Para-Ordnance Mfg., Inc. v. SGS Importers Intern., Inc., PARA-ORDNANCE

• Decision Date: 28 December 1995
• Docket Number: Nos. 94-1486,PARA-ORDNANCE,94-1487,s. 94-1486
• Citation: 37 USPQ2d 1237,73 F.3d 1085
• Parties: MANUFACTURING, INC., Plaintiff-Appellant, v. SGS IMPORTERS INTERNATIONAL, INC., Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1085

73 F.3d 1085

37 U.S.P.Q.2d 1237

PARA-ORDNANCE MANUFACTURING, INC., Plaintiff-Appellant, v. SGS IMPORTERS INTERNATIONAL, INC., Defendant/Cross-Appellant.

Nos. 94-1486, 94-1487.

United States Court of Appeals Federal Circuit.

Dec. 28, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

March 20, 1996.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, DC, argued for plaintiff-appellant. With him on the brief were Thomas H. Jenkins and Linda A. Wadler. Also on the brief were Marvin Petry and Linda M. Ring, Larson & Taylor, Arlington, Virginia, of counsel.

Sumner C. Rosenberg, Needle & Rosenberg, P.C., Atlanta, Georgia, argued for defendant/cross-appellant. With him on the brief was Nagendra Setty. Also on the brief were Mary Jane Saunders and Roger P. Furey, Arter & Hadden, Washington, DC, of counsel.

Before ARCHER, Chief Judge, CLEVENGER, and SCHALL, Circuit Judges.

Opinion for the court filed by Circuit Judge SCHALL.

Dissenting opinion filed by Chief Judge ARCHER.

SCHALL, Circuit Judge.

Para-Ordnance Manufacturing, Inc. (Para-Ordnance) appeals the June 2, 1994 decision and the June 9, 1994 order of the United States District Court for the Eastern District of Virginia. Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., Docket No. 94-117-A. Following a bench trial in Para-Ordnance's patent infringement suit against SGS Importers International, Inc. (SGS), the district court determined that all of the claims of United States Patent No. 4,862,618 (the '618 patent) 1) are obvious over the prior art and are therefore invalid under 35 U.S.C. Sec. 103 (1988), and 2) were not infringed by SGS. We affirm the court's determination of invalidity and do not address infringement.

BACKGROUND

The '618 patent discloses and claims a "conversion kit" for expanding the ammunition capacity of semi-automatic handguns. An expansion in ammunition capacity is accomplished for any particular handgun by providing a widened ammunition magazine to accommodate an increased number of cartridges arranged in a staggered side-by-side configuration. The kit of the '618 patent has a one-piece handgun frame with a grip portion that is wide enough to hold an enlarged magazine.

The '618 patent contains thirteen claims, with one independent claim and twelve dependent claims. Claim 1 reads as follows: ¹

1. A conversion kit to convert a semi-automatic hand-gun of a predetermined round capacity to a hand-gun of a higher round capacity, comprising: a frame made in one piece including an elongated top part having a constant width throughout its length and flat, parallel external side faces, each with an open-ended groove defining guides for the conventional slide of said hand-gun, and a grip downwardly depending at an angle from an intermediate portion of said top part and having a bottom end, said grip having a width greater than the width of said top part with external side faces merging with the external side faces of said top part below said grooves, said frame having a through-bore defining a magazine chamber extending through said grip and through said top art and forming a bottom opening through said bottom end and a top opening through said top part, said through-bore having opposite side faces substantially parallel to the long axis of said top part and defining lower side face portions which are straight and parallel to each other, starting from said bottom end to a zone just below said top part, followed by intermediate face portions which are converging and in turn followed by upper face portions which are substantially parallel to each other, said grooves being uninterrupted from end to end and adapted to slidably retain said slide for reciprocating movement of the latter.

Para-Ordnance, the exclusive licensee of the '618 patent with the exclusive right to sue for infringement, ² brought suit against SGS, alleging that SGS's Llama IX-C and IX-D handguns infringed the claims of the '618 patent. In addition to denying infringement, SGS countered that the claims of the patent were invalid under 35 U.S.C. Sec. 103. SGS asserted that the claims were obvious from the following items: the Colt 1911 .45 caliber handgun, the Browning Hi-Power 9mm handgun, and the Llama Omni .45 caliber handgun. Of this prior art, the Colt 1911, a frame and magazine similar to the Browning Hi-Power, and a magazine similar to the Llama Omni magazine were before the Patent and Trademark Office during prosecution of the '618 patent. The complete Llama Omni handgun was not.

At the conclusion of the trial, the district court concluded that claim 1 would have been obvious to one of ordinary skill in the art and thus is invalid. The district court based its conclusion of obviousness on the prior art and the testimony of SGS's expert, David Findlay. In determining obviousness, the court found that claim 1 differs from the prior art primarily in the means used to implement the mechanical transition between the handgun frame's widened grip portion and its narrower top portion. These means are found in the claim limitation which refers to "intermediate face portions which are converging."

DISCUSSION

Under 35 U.S.C. Sec. 103, "[a] patent may not be obtained ... 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." Obviousness may not be established using hindsight or in view of the teachings or suggestions of the inventor. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). Additionally, when determining obviousness, the claimed invention should be considered as a whole; there is no legally recognizable "heart" of the invention. W.L. Gore & Assocs., 721 F.2d at 1548, 220 USPQ at 309. In addition, such secondary considerations of nonobviousness as commercial success, long felt but unsolved needs, failures of others, and copying are considered in determining obviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545 (1966); Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1564, 7 USPQ2d 1548, 1554 (Fed.Cir.1988). Obviousness must be established by clear and convincing evidence. Glaverbel Societe Anonyme v. Northlake Marketing & Supply, Inc., 45 F.3d 1550, 1555, 33 USPQ2d 1496, 1499 (Fed.Cir.1995).

The ultimate determination of obviousness is a question of law, which we review de novo. Stiftung v. Renishaw PLC, 945 F.2d 1173, 1182, 20 USPQ2d 1094, 1102 (Fed.Cir.1991). The scope and content of the prior art, differences between the prior art and the claimed invention, the level of ordinary skill in the art, and objective evidence of secondary considerations of patentability are fact determinations. Id. What the prior art teaches and whether it teaches toward or away from the claimed invention also is a determination of fact. In re Bell, 991 F.2d 781, 784, 26 USPQ2d 1529, 1531 (Fed.Cir.1993) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960-61, 220 USPQ 592, 599-600 (Fed.Cir.1983), cert. denied, 469 U.S. 835, 105 S.Ct. 127, 83 L.Ed.2d 69 (1984)). Following a bench trial, we review the findings of fact underlying a determination of obviousness for clear error. Stiftung, 945 F.2d at 1183, 20 USPQ2d at 1102. "A finding is 'clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948); see also Milmark Servs., Inc. v. United States, 731 F.2d 855, 857 (Fed.Cir.1984) (same (quoting United States Gypsum Co., 333 U.S. at 395, 68 S.Ct. at 542)).

On appeal, Para-Ordnance advances four contentions: 1) that the district court focused on the "heart" of the '618 patent instead of the invention as a whole; 2) that the court did not address motivation to modify the prior art; 3) that the court erred in its analysis of secondary considerations of nonobviousness; and 4) that the court used hindsight in its obviousness analysis. We address each of these contentions in turn.

A.

Para-Ordnance's first contention requires little discussion. In performing its obviousness analysis, the district court properly viewed the claimed invention as a whole, and did not improperly focus on what it perceived to be the heart of the invention. To the extent the court focused on the claimed invention's converging intermediate faces, it did no more than give appropriate attention to the feature of the invention that was central to the obviousness inquiry.

B.

Para-Ordnance's main argument is that the district court did not address how a person of ordinary skill in the handgun design art would have been motivated to make the modifications to the prior art necessary to arrive at the converging intermediate face portions of the claimed invention. We disagree.

The problem addressed by the claimed "intermediate face portions which are converging" is making the mechanical transition between the widened grip portion and the narrower top portion of the handgun frame of the Para-Ordnance kit. As explained above, the grip portion of the frame is wider than the top portion because the grip must accommodate a widened magazine. Thus, the question is whether, in light of the prior art, it would have been obvious to one of ordinary skill in the art to use a one-piece frame with converging areas at the top of the grip that is claimed in the '618 patent. Put another way, would one of ordinary skill in the art who set out to solve the problem of increasing ammunition capacity, and who had before him in his workshop the prior art,...