Two Strykes and You're Out - Fed. Cir. Reverses on Obviousness, and Orders Reassignment to New Judge

TriMed, Inc. v. Stryker Corp., No. 09-1423 (June 9, 2010)

TriMed sued Stryker on a patent directed to an implantable device used to set bone fractures.  In the first go-around, the district court found non-infringement as a matter of law, and the Fed. Cir. reversed and remanded, finding that the lower court did not construe a claim term properly.

On remand, Stryker argued anticipation and obviousness in light of 2 prior art references.  Again, on summary judgment, the district court declared the patents invalid.  In deciding Stryker’s motion, the district court simply signed Stryker’s Uncontroverted Statement of Facts and Conclusions of Law without any changes other than crossing out the anticipation section and granted summary judgment of invalidity in favor of Stryker.

With regard to obviousness, the Fed. Cir. stated:

Summary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors.”

When determining whether a patent claiming a combination of known elements would have been obvious, we“must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” . . . This inquiry is factual in nature. . . . Answering this question usually entails considering the “interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” . . . What a reference teaches, whether there is a trend or demand in the relevant marketplace or design community, the background knowledge of one of skill in the art—these are all questions reserved for the finder of fact. . . . These factual questions are not separate and distinct from those set out in Graham; rather, they fall comfortably within those familiar categories of factual inquires. See, e.g., Dystar, 464 F.3d at 1360 (noting that what the prior art teaches is a subsidiary determination of the scope and content of the prior art).

Many of these factual questions are in dispute here.

Stryker attempted to circumvent these issues by suggesting that the claimed subject matter would have been obvious because it is, at least in part, a commonsense solution to a known problem.  The Fed. Cir. responded:

[A]n obviousness analysis “may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Although reliance on common sense does not require a specific evidentiary basis, “on summary judgment, to invoke ‘common sense’ or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.” . . . While Rule 52(a)(3) of the Federal Rules of Civil Procedure contains the pertinent qualification that a “court is not required to state findings or conclu-sions when ruling on a motion under Rule 12 or 56,” that rule “does not relieve a court of the burden of stating its reasons somewhere in the record when its underlying holdings would otherwise be ambiguous or inascertainable [sic]” . . . Both the record in this case and the order granting Stryker’s motion for summary judgment are devoid of such reasoning.

The record also fails to explain why the district court summarily dismissed the evidence of secondary considerations of nonobviousness submitted by TriMed. We have repeatedly held that evidence of secondary considerations must be considered if present.

On reassignment:

We conclude that reassignment is warranted here. The district court has now been reversed twice after entering summary judgment against TriMed, in both instances simply signing Stryker’s proposed statement of law and facts relevant to the decided issues, a disfavored practice in the Ninth Circuit . . . Although mindful of the burden reassignment places on judicial resources, given the particular circumstances present here, we are convinced that reassigning this matter to a different judge is necessary to preserve the appearance of justice. Thus, pursuant to our supervisory authority under 28 U.S.C. § 2106, we remand this case to the Chief Judge of the United States District Court for the Central District of California to determine the reassignment of this case to a different district judge.