By Eric Schweibenz
On November 14, 2012, the Federal Circuit issued a precedential opinion in Norgren Inc., v. ITC (2011-1349).  This was an appeal from the International Trade Commission’s (“Commission”) determination of no violation of Section 337 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), where the Commission concluded that the asserted claims were invalid as obvious.

Please note that Oblon Spivak represents Respondents SMC Corporation and SMC Corporation of America (collectively, “SMC”) in this matter.

By way of background, Norgren Inc. (“Norgren”) filed a complaint with the Commission asserting that the importation or sale of devices by SMC infringe U.S. Patent no. 5,372,392 (the ‘392 patent).  The ALJ originally found no violation of Section 337 based on his findings of no infringement and that the patent was valid under his claim construction of “flange” to require four projecting rims.  On appeal, the Federal Circuit reversed the noninfringement determination and vacated the validity determination, remanding the case for reconsideration of obviousness in light of the Federal Circuit’s new claim construction.  Specifically, 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 details of the original Federal Circuit opinion (“Norgren I”).

On remand, ALJ Carl C. Charneski focused on the obviousness of the clamp itself, and determined that none of the asserted claims of the ‘392 patent were invalid as obvious.  The Commission determined to review the remand initial determination on the issue of obviousness, and reversed the ALJ’s determination with respect to obviousness, and issued a final determination that there was no violation of Section 337.  Specifically, the Commission found that a prior art SMC clamp is both four-sided and generally rectangular, and that the addition of a hinge to a prior art rectangular clamp would have been obvious to one skilled in the art.  The Commission also found that Norgren was unable to show secondary considerations sufficient to support a determination of nonobviousness.  See our June 10, 2011 post for more information on the Commission’s decision.

Majority Opinion by Judge Linn (joined by Judge Lourie)

According to the opinion, after Norgren I, the correct claim construction is not only that the overall shape of the flange is “generally rectangular,” but furthermore, “the clamp as a whole, and not merely portions of it, must be four-sided and generally rectangular.”  The primary dispute on appeal was whether the Commission’s determination that the old-style SMC clamp is four-sided and generally rectangular was correct.

The Court approved of the Commission basing its conclusion on an examination of the physical exhibit of an old-style SMC clamp and expert testimony.  Based on the physical examination, the Commission concluded that the four outer “sides” of the clamp render the overall shape “generally rectangular.”  Furthermore, “these four sides are a substantial part of the outer portion of the old-style SMC clamp, and hence are decisive when defining its shape.”  This position was supported by testimony from the experts of both sides.  Norgren’s expert “admitted in a deposition that the only difference between the invention … and the old-style SMC connector was the hinge.”  Similarly, SMC’s expert testified that the four sides of the old-style SMC clamp are required for its function, and that the shape formed by those sides is generally rectangular.

Although Norgren tried to argue that SMC’s expert was “overly qualified” and his testimony should be discounted, the Court disagreed.  The opinion stated that “[b]ecause the person having ordinary skill in the art is a theoretical construct and is not descriptive of some particular individual, a person of exceptional skill in the art should not be disqualified because he or she is not ordinary enough.” (Internal quotations omitted).

In light of its approval of the Commission’s determination that the old-style SMC clamp was generally rectangular and four-sided, the Court also agreed that one skilled in the art would have been motivated to modify the old-style clamp to add a hinge.  The motivation for this modification would have been “to avoid loose parts and for ease of use,” as documented in prior art of record, and as a recognized common sense solution readily known to those skilled in the art.  Therefore, the Court concluded that the Commission’s determination that the invention of the ‘392 patent would have been obvious was supported by substantial evidence, and was not arbitrary, capricious, or legally erroneous.  Norgren was unable to provide persuasive evidence of secondary considerations to alter this conclusion.

Dissent by Judge Moore

Judge Moore disagreed with the Commission’s determination that the old-style SMC claim was four-sided and generally rectangular based on a strict interpretation that each edge of the old-style clamp should be counted.  In that case, Judge Moore noted that sixteen “sides” can be observed.  Therefore, she did not consider the Commission’s opinion to be sufficiently supported by substantial evidence and would have reversed the determination of obviousness.