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."