Ryko Mfg. Co. v. Nu-Star, Inc.
| Decision Date | 04 December 1991 |
| Docket Number | NU-STA,INC,No. 91-1065,91-1065 |
| Citation | 21 USPQ2d 1053,950 F.2d 714 |
| Parties | RYKO MANUFACTURING CO., Plaintiff-Appellant, v., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Sheldon W. Witcoff, Allegretti & Witcoff, Ltd., Chicago, Ill., argued (Ronald E. Larson, on brief), for plaintiff-appellant.
David R. Fairbairn, Kinney & Lange, P.A., Minneapolis, Minn., argued (Judson K. Champlin, on brief); Thomas J. Stueber, Kinney & Lange, P.A., of counsel, for defendant-appellee.
Before RICH, Circuit Judge, SMITH, Senior Circuit Judge, and NEWMAN, Circuit Judge.
Ryko Manufacturing Co. (Ryko) sued Nu-Star, Inc. (Nu-Star) for infringing its reissue patent Re. 32,601 ('601). The United States District Court for the District of Minnesota granted Nu-Star's motion for summary judgment based on invalidity, determining that the patented invention would have been obvious in light of the prior art. Ryko appeals, and we affirm.
Conventional automatic car washes were activated by mechanical insertion devices. These devices activated the carwash system by permitting electrical current to flow through the system when an appropriate article such as a coin, token, credit card or receipt was inserted into the device. The device required much maintenance because the mechanical hardware could cause problems or the device could become congested with too many inserted articles.
Many attempts were made to solve these problems, and a solution was discovered when Klein invented the device disclosed in reissue patent '601 which was assigned to Ryko. The '601 patent discloses a combination comprising an automatic car wash system electronically activated by an electrical numerical keypad device.
Nu-Star also sells an automatic car wash system which utilizes an electronic keypad activation device. Ryko sued Nu-Star for infringing claim seven of its patent. Nu-Star countered with its motion for summary judgment.
After considering all the primary considerations enumerated in Graham v. John Deere, 1 the district court found that utilization of the numerical keypad device to electronically activate an automatic car wash system was a combination invention that was clearly suggested by the prior art. Therefore, the district court determined that, at the time the invention was made, it would have been obvious to a person of ordinary skill in the art. The district court found that the secondary considerations purportedly weighed in favor of nonobviousness, but were not sufficiently influential to override the finding of obviousness compelled by the primary considerations.
Accordingly, the district court granted Nu-Star's motion for summary judgment. Ryko appeals to this Court asserting various errors in the district court's rationale.
A patent is presumed valid. 2 To overturn a patent, the challenger must clearly prove those facts which support patent invalidity. 3 Here, the appellee asserts that the patent is invalid because the invention of claim seven would have been obvious. "While the ultimate question of patent validity is one of law," the conclusion that an invention would not have been obvious is dependent upon several basic factual inquiries. 4 Therefore, a district court can properly grant, as a matter of law, a motion for summary judgment on patent invalidity when the factual inquiries into obviousness present no genuine issue of material facts. 5
A patent is invalid
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. 6
In determining whether an invention would have been obvious at the time it was made, section 103 requires a court (1) to determine the scope and content of the prior art; (2) to ascertain the differences between the prior art and the claims at issue; and (3) to resolve the level of ordinary skill in the pertinent art. 7 "Such secondary considerations as commercial success, long felt but unsolved needs, [and] failure of others" [to invent] are also relevant to the obviousness inquiry. 8 Since the facts to support a conclusion of invalidity of an issued patent must be proved by clear and convincing evidence, this standard must be applied by the court in deciding whether requirements have been met for summary determination of obviousness. 9
The district court accepted the concession by both parties that the pertinent art encompassed automatic car washing systems. However, we feel that such a definition of the pertinent art is too broad. The art of automatic car washing systems involves technologies ranging from hydraulics and fluid mechanics to electronic microcircuitry. Questioning whether the invention would have been obvious to one having ordinary skill in the art of automatic car washing systems is too imprecise to illuminate the obviousness inquiry.
The relevant art "is defined by the nature of the problem confronting the would-be inventor." 10 Here, the problem entailed permitting only selected people to activate an automatic car wash system with a device not subject to mechanical problems. Accordingly, the inventor sought to discover the most convenient and efficient activation device for the purpose. Thus, the relevant art did not encompass automatic car washing systems but rather activation devices for such systems.
The district court evidently accepted and Ryko did not dispute Nu-Star's description of the prior art. The evidence of prior art indicated that: Automatic car wash equipment was common; automatic activation by a token, credit card, receipt or coins was common; automatic activation had been connected to a garage door opening mechanism; keypad code devices were common as electronic signal input devices, keypad code devices opened garage doors; keypad code devices limited access to many products; enter keys were implemented in keypad entry devices; and computers and digital circuitry were well-known and used for a variety of applications in the car wash industry.
The prior art references that are particularly pertinent to the patented activation device in question are the keypad code devices that opened garage doors and the automatic car wash systems which were activated by a mechanical insertion device (i.e. coins, credit card, etc.). With the undisputed pertinent prior art in perspective, there exists no genuine issue of material fact as to the scope and content of the pertinent prior art.
The only '601 patent claim at issue is claim seven. Claim seven comprises a car washing system which is activated by a keypad entry system. To activate the car wash, the operator punches his numerical code into the numerical keypad. After entering the code, the operator presses a designated button which electronically transmits the inputted numerical code for comparison with a predetermined numerical code. If the inputted numerical code matches the predetermined numerical code, the circuit is closed between the electrical power source and the car wash system, thereby activating the latter.
The district court determined that the difference between the prior art and the claim at issue was essentially the substitution of a keypad code device for a coin box or other common input device. Appellant insists that focusing on only one element of the claimed invention, instead of the claim as a whole is legal error according to W.L. Gore & Associates v. Garlock, Inc. 11 We believe that appellant interprets Gore too expansively.
Gore simply requires the court to evaluate the claim as a whole and not to unduly focus on one facet of the claimed invention. 12 However, Graham instructs the court to ascertain the principal differences between the patented claim and the prior art. 13 In evaluating claim seven as a whole, the district court found only one difference disclosed by claim seven that was not taught by the prior art: the supplantation of other carwash system activation devices with an electronic keypad activation device. When analyzing a patent claim for obviousness, the claim should be considered as a whole, but the differences between the claim and the prior art need to be identified to place the obviousness analysis into proper perspective.
Appellant also argues that the district court erred by denigrating claim seven as being a combination of old elements lacking synergism. We do agree that the absence of synergism is irrelevant to the issue of obviousness. 14 Synergism is probative only of nonobviousness; the obverse is not true. 15 However, we do not believe the district court's misunderstanding of this particular point of law sufficiently tainted its ultimate decision on obviousness to constitute reversible error.
We note also that the district court has implied that "combination inventions" are to be treated differently from other inventions. The Federal Circuit has dispelled this notion. The language of this court in Stratoflex, Inc. v. Aeroquip Corp. 16 is instructive on this point:
There is no warrant for judicial classification of patents, whether into "combination" patents and some other unnamed and undefined class or otherwise. Nor is there warrant for differing treatment or consideration of patents based on a judicially devised label. Reference to "combination" patents is, moreover, meaningless. Virtually all patents are "combination patents", if by that label one intends to describe patents having claims to inventions formed of a combination of elements. It is difficult to...
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