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When factual inquiries underlying obviousness determination disputed, summary judgment improper

September 25, 2008
Post by Blog Staff

In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness. In an unusual procedural move, the parties stipulated that for the issues on which both parties moved for summary judgment, the district court could make findings of fact based on the summary judgment record, making it similar to an inter partes proceeding at the TTAB for those issues. This stipulation included all issues except obviousness.

The Federal Circuit found no clear error in the district court's determination of the other issues, but held there was a genuine issue of fact that should have prevented summary judgment on obviousness. The court noted the Graham factual inquiries underlying the obviousness determination were legitimately in dispute, thus rendering summary judgment inappropriate on that issue.

The Commonwealth Scientific and Industrial Research Organisation (CSIRO) is Australia's national science agency, and owns a patent relating to WLAN technology, specifically how to overcome the problem of signal echo resulting from indoor environments. Buffalo Technology, Inc. (Buffalo) is a computer electronics manufacturer that produces WLAN equipment. CSIRO sued Buffalo for infringement.

Eventually the parties each moved for summary judgment on various issues. In an interesting procedural wrinkle, the parties stipulated the district court could make findings of fact in deciding cross-motions for summary judgment on issues where the motions overlapped. This essentially included all issues with the exception of obviousness, as Buffalo did not move for summary judgment on that issue. The district court found for CSIRO, holding the patent was not obvious, anticipated, or invalid under the written description requirement, and that the asserted claims were infringed. Accordingly, CSIRO sought and the district court issued an injunction against Buffalo. Buffalo appealed.

The Federal Circuit affirmed the district court in all respects with the exception of obviousness, finding there was a disputed issue of material fact on that issue.

The court first addressed the issue of anticipation. Buffalo asserted that a 1989 IEEE publication entitled "The Coded Orthogonal Frequency Division Multiplexing (COFDM) Technique, and its Application to Digital Radio Broadcasting Towards Mobile Receivers," by J.C. Rault, anticipated the claims. The district court held this publication disclosed all of the claimed limitations with the exception of a limitation found only in the preamble which limited the claims to indoor applications. Buffalo argued for the first time on appeal that the preamble should not be limiting; the court rejected this argument as waived because it was not brought before the district court. Buffalo also argued that the reference disclosed indoor uses, but the court held there was no clear error in the district court's determination.

Buffalo also asserted that two references combined also anticipated, arguing that one ("Spread Spectrum for Radio LANs" by T.A. Wilkinson and S.K. Barton) incorporated the other ("Multicarrier Modulation for Data Transmission: An Idea Whose Time Has Come" by J.A.C. Bingham) by reference, thereby anticipating the claims. Buffalo made this argument because it did not argue obviousness on the basis of these two references before the district court. The Federal Circuit was unpersuaded, as the only reference to Bingham in the Wilkinson article was a footnote. This fell well short of the requirement that the incorporation by reference state with "detailed particularity what specific material [a reference] incorporates and clear[] indicat[ion] where that material is found in the" incorporated documents to support an incorporation by reference argument. As a result, the court affirmed the conclusion of no anticipation.

Turning to obviousness, the court vacated the grant of summary judgment. Buffalo relied on two combinations of references on appeal on the issue of obviousness: Rault and Wilkinson; and Rault and U.S. Patent number 5,282,222 to Fattouche. Because the parties did not stipulate the district court could make findings of fact on summary judgment on obviousness, the Federal Circuit held there were sufficient issues of fact that should have prevented summary judgment. There was conflicting factual evidence regarding whether the invention would have been obvious based on the combination of the references, and specifically whether there would be a reason to combine the references. In addition, the Supreme Court's decision in KSR v. Teleflex was issued after the district court's decision in this case. The district court strictly applied the teaching-suggestion-motivation test, holding Buffalo's expert had not identified any TSM to combine the references. The Federal Circuit, after discussing the continued relevance of the TSM test, looked at the evidence presented and determined that there was a factual issue on whether there was a reason to combine the references. Further, CSIRO's alternative grounds for affirmance, specifically evidence of secondary indicia and its own expert's testimony, only underscored the existence of disputed factual issues that needed resolution before the legal conclusion of obviousness could be made. Therefore, the grant of summary judgment on the issue of obviousness was improper.

The court then turned to the written description issues. Buffalo argued that after the application was filed, CSIRO improperly broadened the disclosure of the application and claims, bringing in new matter into the disclosure. The amendment at issue changed various references in the specification from radio transmissions as frequencies "in excess of 10 GHz" to just "radio frequencies." The claims at issue used a limitation of "radio frequencies," with no limit on the frequency range. The court held this did not inject new matter into the specification, as there were several references in the originally-filed specification to frequencies below 10 GHz. Further, the USPTO did not object to the amendment as introducing new matter, which creates an "especially weighty presumption of corectness" that no new matter was introduced. Based on the information in the original specification and the presumption, the court held it was not clear error to find no invalidity under § 112.

The court also considered and rejected Buffalo's arguments regarding noninfringement of certain means-plus-function limitations in the claims.

Judge Lourie concurred, simply to note that had the district court come to the alternative conclusion on the written description/new matter issue, such a conclusion would have been reasonable.

To read the full decision in Commonwealth Sci. & Indus. Research Org. v. Buffalo Tech., Inc., click here.


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