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Court Erred in Disregarding Patent Expert by Robert Ambrogi - Editor The Federal Circuit Court of Appeals ruled June 18th that a federal court in a patent dispute was wrong to disregard expert testimony and grant summary judgment upholding two patents. The expert's testimony, which concerned the obviousness of the patented technology, raised a sufficient factual dispute to require a trial as to the validity of the patents, the court said. The case, which was appealed from the U.S. District Court in Massachusetts, involved two patents related to pipe-fitting technology. The owner of the patents, OmegaFlex, manufactured a line of fittings for use with a type of stainless steel tubing used to carry natural gas. The fittings are marketed under the name AutoFlare. A critical element of these fittings is that, when mated with pipes, they form a leak-free seal. For that to happen, the pipe and the fitting must be properly aligned. To that end, the OmegaFlex fitting incorporates a locating sleeve that helps guide the pieces together in proper alignment. Competitor Parker-Hannifin sells a line of fittings, called FastMate, for the same purpose. Both companies' fittings shared a common characteristic: They could be attached to pipes and create a leak-free seal without requiring special tools or materials, such as a flare tool. Originally, Parker's fittings lacked a locating sleeve or other alignment device. After customers' complaints of misalignment forced a recall, Parker re-released the FastMate fittings with a sleeve. OmegaFlex filed suit, alleging that Parker's FastMate fittings violated the patents for its AutoFlare fittings. Parker defended on the ground that the OmegaFlex patents were obvious and therefore not enforceable in light of a patent Parker owned – which the court called the Sweeney patent – in combination with another product Parker sold, the Parker Compression Fitting, which was sold with an option to insert a locating sleeve. OBVIOUSNESS AN ISSUE On OmegaFlex's motion for summary judgment in the trial court, it was undisputed that the Sweeney patent disclosed every element of the OmegaFlex patents except the locating sleeve. It was also undisputed that Parker's FastMate fitting conformed to its Sweeney patent. The district court ruled in OmegaFlex's favor and granted summary judgment enforcing its patents. It held that nothing in the Sweeney patent would have suggested the need to add an alignment sleeve. It further held that a person having ordinary skill in the art would not have seen that adding a sleeve would successfully resolve alignment problems under the Sweeney patent. Lastly, the court concluded that the "objective indicia" weighed in favor of the non-obviousness of the OmegaFlex patents. But the Federal Circuit found the district court's ruling to be in error, relying on the Supreme Court's recent decision, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), and on the testimony of Parker's expert witness. That witness, David Geary, testified that a "skilled artisan" would have recognized that proper alignment was important to fittings produced under the Sweeney patent and thus would have thought of adding a locating sleeve. The district court, in granting summary judgment, gave no weight to Geary's testimony – and that was erroneous, the Federal Circuit said. "Parker's expert evidence cannot simply be disregarded at summary judgment given that Parker was the non-movant," the court said. "The Geary evidence certainly raises a genuine issue of material fact as to whether a person of ordinary skill in the art would have had reason to add the PCF's locating sleeve to the Sweeney fitting." The district court also erred in disregarding the expert's testimony that the use of fitting sleeves was well known within the industry, the Federal Circuit said. Citing "a plethora of prior art references," the expert had testified that a person having ordinary skill in the art would have good reason to suspect that adding such a sleeve to the Sweeney fitting would solve its alignment problems. "The Geary evidence regarding reasonable expectation of success at least raises a genuine issue of material fact as to whether a skilled artisan would have held such an expectation," the circuit court said. Lastly, the Federal Circuit found that the expert's testimony raised factual questions regarding the secondary indicators of non-obviousness that would prevent summary judgment. "Indeed, there is evidence from Geary … that the use of locating sleeves as alignment aids in other applications was well-established," the court explained. "Certainly there is at least a genuine issue of material fact as to whether such skepticism existed." Given these "multiple genuine issues of material fact," the Federal Circuit reversed the order of summary judgment and sent the case back to the district court for a new trial. The case is Omegaflex, Inc. v. Parker-Hannifin
Corporation, No. 2007-1044 (Fed. Cir., June 18, 2007) |
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