Procedure: Expert Testimony Deserves Weight on Summary Judgment

Omegaflex v. Parker-Hannifin Corp (Fed. Cir. 2007) (nonprecedential)

On summary judgment, the Massachusetts District Court found the Omegaflex pipe-fitting patents novel, nonobvious and infringed. Parker appealed.

Respect the Expert: On several points of contention, the district court gave no probative weight to Parker’s expert’s testimony.  On summary judgment, the evidence should be weighed in the “light most favorable” to the non-movant (Parker). Because the expert testimony creates issues of material fact, the CAFC reversed and remanded.

In dicta, the three-member panel (Judges Michel, Dyk, and Garbis) probed the Supreme Court’s recent KSR decision — noting that it will continue to look for some reason to combine prior art references in an obviousness rejection.

Quoting KSR: “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”

Reversed and remanded.

6 thoughts on “Procedure: Expert Testimony Deserves Weight on Summary Judgment

  1. 6

    On Jul 02, 2007 (at 05:34 PM) I posted some questions to this group. Can anyone suggest a few books that would answer them? It seems to me that most books – and most patent attorneys – practice only the “standard” situation, and are of little help when anything unique happens. Neither authors nor attorneys are willing to address individual cases that don’t fall neatly into the standard situation, even if someone is willing to pay for more specific information. There seems to be a “bulk process” mentality permeating the patent-law community.

    I would still be grateful if anyone can suggest any books, papers, web sites, or attorneys that can help me get my questions answered. My question was whether a state-judge’s determination that an employment contract is invalid (on state law grounds) can invalidate a patent assignment contained in similar employment contracts. The most helpful comment posted on this site was from KCB, on July 18: “I think Congress should pre-empt all state law codes governing the assignment of inventor rights to a company by an individual.”

    Here is a link to a page that contains my full question: link to

  2. 5

    Very good point.

    If anyone here is or can recommend a competent attorney in my area, please let me know.

    If anyone would care to discuss this as a hypothetical case, I would be grateful.

    Please feel free to email me, too.

  3. 4


    If you are truly worried about blunders, don’t post this kind of stuff on the internet. Find a competent attorney in your area and discuss these things that happened to your ahemm, friend under the confidence of attorney client privilege; not here in the open.

    good luck.

  4. 3

    Here is a someone complicated situation I need some help resolving:

    An inventor tinkered with his invention for years during his youth, but didn’t file an application because he thought that products per his invention would be too expensive to produce. Then, about a dozen years ago, he went to work for a company and signed an employment contract obligating him to assign “any and all” inventions to his employer. (The employment contract makes no distinction between past and future inventions, and apparently applies to inventions decades made after employment terminates.) A year after joining the company, the inventor realized that the employer knew people who could actually manufacture the invention cost-effectively; he also thought of an improvement to his invention that he described to a few people, including his employer and a few friends (some of whom happen to be lawyers, though not patent lawyers). The employer, who apparently had never thought of such a product line before the inventor mentioned it, sent the inventor a letter asserting that the invention had no merit and would never be produced, but the employer quietly hired another company to manufacture a product per the improved invention. It is not clear why the employer lied to the inventor about the invention’s economic feasibility; maybe the employer thought that the obligation to assign might not cover the invention. After only a few months, the inventor discovered that the employer had started to sell the product per the improved invention, and so the inventor quietly filed an patent application without notifying the employer, and without notifying the USPTO of his obligation to assign. Some of the claims were to the original invention, and some were written to the improved invention. The patent application included a few dependent claims that were written directly to the products that the employer was selling (that is, to the products the employer didn’t know the inventor had found out about). A patent was actually granted (eight years ago), but the inventor never told the employer that a patent application has been filed or that a patent had been granted. The maintenence fee were paid. The employer still does not seem to know about the patent, and continues to sell the product, and is still unaware that the inventor has discovered the sales. During prosecution, some of the limitations from claim #2 were incorporated into claim #1, and some typographical and grammatical errors in the claims were corrected, but otherwise claims 2-20 as filed were issued as claims 1-19 in the patent.

    The employer has recently closed one of its facilities and has fired some of its employees, including the inventor, and a fellow employee who signed an identical employement agreeement has convinced a Texas state court that the employement agreement was invalid under Texas law due to the requirement that employees pay all of their own unemployment insurance. The inventor is now thinking of suing the employer. The questions are:
    (1) Is there some reason, e.g. laches, why the inventor cannot sue his own former employer for infringement of the patent?
    (2) Can the employer end up owning the patent by submitting the employment contract to the USPTO’s Assignment Division – that is, can a state court’s opinion that a contract is invalid really control the USPTO, which (after all) is a FEDERAL agency, and does it matter that the state court’s basis for invalidating the contract was unrelated to patent law?
    (3) Is the inventor’s failure to tell the USPTO about the obligation to assign “fraud on the patent office” or “inequitable conduct” even though it really was not material to patentability, and even though the employment contract containing the obligation to assign is probably going to be invalidated with respect to the inventor (as it already has been with respect to the inventor’s co-worker)?
    (4) If the employer is liable for infringement, can damages go back to when the application was filed (about 11 years ago), or only back to when it was issued (about 8 years ago), or only back six years (isn’t there a six-year statute of limitations)?
    (5) Can the inventor, who has always lived in Texas, try to use the so-called “Rocket Docket” of the Eastern District, and should he?

    I think this sort of situation is fairly common, so I am sure there is an easy answer.

    Please reply often.

  5. 2

    “In other words, the patent already said it effectuate a leak-tight seal. A leak-tight seal is a leak-tight seal and no amount of improvement is gonna change that”

    Except improvements that make it cheaper or easier to install.

  6. 1

    1. Please post your USPTO KSR experiences below.

    2. I’m facing a situation pretty much like the one in this case. I’ve got two patents cited against me, both state they accomplish what my patent application does, but they do it differently. Common sense (hee, hee) says why would someone want to modify either patent when they do a great job in getting the job done without modification? The examiner says combining them would produce “better” results.

    2. I think this KSR thing is gonna bite the patent deniers on the behind. In Omegaflex, the district court used “KSR common sense” to determine no motivation. Basically, the logic goes “if you have a patent that already solves the problem faced by the inventor but in a different way, there is no motivation to modify the teachings of that patent.”

    Here, the Omegaflex district court held that nothing in the Sweeney patent “suggests achieving proper alignment might prove problematic,” and that a skilled artisan would see no reason to “improve the alignment capabilities of an invention that purported to effectuate a leak-tight seal,” thus no motivation to combine the Sweeney patent with the PCF existed.

    In other words, the patent already said it effectuate a leak-tight seal. A leak-tight seal is a leak-tight seal and no amount of improvement is gonna change that. Sweet!

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