Ohio Willow Wood v. Alps South

By Jason Rantanen

The Ohio Willow Wood Company v. Alps South, LLC (Fed. Cir. 2013) Download 12-1642.Opinion.11-13-2013.1
Panel: Dyk, Bryson, and Reyna (author)

There are three main isues addressed in this opinion:

1) Collateral Estoppel based on similar claims in a different patent;

2) Obviousness involving the addition of numerical limitations in dependent claims; and

3) Inequitable conduct: reversal of SJ of no IC.

Background: The Ohio Willow Wood Company (OWW) asserted Patent No. 5,820,237 against Alps South.  The '237 patent relates to directed to cushioning devices that go over the residual stumps of amputated limbs to make the use of prosthetics more comfortable.  The district court granted summary judgment that OWW was collaterally estopped from challenging the invalidity of set of claims in the '237 patent, that the second set of asserted claims was invalid for obviousness, and that there was no inequitable conduct.  OWW appealed the collateral estoppel and obviousness issues while Alps cross-appealed the inequitable conduct issue. 
Collateral Estoppel: The collateral estoppel issue in this case is notable because it involves a separate (albeit related) patent.  OWW sued Thermo-Ply, Inc. for infringement of Patent No. 7,291,182, which issued from a continuation of the '237 patent, in a separate proceeding.  The court in that litigation held the claims of the '182 patent invalid for obviousness, a ruling that was affirmed on appeal.  Based on this previous disposition, the district court in the OWW v. Alps litigation ruled that a set of claims from the '237 were invalid due to collateral estoppel. 

The Federal Circuit affirmed, holding that collateral estoppel can apply across patents.  "Our precedent does not limit collateral estoppel to patent claims that are identical. Rather, it is the identity of the issues that were litigated that determines whether collateral estoppel should apply….If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies."  Slip Op. at 11.

Here, the differences between the patent claims did not materially alter the question of invalidity: 

As reflected in the claim language above, these patents use slightly different language to describe substantially the same invention. For example, where the ’237 patent recites a “tube sock-shaped covering,” an “amputation stump being a residual limb,” and “fabric in the shape of a tube sock,” the ’182 patent analogously recites the same claim scope in the form of a “cushion liner for enclosing an amputation stump, said liner comprising a fabric covering having an open end for introduction of said stump and a closed end opposite said open end.”  Thus, the mere use of different words in these portions of the claims does not create a new issue of invalidity. 

Id. at 12.

Obviousness – Exercise of Ordinary Skill: OWW also challenged the district court's summary determination that a second set of claims was invalid for obviousness. The crux of OWW's argument was based on the addition of numerical limits on certain characteristics of the "gel composition" and "fabric" elements in dependent claims.  The CAFC agreed with the district court that the addition of these numerical limits was nothing more than the exercise of ordinary skill in the art:

[N]othing in the record indicates that confining the otherwise obvious “gel composition” and “fabric” limitations to the recited numerical limits in the disputed dependent claims was anything other than the exercise of routine skill. Each of these features were well-known in the prior art and their use would have been predictable by one of ordinary skill in the art.

Slip Op. at 15.  Nor did the analysis fo secondary indicia of non-obviousness change the outcome.  OWW failed to show the requisite nexus between the secondary indicia and the patented invention (which in this case was specifically the claimed invention with the numerical limitations as distinguished from the invention minus the numerical limitations).  Furthermore, "where a claimed invention represents no more than the predictable use of prior art elements according to established functions, as here, evidence of secondary indicia are frequently deemed inadequate to establish non-obviousness."

Inequitable Conduct: While the litigation was pending, Alps initiated two ex parte reexaminations of the '237 patent.  Alps supported its second ex parte reexam request with the testimony of a Mr. Comtesse, who had been affiliated with the company that produced the prior art product that Alps relied upon.  The examiner accepted this testimony as evidence that the prior art possessed certain characteristics, resulting in the rejection of all of the claims of the '237 patent. 

In its appeal to the BPAI, OWW argued "that the examiner’s rejection was improper because it relied on the uncorroborated testimony of Mr. Comtesse, whom OWW characterized as a highly interested party." Slip Op. at 7.  OWW denied the existence of any other evidence that would support the relevant testimonty of Comtesse.  The BPAI subsequently reversed the examiner, finding that Comtesse was an interested third party and that his testimony was uncorroborated.

During the district court proceeding, Alps argued that there was contrary evidence that became known to OWW during the course of the litigation and should have disclosed to the PTO.  Applying Therasense, however, the district court granted summary judgment in favor of OWW. 

On appeal, the Federal Circuit reversed, finding that when viewing the evidence in a light most favorable to Alps, genuine issues of material fact remained.  Here, the allegedly material information went to the issue of whether disclosure would have led the BPAI to credit Comtesse's testimony.  The CAFC concluded that there was at least a genuine issue of fact.  Furthermore, the CAFC concluded that viewing the facts in a light most favorable to Alps, OWW's (allegedly false and unfounded) assertions regarding the interested nature of Mr. Comtesse "would be tantamount to the filing of an unmistakably false affidavit."  

29 thoughts on “Ohio Willow Wood v. Alps South

  1. ex parte reexam is a pox. A pox on the rule of law, the rule of evidence, the adversarial process -that only an independent judiciary can provide – , and the 4th, 5th and 7th amendments.If this is a genuine concern, perhaps a “better” patent system would be one in which you simply sue people for “stealing” your “idea”. You define your “idea” in your complaint and then the “adversarial process” goes to work determining if you were right or wrong to sue that person.Run with this. You don’t have to thank me.Without question it is a ‘genuine concern’- it’s called due process – and a fundamental right under the US form of government. Why not just have PTO determine mens rea on affidavits – and then we can dispense with juries altogether. You can run with that. I am not unsympathetic to the examiner corps -but in point of fact we had a patent registration system.

    1. iwas there, well inter partes reexaminations are history.Also, I really like Dennis raising the standing issue for appeals. If the petitioner does not have standing, he has no right to complain that the PTO was wrong.This should also lead to, hopefully, that to an en banc case that would hold that res judicata should apply to validity judgments such that a switch in forum is not sufficient to allow the loser of litigation to relitigate validity in the PTO.

      1. in re perne and whicardly (sp) – res judicata was applied – so called administrative estopple – until PTO decided it could openly attack jury verdicts and the courts. There is no other administrative court – that does not give full faith and credit to court judgments – not tax court, not government contracts court, not employment court, etc etc, only BOPA – the total outlier. And yet Bryson keeps accommodating it.

  2. Judge Bryson – without question – is the hardest worker and one of the greatest minds on CAFC. I do wish, however, he would take a step back – and see the forest for the trees – ex parte reexam is a pox. A pox on the rule of law, the rule of evidence, the adversarial process – that only an independent judiciary can provide – , and the 4th, 5th and7th amendments. There is no mechanism for the BOPI to take affidavit evidence – no matter how corroborated – that can give the due process necessary to satisfy – the barbed wire case. It is both elements: the burden of persuasion and the burden of production that must be proved out to show prior art. That is simply not possible without the benefits of the adversarial process – that can only be afford by the constitutional guarantee afforded by an independent judiciary. The mental gymnastics needed to reconcile ex parte reexam with cases like this are just becoming untenable.

    1. ex parte reexam is a pox. A pox on the rule of law, the rule of evidence, the adversarial process -that only an independent judiciary can provide – , and the 4th, 5th and 7th amendments.If this is a genuine concern, perhaps a “better” patent system would be one in which you simply sue people for “stealing” your “idea”. You define your “idea” in your complaint and then the “adversarial process” goes to work determining if you were right or wrong to sue that person.Run with this. You don’t have to thank me.

      1. The US had a registration system. Why not just have an expert agency decide mens rea – and then we can dispose of the jury altogether – efficiency and expertise uber alias. Run with that.

          1. We have one – the BOPA – when the commissioner herself can sit as the judge and appoint the two other members of the panel – that is not a court.

  3. the CAFC concluded that viewing the facts in a light most favorable to Alps, OWW’s (allegedly false and unfounded) assertions regarding the interested nature of Mr. Comtesse “would be tantamount to the filing of an unmistakably false affidavit.” All these accusations that someone filed a false affidavit or something “tantamount to it” … it’s like a plague! These are brilliant people. They would never do anything unseemly just because there was a lot of money involved.

        1. You said just the other day you were thinking about submitting a declaration supporting the wholly made up notion that a function designates a structure to one of ordinary skill. Or at least I thought that’s what you were stating you were going to do. If not, then by all means, set me completely straight, as you’re right, that’s a for srs offense.

          1. 6 that would not be a false affidavit. That is what I believe to be true and could back it up with evidence. In fact, I know of no evidence to the contrary. I am one skilled in the art.6, the fact is, of course, you game of accusing me what you ha$ers do is rather old. Go to Google scholar and pick out a book on software specification.

            1. “That is what I believe to be true and could back it up with evidence. “Believe to be true, or know to be true? There’s a difference. And I hope you’re very clear in this affidavit. “In fact, I know of no evidence to the contrary.”Excepting of course at least one reference. Don’t worry, I’ll provide you with more as the months go on. “Google scholar and pick out a book on software specification. “If it’s so easy, why don’t you pick one out for me that you recommend?

            2. One involves your brain, the other involves your gut. One involves knowledge, one involves “just knowing”. The list goes on.

            3. I presume that you’ve never actually been in the presence of a thug. Because I can assure you that I’m not acting, or even trying to act, anything like a rl thug.

  4. “where a claimed invention represents no more than the predictable use of prior art elements according to established functions, as here, evidence of secondary indicia are frequently deemed inadequate to establish non-obviousness.”When the “elements” themselves are purely functional … what then? Are “new” functionalities, completely divorced from any recited structure, inherently non-obvious? Is that also the case where the “new” function is deemed enabled merely by its description?

  5. If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies.” Slip Op. at 11.As has been noted before (on this blog) numerous times, this is one of the key reasons that patent ownership needs to be made transparent.

    1. Judge Michel doesn’t understand how patents work.>>”If software is less dependent on patents, fine then. Let software use patents less as they choose,” Michel said.<< [0]You can’t opt out of patent litigation. Patent holders get to sue you whether or not you choose to use or seek patents yourself. [0] link to arstechnica.com

        1. I’ve heard Michel say the same at other venues. Of course, I refrain from mentioning the more likely alternative explanations of his remarks, e.g. that he is deliberately lying or is experiencing dementia.

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