Western Union Co. v. MoneyGram Payment Systems, Inc.
626 F.3d 1361
| Fed. Cir. | 2010Background
- Western Union holds the '203, '747, '309, and '094 patents directed to formless and receiving money transfers; MoneyGram marketed a FormFree system.
- Orlandi Valuta operated a Red Phone/formless transfer system prior art; Western Union attempted to show the patents improved on that system.
- MoneyGram redesigned its system in 2003 to avoid infringement, removing the stored transfer amount from the Confirmation File database.
- In trial, Western Union asserted infringement of specific claims across the four patents; MoneyGram challenged validity as obvious in light of Orlandi Valuta.
- The district court construed claims in 2008; trial occurred in September 2009; jury found infringement under the doctrine of equivalents for some pre-design-around system claims.
- The district court denied JMOL on infringement and validity and issued a permanent injunction; on appeal, the Federal Circuit found the claims obvious as a matter of law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Waiver of obviousness challenge based on Orlandi Valuta with keypad | MoneyGram preserved obviousness challenge under Rule 50(a) citing Orlandi Valuta. | District court correctly held waiver for keypad-based obviousness arguments. | Waiver not required; arguments preserved and considered. |
| Obviousness of combining ETFD and Internet with Orlandi Valuta | Combining ETFD and TCP/IP was nonobvious; Orlandi Valuta lacked ETFD and code features. | Combination would have been obvious; modern electronics replacing fax is routine. | Obvious as a matter of law. |
| Use of a code in the prior art (Orlandi Valuta) rendering claims obvious | Orlandi Valuta used a code to identify transactions; such features anticipated the claimed code steps. | Code-related limitations were nonessential details or not taught by Orlandi Valuta. | Yes, the code feature was taught and would have been obvious. |
| Secondary considerations to support nonobviousness | Commercial success and investments support nonobviousness. | No nexus between success/investments and claimed invention; prior art already disclosed concepts. | Secondary considerations do not create a nexus; obviousness affirmed. |
Key Cases Cited
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (obviousness judged with common sense and known methods per §103)
- In re Kubin, 561 F.3d 1351 (Fed.Cir.2009) (underlying factual inquiries; de novo review of obviousness)
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (framework for evaluating obviousness with primary/secondary considerations)
- Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed.Cir.2007) (modernizing/combining prior art can yield obvious results)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed.Cir.2008) (use of Internet/browsers for known methods; obviousness context)
- Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed.Cir.2010) (nexus requirement for secondary considerations)
- In re Mettke, 570 F.3d 1356 (Fed.Cir.2009) (obviousness of adding Internet access to a prior art kiosk)
- In re GPAC Inc., 57 F.3d 1573 (Fed.Cir.1995) (secondary considerations require nexus to claimed invention)
- In re Huang, 100 F.3d 135 (Fed.Cir.1996) (nexus concept for secondary considerations)