United States District Court, W.D. Washington, Seattle
ORDER ON OBVIOUSNESS REGARDING CLAIMS 5, 8, 18, AND
19 OF U.S. PATENT 8, 720, 320
P. DONOHUE UNITED STATES MAGISTRATE JUDGE
five-day jury trial of this matter concluded on Friday, June
8, 2018, with the jury reaching a unanimous verdict. Dkt.
242. One of plaintiffs contentions in this case was that
claims 8 and 19 of defendants' U.S. Patent 8, 720, 320
(“Rivera 320 Patent”) are invalid as obvious.
See 35 U.S.C. § 103(a); KSR Int'l Co.
v. Teleflex, Inc. et al, 550 U.S. 398, 127 S.Ct. 1727,
1729, 167 L.Ed.2d 705 (2007) (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.”). Prior to the trial, the question arose as to
how the question of obviousness regarding claims 8 and 19 of
the Rivera 320 Patent would be determined.
the Final Pretrial Conference, the Court asked the parties if
they would agree to the Court resolving the obviousness
question at the conclusion of the trial without posing
specific questions to the jury on this issue, as the ultimate
judgment of obviousness is a legal determination to be made
by the Court in any event. See KSR International,
550 U.S. at 427. Plaintiff agreed that because obviousness is
ultimately an issue of law to be decided by the Court, it was
unnecessary to submit the underlying factual questions to the
jury and indeed, it would simplify matters and avoid
potential juror confusion if the Court resolved the
obviousness question. Dkt. 216. If defendants insisted that
the jury resolve the factual questions relevant to the
obviousness issue, however, plaintiff's position was that
the jury must reach a unanimous verdict as to each factual
contrast, defendants insisted that the Court had no role to
play with respect to the factual questions underlying the
obviousness inquiry, while conceding that the ultimate issue
of obviousness is an issue of law. However, defendants did
not propose any factual questions to be submitted to the
jury, and instead thought the Court should simply pose the
ultimate legal question of whether the River 320 patent is
invalid as obvious to the jury. When Court advised defendants
that the ultimate legal question would not be posed to the
jury, defendants argued that each element as to which
obviousness was challenged would require the jury to make a
unanimous factual finding.
hearing the positions argued by the parties, the Court
directed the parties to confer and prepare a special verdict
form, which highlighted the portions of the elements as to
which there was disagreement on the issue of obviousness.
After some tinkering, both parties expressed satisfaction
with the form of the special verdict. The parties also agreed
on the definition of a person skilled in the art, and
defendants confirmed that they had no evidence to present
related to the “secondary considerations”
regarding obviousness. No. objections or exceptions were made
by either party regarding the instructions to the jury on the
factual questions regarding obviousness, or to the special
verdict form. Similarly, no FRCP 50 motions were made
relating to the issue of obviousness of Claims 8 and 19 of
the Rivera 320 patent.
was presented to the jury on whether specific elements of
Claims 8 and 19 were obvious. Because these were dependent
claims, the jury was also asked for factual findings on
Claims 5 and 18, upon which Claims 8 and 19 depend. The jury
returned a unanimous verdict that all of the allegedly
inventive features in Claims 5, 8, 18 and 19 would have been
obvious to a person skilled in the art. Dkt. 242.
Court finds that substantial evidence supports the jury's
verdict, including the detailed testimony of plaintiff s
expert witness Dr. Howle, who the Court found to be highly
credible. By contrast, the Court considered the testimony of
defendants' expert Mr. Philips, as well as ARM witnesses
Mr. Rivera and Mr. Ditta, substantially less credible. The
jury could reasonably afford the testimony of defendants'
witnesses less weight, and adopt Dr. Howle's testimony as
to the factual questions related to obviousness. Indeed,
defendants conceded as much, based upon their declination to
“fil[e] a brief on obviousness before the Court's
anticipated judgment on Friday, June 15, 2018.” Dkt.
245 at 1.
the Court declares as follows:
1. Claim 5 of U.S. Patent No. 8, 720, 320 (“Rivera 320
Patent”) is invalid as obvious to a person of ordinary
skill in the art in light of each of the following
a. U.S. Patent No. 3, 878, 722 (“Nordskog 772”)
b. U.S. Patent No. 6, 079, 315 (“Beaulieu 315”)
c. Admitted Prior Art in the Rivera 320 Patent.
2. Claim 18 of the Rivera 320 Patent is invalid as obvious to
a person of ordinary skill in the art in light of each of ...