Where a court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand.

On August 6, 2013, in Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Reyna, Davis) affirmed the district court’s summary judgment that CSI infringed U.S. Patent No. 5,985,347, which related to commercial cheesemaking vats, under the doctrine of equivalents, and that the ‘347 patent was not invalid. The Federal Circuit stated:

Direct infringement requires proof by preponderant evidence that the defendant performs (if a method claim) or uses (if a product claim) each element of a claim, either literally or under the doctrine of equivalents. The district court found no disputed issue of material fact and that CSI’s HSCV vats infringed at least claims 1 and 10 of the ‘347 patent. . . . The claims require that the agitator panel have “a plurality of sharp cutting edges disposed in a generally common first plane,” and “a plurality of blunt stirring edges disposed in a generally common second plane.” . . . This court affirms on the ground that the accused products literally infringe this element and so does not reach the alternative ground of infringement under the doctrine of equivalents. . . . Accordingly, this court reverses the denial of summary judgment of no literal infringement. This court need not reach the questions of equivalency or prosecution history estoppel. . . .

Anticipation requires clear and convincing proof that a single prior art reference “not only disclose[s] all of the elements of the claim within the four corners of the document, but . . . also disclose[s] those elements arranged as in the claim.” CSI asserts that two of the Jay patents discussed in the specification of the patent-in¬suit and considered by the examiner — the ‘559 and the ‘907 patents — each anticipates every asserted claim. . . . The district court correctly recognized that neither patent discloses means to mount panels so that during counter-rotation only cutting or only stirring edges move through the common volume. CSI does not address this glaring shortcoming in its anticipation argument. . . . CSI’s other arguments are equally unpersuasive. For these reasons, these Jay patents do not anticipate, either expressly or inherently. The district court correctly granted summary judgment to Tetra Pak.

The district court also granted summary judgment that the ‘347 patent would not have been obvious at the time of invention. . . . Among the difficult challenges of applying the doctrine of obviousness is avoidance of even a hint of hindsight. Obviousness “cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” In this regard, objective evidence operates as a beneficial check on hindsight. [A]lthough the district court recognized that objective considerations of nonobviousness are a required part of this analysis, the district court did not expressly consider and make specific findings on those factors. Where a court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand. Even where, as here, a district court upholds a claim over an assertion of obviousness, atrial court may prevent remands by making these potentially crucial fact-findings. Under some circumstances, this court may not be able to adequately review an appeal of even nonobviousness without fact findings on objective considerations because they are a part of — not in addition to — the analysis. In this case, however, for the following reasons, this court affirms the grant of summary judgment without a remand.

CSI first asserted that the Jay ‘559 and ‘907 patents would have rendered the invention in the asserted claims of the ‘347 patent obvious in light of the Jay ‘504 patent. CSI asserts that, because contra-rotation was disclosed in the art, it would have been obvious to flip the orientation of the panels on one shaft so that the panels did not cut and stir simultaneously. Like the district court, this court rejects this argument. [T]he Jay ‘559 and ‘507 patents have essentially identical disclosures. . . . The district court recognized that nothing in the pa¬tents discloses means to mount the panels in the opposite direction, let alone any guidance to do so. Further, the district court correctly noted that the ‘559 and ‘907 patents do not say anything else about counter rotation, do not explain what production criteria might require it, do not explain any benefit to counter-rotation (only why co-rotation is good), and do not expressly describe means to arrange the panels to avoid simultaneous cutting and stirring. The district court also recognized the ‘504 patent has a passage specific to cheese production that mentions only co-rotation. [T]he court affirms the district court’s grants of summary judgment to Tetra Pak on nonobviousness.

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung (lsung@bakerlaw.com or 202.861.1537) or any member of our Intellectual Property Team.