What is Obvious is Often Factual or Why Summary Judgment of Invalidity Based on Obviousness is Often Elusive

January 30, 2013, 4:20 PM

No matter how clear an invalidity case of obviousness may seem, theissue often must be reserved for a jury. Such was case in the recent Eastern District of Virginia matter of Morpho Detection, Inc. v. Smiths Detection Inc., No. 2:11-CV-498, 2012 U.S. Dist. LEXIS 170561 (E.D. Va. Nov. 30, 2012) where Judge Mark S. Davis denied a motion for summary judgment on the issue of obviousness.

Morpho involved a U. S. patent that taught a novel, regenerative drying system for an Ion Mobility Spectrometer (IMS) detection unit. Those IMS units analyze swabs of materials that are rubbed on clothing and luggage at airports to detect narcotics or explosive materials. The systems depend upon having dry, clean air to operate properly. Morpho claimed that its patent covered an innovative regenerative drying system for that air. The defendant contended that the asserted claims in the patent at suit were not novel and that the patent merely substituted one prior art drying system for another drying system that yielded predictable results. Because the system was known and those skilled in the art were motivated to combine, the asserted claims of the Morpho patent were obvious and therefore, invalid. As a result, just prior to trial, the defendant moved for summary judgment on the issue.

In a lengthy decision, Judge Davis confirmed that although obviousness is ultimately a legal determination, it is predicated on underlying factual findings that are unique in each patent case. The obviousness inquiry, which must be satisfied by clear and convincing evidence, looks at (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) any relevant objective, secondary indicia of nonobviousness such as commercial success, long felt but unsolved needs, and the failure of others. Because the Court found that there were material factual disputes on these issues, particularly relating to the secondary considerations of nonobviousness, and because any established prima facia case could be rebutted at trial, the Court denied summary judgment. Judge Davis emphasized that the analysis is a on a case-by-case basis. As to these second point, citing recent Federal Circuit precedent, Judge Davis ruled that even if a strong prima facia case of obviousness could be found based on (1) similarities between the patents drying system and the known prior art system; and (2) the application of the drying system to achieve predictable results, summary judgment was precluded because the evidence of the objective indicia of nonobviousness could rebut that prima facia case. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., __F.3d__, 2012 WL 5519361, at *5, (Fed. Cir. Nov.15, 2012) (Transocean II) and its earlier decision, Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010).

At trial, the Court reserved ruling on the obviousness defense until after the jury returned its verdict. The jury found all asserted claims infringed and valid and awarded Morpho combined lost profits and reasonable royalties of almost $2 million. Interestingly, the Court employed a detailed verdict form upon which the jury found factual issues in favor of Morpho on each of the obviousness issues. Relying in part on these factual findings, the Court denied the defendants obviousness defense.

Stephen E. Noona is the head of Kaufman & Canoles Trial Section and Co-chair of its Intellectual Property Law and Franchising Practice Group. He has been counsel in over ninety (90) patent cases in the Eastern District, is Fellow in the American College of Trial Lawyers and has appeared before the judges in all four Divisions of the Eastern District on patent and intellectual property matters.He served as so-counsel for the successful plaintiff, Morpho, in the referenced matter. Stephen E. Noona