In the United States District Court for the District of New Jersey, a jury found in favor of Plaintiff-Appellant Princeton Biochemicals, Inc. (Princeton), rejecting the claims of Defendant-Appellee Beckman Coulter, Inc. (Beckman) that Princeton’s U.S. Patent No. 5,045,172 (the ’172 patent) is invalid by reason of obviousness and prior invention, and finding that Beckman infringed the T72 patent. On all three
I.
Dr. Norberto Guzman is the inventor of the ’172 patent, which he assigned to Princeton. The ’172 patent claims a capillary electrophoresis device. Electrophoresis is one method available for the investigation of biological materials, and is an efficient procedure for the separation and detection of proteins and other matter. ’172 patent, col. 1, ll. 16-20. Electro-phoretic separation, one species of electrophoresis, relies on the differential speeds of the migration of differently charged particles in an electric field. Id. at col. 1, ll. 21-23. Capillary electrophoresis is one type of electrophoretic separation. Id. at col. 1, ll. 17-20. As the ’172 patent describes,
[I]t is generally known that a material, containing mixtures of substances to be analyzed, can be passed along a capillary tube and through a detector under the influence of an applied voltage. The applied voltage charges the substances and the charges on the substances determine their spacing and their speed of passage along the capillary tube.
Id. at col. 2, ll. 32-38. Capillary tubes, generally made of quartz, range in lengths of roughly 10 to 100 centimeters and 25-200 microns in diameter. Id. at col. 1, ll. 50-58. Due to the dimensions of a tube, capillary electrophoresis requires only a minute sample size to efficiently separate and identify the components of a solution.
Claim 32 of the ’172 patent claims a specific capillary electrophoresis device:
Capillary electrophoresis apparatus comprising a capillary tube of the type which can be electrically charged, said capillary tube having first and second ends,
first means at said first end of said capillary tube providing a source of buffer solution and a source of a sample substance to be analyzed, second means coupled to said apparatus for applying electrical potential across said capillary tube whereby a sample flows through said capillary tube and past said detector,
said first means includes a rotatable table carrying a plurality of sample cups and a holder for holding an end of said capillary tube in operative relation with one of the said cups, said cups containing either buffer solution or a sample to be analyzed, and
said capillary tube is in the form of a coil of glass tubing [secured to a support member], *
Id. at col. 23, ll. 30-47 (emphases added). The parties stipulated that claim 32 contains eight elements, as follows:
Capillary electrophoresis apparatus comprising:
(1) a capillary tube of the type which can be electrically charged,
(2) said capillary tube having first and second ends,
(3) first means at said first end of said capillary tube providing a source of buffer solution and a source of sample substance to be analyzed,
(4) second means coupled to said apparatus for applying electrical potential across said capillary tube whereby a sample flows through said capillary tube and past said detector,
(5) said first means includes a rotatable table carrying a plurality of sample cups and
(6) a holder for holding an end of said capillary tube in operative relation with one of the said cups, said cups containing either buffer solution or a sample to be analyzed, and
(7) said capillary tube is in the form of a coil of glass tubing
(8) secured to a support member.
Id.
Beckman manufactures and sells the P/ACE 2000 and 5000 Series capillary electrophoresis devices (“the accused devices” or “the P/ACE devices”). Beckman contends a prototype device, named OTEP II, contained all the elements recited in claim 32. Princeton does not contest that Beck-man made OTEP II by February 1, 1987. That date, therefore, is the relevant reduction-to-practice date for the P/ACE devices. Beckman began selling P/ACE devices as early as 1993.
Guzman filed the application for the 172 patent on November 14, 1988. Thus, the critical date for evaluating 35 U.S.C. § 102(b) prior art references is November 14, 1987. Several references, published before November 14, 1987, discussed the electrophoretic concepts embodied in claim 32 of the 172 patent. Two particular references stand out. The first, an article by Honda dated September 1987, describes ways to introduce automatically different samples into a capillary electrophoresis device. Susumu Honda, et. al., “Evaluation of an Automatic Siphonic Sampler for Capillary Zone Electrophoresis,” Int’l J. on Chromatography, Electrophoresis and Related Methods. The second, a Ph.D. thesis by Lukács, was published in 1983 by a graduate student of Dr. James W. Jorgen-son, an expert who testified on behalf of Beckman. The Lukács thesis discloses the coiling of capillary tubes during electro-phoretic work. Coiling a capillary tube lengthens the tubing without increasing the size of the electrophoretic device. A longer tube provides better separation and identification of analytes.
On November 21, 1996, Princeton filed suit, alleging that the P/ACE devices infringed claim 32 of the ’172 patent. Beck-man denied infringement and sought a declaration of invalidity on grounds of obviousness and prior invention. Following a grant of summary judgment of nonin-fringement, Princeton appealed. In an unpublished opinion, this court reversed, holding that the district court had improperly construed the sixth element in claim 32.
Princeton Biochemicals, Inc. v. Beckman Instruments, Inc.,
On remand, the district court conducted a nine-day trial followed by motions for JMOL from both parties. The district court reserved judgment until after the jury verdict. The jury decided in favor of Princeton on all issues. Specifically, the jury found that Princeton proved by a preponderance of the evidence that Beck-man’s devices infringed claim 32 of the ’172 patent; that Beckman did not prove by clear and convincing evidence that claim 32 of the patent was invalid for obviousness; and finally, that Beckman did not prove “by clear and convincing evidence that claim 32 is invalid because the invention described in that claim was made by Beck-man before it was made by Princeton.”
In due course, the district court issued a carefully composed, 194-page opinion that set aside the jury’s verdict and found all counts in favor of Beckman.
Princeton Biochemicals, Inc.,
II.
“The grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed under the law of the regional circuit in which the appeal from the district court would usually lie.”
Summit Tech., Inc. v. Nidek Co.,
This court also reviews the legal standards that the jury applied in reaching its verdict to determine whether they were correct as a matter of law.
Herbert Mark-man, Positek, Inc. v. Westview Instruments, Inc.,
III.
Section 103 of title 35 of the United States Code states:
A patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
35 U.S.C. § 103(a) (2000). The legal conclusion, that a claim is obvious within § 103(a), depends on at least four underlying factual issues: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) evaluation of any relevant secondary considerations.
See Graham v. John Deere Co. of Kansas City,
There is no dispute that the references introduced at trial disclosed every element in claim 32. Guzman admitted this in his testimony at trial. Thus, aside from the relevance of the asserted references, the only disputed issue at trial, and asserted on appeal, was whether there was motivation to combine the elements already present in the prior art. As this court outlined in
Ruiz v. A.B. Chance Co.,
Contrary to this reasoning, section 103 requires assessment of the invention as a whole.
Id.
This “as a whole” assessment of the invention requires a showing that an artisan of ordinary skill in the art at the time of invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention, would have selected the various elements from the prior art and combined them in the claimed manner.
Id.
In other words, section 103 requires some suggestion or motivation, before the invention itself, to make the new combination.
See In re Rouffet,
In setting aside the jury’s verdict and holding claim 32 obvious, the district court systematically and vigilantly considered the relevant prior art references and testimony of both parties. The Honda article relates to claim 32’s first six elements and describes an automated capillary electrophoresis device with a rotatable table carrying a plurality of sample cups. Princeton does not contest that the Honda article discloses elements one through six. Therefore, at the time of Princeton’s claim 32 invention, the prior art had disclosed elements one through six.
With respect to the seventh element, the district court found that the Lukács thesis disclosed the construction and use of a coiled glass capillary in a capillary electrophoresis apparatus.
Princeton Biochemicals, Inc.,
Element 8 of claim 32 recites the requirement that the capillary tube of claim
As discussed, simply identifying all of the elements in a claim in the prior art does not render a claim obvious.
Ruiz,
Dr. Jorgenson testified that the motivation to combine these references was found in the knowledge of those skilled in the art at the time of Guzman’s invention.
See SIBIA Neurosciences, Inc.,
[T]he combination is obvious. Every one of the individual ideas is obvious. And the combination is absolutely obvious. Everybody in all of the related fields in all of the related technologies is doing those kinds of things .... The entire package taken together is obvious.
Id. Princeton offered no evidence to rebut Dr. Jorgenson’s testimony.
Dr. Jorgenson’s testimony on motivation to combine is unrebutted. Moreover, it is consistent with the prior art introduced at trial. The only additions to the Honda prior art in this invention were coiling the capillaries (Lukács prior art) and supporting the coils (concededly prior art). Both of those simple additions appear in other prior art references. Thus, Dr. Jorgenson testified, without any rebutting evidence in the record, that the suggestion to coil and secure the capillaries in the Honda device was within the knowledge of one of skill in the art. In
In re Lee,
this court expressed skepticism about invoking the knowledge of a skilled artisan to supply the motivation to combine on a scanty record.
In addition, the nature of the problem supplies a motivation to combine these pri- or art references. The district court provided a detailed analysis of the nature of the problem solved by the invention.
Princeton Biochemicals, Inc.,
The district court also properly found that the references for this obviousness analysis were proper prior art. A reference is appropriate prior art if within the field of the inventor’s endeavor.
Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
In this case, all the references for obviousness constitute analogous art, even though some of the references fall within the related field of liquid chromatography. Throughout the prosecution history of the 172 patent, the examiner consistently rejected elements one through six of claim 32 as obvious, citing references ranging from capillary electrophoresis to liquid chromatography — a related means of separating analytes. The examiner stated on the record: “[Ljiquid chromatography and capillary electrophoresis are closely related techniques.” The district court also itemized other references in the chemical separations field, describing the relation to electrophoretic separation or chromatography or both.
Princeton Biochemicals, Inc.,
The district court also examined whether the prior art references were reasonably pertinent to the particular problems with which the invention of claim 32 was involved. Id. at *37-39. In defining such problems, the district court looked to Dr. Guzman’s own testimony that the electro-phoretic device needed to be compact and immobile. Id. at *38. As already noted, the district court properly assessed that the prior art references addressed those same problems in the same way. Id. at *39. In sum, the district court used proper prior art references in its correct obviousness analysis.
Viewing the evidence as a whole and in a light most favorable to Princeton, this court agrees with the district court that there was not substantial evidence to support the jury verdict. Because claim 32 is
COSTS
Each party shall bear its own costs.
AFFIRMED
Notes
The words "secured to a support member” are not present in the final, published version of the ’172 patent. The parties stipulated at trial that this was a printing error only. Those words appear in claim 32 as issued.
