*1 HILL, CARNES, Before WILSON Judges.
Circuit
PER CURIAM: judgment district court’s order 3, 2006, awarding the on October
entered fees, costs, attorney’s and ex-
plaintiffs VACATED, this case RE-
penses is consis- proceedings for further
MANDED Supreme Court’s decision
tent with Kenny A. rel. ex opinion Perdue
Mark Hogge, Greenberg Lee Traurig LLP, DC, Washington, argued plain- tiffs-appellees. With him on the brief Phillip were Robert Charrow and Laura Metkoff Klaus. Of on the counsel brief Bradford, Lathrop Aaron P. Gage & Denver, LLP, of CO. Noto, Kurth, LLP,
Aldo
Andrews
DC,
Washington,
argued
defendant-
appellant.
him
With
brief
were
Burgess.
Frederick
Frei and
S.
Lori Eden
LOURIE, LINN,
DYK,
Before
Judges.
Circuit
Background
by
filed
for the court
Circuit
Opinion
Concurring opinion filed
DYK.
Judge
in this
patents
at issue
case cover
*3
Judge LINN.
Circuit
pin locks that secure trailers to cars
hitch
A
pin
hitch
sport utility
and
vehicles.
DYK,
Judge.
Circuit
tow ball
to a
draw bar or
mount
secures
to a
hitch receiver attached
motor vehicle.
(“Master
Company
Master Lock
LLC
pin passes through aligned aper-
hitch
The
Lock”)
judgment
a final
appeals from
in the trailer hitch receiver and draw
tures
for the
District Court
the United States
in order to
the two members
bar
secure
Philip
in favor of
W.
District
Colorado
The
describe a barbell-
together.
patents
Inc.
Group,
and
Products
Wyers
stop portion
lock with a
on one
shaped
A
(collectively, “Wyers”).
jury found
end,
end,
other
head on the
and
and
Lock
to show
clear
Master
failed
portion
passes through
which
shank
15, 19, 21,
convincing
that claims
evidence
hitch
aligned apertures of the
and
receiver
(the
6,672,115
No.
24 of
Patent
U.S.
towball mount.
No.
patent”), claim of U.S. Patent
“'115
(the
7,165,426
claims
patent”),
“'426
in a
hitch
The use
a lock
trailer
(the
7,225,649
No.
and 11 of
Patent
U.S.
was well
in the
receiver
known
patent”),
“seal
would
patent”
“'649
or the
patents.
pat-
Like the
The district court de-
inventions,
5,664,445
have been obvious.
Patent
ented
U.S.
No.
(the
“Chang patent”)
Master Lock’s renewed motion
discloses a lock with
nied
(“JMOL”).
head,
having
a shackle
mem-
judgment
stop
as a matter
law
a lock
shank,
ber, a
a latch.
lock is
06-cv-
The
Lock
No.
Wyers Master
(D.Colo.
being
pin
a hitch
The
00619-LTB,
shown
used as
lock.
patents-in-suit Patent, Chang Figure 8 a matter of law. 11.6-11; locks, col.l see also Pat- barbell-shaped such son U.S. The use 5,284,038 patents-in-suit, No. col.l. 11.6-10. those described in the ent barbell-shaped in the art. U.S. shows well known Johnson also (the a trailer hitch receiver 4,711,106 pat- being lock used as Patent No. “Johnson ent”) hitch lock. See John- lock: discloses a Patent, Figure 1
Johnson *4 6,055,- Wyers’ (collectively, own U.S. Patent No. '426 patent1 pat- “the sleeve (the “’832 a barbell- patent”), discloses ents”) claim pin having a hitch lock a shaped locking comprising locking device a removable sleeve to increase the shank’s head, member, having a a a stop shackle diameter, providing and a method for shank, patent latch. See '832 eol.5 pin hitch lock with a removable sleeve patent 11.37-57. The '832 also shows bar- Figure of patent shank.2 bell-shaped being pin lock used as a hitch depicts the claimed invention. very Figure lock in a manner similar to figs.1-2. patent. Johnson See id. patents-in-suit The claim improvements Patent, Figure '115 to the The patent locks. '115 The claimed sleeve slides over the shank lock,
the hitch pin increasing the diameter ll.56-57, patent 1. The '426 patent was filed as a specification divisional col.2 patent present indicates that application. '115 "the invention also lock, coupler be used as a lock, as a watercraft 2. Some of the asserted claims are more lock, lock, gate spare cross bolt tire bike broadly a "locking lock, directed to device" rather any carrier cable lock and other simi device, see, locking e.g., than a locking hitch '115 lar structure.” Id. col.4 ll.41-45. patent 11.21-41.The '426 enabling patent with trailer '115 col.10 shank and use varying the see claims a “method for diameter apertures, of different hitch receivers Abstract, locking the linear shank particularly [of device] '115 1/2 that are the apertures adapt locking inch device variable sized inch 5/8 appli industry towing for certain to be locked with apertures components standard inven patent touts the col.ll 11.17-20. cations. The '115 said device.” '426 benefit, namely its size primary for the '115 specifications tion’s ll.15-18, col.2 ll.20- col.l adaptability. very Id. are similar. '426 removeable sleeve is not 45-47. The patent claims an improved The '649 towing locking or improve claimed locking device an external seal de- functions, to be desirable but is claimed locking signed to insulate the mechanism unit single locking it “a allows for because ingress the lock from the contami- a number of varied size be used for [to] nants. col.7 11.13-15.Claim ll.32-34, requirements,” id. col.2 representative: of the '649 *5 saving space. shelf Claim 15 thus retailers device, locking A comprising: 1. representative: the '115 is (1) (A) including a shackle member an pin A hitch locking device elongated portion a having shank a hitch a hitch bar with interconnecting axis, longitudinally extending receiver, in- each bar and receiver said (2) stop portion a a first at end of said disposed therein for
cluding apertures portion, device, shank and receiving pin hitch said de- comprising: vice (3) latch a portion a second end of (a) having a first and pin hitch shank portion, portion said shank said shank a thickness portions
second end and having margin adja- an surface outer dimension; portion; cent to said latch (b) disposed a at said first portion latch (B) locking including casing a a head portion; end a having surrounding sidewall surface (c) a member moveable be- locking head a flat inner generally and transverse tween and unlocked states locked entryway head face an and with sized engage- and for selective configured por- to with said latch adapted mate portion; latch ment with said longitudinal tion a axial direction (d) stop disposed at said sec- member locking disposed and a mechanism
ond portion; end casing, locking mechanism said said (e) engagement a sleeve for selective being moveable between pin with hitch shank to selec- said (1) lockably state to retain locked tively vary the thickness dimension portion latch in said head locking said thereof to match size diameter is in an en- portion when said latch aper- the hitch bar and receiver gaged state and engagement tures permit snug to (2) an unlocked state release said therewith; and therefrom; portion latch and (f) retaining apparatus operative (C) including a head cover from resist of said sleeve removal (1) portion operative lock- a cover to en- said hitch shank when said surface of cas- ing gage is in the unlocked sidewall said head member ing surrounding latch relation thereto state and removed from said therealong longi- extending portion. Wyers’ as to T2 disputed tudinal axial direction so be se- own Trimax thereto, cured barbell-shaped T3 locks on sale (2) flexible, flange portion patent priority resilient date satisfied also said extending inwardly from cover every limitation of the claims of asserted having an portion opening to define patents the '115 and but those for the surrounding flange edge that defines a sleeve. Master Lock asserted structure, being sized opening seal sleeve claims would have been obvious portion such said latch over the combination of the art lock- inserted into and from said removed devices, alia, ing inter in combination with locking opening head through the (the 3,963,264 No. pat- U.S. Patent “Down seal structure when operative said ent”), or combination with Master latch portion engaged said is in the padlock. Lock’s 37D as the district sealably engage state to the outer sur- described, court the relevant question for margin face of said shank portion. jury’s respect consideration with to the cover, Id. col.8 11.13-47.The which head sleeve asserted claims “wheth- head, preferably encases the er Lock presented Master clear and con- material,” yet a “stiff made of resilient vincing evidence that the sleeve use of a structure flange the seal is formed adjust operative a shank thickness of portion that inwardly extends from the would have been obvious.” See JMOL 11.48-50; Id. col.3 cover. id. col.7 11.7-15. Order, WL at *3. major manufacturer, Lock, A of- Master *6 Similarly, the concededly external seal is sale fered for locks that fell with- allegedly only the feature of patent the '649 seal '426, '115, in the claims of the and '649 distinguishes that Chang pat- it from the In patents. April 2006, of Wyers filed this the patent.4 ent and '832 Lock Master lawsuit, ultimately infringement asserting argued patented that the would device 15, 19, 21, of claims of and 24 the '115 have been obvious over the combination of patent, claim 1 of the patent, '426 and art prior any the devices with of 1, 9, and patent.3 claims 11 of the '649 following: the the pad- Master Lock 6121 The case was tried jury days to a nine over lock, (the 5,156,029 Patent No. U.S. “Heald of March 2009. At of the close evi- (the patent”), 3,858,419 U.S. Patent No. dence, Wyers’ the district granted court “Hampton patent”), and U.S. Patent No. for motions JMOL on infringement. Mas- (the 3,848,440 patent”). “Manuel as contended, however, ter Lock that all of noted, question the district court the sole patents-in-suit the been would have obvi- jury’s for respect consideration with to trial, prior ous over the Wyers art. At patent seal was “whether Lock Master admitted both the Chang and Johnson presented clear and convincing evidence limitation every references disclosed of the use of an flange '115 and '426 external flat seal except claims the use adjust of the sleeve to would been operative thick- have obvious.” JMOL See Moreover, Order, ness of shank. it was un- WL at *5. Wyers infringement 3. also asserted patent Wyers' of claims patent, The '832 is and own patent. May 17 and 18 of the In prior against '832 of art thus is not the '649 However, granted 102(a). § district court Master Lock's U.S.C. it under 35 is summary judgment against for motion of non-in- the '649 under 35 102(b), fringement respect patent. with '832 § to the U.S.C. as the '832 issued year prior The claims of the '832 filing are not involved more one than to the date of appeal. patent. in this scope patents Here of the claims of the on the dis question obviousness The patent, the '426 puted claims of the '115 in suit are not issue and the level skill was submitted ordinary and skill in the art is not of one which a verdict find jury, to the returned al- primary The factual issues contested. were not obvi the asserted claims ing (1) dispute are whether the leged ous, Wyers awarded million and $5.35 are in the same field prior art references royalty. The reasonable damages (2) invention; patented as the endeavor motion granted Wyers’ court district whether there was sufficient motivation Master Lock continuing injunction against (3) references; combine the the exis- infringement, judg and entered for future pertinent significance tence and second- in the form of a in favor of ment We each ary considerations. address infringing products royalty any 24% turn. has or does sell Master Lock sold injunction, plus date of the the effective I Relevant Art Prior $1,137,920 pre-judgment interest. See criteria are in deter Two relevant Master No. 06-cv- Wyers v. Lock mining analogous: whether 00619-LTB-MJW, (D.Col. No. 325 dkt. “(1) the art is from same field whether 2009) trial, After May (Judgment). endeavor, regardless Lock renewed its JMOL motion Master (2) addressed, if is not reference court denied the obviousness. district endeavor, within the field of inventor’s motion, jury upheld verdict. reasonably whether the reference still is Order, 1309774, at *3. JMOL 2009 WL pertinent particular problem to the timely have appealed, Lock we Master Comaper which the inventor is involved.” jurisdiction pursuant 28 U.S.C. Antec, Inc., Corp. v. . 1295(a)(1) § (Fed.Cir.2010) (quoting Clay, 966 In re (Fed.Cir.1992)). 658-59 Wheth Discussion *7 prior in the art “analo er reference is is for patent invalid obviousness A gous” question. Clay, is a fact In re 966 subject the “if the differences between at F.2d 658. sought prior to and the patented matter be subject matter art are such the respect patents, to With the sleeve at would have been obvious the time whole jury the the district court concluded that person having was to a the invention made could find that the Down implicitly in art to which ordinary skill the said scope of art. was outside the the relevant matter 35 subject pertains.” U.S.C. Order, 1309774,at 2009 WL *3. See JMOL 103(a). § question is a of law Obviousness However, specifically Down the is findings of fact. In underlying based on trailer-towing application, directed to a (Fed.Cir. Kubin, 1351, 561 1355 re F.3d as an adaptable to “a motor vehicle such 2009). inquiries factual underlying The a rear towing by fitting automobile (1) scope and content of the include: attaching towing releasably attachment (2) art, prior between the differences of a trailer as a boat the tow-bar such issue, (3) prior at art claims trailer, box, other vehi horse caravan or art, (4) ordinary in the skill level Thus, the col.l cle.” Down 11.9-12. considerations, secondary any relevant clearly the same Down within success, long felt but such as commercial patents. field of as the sleeve endeavor needs, the failure of others. unsolved to the seal the dis- Co., respect With 1, 383 U.S. 17- Graham v. John Deere (1966). 684, jury could trict court concluded that 18, L.Ed.2d 545 86 S.Ct. 15 1238 padlock find that seals were not II Motivation to
implicitly
Combine
Order,
prior art.
2009
relevant
JMOL
question
The second
for our consid
1309774, at *5. The
court in-
WL
district
whether
eration is
there was motivation
objection
jury
without
structed
the sleeve with
bar
prior
combine
art
must
determined “based on
obviousness
be
locks,
similarly,
bell
whether
there
ordinary
perspective
person
of a
art
prior
was motivation
combine the
loeksmithing.”
the field of
skill
J.A.
with an external sealing
locks
mechanism.
jury
ap-
3332. Given
this
instruction
Supreme
Before the
Court’s decision
endeavor
pears
define the field of
as KSR,
required
patent challenger
we
that a
“loeksmithing,”
why
there is
reason
no
a person
ordinary
show that
in the
skill
padlocks should be
from the rele-
excluded
art would have had motivation to combine
prior art. Tellingly,
vant
art
prior
references and
have
would
padlock”
refers to “the
itself
art
expectation
had
reasonable
of success
background
pat-
of the invention.
'649
doing
See
Therapeutics,
so.
PharmaStem
Moreover,
col.l
ent
11.24.
ViaCell, Inc.,
1342,
Inc. v.
1360
scope broadly,
itself defines its
and makes
(Fed.Cir.2007);
Lederman,
Noelle v.
355
clear that the claims
are directed
“lock-
(Fed.Cir.2004).
F.3d
1351-52
We
11.9,
generally.
col.l
ing device[s]”
id.
See
reason, sugges
had also held that “[t]he
col.411.65-66.
tion,
or motivation to
combine
1)
explicitly or implicitly:
found
in the
if
Even
were
padlocks
2)
themselves;
art references
in the
endeavor,
within
they
not
the same field of
knowledge
ordinary
those of
in the
skill
clearly “reasonably
are nonetheless
perti
references,
art that certain
or disclosures
problem
to the
nent”
that the inventor was
references,
in those
are of special interest
trying
Clay,
to solve. See In re
field;
3)
importance
or
or
from the
Supreme
Court’s decision in
nature of the
to be
Ruiz
solved.”
Inc.,
Teleflex,
KSR International
Co.
v. A.B. Chance
550 U.S.
S.Ct.
L.Ed.2d
(Fed.Cir.2000);
Dembiczak,
see In re
(2007),
directs us to
the scope
construe
(Fed.Cir.1999).
KSR,
how
analogous
broadly, stating
that “fa
ever, instructs courts to take a
“ex
more
items may
miliar
have obvious uses be
pansive
approach”
and flexible
in deter
yond
primary
their
purposes,
per
mining
patented
whether a
invention
ordinary
son
skill often will be able to fit
*8
obvious at the time it was made. 550 U.S.
teachings
the
of multiple patents together
415,
at
ing
targeting
parties
tween the
and the basis for the
sending e-mail to
group
recipients,
those
district court’s denial of the
in-
accused
recipients, calculating the number of suc-
fringer’s motion for summary judgment of
e-mails,
cessfully
repeating
delivered
obviousness was whether a motivation to
until
steps
reaching
the first
three
prior
combine the
art references existed.
quantity.
undisputed
desired
It was
Esab
we con-
Group,
(Fed.Cir.2004));
Sundance,
see also
sider
whether the evidence established the
F.3d at 1365.5
existence of a motivation to combine refer-
ences as to the
patents.
sleeve
The above-
cases,
in appropriate
the ultimate
referenced Down
discloses a trailer
inference as to the existence of a motiva-
attachment,
towing
adaptable to “a motor
tion
to combine references
boil down
vehicle such as an automobile for towing
question
sense,”
to a
appropri-
“common
by fitting a rear towing attachment
ate for resolution on summary judgment
releasably attaching the tow-bar of a trail-
Web,
or JMOL. See
587 F.3d at
Perfect
trailer,
box,
er such as a boat
horse
cara-
1330. Other recent cases have confirmed
van or other
appropriateness
vehicle.” Down
approach.
of this
In
col.l
Aerosol,
Ball
disagreement
sole
be- 11.9-12.
However,
Centricut,
as we
"expert
noted in
sufficiently
ter
complex
beyond
to fall
testimony regarding
beyond
matters
the com-
grasp
ordinary layperson).
of an
In such
prehension
laypersons
is sometimes essen-
cases,
critical,
expert testimony may be
tial,” particularly
involving complex
in cases
example, to establish the existence of certain
technology.
(requiring
Down preferably known
any
type,
convenient
spring retaining
a
means.” Id. col.2
with
a
also discloses
“steel
11.3-8.
“optional
as an
feature
fits
[that]
sleeve”
spans
of the
portion
pin
over the
which
lugs.”
between
two
Id. col.3
space
The external
of the
11.15-17.
diameter
eye
that
can be
towing
is such
sleeve
the lugs
between
with the sleeve
secured
interposed
pin
eye.
between the
and the
sizes
aperture
The existence
different
hitch
in standard
receivers was a known
as the
acknowl-
problem:
sleeve
industry
hitch
edge,
require
standards
re-
pins
to use
sizes for
ceivers
different
in in-
applications,
resulting
thus
different
expense.
convenience and added
See '115
(“[A]
patent col.2 11.28-32
number of differ-
locking
having
ent
devices
different sized
particu-
shanks are needed meet varied
This
applications.
lar
is cumbersome and
Therefore,
expensive.
there is a need for
locking mechanism
a linear shank
using
a
applica-
is convertible for various
tions.”);
More-
col.2 11.37-41.
by
is
The invention
embodied
over,
Philip
as
himself acknowl-
...
plate
parallel
with two
flat
support
also a
edged,
problem
it was
known
which,
[2,
plate
is
lugs
3]
when
WalMart,
retailers
among mass
such
vehicle,
towing
project
on a
mounted
rearwardly
premium.
from
and are
is at a
4295. The
plate
space
J.A.
in
apart one
other
spaced
above the
clearly
that sleeves
Down
teaches
Id.
ment,
accepts
arrangement.
“locked
with an
upon
lugs,
lug
respective
seated,
centre
[11].
col.l 11.45-54.
through
being
which a socket
either
of the boss
pin passes
a bore
upstanding spherical
position.”
pina
provided
horizontal
In the tow-bar
tow-bar
towing
engage-able
The towing
extending
between
on its
Id. col.l
planes,
eye
through
eye
tow-bar
upper
through the
eye
the two
in the bore
or tow-ball
attachment
1.20. The
arrange-
boss
the two
then is
surface
can be
upper
lugs
[5]
provided
ment
bar
ing
sleeve used
sleeve,
Down
sleeve
er diameter
address
simply a matter
of different
barbell-shaped
arrangement,
eyes
quite
is
the known
used,
for the
of different internal diameter.”
similar
pin
external
towing eyes; without
Down,
col.3
attachment
fits smaller ones.
hitch
could be combined
pin
common sense
11.20-23. When
a hitch receiver/tow
accommodates
diameter
lock
towing
of trailer tow-
of different
“may
order to
that the
attach-
It
larg-
be
sizes in standard hitch receivers
aperture
element
describes
“[a]
[9]
provided
engagement
in a
shelf-space problem experienced
KSR,
retailers. See
550 U.S.
transverse hole
the lower end
*11
(“When
(1894),
of
design
a
need
38 L.Ed.
“the defense want
there is
S.Ct.
oper
a
pressure
patentable
patent
to solve
invention
a
or market
identified,
ates,
merely
are a finite number of
there
not
to exonerate the defen
solutions,
ordinary
person
a
predictable
dant,
public
but to relieve the
from an
the known
good
pursue
has
reason to
skill
monopoly,
cannot
asserted
and the court
grasp.
her
options within his or
technical
prevented
declaring by
from so
the fact
success, it is
anticipated
If
leads to the
this
ineffectually sought
that
had
the defendant
but of
product
the
not of innovation
likely
monopoly
the
See
secure
himself.”
sense.”);
ordinary skill
common
Ball
Corp.
also Paramount Publix
v. Am. Tri-
Aerosol,
Likewise, it
pin patent designed in the Down is not We conclude that it was a matter of tightly through eye, fit a metal while in the common sense to pat- combine the Down patents, snugly. '115 and '426 sleeve it fits ent with the prior art barbell locks However, slight we do not find these dis- order to arrive at the invention claimed in to material. tinctions be patents, and '426 and that one of Finally, Wyers suggests that an ordi- ordinary skill in the art would have had a nary artisan would not have a skilled had expectation reasonable in doing success expectation reasonable of success with the so. invention, patented because of expecta- question We next address the of wheth- tion that a sleeve would weaken the er there was motivation to combine the strength pin against “shear forces” prior art barbell with an locks external to a welding due seam the sleeve. J.A. sealing mechanism. Some of the scissoring 4078. Shear forces are the ac- locks, pin hitch such as the patent '832 during tions are exerted the load Chang patent, sealing used internal towing to stopping starting, due Chang patent mechanisms. The claims an road, bumps or other im- sudden internal consisting sealing ring seal of a pacts. arguably require The claims do placed groove a on the shank of the pin load-bearing; the hitch be lock. Chang patent Wyers’ col.4 11.54-57. very purpose “locking of a hitch pin device patent “o-ring” claims an seal located interconnecting a bar with a hitch re- groove on a on the latch that serves to necessarily implies ceiver” a limitation that prevent ingress of unwanted sub- pin capable the hitch be bearing load. head, essentially stances into the However, See '115 col.10 11.21-22. moving sealing ring Chang from an require any particular the claims do not internal to an position. external See '832 any particular resistance to shear forces or Additionally, col.7 11.52-57. at trial towing strength associated with towing sleeve; Master Lock also introduced number of pin or the sole benefit of the sleeve padlocks having variety of external adapta- described in the is its seal size bility. 11.20-36; configurations. See id. col.2 id. col.5 11.52- The Master Lock 6121 Moreover, padlock one series includes an external skilled would seal entry point have known from the Down that a of the shackle into the lock size-adapting sleeve could work on load- head. See J.A. 762. The Heald bearing towing pin. Wyers similarly himself con- discloses an external flange seal load-bearing grips ceded that Down discloses a the circumference of the shackle Br. Appellee’s weatherproof sleeve. See 25 arms to form “a seal.” (“[T]he bushing pin appear load- Heald 11.62-col.4 col.3 1.3.
Master Lock 6121
Figures 8 and 9 the Heald Patent Patent, Hampton patent padlock Hampton Figure discloses covering locking
with an external seal The flat lid in the Hampton
head. cover
patent incorporates holes with shackle re-
ceiving edges through which the padlock passes provide
shackle a seal around the Hampton patent
shackle. col.4 11.3-7.The intended, in part, protect
seal is
locking mechanism from the elements and ingress of such contaminants as “dirt
and ice.” Id. col.l 11.18-29.The Manuel padlock also discloses with a flat Patent, Figure Manuel head, covering
external seal which adapted the holes are beveled and legs.
receive the shackle Manuel
col.l 11.33-35.
invention,
Wyers again argues
there
at the time of the
Master Lock’s
ways
protect
patent application
known
a lock’s own
on a similar exter-
were two
ingress
July
of contami- nal seal filed in
of 2003
locking head from the
“admitted”
“novel,
that the external seal
external or an internal seal—
nonobvi-
nants-—-an
were common and ous and useful and therefore warranted
design options
and both
patent protection.” Appellee’s Br. 31.
widely
used in locks in the
art.
It is
*14
a patent application
Master Lock filed
in
that a flat ex-
a matter of common sense
July
barbell-shaped coupler
of 2003 for a
in
prior
padlocks
seal used
art
ternal
lock which included an external seal in the
a barbell-shaped
could be combined with
protective covering
open-
form of a
with an
Indeed,
hitch
the district court
pin lock.
ing that resulted in an “interference fit
in-
described the difference between the
between the seal and the shaft.”
J.A.
art
patent
prior
vention of the '649
and the
Furthermore, Wyers argues,
11465.6
Mas-
Lock
“slight
Myers
as
indeed.”
Master
patent application
ter Lock’s
fails to list
06-cv-00619,
2168977,
at
No.
WL
2008).
any
prior
art that
(D.Colo.
Master Lock now
May
Wyers him-
*12
invalidating.
claims is
Appellee’s Br. 32.
an
flange
self admitted that
external
seal
However,
the fact
that Master Lock
a
way
padlock
would work the same
as
claimed that
its external seal
lock,
was novel
that
barbell-shaped
it does on a
and
evidentiary significance;
no
bears
Master
in
purpose
of the seals was the same
patent application
Lock’s
should be treated
prior
padlocks
patented
as in the
differently
no
than a
application by
device.
conclude that the invention of
We
party,
a third
as discussed above.
represents no more than
the '649
predictable
“the
use of
art elements
Thus, we conclude that it was a matter
functions,”
according to their established
of common sense to combine the
KSR,
at
550 U.S.
S.Ct.
and
an
sealing
barbell
locks with
external
such,
as
the claims
are
mechanism
order
to arrive at
obvious as a matter of law.
patent,
claimed invention of the '649
and
that
ordinary
one of
skill
the art would
Wyers argues
ordinary
that one of
skill
have
a
expectation
had
reasonable
of suc-
in the art would not have had a reasonable
doing
cess
so.
an
expectation
using
of success
external
lock,
seal on a
flange
barbell
because
Secondary
Ill
Considerations
appear-
“turtleneck” seal such as the one
trial,
ing
Wyers presented
in the Master Lock 6121 would “limit
At
evidence of
nonobviousness,
usage
up
secondary
it
the shackle
encroaches
indicia of
in-
shackle,”
success,
subject
cluding
copying,
and would
the seal to
commercial
“deformation, possible damage.”
unexpected
Wyers argued
J.A.
results.
However,
if
in fact
by
even
this is
commercial success was established
case, flat
in marketing
external seals
do not extend Master Lock’s success
up
selling
infringing product,
the shank of the shackle also existed in
its
the inven-
among
art. Both the Manual
and tion’s success
retailers such as Wal-
flat,
Hampton
sought
shelf-space,
disclose
exter- Mart who
save
flange
covering
non-infring-
nal
seal
head. Master Lock’s failure to find
11.33-35;
Hampton
ing
argues
See Manuel
col.l
substitute.
also
competitors’ copying
marketing
col.4 11.3-7.
issued,
Wyers'
patent application
appar-
light
application
earlier
6. This
never
denied
ently
application
patent.
because Master Lock's
for the '649
combined with sub
shortly
patented product
hitch
locks
shank
convertible
similarity
patented product.
became
to the
the invention’s existence
stantial
after
1325;
nonobvious-
finding
Akamai
supports
Grip,
known
Iron
see
Techs.,
ness.
Internet
Inc. v. Cable & Wireless
(Fed.
Inc.,
Servs.,
1196-97
that sec
Wyers’ contention
reject
We
Cir.2003);
Display Sys.,
Advanced
Inc. v.
are
of obviousness
ondary considerations
Univ.,
Kent State
1285-86
jury
verdict of
support
sufficient
(Fed.Cir.2000).
no
Wyers introduced
such
clearly es
case law
nonobviousness. Our
evidence here.
must establish
patentee
that the
tablishes
the evidence of commer
a nexus between
Moreover, secondary considerations of
invention.
patented
cial success
nonobviousness—considered here
(Fed.
135, 140
Huang,
In re
See
simply cannot overcome
district court—
*15
Cir.1996)
must
(holding
proponent
that the
strong prima facie case of obviousness.
“that the sales were a direct
proof
offer
Emtrak, Inc.,
Techs., Inc. v.
544
Asyst
See
unique
characteristics of
result of
1310,
(Fed.Cir.2008); Agrizap,
F.3d
1316
”)
added);
(emphasis
In
claimed invention
1337,
Corp., 520 F.3d
Inc. v. Woodstream
GPAC Inc.,
1573,
re
1580
Enters.,
(Fed.Cir.2008); Leapfrog
1344
(Fed.Cir.1995)
(“For objective
of second
[evidence
Fisher-Price,
Inc.,
1157,
Inc. v.
to be accorded sub
ary considerations]
(Fed.Cir.2007) (holding that the ob-
1162
must estab
weight,
proponent
stantial
its
jective considerations of nonobvious-ness
lish a nexus between the evidence and
including
evidence
presented,
substantial
invention.”) (empha
merits of the'claimed
success, praise,
long-felt
and
of commercial
added). Here, Wyers essentially con
sis
need,
inadequate
were
to overcome a
prove
that he is unable to
a nexus to
cedes
strong showing
primary
of
considerations
indepen
no
provides
the seal
invalid);
the claims at issue
rendered
for the commercial success
dent evidence
DyStar
& Co.
GmbH
Textilfarben
respect
Even with
to
patent.
of the seal
Deutschland
v. C.H. Patrick
KG
solely
relies
patents,
the sleeve
(Fed.Cir.2006) (“The
1356,
pres-
F.3d
of the
Master Lock’s
million
sales
$20
secondary
of
ence of certain
considerations
product, and
no direct
accused
established
as a matter
nonobviousness are insufficient
nexus to the sleeve feature.
to overcome our conclusion that the
law
Additionally, Wyers failed to establish
only supports
legal
evidence
conclusion
every
product
copying.
competing
Not
obvious.”).
that claim 1 would have been
arguably
scope
falls within the
Here,
represented
where the inventions
no
otherwise,
copying;
is evidence of
prior art
predictable
more than “the
use of
“every infringement
automati
suit would
according to their established
elements
cally confirm
the nonobviousness
KSR,
functions,”
REVERSED
particular types of cases be treated dif-
ferently from similar
issues
other
Costs
types of
Scholarly disputes
cases.
over
Appellant.
to
Costs
jury
in technically complex
use
trials
right
cases relate to the
to trial
jury
LINN,
Judge, concurring.
Circuit
itself,
lay juries
and center on whether
I
While
concur both
the conclusion
capable making
are
correct fact deter-
reasoning expressed
reached and
minations, not
propriety
over the
of sub-
Court,
Judge Dyk’s opinion for the
I write
mitting legal questions
juries.
following
address concerns raised
obviousness issue
be in some cases
Supreme Court’s decision KSR Interna-
complex
complicated,
on both fact
Inc.,
Teleflex,
tional Co.
U.S.
law,
but no
equally
more so than
(2007)
127 S.Ct.
pronouncing
Int’l,
cence”);
general
Inc. v. Wilan-
of a
verdict on obvious
Our review
McDermott
337, 356,
der,
111 S.Ct.
steps.
thus entails two
“We first
498 U.S.
ness
(1991) (holding that the mixed
jury
L.Ed.2d 866
resolved the under
presume
a “seaman”
of who is
question
law and fact
disputes
factual
in favor of the ver
lying
question
Act
for the
is
under
Jones
presumed
winner and leave those
find
dict
applies
...
the facts and
jury, which “finds
by
ings
they
supported
undisturbed if
are
standard”);
Jeffrey
v.
legal
White
Then we
substantial evidence.
examine
F.2d
Mach.
Mining
conclusion de novo to see whether
legal
(Fed.Cir.1983)
(“Jeffrey argues
jury
light
presumed
it
correct in
is
question
this
judge improperly submitted
McKasy, findings.” Jurgens
fact
adopted its conclu-
jury
law the
(Fed.Cir.1991) (internal
own,
without
the benefit
sion as his
omitted);
citations
see also Boston Scienti
argument
underlying findings of fact.
Scimed,
Corp.,
Inc. v. Cordis
fic
merit. Submission of such
is without
(Fed.Cir.2009);
Agrizap,
by
jury, accompanied
question of law to
1337;
Therapeutics, Inc. v.
PharmaStem
instructions,
proper.” (citing
appropriate
Inc.,
(Fed.Cir.2007).
ViaCell,
1484-85 Perkin-Elmer Computervision Corp., v.
Corp. (Fed.Cir.1984). However, set we rule, no and fast and “it must
forth hard trial
be left to the sound discretion of the request of a
court what form verdict
jury.”
Structural Rubber Prods. Co.
(Fed.Cir.
Rubber
Park
1984). any we special interrogatories,
Absent findings
must presume “existence jury
necessary support the verdict the