Ohio Willow Wood Co. v. Alps South, LLC
735 F.3d 1333
Fed. Cir.2013Background
- OWW sued Alps for infringement of U.S. Patent No. 5,830,237 (’237 patent), a gel/cushion liner for amputee residual limbs; litigation was stayed while the PTO conducted two ex parte reexaminations.
- First reexamination: PTO initially rejected claims over Silipos’s “Silosheath”; OWW overcame that rejection by amending claims to require gel only on the interior surface (no exterior gel bleed-through).
- Second reexamination: Alps presented a 1995 advertisement and testimony by Jean‑Paul Comtesse asserting Silipos’s Single Socket Gel Liner (SSGL) used an impermeable Coolmax fabric with no exterior gel; the examiner found claims obvious over SSGL and other art.
- OWW appealed to the BPAI, arguing Comtesse was a highly interested witness and his testimony lacked corroboration; BPAI reversed the examiner because Comtesse’s testimony was insufficiently corroborated by the record.
- Separate Texas litigation (Thermo‑Ply) had earlier held related continuation claims invalid for obviousness (affirmed on appeal), and the district court here applied collateral estoppel to parts of the ’237 patent, granted summary judgment of obviousness for several dependent claims, and entered summary judgment for OWW on inequitable conduct.
Issues
| Issue | OWW (Plaintiff) Argument | Alps (Defendant) Argument | Held |
|---|---|---|---|
| Collateral estoppel (preclusion from Thermo‑Ply obviousness) | Different claim language between ’182 and ’237 prevents issue preclusion | Claims are substantially similar; differences do not materially change invalidity question | Affirmed: collateral estoppel applies to claims 1,2,4,15,16,20 of ’237 |
| Obviousness (dependent claims 18,19,21,22,23) | Court failed to analyze claims as a whole; improperly piecemealed limitations | Prior art (Silosheath, Klasson/ICEROSS, SSGL) teaches or motivates numerical limits; routine optimization | Affirmed: dependent claims invalid for obviousness |
| Inequitable conduct — materiality (withholding/corroboration) | No withholding or misrepresentation; BPAI decision shows lack of substantive error | OWW withheld corroborating evidence (witness declarations, patent app, physical samples) and mischaracterized Comtesse to undermine his testimony | Reversed (genuine issues): disputed materiality; withheld/misrepresented evidence could have led PTO to credit Comtesse |
| Inequitable conduct — intent to deceive | No clear and convincing evidence of intent; counsel acted reasonably | Counsel’s misrepresentations plus nondisclosure allow inference of intent; collective conduct suggests deceptive purpose | Reversed (genuine issues): intent is a triable issue (circumstantial evidence may permit inference) |
Key Cases Cited
- Shell Petroleum, 319 F.3d 1334 (Fed. Cir.) (standard of review for collateral estoppel)
- Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir.) (summary judgment review standard)
- Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d 1373 (Fed. Cir.) (issue preclusion in patent cases)
- KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (U.S.) (obviousness framework)
- Graham v. John Deere Co., 383 U.S. 1 (U.S.) (Graham factual inquiries for obviousness)
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir.) (modern inequitable conduct standard: materiality and intent)
- In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511 (Fed. Cir.) (clarifying Therasense materiality/intent standards)
- Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359 (Fed. Cir.) (rule‑of‑reason corroboration standard)
- Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir.) (forms of corroborating evidence)