Hitachi Koki Co., Ltd. v. Dudas

• Decision Date: 29 May 2008
• Docket Number: Civil Action No. 07-01504 (ESH).
• Citation: 556 F.Supp.2d 41
• Parties: HITACHI KOKI CO., LTD., Plaintiff, v. Jon W. DUDAS, Director, United States Patent and Trademark Office, Defendant.
• Court: U.S. District Court — District of Columbia

Page 41

556 F.Supp.2d 41

HITACHI KOKI CO., LTD., Plaintiff, v. Jon W. DUDAS, Director, United States Patent and Trademark Office, Defendant.

Civil Action No. 07-01504 (ESH).

United States District Court, District of Columbia.

May 29, 2008.

Paul Devinsky, McDermott, Will & Emery, Washington, DC, for Plaintiff.

Michelle Nicole Johnson, United States Attorney's Office, Washington, DC, for Defendant.

MEMORANDUM OPINION AND ORDER

ELLEN SEGAL HUVELLE, District Judge.

Plaintiff Hitachi Koki USA, Ltd. ("Plaintiff" or "Hitachi") seeks review under 35 U.S.C. § 145 of a decision of the United States Patent and Trademark Office's Board of Patent Appeals and Interferences (the "Board") denying Hitachi a patent for its desktop cutting machine with a tiltable saw. Before the Court are the parties' cross-motions for summary judgment.

BACKGROUND

On January 20, 1995, the United States Patent and Trademark Office ("USPTO" or "PTO") issued U.S. Patent Number 5,425,294 to Hitachi. (Pl.'s Stmt of Disputed and Nondisputed Material Facts ["Pl.'s Stmt Facts'"] at No. 1.) On June 20, 1997, Hitachi filed a reissue application resulting in claims 1-3, 26, 27, 37, 48-56, and 58-62. (Id. at No, 2.) Pursuant to 35 U.S.C. § 251, a patentee may surrender a patent if a defect is found. A reissue application is examined in the same manner as a newly submitted application and is subject to the same requirements that govern newly submitted applications. See 37 C.F.R. § 1.176(a).

After reviewing Hitachi's reissue application, the examiner denied Claims 1-3, 26, 27, 37, 48-56, and 58-62 as unpatentable under 35 U.S.C. § 103(a), which bars the issuance of a patent if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). (See Joint Ex. 4 ["Final Office Action"].) Plaintiff appealed to the Board, but requested only that the Board review Claim 1. (Ex. 2 [Board Decision on Appeal (Oct. 19, 2006)] at 3 ("For the convenience of the Board, Appellant will argue the patentability of independent claim 1. The other claims stand or fall together with claim 1.").) Claim 1 of the reissue application provides for:

A desk-top cutting machine, comprising: a base on which a workpiece to be cut is supported, said base including a top surface;

a turntable rotatably disposed in said base and including a top surface;

a holder supported by said turntable for tilting transversely in opposite directions about a zero-tilt angle position;

a circular saw blade;

a saw shaft located above said holder for supporting said saw so that said saw is swung up and down relative to said base, about a pivot shaft;

a circular saw assembly having a motor covered by a housing;

a motor shaft of said motor being disposed in parallel with and above said shaft;

transmission means through which said motor shaft is connected to said saw shaft so that an axis of said motor shaft is shifted from an axis of said saw shaft by a distance which is greater than or equal to the radius of said circular saw blade, wherein when said holder is tilted in either of said opposite directions by an angle greater than or equal to 45 degrees with respect to the zero-tilt angle position, said housing does not contact said top surface of said base.

(Pl.'s Stmt Facts at No. 3.)

The Board affirmed the denial of Claim 1. The Board first found that prior art U.S. Patent 5,357,834 issued to Ito et al. ("Ito") describes every aspect of desktop cutting machine defined in Hitachi's Claim 1 except that it does not have "a motor shaft of said motor being disposed in parallel with and above said saw shaft" or "transmission means through which said motor shaft is connected to said saw shaft so that an axis of said motor shaft is shifted from an axis of said saw shaft by a distance which is greater than or equal to the radius of said circular saw blade, wherein when said holder is tilted in either said opposite directions by an angle greater than or equal to 45 degrees with respect to the zero-tilt angle position, said housing does not contact said top surface of said base." (Joint Ex. 2 at 12-13.)¹ The Board then went on to consider whether persons having ordinary skill in the art would have had the idea and ability to make these modifications to permit 45 degree descension of the saw in both directions from the zero-tilt, and it concluded that they would.

The Board found that plaintiffs Admitted Prior Art ("AAPA")² and Ito disclose the problem that Hitachi's design was created to solve. They show that the housing for the motor driving the motor shaft on a conventional miter saw prevents the user from making cuts at a 45-degree angle to either side of zero-tilt because when tilted in one direction, the housing for the motor makes contact with the surface of the workpiece base. (Id. at 15.) Ito attempted to address this problem by placing the motor shaft and the saw shaft in separate, intersecting planes connected by beveled gears. (Id. at 14-16.)

The Board then determined that persons having ordinary skill in the art would have learned from three prior references that displacing the saw blade parallel from its motor by a distance greater than the radius of the circular saw blade permits the tilting of the saw to achieve 45 degree cuts without obstruction. The Board found that the Johnson patent, U.S. Patent 4,574,670, discloses a cutting machine that permits multiple angle cutting of at least 45 degrees to either side of the zero-tilt and a person having ordinary skill in the art "would have understood from Johnson's teaching that the sizes and configurations of his composite driving motor ..., drive train ..., and cutting member ... impart ±45° capability to the cutting member." (Id. at 17.) The Board next considered the Langworthy patent, U.S. Patent 1,417,669, which also shows "a motor shaft ... disposed in parallel with and above said saw shaft; and the transmission means through which the motor shaft is connected to the saw shaft so that the axis of the motor shaft is shifted from an axis of said saw shaft by a distance which is greater than the radius of said circular saw blade." (Id. at 18.) The Board noted that although Langworthy is a surgical saw, it teaches that "[t]he saw may be of various sizes, complementary to the saw ... and these elements may be changed at will, to adapt them for different uses." (Id. at 19 (quoting Joint Ex. 6 [Langworthy Patent] p. 2, col. 1, lines 49-53).) Langworthy further explains that the "[t]he arm may readily be manipulated to attain cuts at various angles and depths for cranial and other cuts, and the laterally disposed saw affords an instrument which may be manipulated with facility and accuracy in the operations." (Id. (quoting Joint Ex. 6, p. 2, 1. 69-74).) Finally, the Board determined that Ambrosio would have taught a person of ordinary skill that 45 degree cuts could be achieved by displacing the motor shaft parallel from the saw shaft, so that the axis of the motor shaft is shifted from the axis of a saw shaft by a distance greater than the radius of the circular saw blade. (Id. at 19-20).

The Board therefore concluded that "[i]n light of the combined prior art teachings, we find that persons having ordinary skill in the art would have had the instruction and the motivation to make and use a desk-top cutting machine having the design and/or construction claimed." (Id. at 20.) On December 15, 2006, plaintiff requested rehearing, arguing that Langworthy and Ambrosio were not analogous art and that the Board misunderstood the teachings of Johnson with respect to its ±45° degree cutting capabilities. (Joint Ex. 3 [Decision on Request for Rehearing] at p. 1-4.) On June 21, 2007, the Board affirmed its denial of Claim 1. (Id. at 6.)

On August 21, 2007, plaintiff brought suit pursuant to 35 U.S.C. § 145, requesting that the Court reverse the decision of the Board and adjudge that Hitachi is entitled to reissuance of its patent for the invention claimed in claims 1-3, 26, 27, 37, 48-56, and 58-62. On December 19, 2007, defendant filed a motion for summary judgment seeking affirmance of the Board's decision as supported by substantial evidence. On February 13, 2008, plaintiff filed a cross-motion for summary judgment, offering as evidence four new declarations. Declarant Hatch is an expert in the field of tool design and of miter saws. (Joint Ex. 11 [Declaration of Paul Hatch] ¶¶ 4-5.) He explains the limitations of prior art miter saws and the benefits of the Hitachi invention. (Id. ¶¶ 8, 10.) He claims that the Board misconstrued Johnson, Langworthy, and Ambrosio and that a person of skill in the art would not have had any reason to combine those references with the AAPA or Ito. (Id ¶¶ 16-21.) Declarant Katz is a master carpenter who explains that the Hitachi design met a long felt need of carpenters and was universally copied by other manufacturers. (See Joint Ex. 12 [Declaration of Gary Katz] ¶¶ 2, 15.) Declarant Hopkins is the Vice-President of Hitachi America. (See Joint Ex. 14 [Declaration of Benjie Hopkins] ¶ 2.) He states that when the Hitachi dual bevel miter saws were introduced in Japan and in the United States, they were a commercial success despite being more expensive than their single bevel counterparts. (Id. ¶ 12.) He explains that this technology has since been adopted by many tool companies, many of whom are Hitachi licensees. (Id. ¶ 17.) Declarant Ushiwata, the named inventor, explains the level of ordinary skill in the art and the problems he addressed in connection with prior art saws before arriving at his invention. (See Joint Ex. 13 [Declaration of Shigeharu Ushiwata] at ¶¶ 9-16.) He further testifies about the differences between his design and that of Ito and how his design became the industry...