In re Burke, Inc., MDL No. 809-JSL.

• Decision Date: 08 January 1992
• Docket Number: MDL No. 809-JSL.
• Citation: 22 USPQ 2d 1368,786 F. Supp. 1537
• Parties: In re BURKE, INC., Personal Mobility Vehicle Patent Litigation.
• Court: U.S. District Court — Central District of California

786 F. Supp. 1537

22 USPQ 2d 1368

In re BURKE, INC., Personal Mobility Vehicle Patent Litigation.

MDL No. 809-JSL.

United States District Court, C.D. California.

January 8, 1992.

James S. Wallace, Jr., Wiley, Rein & Fielding, Washington, D.C., for plaintiff.

John E. Kelly, Kelly, Bauersfeld & Lowry, Woodland Hills, Cal., for defendants.

OPINION

LETTS, District Judge.

Before the Court is plaintiff Burke, Inc.'s motion to reconsider the directed verdict granted in favor of defendants Everest & Jennings, Inc. and Invacare Corp. Defendants moved for the directed verdict at the close of plaintiff's evidence. In its case-in-chief, Burke introduced U.S. Patent No. 4,570,739 (the "patent") into evidence. Plaintiff also presented evidence intended to show that the patented invention represented a nonobvious departure from the prior art, and that defendants infringed the patent. Defendants urged that the evidence demonstrated both that the patent is invalid, and that, even if the patent were valid, it was not infringed by defendants' products. The Court, having heard the arguments, considered the papers, and reviewed the evidence in the case, hereby rules that plaintiff's motion is denied.

I. Validity

The patented invention is a three-wheeled personal mobility vehicle. Plaintiff admits that all of the individual elements of Claim 1 — the only claim at issue here — were known in the prior art. Duwayne Kramer, who is both the general manager of plaintiff and the inventor under the patent, testified as follows:

Q. Have you ever claimed to have invented these components?

A. No, sir.

Q. What is it you regard as your invention, Mr. Kramer?

A. My invention are (sic) the elements in the sequence of claim 1.

Trial Transcript, vol. 3, p. 154.

Defendants do not contest that the combination of elements found in Claim 1 is "novel" enough to satisfy 35 U.S.C. § 102. They contend, however, that Claim 1 does not meet the standard of "nonobviousness" imposed by 35 U.S.C. § 103. Defendants further argue that the patent claims fail to disclose the patented invention as required by 35 U.S.C. § 112.

A. Nonobviousness

Like all claims upon which a patent has been issued, Claim 1 is presumed to be valid. 35 U.S.C. § 282. After preliminary determination of factual issues, the question of obviousness is a matter of law for the court. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1137 (Fed.Cir. 1985). Before it may hold a patent invalid a district court must find by clear and convincing evidence that the patented invention is obvious in light of the prior art. Id. at 1139.

The Court is aware, of course, that as to validity, the law makes no distinction between claims embracing a novel combination of elements already well known and claims incorporating elements allegedly unknown in the prior art. Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540 (Fed.Cir.1984). The Court is also mindful of the repeated admonitions of the Federal Circuit, that District Court judges should not lightly consider their own technical expertise superior to that of the patent office.

Plaintiff does not seriously contend, however, that there is anything technically difficult about the manner in which the novel combination of the elements of Claim 1 is achieved. In fact, the technical skill involved in achieving the claimed combination is obvious to the point of being trivial. Analysis of the patentability of the Kramer invention therefore does not require this Court to choose between differing expert views of the technology involved.

In John Zink Co. v. National Airoil Burner Co., 613 F.2d 547 (5th Cir.1980), the Court accurately summarized the law of nonobviousness in the combination patent context:

The combined elements must perform a new or different function, produce "unusual or surprising consequences," or cause a synergistic result. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 61, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969); Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 at 151-53, 71 S.Ct. 127 at 129-30 95 L.Ed. 162; Parker v. Motorola, Inc., 524 F.2d 518 534 (5th Cir.1975).

613 F.2d at 551.

What plaintiff alleges to be nonobvious (or, as older cases often put it, "inventive") about Claim 1 is not the technical matter of how it effectuates the claimed combination, but the "new or different function" the novel combination of elements performs. Had the trial gone forward, defendants no doubt would have sought to introduce evidence showing that the claimed combination did not yield any new or different function. Since the issue is drawn over a directed verdict, however, the Court will consider the question on the face of the patent, and on the basis of the evidence presented by plaintiff. That evidence does not clearly convince the Court that the invention was obvious such that it would be unpatentable under 35 U.S.C. § 103.

The "Background of the Invention," contained in the patent specification, makes clear how Kramer considered that his invention performed a "new or different function" by reference to the prior art. According to the specification, the prior art contained numerous front-wheel drive vehicles "separable into component parts which are light enough to be easily lifted for placement in an automobile trunk for transportation to other sites of use." Patent, pg. 6. The limitation of such vehicles, according to the inventor, is that because the weight is concentrated toward the back of the vehicle, "When there is resistance to motion of the vehicle as in ascending ramps, the driven front wheel simply spins." Patent pg. 6. At trial, Kramer amplified his thinking further, observing that this distribution of weight tends to limit front-wheel drive units to indoor use, and observed that "People really needed something to get outside and be safe with ..." Trial transcript, vol. 2, pg. 24.

Kramer also acknowledged in the patent specification that a rear-wheel drive vehicle existed in the prior art. This vehicle provided the flexibility of use not found in the prior art front-wheel drive vehicles, but each of the rear wheels was driven by a separate motor, with a separate battery. Patent, pg. 6. As a result, such units were "substantially heavier" and thus "generally restricted to a single site use unless transport means such as a van with a lift platform is available." Patent, pg. 6.

In summary, what the patent specification discloses as the new or different function flowing from the claimed combination is (1) flexible use both indoors and outdoors at particular sites ("flexible use"), and (2) convenient separation into components small and light enough for easy transportation from site to site ("portability"). The court agrees with plaintiff that this result of his combination was not shown by clear and convincing evidence to have been obvious by the evidence already in the case at the time of the motion for directed verdict.

B. Size and Weight Limits

The question then becomes whether Claim 1 discloses this nonobvious invention with sufficient definiteness to satisfy the requirements of 35 U.S.C. § 112.

It requires no skill in the art to recognize that the inventive difference (portability in a flexible use vehicle) produced by the combination of the elements of Claim 1 is inherently limited by size and weight. For example, a massive vehicle weighing a ton or more would be neither portable nor flexible for individual use.

A simple reading of Claim 1 discloses that the inherent limitations of size and weight, outside of which the inventive character of the patented invention is lost, are not set forth in the claim's elements. Defendants would have the Court conclude the analysis at this point, and hold that Claim 1 is invalid for indefiniteness.

It does not necessarily follow, however, that because the invention is inherently limited by size and weight, that size and weight limitations must be specifically quantified and included as express limitations of the elements of the combination. Absent any suggestion that the inventor intended expressly to limit the claimed elements, it might be argued that the limitations of size and weight inherent in the invention operate within a range of sizes and weights which would be readily understood by anyone skilled in the art. Arguably, therefore, it would follow that anyone skilled in the art who wished to reduce the patent to practice would have no difficulty in designing a vehicle outside the range of size and weight parameters inherent in the invention. The designer of a one-ton vehicle, therefore, might rest untroubled by the Kramer patent, even though the Kramer claims do not mention size or weight.

That this patent would be valid if it were entirely silent as to the size and weight parameters of the invention, however, is not free from doubt. To be valid under 35 U.S.C. § 112, a patent must not only disclose the invention, it must also do so in a way which is sufficiently definite to put others on notice of the limits of what is claimed. In re Vamco Mach. and Tool, Inc., 752 F.2d 1564 (Fed.Cir.1985). Size and weight are relative concepts. Things may meaningfully be described as "large" or "small," "heavy" or "light," only by relation to other things. It is not at all clear simply from reading the elements of Claim 1 at what sizes or weights the inventor would concede that the separable components of a later vehicle would fall outside of the invention. At some point, though, it would seem beyond dispute that the inventive feature of portability would be lost.

The point at which the claimed elements would fail to disclose the limits of the invention is not something which can be determined by mere application of skill in the art. Because it is instead a matter on which people equally skilled in the art might have different, and equally valid, opinions, the case that the inventor must specify the limits of what is claimed is...