Tokai Corp. v. Easton Enterprises, Inc.
632 F.3d 1358
| Fed. Cir. | 2011Background
- Tokai owns safety-rod lighters with automatic child-safety features and asserts four asserted patents with priority to 1995; litigation against Easton alleging infringement and Easton challenging validity; district court granted summary judgment of invalidity under 35 U.S.C. §103 over four prior art references (Shike, Liang, Floriot, Morris); Tokai sought exclusion of two expert declarations (Jones and Sung) for failure to provide written reports; district court excluded those declarations and granted summary judgment of obviousness; on appeal, Tokai argues error in exclusion and in legal/factual analysis under Graham factors; court affirms on obviousness and exclusion, not addressing Easton cross-appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Exclusion of expert declarations constitutes error? | Tokai argues the district court abused discretion by excluding Sung/Jones declarations. | Easton contends proper Rule 26 and harmless error; Sung status unclear. | No reversible error; exclusion upheld. |
| Obviousness ruling proper under Graham and KSR? | Tokai asserts nonobviousness due to nexus, secondary considerations, and copying. | Easton contends no genuine factual disputes; obviousness supported by prior art and motivation to combine. | District court correctly granted summary judgment of invalidity. |
| Enhanced burden to overcome PTO prior art references? | Tokai contends enhanced burden applies when prior art was considered by PTO. | Court held added burden not required because some art was not considered by PTO. | No enhanced burden required. |
| Do commercial success and copying negate obviousness? | Tokai argues nexus between commercial success/copying and the claimed invention. | No nexus shown; secondary considerations insufficient to defeat prima facie obviousness. | No genuine issue; findings support obviousness. |
| Error in applying “modification” standard for obviousness under KSR? | Tokai argues Saito device was nonobvious and not a simple substitution. | KSR allows motivation to combine; obviousness shown by prior art and need for safer lighters. | Court found claims obvious as a matter of law under KSR. |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (1966) (establishes the four Graham factors for obviousness)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (nonobviousness shown via motivation to combine in the mechanical arts)
- PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed.Cir.2008) (enhanced burden when PTO prior art is relied on)
- Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350 (Fed.Cir.1984) (discussion of deference to PTO and non-consideration of non-PTO art)
- Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed.Cir.1988) (nexus considerations for commercial success in obviousness analysis)
- Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714 (Fed.Cir.1991) (summary judgment appropriate when no genuine issues on obviousness)