Golight, Inc. v. Wal-Mart Stores, Inc.
| Decision Date | 08 August 2002 |
| Docket Number | No. CIV.A. 00-Z-331(MJW).,CIV.A. 00-Z-331(MJW). |
| Citation | 216 F.Supp.2d 1175 |
| Parties | GOLIGHT, INC., Plaintiff, v. WAL-MART STORES, INC., and North Arkansas Wholesale Company, Inc., Defendants and Third-Party Plaintiff, v. Innovative International (H.K.) Ltd., Third-Party Defendant. |
| Court | U.S. District Court — District of Colorado |
Ralph M. Martin, Susan G. Thomas, Rick Martin Patent Law Offices, Stephen N. Lancaster, Patent Law Offices of Rick Martin, PC, Longmont, CO, for plaintiff.
John S. Finn, Brent Phillip Benrud, Stettner, Miller and Cohn, P.C., Denver, CO, William D. Coston, Venable, Baetjer, Howard & Civiletti, LLP, Washington, DC, for defendants.
This suit for patent infringement, brought under 35 U.S.C. §§ 1-307, came before the Court for a three-day trial to the Court on October 9-11, 2001. Plaintiff Golight, Inc. (Golight) alleged that defendants Wal-Mart Stores Inc. and North Arkansas Wholesale Company Inc. (collectively, Wal-Mart) infringed on Golight's valid patent rights. The Court has subject matter jurisdiction under 28 U.S.C. § 1331 and § 1338(a), as well as in personam jurisdiction over the parties.
Prior to trial, default was entered against third-party defendant Innovative International (H.K.) Ltd. (Innovative), a Hong Kong company. At trial, counsel for Wal-Mart represented to the Court that Wal-Mart would bear any financial liabilities of defendant North Arkansas Wholesale Company, Inc., arising out of this litigation. Thus, for practical purposes, the parties at trial were Golight and Wal-Mart.
The issue in this case concerns United States Patent No. 5,673,989 (the '989 patent), and specifically Claim 11. The '989 patent describes a portable, rotating searchlight device that can be controlled by means of a wireless, hand-held remote control. A similar device utilizing a hard-wired remote control was previously patented by the same inventors, as United States Patent No. 5,490,046 (the '046 patent). The basic factual background was not disputed at trial.
Co-inventor Gerald Gohl testified that the idea for the invention originated from his experiences cattle ranching in Nebraska, where he used hand-held searchlights to locate and assist calving animals in harsh blizzard conditions. Gohl took his idea for a portable searchlight that could be mounted on the outside of a vehicle, and controlled from either inside or outside the vehicle, to Al Gebhardt, an inventor and relative by marriage. The two men developed and patented the Golight, and then the wireless-control RadioRay. After a number of proceedings before the patent examiner, including several rejections and amendments, the United States Patent and Trademark Office (PTO) issued the '046 patent on February 6, 1996. After more proceedings before the patent examiner, and the filing of a terminal disclaimer, the '989 patent issued on October 7, 1997.
Sometime in late 1997, Wal-Mart, through its Sam's Club stores, began selling a portable, wireless remote control searchlight (the accused light). The exact periods of time and the numbers of units sold are disputed, as is Wal-Mart's initial awareness of the '989 patent. But on December 11, 1998, counsel for plaintiff sent Wal-Mart a notice letter, indicating that plaintiff believed the accused light was infringing on the '989 patent.
Although the number of accused lights ultimately sold by Sam's Club is disputed, Wal-Mart claims to have sustained an overall loss on the product and had ceased to stock it in stores by early 1999. Plaintiff filed this action on February 14, 2000.
It was established previously during this litigation that all of the claims in the '989 patent were limited by amendment or prosecution history to devices that rotate through a full 360 degrees, with the exception of Claim 11.
After a Markman hearing, see Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995), the Court ruled that claim 11 did not contain an implied limitation of 360 degrees, and that plaintiff was not estopped by prosecution history from claiming doctrine of equivalents protection for claim 11. However, summary judgment in favor of plaintiff on the issue of infringement of claim 11 was denied since issues of fact remained for trial, including the validity of the '989 patent, and whether the alleged infringing device actually fell within the scope of claim 11.
Accordingly, the issues remaining for trial were 1) the validity of the '989 patent; 2) if the '989 patent was valid, whether the accused light infringed; and 3) damages.
Wal-Mart argues that Claim 11 of the '989 patent is invalid for obviousness. Wal-Mart's expert witness on this issue, William Eshelman, was unable to testify at trial due to a health condition. Wal-Mart also subpoenaed John Reilly, the patent attorney who originally prosecuted the '989 patent, to testify to matters concerning obviousness and validity of Claim 11. Mr. Reilly moved to quash the subpoena, however, and ultimately did not testify due to scheduling restraints. The parties stipulated that Wal-Mart could, in written closing argument, present the exhibits and argument that it had intended to support with Mr. Reilly's testimony.
Plaintiff conceded at trial that the '989 patent is essentially identical to the '046 patent with the exception of the wireless remote control (and receiver for same). The patent examiner rejected both the '046 and the '989 patent on several occasions, citing obviousness in light of the prior art, particularly that of Allen, Sr., Merlo, and Montgomery. As issued on February 6, 1996, the '046 patent had four independent claims, three of which featured a shoe-type attachment means (independent claims 1, 6, and 10), and the last of which (independent claim 12) did not specifically describe the shoe, but did recite a horizontal drive means rotation of greater than 360 degrees, an element not present in the other three patented claims.
In argument, Wal-Mart strives to bind the patent examiner's approval of the '046 and '989 patents to the addition of the shoe attachment means and/or the explicit limitation of horizontal rotation through at least 360 degrees. Wal-Mart argues that since the examiner rejected the claims until the shoe and the 360 degree limitation were added, and Claim 11 contains neither, then Claim 11 is invalid for obviousness. This argument ignores the ultimate determination of the patent examiner with regard to Claim 11, and the strong presumption in favor thereof. Additionally, the Court's analysis of the applicable statutes and case law directs a finding of nonobviousness.
Issued patents are presumed valid. 35 U.S.C. § 282. Hence, an accused infringer who defends on the basis of invalidity bears the burden of demonstrating invalidity by clear and convincing evidence. Al-Site Corp. v. VSI Intern., Inc., 174 F.3d 1308, 1323 (Fed.Cir.1999). The "presumption of validity under § 282 carries with it a presumption that the patent examiner did his duty and knew what claims he was allowing." Id. (quoting Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed.Cir.1989)). Therefore, the challenger's burden is especially difficult when the prior art was before the examiner during the prosecution of the application. Id. (citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1467, 15 USPQ2d 1525, 1527 (Fed.Cir.1990)).
A patent may be invalid if the subject matter as a whole would have been obvious to a person with ordinary skill in the art at the time the invention was made. 35 U.S.C. § 103. A determination of obviousness under § 103 is a legal conclusion involving underlying factual inquiries. Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 1545 (Fed. Cir. 1997). Thus, the Court's legal determination of obviousness rests in turn on four factual inquiries first set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); see also Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed.Cir.2000). Under Graham, the Court must consider 1) the scope and content of the prior art; 2) the level of ordinary skill in the art; 3) the differences between the claimed invention and the prior art; and 4) secondary considerations of nonobviousness. Id. "Secondary considerations of nonobviousness" may include commercial success, long-felt but unsolved need, failure of others, and copying. Para-Ordnance Mfg., Inc. v. SGS Importers Intern., Inc., 73 F.3d 1085, 1087-88 (Fed.Cir. 1995).
Proper consideration of the Graham factors is especially important where, as here, the invention is not technologically complex. Ruiz, 234 F.3d at 664. In such a case, the risk increases that an invention may be deemed obvious because "the very ease with which the invention can be understood may prompt one to `to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.'" Id (quoting In re Dembiczak, 175 F.3d 994, 999 (Fed.Cir.1999) (internal citations omitted)).
As explained above, Wal-Mart's expert did not testify, and Wal-Mart ultimately presented no evidence at trial to support its argument that Claim 11 is obvious in light of the prior art. As detailed in the file wrappers of the '046 and '989 patents, the examiner had all the prior art cited by Wal-Mart before him during prosecution of the patents. The repeated rejections based on the teachings of Allen, Jr., Merlo, and Montgomery, indicate that those prior art references were not overlooked and were considered by the examiner.
Despite the lack of testimony, the Court has considered the scope and content of the prior art as presented by defendants, including Allen, Sr., Merlo, and Montgomery. While the separate elements of Claim 11 all appear in various combinations in the prior art, Claim 11 is the first time all of the...
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