By Eric Schweibenz
Further to our August 13, 2010 post, on August 25, 2010, ALJ Carl C. Charneski issued the public version of the Remand Initial Determination (“RID”) (dated August 5, 2010) in Certain Connecting Devices (“Quick-Clamps”) for Use with Modular Compressed Air Conditioning Units, Including Filters, Regulators, and Lubricators (“FRL’s”) That Are Part of Larger Pneumatic Systems and the FRL Units They Connect (Inv. No. 337-TA-587).  Please note that Oblon Spivak represents Respondents SMC Corporation and SMC Corporation of America (collectively, “SMC”) in this matter.

By way of background, on October 6, 2006, Norgren Inc. (“Norgren”) filed a complaint with the ITC against SMC alleging violation of Section 337.  ALJ Charneski issued an initial determination on February 13, 2008 in which he found no violation of Section 337.  Norgren petitioned for review, and the Commission rendered a final decision on April 14, 2008 adopting the ALJ’s initial determination.  Norgren appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit.

On May 26, 2009, the Federal Circuit issued a decision in which it modified the Commission’s claim construction, reversed the Commission’s determination of non-infringement, vacated the Commission’s determination of nonobviousness, and remanded the case.  The Federal Circuit’s remand order contained instructions “to evaluate obviousness in the first instance based upon the correct construction of the claim term ‘generally rectangular ported flange’ -- i.e., a construction that does not require a flange having projections on all four sides.”  See our May 28, 2009 post for more details.  ALJ Charneski conducted a one-day evidentiary hearing on April 21, 2010.

In the RID, ALJ Charneski determined that none of the asserted claims of the ‘392 patent were invalid as obvious.

SMC argued that, based on the Federal Circuit’s construction of the claim term “generally rectangular ported flange” -- which did not required a flange having projections on all four sides -- an SMC old-style connector qualified as a “four-sided generally rectangular clamp that is adapted to engage a generally rectangular ported flange.”  SMC further argued that it would have been obvious to one of ordinary skill in the art to “connect[] the strider to the connector to avoid any loose parts or for ease of use,” citing to U.S. Patent No. 4,915,418 to Palatchy (“Palatchy”).  SMC also argued that there was insufficient evidence of secondary considerations that could rebut its showing of prima facie obviousness.

The Commission Investigative Staff (“OUII”) agreed with SMC that claim 1 would have been obvious in view of the SMC old-style connector and Palatchy, and that secondary considerations could not overcome the showing of prima facie obviousness.

Norgren argued that it had not been proven that all of the elements of claim 1 were present in the prior art.  Norgren also asserted that there was no evidence as to why a person of ordinary skill in the art in 1993 would have been motivated to make the specific combination found in the ‘392 patent.  Finally, Norgren pointed to secondary considerations that it argued supported a finding of nonobviousness.

ALJ Charneski found that the SMC old-style connector did not contain all of the limitations of claim 1 other than the pivotally mounted side.  In particular, the SMC old-style connector was found not to be “generally rectangular” and not to be “four-sided.”  Accordingly, ALJ Charneski determined that “merely modifying the SMC old-style connector to add a pivotally mounted side would not result in a device that contains all limitations of the asserted claims of the ‘392 patent.  Thus, for that reason alone, the obviousness argument of SMC and the Staff cannot prevail.”

Additionally, ALJ Charneski determined that it would not have been obvious to adapt the SMC old-style connector to engage a pivotally mounted side.  According to the RID, “the record remains unclear as to whether one of ordinary skill would have anticipated success or perceived any design challenges when adding a pivotally mounted side in view of the numerous variables that affect FRL operations, such as variable temperatures, the frequent use with corrosive gases, and stress on the device.”  Accordingly, claim 1 of the ‘392 patent was found not to be obvious on that basis as well.

Finally, with respect to secondary considerations of nonobviousness, ALJ Charneski determined that had the prior art otherwise rendered claim 1 obvious, secondary considerations would have provided little support for the validity of the claims.