Obviousness Ruling Reversed for Failure to Analyze Why References Should Be Combined
Addressing the issues of anticipation and obviousness, the U.S. Court of Appeals for the Federal Circuit reversed and remanded a district court’s finding of invalidity because of a dispute as to whether the prior art’s disclosure of a genus anticipated the claimed species and reversed the district court’s finding of obviousness for failure to provide a reasoned analysis of why the prior art references should be combined. Osram Sylvania, Inc. v. American Induction Techs., Inc., Case Nos. 12-1091, 12-1135 (Fed. Cir., Dec. 13, 2012) (O’Malley, J.).
Plaintiff Osram sued defendant American Induction Technologies (AITI) alleging infringement of a patent directed to a closed-loop tubular electrodeless lamp. The patent required the lamp to have an internal gas “pressure less than 0.5 torr.” The district court granted AITI’s motion for summary judgment of invalidity based on anticipation and obviousness, finding that a prior art reference anticipated all elements of one of the asserted claims. The district court further found that the remaining asserted claims were obvious. Osram appealed.
The Federal Circuit reversed the district court’s finding of anticipation based on its conclusion that there was a disputed issue of material fact as to whether the prior art reference adequately disclosed a lamp with an internal gas pressure “less than 0.5 torr.” The reference disclosed a lamp with an internal gas pressure of “approximately 1 torr or less.” AITI argued prior art reference’s disclosure of a small genus anticipates the species claimed in the asserted patent, as the claimed pressure is completely encompassed by the prior art reference’s disclosure. The Federal Circuit stated that whether a species is encompassed in a genus has a factual component and found that the prior art reference did not disclose with enough specificity the claimed pressure of less than 0.5 torr. In addition, Osram’s expert testified the claimed pressure of less than 0.5 torr is central to the invention of the asserted patent and the lamp would operate differently at different pressures. AITI did not rebut Osram’s expert testimony. The Federal Circuit held that it is of “critical importance” how one of ordinary skill in the art would understand the relative size of a genus or specie is in a particular technology and therefore reversed the district court’s grant of summary judgment based on that material issue of disputed fact.
The Federal Circuit also reversed the district court’s finding of obviousness because the district court did not provide any analysis for why the two prior art references used for obviousness would be combined. The district court merely provided general conclusions and did not give any findings of facts in making its ruling. The Federal Circuit found there were substantial questions of fact as to whether a person of ordinary skill in the art would have been motivated to combine the two references. Indeed, Osram’s expert testified one of the prior art references taught away from the design of the asserted patent, and AITI’s expert even acknowledged the prior art reference disparaged the design of the other prior art reference used to prove obviousness.