United States Court of Appeals for the Federal Circuit
03-1333
RICHARD RUIZ and
FOUNDATION ANCHORING SYSTEMS, INC.,
v.
A.B. CHANCE COMPANY,
Defendant-Appellant.
___________________________
RADER, Circuit Judge.
On remand from this court’s decision
in Ruiz v. A.B. Chance Company, 234 F.3d 654 (Fed. Cir. 2000), the
United States District Court for the Eastern District of Missouri found
defendant-appellant A.B. Chance Company’s (Chance) patented underpinning system
obvious under 35 U.S.C. § 103. Because
the district court made no clear error in its factual determinations concerning
the motivation to combine the prior art teachings and the merit of Chance’s
asserted secondary considerations, this court affirms.
I.
Since about 1970, Chance has manufactured screw anchors,
also called helical piers, for use in supporting and stabilizing electrical
transmission towers. Screw anchors are
elongated shafts with an earth-boring (screw) tip and a transversely extending
load-bearing member. In 1988, Chance
extended its expertise in stabilizing slumping structures into the residential
and commercial building markets. Chance
used screw anchors with a metal bracket to underpin these building
foundations. The Chance underpinning
method places the screw anchor adjacent to the footing and rotates the screw
anchor to bore beneath the footing. When
resistance to rotation of the screw anchor reaches a specified point, Chance
attaches a metal bracket (designated as 30 in the Figure below) to the
slouching foundation to transfer the building load onto the screw anchor. The United States Patent and Trademark Office
issued U.S. Patent Nos. 5,139,368 and 5,171,107 to Chance in 1992 covering this
screw anchor system. Figure 5 in the
’107 patent shows the technology:
Appellees Richard Ruiz and his company Foundation Anchoring
Systems, Inc. (collectively “Ruiz”) became distributors for Chance’s
underpinning system. During the early
1990s, Ruiz also formed various other anchoring companies and marketed systems
that competed with the Chance system. In
February 1997, Chance terminated Ruiz’s distributorship. Thereafter, Ruiz began marketing an
underpinning system with screw anchors and metal brackets. This new system used components from other
manufacturers. Ruiz filed suit against
Chance in August of that same year alleging various non-patent claims,
including discrimination, breach of contract, tortious interference with
contract and business relations, and breach of fiduciary duty of good faith and
fair dealing. Ruiz also filed for a
declaratory judgment that its new underpinning system does not infringe
Chance’s patents and that the patents are invalid. Chance filed a counterclaim for patent
infringement.
The validity question focuses on several prior art
references. During the late 1980s,
Richard Fuller and Stan Rupiper used screw anchors for underpinning existing
structural foundations. Fuller and
Rupiper used a concrete haunch, not a metal bracket, to transfer the load of
the foundation to the screw anchor (the “Fuller-Rupiper method”). Gregory’s U.S. Patent Nos. 4,911,580 and
4,765,777 claim an apparatus and system for underpinning structural foundations
using a push pier and a metal bracket.
In the Gregory system, the metal bracket transfers the foundation load
to the push pier, which is driven into the ground to supply the necessary
foundational support. The push pier
relies on soil friction to supply that support.
Figure 6 of the ’580 patent shows this technology:
The
scope of the claims in this case is not at issue in this appeal, because the
parties agree that the claims are infringed or invalidated by the use of a
screw anchor in conjunction with a metal bracket to underpin a foundation. Additional information concerning the claims
and the other aspects of this case appear in this court’s opinion in Ruiz v.
A.B. Chance Co., 234 F.3d 654 (Fed. Cir. 2000). Examination of the prior art shows that the
Fuller-Rupiper method discloses the screw anchor component of the claims; the
Gregory system discloses the metal bracket component in the claims. Thus, this appeal is properly focused on the
motivation to combine those teachings, as well as any secondary considerations
that might inform the obviousness analysis.
The district court granted
summary judgment in favor of Chance on all of Ruiz’s non-patent claims in April
1999. On the patent claims, the district
court held a Markman hearing to construe the claims and a bench trial to
decide the issues of infringement and validity.
At the time of trial, the scope of the case had narrowed to focus on
claims 1-4 and 6-8 of the ‘368 patent and claims 1-4 and 6-8 of the ‘107
patent. After the trial, the district
court entered its judgment from the bench that Ruiz’s product infringes the
patent claims to the tune of $540,000 in damages. Nonetheless, the trial court determined that
the claims are invalid under 35 U.S.C. § 103 in light of the Gregory patents
and the Fuller-Rupiper method.
This court heard the appeal
from that judgment and affirmed every holding of the district court except the
finding of obviousness. In Ruiz,
234 F.3d at 660, this court remanded the case to the district court for further
examination of obviousness. This court
issued the following instructions:
On remand, we
instruct the district court to make specific Graham findings on: 1) the
reason, suggestion, or motivation present in the prior art, in the knowledge of
one of skill in the art, or in the problem of foundation settling which clearly
and particularly would lead one of ordinary skill in the art to combine screw
anchors with metal brackets; 2) the level of ordinary skill in the art; and 3)
whether, and to what extent, evidence of secondary consideration, such as
commercial success, long felt but unresolved need, failure of others, copying,
and unexpected results, is probative in the obviousness analysis.
Id.
The district court invited
additional briefing and oral argument on the remand issues. Having reconsidered the evidence of the case,
the district court again found the relevant claims invalid as obvious and
issued an opinion outlining its factual findings according to this court’s
instructions. Of particular
significance, the district court found the motivation to combine the teachings
of the Gregory patents and the Fuller-Rupiper method in the nature of the
problem of underpinning foundations itself, explaining:
The Rupiper method and the Gregory patent can be combined
in either of two ways to reach the same result as the method covered by the
patents in issue here: by replacing the concrete haunch of the Rupiper method
with the bracket of the Gregory patent, or by replacing the straight piling of
the Gregory patent with the screw anchor of the Rupiper method. The evidence in this case showed that there
was reason, suggestion or motivation to make these combinations. . . .
The problem is the same: how to underpin an unstable foundation of an
existing building.
The district court also
discounted Chance’s proffered objective evidence of commercial success and
skepticism of experts as weak.
Specifically, the district court found that the alleged skepticism of
Chance’s system by Rupiper was merely an acknowledgement that Rupiper’s
concrete haunch worked better than a metal bracket in seismic areas, such as
California. The record indeed does not
show that Rupiper doubted that Chance’s system would work in general. In addition, the district court attributed
Chance’s commercial success to its background and experience in screw anchors
rather than any inventive features of the screw anchor-metal bracket system as
a whole.
Chance now appeals again,
arguing that the district court, as it did in its original judgment, employed
hindsight to find obviousness.
Specifically, this appeal involves two challenges to the district
court’s obviousness determination: 1) whether the district court clearly erred
in finding an implied motivation to combine the prior art teachings in the
nature of the problem of underpinning existing foundations, and 2) whether the
district court clearly erred in discounting Chance’s evidence of secondary considerations. Jurisdiction over this appeal is proper under
28 U.S.C. § 1295.
II.
Section 103 of title 35 of the
United States Code states:
A patent may not be obtained . . . 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 to which said
subject matter pertains.
35
U.S.C. § 103 (a) (2000).
In making the assessment of differences,
section 103 specifically requires consideration of the claimed invention “as a
whole.” Inventions typically are new
combinations of existing principles or features. Envtl. Designs, Ltd. v. Union Oil Co.,
713 F.2d 693, 698 (Fed. Cir. 1983) (noting that “virtually all [inventions] are
combinations of old elements.”). The “as
a whole” instruction in title 35 prevents evaluation of the invention part by
part. Without this important
requirement, an obviousness assessment might break an invention into its
component parts (A + B + C), then find a prior art reference containing A,
another containing B, and another containing C, and on that basis alone declare
the invention obvious. This form of
hindsight reasoning, using the invention as a roadmap to find its prior art
components, would discount the value of combining various existing features or
principles in a new way to achieve a new result – often the very definition of
invention.
Section 103 precludes this
hindsight discounting of the value of new combinations by requiring assessment
of the invention as a whole. This court
has provided further assurance of an “as a whole” assessment of the invention
under § 103 by requiring a showing that an artisan of ordinary skill in the art
at the time of invention, confronted by the same problems as the inventor and
with no knowledge of the claimed invention, would select the various elements
from the prior art and combine them in the claimed manner. In other words, the examiner or court must
show some suggestion or motivation, before the invention itself, to make the
new combination. See In re
Rouffet, 149 F.3d 1350, 1355-56 (Fed. Cir. 1998).
While the ultimate
determination of obviousness is a legal conclusion reviewed by this court
without deference, that determination always entails various factual findings
that this court reviews for clear error following a bench trial. See Weatherchem Corp. v. J.L.
Clark, Inc., 163 F.3d 1326, 1332 (Fed. Cir. 1998). The clear error standard permits reversal
only when this court is left with a “definite and firm conviction” that the
district court was in error. Amhil
Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996).
This case deals with a
challenge to the district court’s conclusion on two of the underlying factual
determinations in its obviousness analysis.
Accordingly, this court will review for clear error the district court’s
conclusions regarding objective, secondary considerations, see Pro-Mold
v. Great Lakes Plastics, 75 F.3d 1568, 1572 (Fed. Cir. 1996), and whether a
motivation to combine the teachings in the prior art references was shown, see
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).
The district court in this case
presided over a bench trial and reconsidered the evidence on remand. Chance’s principal argument is that the
district court clearly erred in finding a motivation to combine the teachings
in the Gregory patents with the Fuller-Rupiper method. Chance cites this court’s precedent that
warns district courts about the risk of hindsight reconstruction to find an
invention obvious where the invention at issue involves relatively simple
technology. See McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir. 2001). Accordingly, Chance argues that the district
court utilized hindsight to find that a person of ordinary skill would have
been motivated to combine the prior art teachings.
To the contrary, the record in
this case supports the trial court’s findings.
While this court indeed warns against employing hindsight, its counsel
is just that – a warning. That warning
does not provide a rule of law that an express, written motivation to combine
must appear in prior art references before a finding of obviousness. Stated differently, this court has
consistently stated that a court or examiner may find a motivation to combine
prior art references in the nature of the problem to be solved. See Pro-Mold, 75 F.3d at 1573; Display
Techs., Inc. v. Paul Flum Ideas, Inc., 282 F.3d 1340, 1346-47 (Fed. Cir.
2002); In re Huang, 100 F.3d 135, 139 n.5 (Fed. Cir. 1996). This form of motivation to combine evidence
is particularly relevant with simpler mechanical technologies.
This record shows that the
district court did not use hindsight in its obviousness analysis, but properly
found a motivation to combine because the two references address precisely the
same problem of underpinning existing structural foundations. Moreover the record supports the district
court’s factual finding that Fuller’s and Rupiper’s work showed that screw
anchors worked better than straight push piers.
In fact, the evidence shows that Rupiper introduced Chance to the use of
screw anchors in underpinning building foundations. Chance then added a metal bracket to the
screw anchor.
The record also supports the
district court’s conclusion that artisans knew that a foundation underpinning
system requires a means of connecting the foundation to the load-bearing
member. The Gregory patents teach the
use of a metal bracket to connect a foundation to a straight pier, and
testimony at trial showed that the need for a connecting element was widely
known. Thus, the district court could
properly conclude on this record, without being clearly in error, that a person
of ordinary skill would be led to combine the screw anchor in the
Fuller-Rupiper method with the metal bracket in the Gregory system to underpin
an existing building foundation.
This record, it is true, does
not feature an express written teaching in the art to make this
combination. On this record, however,
that is not fatal to the district court’s obviousness determination. As noted earlier, this court has repeatedly
stated that the motivation to combine the teachings in the prior art may “come
from the nature of a problem to be solved, leading inventors to look to
references relating to possible solutions to that problem.” Pro-Mold, 75 F.3d at 1573. The district court in this case applied that
settled law. The district court, sitting
as a finder of fact, weighed the evidence and found that, because the prior art
references address the narrow problem of underpinning existing building
foundations, a person seeking to solve that exact same problem would consult
the references and apply their teachings together. Thus the district court’s conclusion is
perfectly legitimate when the evidence supports it, as it does here.
Chance’s argument amounts to
little more than its own alternative view of the evidence. While the record does contain some evidence
against the district court’s finding, such evidence is not overwhelming by any
means. In addition, the district court
in this case did not simply discount all contrary evidence and bolster a meager
amount of evidence to reach a preformed conclusion. In fact, the district court discounted and
discredited some testimony that actually supported its ultimate
conclusion. For instance, the trial
court dismissed the testimony of Robert Jones, a Chance distributor, that he
would have made the combination. The
district court declined to credit Mr. Jones’ testimony because he exhibited far
more than an ordinary level of skill in this art. The trial court’s careful consideration of
Mr. Jones’ evidence shows further that it performed a detailed and reasoned
analysis of the evidence, rather than a conclusion-oriented discussion that
typically accompanies a hindsight analysis.
In short, the record in this case does not approach the evidence
necessary to leave this court with a firm conviction that the district court
committed clear error in its factual finding of a motivation to combine the
Fuller-Rupiper and Gregory teachings.
Finally, the record also
supports the district court’s discounting of Chance’s evidence of secondary
considerations. The record supports the
trial court’s finding that any commercial success was not due to Chance’s alleged
unique combination, but rather due to Chance’s experience with screw anchors
combined with being the first large screw anchor manufacturer to enter the
underpinning market. The district court
did not clearly err in reaching this conclusion, nor in concluding that the
evidence of skepticism was weak.
III.
Based on the above analysis,
this court holds that the district court did not clearly err in finding a
motivation to combine the prior art references in the nature of the problem at
issue. In addition, this court holds
that the district court did not clearly err in discounting Chance’s evidence of
secondary considerations. Accordingly,
this court affirms the judgment of the district court.
COSTS
Each party shall bear its own costs.
AFFIRMED