Joy Technologies, Inc. v. Manbeck

• Decision Date: 14 November 1990
• Docket Number: Civ. A. No. 88-3656-OG.
• Citation: 751 F. Supp. 225,17 USPQ 2d 1257
• Parties: JOY TECHNOLOGIES, INC., Plaintiff, v. Harry F. MANBECK, Jr., Commissioner of Patents and Trademarks, Defendant.
• Court: U.S. District Court — District of Columbia

751 F. Supp. 225

17 USPQ 2d 1257

JOY TECHNOLOGIES, INC., Plaintiff, v. Harry F. MANBECK, Jr., Commissioner of Patents and Trademarks, Defendant.

Civ. A. No. 88-3656-OG.

United States District Court, District of Columbia.

November 14, 1990.

COPYRIGHT MATERIAL OMITTED

Raymond G. Hasley, Michael Kushnick, Rose, Schmidt, Hasley & DiSalle (E. Wallace Breisch, of counsel), Pittsburgh, Pa., for plaintiff.

Fred E. McKelvey, Sol., Lee E. Barrett, Associate Sol., United States Patent and Trademark Office, Washington, D.C., for defendant.

OPINION

BENNETT, Senior Circuit Judge.^*

This case is before the court following a bench trial held June 25 and 26, 1990. This court has jurisdiction over the parties and the subject matter under 35 U.S.C. § 145 and § 306 (1988). The plaintiff, Joy Technologies, Inc. (Joy), brought this action against the defendant, the Commissioner of Patents and Trademarks (Commissioner),¹ under 35 U.S.C. § 145 (1988) challenging the reexamination decision of the Patent and Trademark Office, which held claims 1 to 4, 11, 12, 16, and 18 of Joy's U.S. Patent No. 4,042,864 (the '864 patent) unpatentable under 35 U.S.C. § 103 (obviousness).

On March 12, 1990, this court denied the Commissioner's motion for summary judgment that the invention set forth in the claims at issue would have been obvious and that the decision of the Patent and Trademark Office Board of Patent Appeals and Interferences (Board) was correct. Joy Technologies, Inc. v. Quigg, 732 F.Supp. 227, 14 USPQ2d 1432 (D.D.C.1990). This court held that genuine issues of material fact existed concerning objective indicia of nonobviousness. However, Joy had failed to raise a genuine issue as to the other factual issues concerning the scope and content of the prior art, the level of skill in the art, and the differences between the prior art and the claimed invention. Those facts were therefore deemed established pursuant to Fed.R.Civ.P. 56(d) and were set forth in an order accompanying the decision denying the motion for summary judgment. The trial held June 25 and 26 was limited to issues relating to the objective evidence of nonobviousness.

As explained below and as fully set forth in the appended Findings of Fact Relating to Objective Indicia of Nonobviousness, the court finds that while Joy has shown that its AC-DC shuttle car was commercially successful, Joy has not shown a nexus between the commercial success and the invention recited in the claims. Rather, the success was due to features of the particular electronic circuitry disclosed in the patent and used in Joy's commercial embodiment, but not recited in the broad independent claims and dependent claims at issue. Therefore, Joy's evidence of commercial success does not have substantial weight. The other objective evidence presented by Joy likewise does not have substantial weight, as explained below. The court concludes that, in view of the prior art, the invention of claims 1 to 4, 11, 12, 16, and 18 would have been obvious to a person of ordinary skill in the art at the time the invention was made.

I. BACKGROUND

The technology at issue in this suit was explained in this court's prior opinion. For convenience of reference, the explanation is repeated here. The '864 patent, which names Melvin Norris as inventor, relates to an AC-DC traction drive control system for a coal mine shuttle car. Shuttle cars are used in coal mines to transfer loose coal from the work area, where the coal is mined, to an unloading area, where conveyor belts or cars transfer the material out of the mine.

The coal mine is a hostile environment. Coal seams are often only a few feet thick, and because it is uneconomical to excavate rock surrounding the coal seam, shuttle cars must be designed to operate in a confined space. Moreover, mine operators utilize the "room and pillar" mining method, wherein pillars of coal are left in place for roof support in the mine. Shuttle cars must be designed to negotiate the sharp corners around the pillars.

More importantly, coal mining often releases methane gas, which is explosive. As the mining operations proceed, crosscut tunnels are made and ventilation equipment is put in place to remove the methane gas. However, at the face area (where the coal is mined) adequate ventilation cannot be achieved, and the risk of explosions due to the concentration of methane gas is greatest. Therefore, government regulations require that only "permissible" equipment be used in the face area. Permissible equipment must have electrical circuitry enclosed in an explosion-proof compartment to avoid hazards associated with electrical sparks. Thus, the equipment on a shuttle car must be designed to fit on the car, while at the same time leaving room on the car to haul an adequate amount of coal, and the equipment must be designed to be permissible.

Shuttle cars are essentially electrically powered haulage vehicles. Traction drive motors power the wheels to propel the vehicle. The car has auxiliary equipment, such as hydraulic pump motors and conveyor motors, which are used in loading and unloading the coal. Shuttle cars were first introduced in the late 1930s.

In the prior art, shuttle cars were of two types, the AC type and the DC type. AC shuttle cars are powered by alternating current (AC) supplied by a trailing cable and utilize AC motors for driving the wheels. DC shuttle cars are powered by direct current (DC) supplied by a trailing cable and have DC drive motors.

Each of the types of prior art shuttle cars had its advantages and disadvantages. For example, AC trailing cables were more expensive, and it was more difficult to locate "faults" in the cable. (A "fault" results when the wire inside the cable breaks.) However, AC is capable of being transmitted more efficiently over distances. DC cables are less expensive and faults are more easily located because interruption of DC causes sparks, which may burn the cable. At the same time, such sparking increases the hazards associated with DC trailing cables. Moreover, power losses associated with the transmission of DC over distances may be significant.

AC motors are considerably more bulky and less efficient than DC motors when used for traction purposes. DC motors are much better suited for traction drive, but AC motors are better for the auxiliary systems on the shuttle car. Finally, in the prior art, other mine equipment at the face area was AC-powered, and if DC shuttle cars were to be used, expensive skid-mounted rectifiers capable of powering whole mine sections had to be bought to convert the AC to DC in order to operate the DC shuttle cars.

Mr. Norris was the first to convert AC to DC on board a shuttle car used commercially. Development of his invention took years of time-consuming effort. In his shuttle car, three phase AC is supplied to the car by means of an AC trailing cable. On board the car, the AC is converted to DC, which is applied to DC traction motors for powering the wheels. The conversion circuitry includes a transformer and a diode bridge rectifier. The incoming AC is applied to the primary windings of the transformer. The AC output from the secondary windings of the transformer is rectified to DC and applied to the traction motors. The shuttle car described in the patent includes a control means which permits the transformer to be selectively activated in different secondary winding configurations to provide different levels of output to the traction motors. The shuttle car may include auxiliary AC motors for operating the hydraulic pump and the conveyor. The auxiliary motors are powered with a portion of the AC from the trailing cable.

II. OBJECTIVE INDICIA OF NONOBVIOUSNESS

The trial centered upon Joy's objective evidence of nonobviousness. The court's detailed findings concerning the evidence of "secondary considerations" are fully set forth in the appended findings of fact. Only those findings necessary to the decision are set forth in this opinion.

Objective evidence of nonobviousness must always be considered, when present, as part of the obviousness determination. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed.Cir.1983). Evidence of secondary considerations is not necessarily conclusive on the issue of obviousness. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306, 227 USPQ 657, 674 (Fed.Cir.1985), cert. denied, 475 U.S. 1017, 106 S.Ct. 1201, 89 L.Ed.2d 315 (1986).

A "nexus" is required between the merits of the claimed invention and the objective evidence in order for the evidence to be given substantial weight in the obviousness determination. See Stratoflex, 713 F.2d at 1539, 218 USPQ at 879 ("A nexus is required ... if that objective evidence is to be given substantial weight...."); W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1555, 220 USPQ 303, 314 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984) ("The objective evidence of nonobviousness ... may in a given case be entitled to more weight or less, depending on its nature and its relationship to the merits of the invention."). See also Sjolund v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d 2020, 2028 (Fed.Cir.1988) ("Commercial success is relevant only if it flows from the merits of the claimed invention"); Avia Group International, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1564, 7 USPQ2d 1548, 1554 (Fed.Cir.1988) ("Although commercial success is relevant only if a nexus is proven between the success of the patented product and the merits of the claimed invention...."); In re Felton, 484 F.2d 495, 501, 179 USPQ 295, 299 (CCPA 1973) ("A nexus between the merits of the invention and the evidence offered must be established before that evidence becomes relevant to the question of obviousness.") A "nexus" is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the...