Is Everything Obvious after KSR?

1
Is Everything Obvious after KSR?

• Holland Smith
• IEOR 190G
• 4/13/2009

2

• A Case in Depth
• Omegaflex Inc. (OFI)
• vs
• Parker-Hannifin Corporation

3
Background

• OFI Manufacturer of corrugated flexible metal
  hose and braid products for the processing
  industries and other specialized applications.
  80 mln. annual revenue
• Parker Manufactures motion control products,
  including fluid power systems, electromechanical
  controls and related components 12 bln. annual
  revenue

4
Background

• OFI owns patents 6,079,749 (2000) 6,428,052
  (2002) relating to pipe fitting.
• CSST Corrugated Stainless Steel Tubing, used for
  natural gas. Often gas lines in tight, difficult
  to reach areas ease of connection a necessity.
• Issue in Dispute Locating Sleeve (6,428,052 )

5
Background

• Parker OFI both make autoflare CSST systems for
  natural gas. (TracPipe, ParFlex)
• Parker originally sold FastMate fittings without
  locating sleeves
• Had to recall their products because of customer
  alignment issues.
• Parker reissued fittings with sleeves, OFI sued

6
CSST Tubing
7
Sleeve and No Sleeve
The OFI Patent 118 The Locating Sleeve
The Parker Sweeney Patent No Sleeve
8
The Locating Sleeve
Omegaflex AutoFlare
Parker FastMate
Conductance of a pipe with a circular
aperture CKA K 11.7 liters/(seccm2) A
circular area of pipe cm2
9
Legal Proceedings

• OFI sues Parker for infringement, Parker moves
  for invalidity because of obviousness.
• 3/31/2006 (Before KSR) A summary judgment is
  issued in favor of OFI. The OFI patents are held
  to be valid, and Parker is found to be
  infringing.
• A permanent injunction against Parker is issued.
  Parker can no longer sell FastMate connectors
  with locating sleeves.
• Parker appeals. 6/18/2007 Injunction vacated,
  summary judgment reversed, case remanded.

10
District Courts Reasons (pre KSR)

• No skilled artisan motivation product claims to
  effectuate leak tight seal. Connection
  difficulties not anticipated in patent.
  (automaton vs. creativity)
• Person of ordinary skill would not have
  expectation of reasonable success. Proof
  testimony given that Parker engineers had
  discussed sleeve, rejected it.
• Parkers obviousness claim no good, since product
  was modified after release, as taught in OFI
  patent.
• OFI filled long-felt need, evidenced by customer
  letter.

11
The Appeal KSR Applied

• KSR Motivation to combine important to
  establish, but need not be found in prior art.
  Must also look at
• interrelated teachings of multiple patents
  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.
• Plethora of locating sleeves in prior art outside
  of CSST.
• Weirauch letter identifies need for self-flaring
  tube not locating sleeve.

12
The Appeal KSR Applied

• Sleeve was discussed by Parker engineers and
  rejected. Therefore, was within background
  knowledge at the time.
• The rejection was not because of total lack of
  expectation of success. The cost was not
  prohibitively high, the sacrifice in performance
  not unacceptable.

13
Nonobviousness Criteria Raised
1) Lack of expectation of success
2) Fulfillment of long-felt market need
3) Praise
14
More Important Criteria for Non-Obviousness from
Other Cases

• Teaching Away
• (Takeda-Alphapharm, Pfizer Apotex)
• Near Infinite combinations of possibilities
  (Pfizer-Apotex)
• Commercial success
  (Graham-Deere)
• Failure of others
• Unexpected results may not be enough.

15
Thank you for your attention!References

• Official Federal Circuit Review of Case
  http//www.ll.georgetown.edu/Federal/judicial/fed/
  opinions/07opinions/07-1044.pdf
• US Patent Office Training Materials for Helping
  Examiners Understand KSR http//www.uspto.gov/web/
  offices/pac/dapp/opla/ksr/ksr_training_materials.h
  tm
• List of Cases Citing KSR since 2007
  http//www.thefireofgeniu
  s.com/the-nonobviousness-standard/
• Review of Decisions in Pharmaceutical Arena after
  KSR http//www.kilpatrickstockton.com/publications
  /downloads/SCahoonLaw360.pdf
• Parker Home Page
  http//www.parker.com/
  portal/site/PARKER/
• Omegaflex Home Page
  
  http//www.omegaflex.com/index.html
• Pfizer-Apotex Case http//www.ll.georgetown.edu
  /federal/judicial/fed/opinions/06opinions/06-1261.
  pdf
• Graham-Deere
  http//en.wikipedia.org/wiki/Graham_v._Jo
  hn_Deere_Co.