Is Everything Obvious after KSR?

Holland SmithIEOR 190G4/13/2009

A Case in Depth:Omegaflex Inc. (OFI)

vs Parker-Hannifin Corporation

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

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 )

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

CSST Tubing

Sleeve and No Sleeve

The Parker “Sweeney” Patent:No Sleeve

The OFI Patent: 118 =The Locating Sleeve

The Locating Sleeve

Conductance of a pipe with a circular aperture:C=KA

K =~11.7 [liters/(sec*cm^2)]A = circular area of pipe [cm^2]

Omegaflex AutoFlare

Parker FastMate

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.

District Court’s 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.

• Parker’s obviousness claim no good, since product was modified after release, as taught in OFI patent.

• OFI filled long-felt need, evidenced by customer letter.

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.

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.

Nonobviousness Criteria Raised

1) Lack of expectation of success

2) Fulfillment of long-felt market need

3) Praise

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.

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.htm

• List of Cases Citing KSR since 2007 http://www.thefireofgenius.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._John_Deere_Co.