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Jury's pre-KSR nonobviousness verdict reversed post-KSR
October 29, 2008
In a recent decision, the Federal Circuit affirmed a district court's grant of a judgment as a matter of law that the asserted claims of a patent were obvious after a jury verdict of no obviousness. KSR was decided after the jury's verdict but before the district court ruled on the defendant's motion for judgment as a matter of law.On appeal, the patentee argued the reference that allegedly rendered the claims obvious did not disclose certain elements of the claims, and that secondary indicia of nonobviousness should have been sufficient to sustain the verdict. The Federal Circuit was not persuaded, noting the only difference between the prior art and the claims was a simple "substitution of one known element for another." Further, the court held there was no nexus between the asserted secondary indicia and the portion of the claims that was different from the prior art. According, the Federal Circuit affirmed the judgment of obviousness.More on Asyst Techs., Inc. v. Emtrak, Inc. after the jump.Asyst owns a patent for tracking articles (such as silicon semiconductor wafers) during the manufacturing process where the wafers must be processed sequentially at a number of processing stations, and asserted the patent against Jenoptik (and other parties). This particular case had been to the Federal Circuit twice before: the first time the Federal Circuit reversed the district court's claim construction, and the second time the Federal Circuit reversed summary judgment of noninfringement on some claims. The present appeal stemmed from the trial court's grant of judgment as a matter of law that the asserted claims were obvious, reversing a jury's verdict to the contrary. After the jury's verdict, but before the district court ruled on Jenoptik's motion for judgment as a matter of law, the Supreme Court decided KSR, and the district court held the asserted claims obvious based in part on KSR.On appeal, Asyst argued that the claims were not obvious, as the asserted prior art reference, Hesser, was not relevant prior art, the substitution of a multiplexer in the claims for a bus from the prior art was not an obvious modification, and that secondary indicia demonstrated non-obviousness of the invention.The Federal Circuit rejected each contention. The court first observed that Hesser was relevant prior art, noting "Hesser is clearly pertinent to the art of tracking workpieces" and that Asyst's technical expert acknowledged that Hesser was pertinent prior art.The court then turned to the obviousness of the substitution of a multiplexer for a system bus in light of the Hesser reference. The court noted that "the only material difference between Hesser and the [claimed invention] is that Hesser discloses that the communications between the processing stations and the central control unit are carried over a bus, while [the claimed invention] discloses that those communications are conducted by way of a multiplexer." The court then noted that it was undisputed that the "alternatives have long been known and understood by persons of ordinary skill in the art." The court therefore agreed with the district court "that it would have been obvious to a person of ordinary skill in the art to replace the bus in Hesser with a multiplexer in order to obtain [the claimed invention]." The Federal Circuit also rejected Asyst's reliance on secondary indicia to sustain the jury's verdict. Asyst argued the increased battery life experienced by using the multiplexer was an unexpected result, the invention enjoyed commercial success, it solved a long felt need in the industry, and it was widely praised in the industry. The court rejected each in turn. Regarding unexpected results, the court stated "the advantages and disadvantages of using a multiplexer, which communicates with only a single target transducer station as a time, were well understood at the time of the [present] patent application." Regarding commercial success, long-felt need, and praise in the industry, the court observed Asyst failed to link the "commercial success to the features of its invention that were not disclosed in Hesser" and that this failure "undermines the probative force of the evidence" presented by Asyst.Based on the above reasoning, the Federal Circuit affirmed the district court's grant of judgment as a matter of law that the asserted claims were obvious in light of Hesser and KSR.To read the full opinion in Asyst Techs., Inc. v. Emtrak, Inc., click here.
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