Masterstock? | Powerscreen contends the combination renders claims obvious. | Metso contends the jury could find non-obviousness due to secondary considerations. | Obviousness is decided as a matter of law; the claims would have been obvious. |
Key Cases Cited
- Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294 (Fed. Cir. 2010) (a prior art need not be fully functional to qualify)
- Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547 (Fed. Cir. 1989) (prior art may be inoperative)
- CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168 (Fed. Cir. 2005) (prejudicial instruction requires new trial if not harmless)
- Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356 (Fed. Cir. 2004) (harmlessness of error analyzed for qualification of prior art)
- Baker Oil Tools v. Geo Vann, Inc., 828 F.2d 1558 (Fed. Cir. 1987) (critical date for obviousness analysis)
- KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) (flexible, expansive approach to obviousness; motivation to combine)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (secondary considerations and nexus considerations in obviousness)
- Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) (patent obviousness based on motivation and reasonable expectation)