Metso Minerals, Inc. v. Powerscreen International Distribution, Ltd. , 526 F. App'x 988 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
METSO MINERALS, INC.,
Plaintiff-Appellee,
v.
POWERSCREEN INTERNATIONAL
DISTRIBUTION, LIMITED (now known as Terex
GB Limited), POWERSCREEN NEW YORK, INC.
AND EMERALD EQUIPMENT SYSTEMS, INC.,
Defendants-Appellants,
AND
TEREX CORPORATION,
Defendant-Appellant.
______________________
2011-1572, 2012-1168, -1169
______________________
Appeals from the United States District Court for
the Eastern District of New York in No. 06-CV-1446,
Judge Arthur D. Spatt.
______________________
Decided: May 14, 2013
______________________
2 METSO MINERALS v. POWERSCREEN INTL
MICHAEL C. STUART, Cozen O’Connor, of New York,
New York, argued for the plaintiff-appellee. With him on
the brief were LISA A. FERRARI and MARILYN NEIMAN.
JON R. TREMBATH, Merchant & Gould, PC, of Denver,
Colorado, argued for the defendants-appellants, Pow-
erscreen International Distribution, Limited, et al. With
him on the brief were DANA P. JOZEFCZYK; RACHEL C.
HUGHEY and DINA GRINSHPUN, of Minneapolis, Minneso-
ta; and JOHN M. WHEALAN, of Chevy Chase, Maryland. Of
counsel was NATHAN LANE, III, of Squire Sanders (US)
LLP, of San Francisco, California.
VINCENT ALFIERI, Bryan Cave, LLP, of New York,
New York, for defendant-appellant, Terex Corporation.
With him on the brief were MICHAEL G. BIGGERS and
JOSEPH J. RICHETTI.
______________________
Before DYK, MAYER, and REYNA, Circuit Judges.
DYK, Circuit Judge.
Appellants Powerscreen International Distribution,
Ltd., Powerscreen New York, Inc., and Emerald Equip-
ment Systems, Inc. (collectively “Powerscreen”), and
Terex Corporation (“Terex”) appeal from a judgment of
the United States District Court for the Eastern District
of New York. That judgment was based on a jury verdict
that Powerscreen had infringed U. S. Patent No.
5,577,618 (“the ’618 Patent”) owned by appellee Metso
Minerals, Inc. (“Metso”), and its finding that the asserted
claims would not have been obvious. Because we conclude
that the ’618 Patent would have been obvious as a matter
of law, we reverse.
METSO MINERALS v. POWERSCREEN INTL 3
BACKGROUND
This case concerns industrial machines known as
“screeners” that use progressively smaller openings to
sort rocks and other forms of aggregate material into piles
of similarly-sized material, such as sand or gravel. An
illustration of a screener with all of its components is
shown below.
Screeners may be mounted on wheels or tracks; each
form of mobile mounting offers different advantages and
disadvantages relating to the screeners’ portability. When
the screener is in use, a loader drops raw, unsorted mate-
rial into the screener’s input hopper. The screener con-
tains a central (or internal) conveyor that accepts the
material from the input hopper and directs that material
to a so-called “screen box” to be sorted and deposited onto
the appropriate hoppers and lateral conveyors for distri-
bution. See ’618 patent col. 4 ll. 30-48 & fig. 2. The central
conveyor extends longitudinally along the screener’s
4 METSO MINERALS v. POWERSCREEN INTL
chassis. Id. When the screener is used at a worksite, the
lateral conveyors are unfolded into an “operative position”
to facilitate distribution of sorted material of different
sizes (these conveyors are sometimes referred to as “wing
conveyors,” given that they protrude from the screener
like wings, as shown in the diagram above). When screen-
ers are transported along roadways to reach a work site,
the lateral conveyors are folded in a “transport position,”
so that they may travel along roadways in compliance
with relevant regulations and permit requirements.
Metso asserted that screeners built and sold by Pow-
erscreen infringed claims 1, 2, 3, 7, and 9 of the ’618
patent. Claim 1 of the ’618 Patent, the only independent
claim in suit, recites:
A mobile, road-hauled aggregate material pro-
cessing plant comprising:
a wheel mounted chassis extending in a longi-
tudinal direction;
a plant support frame mounted on the chassis;
a raw material input hopper mounted on the
plant support frame;
a material processing means mounted on the
plant support frame and fed from the input hop-
per and having an outlet;
processed material outfeed delivery means
mounted on the plant support frame and fed from
the material processing means;
at least one lateral delivery conveyor incorpo-
rated in the outfeed delivery means, said conveyor
comprising:
a conveyor frame tail section;
a conveyor frame head section;
METSO MINERALS v. POWERSCREEN INTL 5
a tail articulation means connecting the tail
section to the support frame in such a way that at
least part of the tail section is movable relative to
the plant support frame from an operative posi-
tion extending laterally of the chassis with respect
to the longitudinal direction for outfeed of pro-
cessed material, to a transport position extending
substantially upright above the chassis and posi-
tioned with respect to the input hopper and mate-
rial processing means so that it does not project
laterally beyond the chassis;
a head articulation means connecting the
head section to the tail section in such a way that
the head section is movable from an operative po-
sition to a transport position with the head section
extending longitudinally above the chassis and
positioned with respect to the input hopper and
material processing means so that it does not pro-
ject laterally beyond the chassis;
a plurality of rollers mounted on the conveyor
frame; and
an endless conveyor belt mounted on the roll-
ers to complete the assembly of a lateral delivery
conveyor having tail and head sections, said belt
defining a conveyor plane.
’618 patent col. 7 ll. 13-53.
As the claim makes clear, each lateral delivery con-
veyor claimed in the ’618 patent is a single conveyor that
comprises its own head and tail section. The head and tail
sections are connected by a pivot that allows each convey-
or to be folded in a different configuration depending on
whether the lateral delivery conveyor is in the operative
position or the transport position. In the transport posi-
tion, the head and tail sections are folded at their pivot
such that the tail section is positioned vertically (perpen-
6 METSO MINERALS v. POWERSCREEN INTL
dicular to the screener’s chassis) and the head section is
folded to the side (extending along the length of the
chassis), creating an L-shaped structure. According to the
language of representative Claim 1, neither the head nor
tail sections of a lateral delivery conveyor may “project
laterally beyond the chassis” when the screener is in the
transport position. ’618 patent col. 7 ll. 39-40, 46-47. Two
such conveyors, shown in the transport position, are
depicted in Figure 4 of the ’618 patent, reproduced below:
At trial, Metso argued that many of Powerscreen’s
screeners infringed the ’618 patent either literally or
under the doctrine of equivalents. In addition to arguing
that the accused screeners were not covered by the claims,
Powerscreen argued that the ’618 Patent’s claims would
have been obvious in light of two prior-art screeners
designed by the inventor of the ’618 patent, Malachy
Rafferty. One of these pieces of prior art, a screener called
the Masterskreen Dominator, contained lateral delivery
conveyors that folded such that the head section of the
conveyor folded over the tail section of the conveyor when
the screener was in the transport position (so that the two
sections of the lateral conveyors were stored in an I-
METSO MINERALS v. POWERSCREEN INTL 7
shaped formation, as opposed to the L-shaped formation
claimed in the ’618 patent). This vertical fold is depicted
below:
The second piece of prior art raised by Powerscreen at
trial, the Masterstock 70/80 stand-alone conveyor, was
sometimes used in conjunction with screeners to distrib-
ute sorted materials. This Masterstock 70/80 conveyor,
which was also invented by Mr. Rafferty, contained sepa-
rate sections that could be folded at various pivot points,
as the diagram below illustrates:
8 METSO MINERALS v. POWERSCREEN INTL
Unlike the Dominator, which only taught a vertical,
over-the-top I-shaped fold, the Masterstock conveyor also
taught a side-folding mechanism. The Masterstock 70/80
conveyor contained two hinges, the first of which allowed
one section to fold over a middle section, as illustrated in
Step 1—this fold is akin to the over-the-top fold of the
Dominator described above. However, another hinge
allowed a section of the conveyor to fold sideways (which
one can analogize to the “head section” of the ’618 patent’s
lateral conveyor) alongside the other folded components of
the conveyor assembly (which one can analogize to the
“tail section” of the ’618 Patent’s lateral conveyor), as
shown in Steps 2 and 3. The entirety of the folded Master-
stock conveyor is shown in Step 4. One can see clearly
from Step 3 that the Masterstock conveyor taught a side
fold, and Metso did not dispute this.
At trial, and in its post-trial filings, Metso argued that
even though the Masterstock conveyor taught a side fold,
it had no “stopping” mechanism to lock a side fold into an
L-shaped configuration (such as the configuration shown
in Step 3). Metso urged that “even if one of ordinary skill
were motivated to combine the [Masterstock conveyor
with the Dominator],” Powerscreen “could not establish
that there was any reason to keep the conveyor of the
Masterstock 80 unfolded at a 90º angle (i.e., in an L
configuration) while being transported on a road,” or that
there was any “disclosure or suggestion to use a physical
stopping mechanism to retain the conveyor at that 90º
orientation.” J.A. 11,829.
Immediately prior to the jury instruction conference,
and in light of this prior art, Powerscreen moved for
judgment as a matter of law (JMOL) on obviousness, but
the court denied the motion and held that it would “re-
serve decision” on obviousness and “charge obviousness”
to the jury. See J.A. 17,648.
METSO MINERALS v. POWERSCREEN INTL 9
The case then was submitted to the jury. On the issue
of obviousness, over Powerscreen’s objection, the jury was
instructed that Powerscreen must “prove by clear and
convincing evidence” that any applicable prior art ma-
chine “was fully operational and functional” prior to
September 7, 1993. J.A. 12,953. The jury determined that
“[c]laims 1 to 7 and 9 of [Metso’s] ’618 patent [we]re not
invalid as obvious under 35 U.S.C. § 103 in view of the
prior art.” J.A. 3. It also found that all of Powerscreen’s
accused screeners infringed claims 1, 2, 3, 7, and 9 of the
’618 patent either literally or equivalently, that Terex was
liable for Powerscreen’s infringement as its alter ego, and
that the defendants willfully infringed the ’618 patent.
Accordingly, the jury awarded Metso $15,800,000 in
damages. The court doubled the damage award to
$31,600,000 due to Powerscreen’s “willful infringement
and ostrich-like behavior” with regard to the ’618 patent.
Metso Minerals, Inc. v. Powerscreen Int’l Distrib. Ltd., 833
F. Supp. 2d 333, 341 (E.D.N.Y. 2011). The court also
granted Metso a permanent injunction against any future
infringement by Powerscreen.
After trial, the district court denied Powerscreen’s
post-trial motions, including its post-verdict JMOL mo-
tion and its motion for a new trial. See Metso Minerals,
Inc. v. Powerscreen Int’l Distrib. Ltd., 833 F. Supp. 2d 282(E.D.N.Y. 2011). Though the court admitted that its jury
instruction on obviousness requiring prior art to be fully
functional and operational was in error, it reasoned that
the error did not “result[] in substantial prejudice” be-
cause “the clear implication of [the trial] testimony [was]
that the[] [relevant prior art] conveyors were fully opera-
tional and functional,” and that a new trial was not
warranted because “there was still sufficient evidence
from which the jury could conclude that the ’618 patent
was not obvious in view of” the prior art. Id. at 304.
The district court also denied the defendants’ renewed
motion for JMOL on obviousness, noting that it “previous-
10 METSO MINERALS v. POWERSCREEN INTL
ly rejected” the defendants’ argument “that the claimed
invention in [the ’618 patent] was a combination of famil-
iar elements which yielded no unexpected results,” and
that it saw “no reason to . . . disturb a decision that was
properly in the province of the jury.” 1 Id. at 305. In deny-
ing the motion for a new trial, the district court relied on
the fact that “the combination [of prior art references]
omitted any teaching of a stop to prevent the head section
of the folded lateral conveyor from folding beyond 90º,”
and that a question of fact existed as to whether the
addition of such a “stop” in the ’618 patent rendered the
patent non-obvious. Id. at 304. Powerscreen timely ap-
pealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, Powerscreen, inter alia, challenges the
instruction on obviousness and contends as well that the
district court should have granted JMOL on the issue of
obviousness.
I
Powerscreen first argues that we should reverse the
jury’s finding of non-obviousness and remand for a new
trial because the district court gave a jury instruction
requiring that relevant prior art bearing on obviousness
be “fully functional.” 2
1 The district court also rejected Powerscreen’s
laches and inequitable conduct defenses, see Metso Miner-
als, Inc. v. Powerscreen Int’l Distribution Ltd., 833 F.
Supp. 2d 321 (E.D.N.Y. 2011), but neither of those defens-
es is at issue in this appeal.
2 The instruction, in relevant part, reads:
For any machine that you may determine is prior
art, the defendants must prove by clear and con-
vincing evidence how that particular machine op-
METSO MINERALS v. POWERSCREEN INTL 11
We agree with Powerscreen that the district court’s
instruction was erroneous. A prior art reference does not
need to be fully functional to qualify as prior art; indeed, a
prior art reference “need not work” and may even be
“‘inoperative.’” Geo M. Martin Co. v. Alliance Machine
Sys. Int’l LLC, 618 F.3d 1294, 1302 (Fed. Cir. 2010)
(quoting Beckman Instruments, Inc. v. LKB Produkter AB,
892 F.2d 1547, 1551 (Fed. Cir. 1989)).
This error was not harmless. The district court’s error
is only harmless if the erroneous jury instruction “could
not have changed the result.” CytoLogix Corp. v. Ventana
Med. Sys., Inc., 424 F.3d 1168, 1174 (Fed. Cir. 2005)
(quotation marks omitted); Sulzer Textil A.G. v. Picanol
N.V., 358 F.3d 1356, 1364 (Fed. Cir. 2004) (quotation
marks omitted). Therefore, the relevant question is
whether the jury would have been compelled to conclude
that the prior art references were fully functional (mean-
ing that the jury would have considered the prior art in
its obviousness analysis regardless of the erroneous
instruction). However, a reasonable jury could have
determined that the evidence in the record did not provide
clear and convincing evidence that the prior art was
functional. 3 Thus, the jury could have believed that it was
erated before September 7, 1993, in the manner
that the defendants allege is pertinent to the
claims of the ’618 Patent, and that that machine,
if any was fully operational and functional in that
respect.
J.A. 18,253 (emphasis added).
3 There was no evidence of functionality. The testi-
mony cited in Metso’s brief that it contends bears on the
functionality issue only indicates that the prior art Domi-
nator screener and Masterstock conveyor were purchased
prior to the critical date, not that they were fully func-
12 METSO MINERALS v. POWERSCREEN INTL
required to ignore these prior art references, and the
instruction was harmful error. At minimum, a new trial
on obviousness is therefore required. See CytoLogix, 424
F.3d at 1174 (noting that a prejudicial jury instruction
error—i.e., one that is not harmless—requires a new
trial).
II
Powerscreen contends that a new trial is unnecessary
because the claims are obvious as a matter of law, and
JMOL therefore should have been granted. “We review
the denial of a motion for JMOL de novo.” Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1248 (Fed. Cir. 2005). Obvi-
ousness is a question of law we review de novo based on
underlying findings of fact. Wyers v. Master Lock Co., 616
F.3d 1231, 1237, 1248 (Fed. Cir. 2010). Powerscreen
argues that the district court’s denial of its JMOL motion
on obviousness was improper and that “[t]he combination
of Dominator and Masterstock 70/80 conveyors renders all
asserted claims of the ’618 patent obvious as a matter of
law.” 4 Powerscreen Br. 75.
tional; none of Metso’s cited testimony explicitly address-
es the functionality question.
4 Metso argues that “defendants failed to move pre-
verdict for JMOL that the claims of the ’618 patent were
obvious . . . and thus waived[] their right to move for
[post-verdict] JMOL on this issue.” Metso Br. 46. We
disagree. Powerscreen moved pre-verdict for JMOL on
obviousness, the district court made rulings, and Metso’s
counsel admitted that “[he] thought [that] the court . . .
ruled that obviousness goes to the jury,” see J.A. 17,647.
The district court stated that it had “denied [Pow-
erscreen’s] motion with regard to obviousness” and “re-
serve[d] decision” on obviousness pre-verdict, J.A. 17,648,
and it noted post-verdict that it had “previously rejected”
the argument that the ’618 patent “was a combination of
METSO MINERALS v. POWERSCREEN INTL 13
As we have held, “[a] patent is invalid for obviousness
‘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.’” Wyers,
616 F.3d at 1237 (quoting 35 U.S.C. § 103). Two inquir-
ies—the prima facie case and secondary considerations—
therefore guide a determination of obviousness. See id.(citing Graham v. John Deere Co. of Kan. City, 383 U.S. 1(1966)). Here, the parties dispute the strength of the
prima facie case of obviousness, and Metso argues that
various secondary considerations including commercial
success, unexpected results, and alleged copying counsel
against an overall obviousness finding. We address first
the question of whether there was a prima facie case of
obviousness.
A
As noted above, the relevant prior art that Pow-
erscreen introduced for its obviousness argument was the
Masterskreen Dominator and the Masterstock 70/80
conveyors. Metso does not appear to dispute that both of
these pieces of prior art were sold in the United States
familiar elements which yielded no unexpected results,”
Metso, 833 F. Supp. 2d at 305. The district court made no
determination that the issue had not been properly pre-
sented, and indeed assumed that it had been. Given this
record, and considering that “even a cursory motion
suffices to preserve an issue on JMOL,” W. Union Co. v.
MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1367 (Fed.
Cir. 2010) (citing Blackboard, Inc. v. Desire2Learn Inc.,
574 F.3d 1371, 1379-80 (Fed. Cir. 2009)), we hold that
Powerscreen’s pre-verdict JMOL motion was sufficient to
preserve the obviousness question for post-verdict JMOL
in this case.
14 METSO MINERALS v. POWERSCREEN INTL
prior to September 7, 1993, which is the critical date of
the ’618 Patent. See Baker Oil Tools v. Geo Vann, Inc.,
828 F.2d 1558, 1563 (Fed. Cir. 1987) (noting that the
critical date is “the date one year before the filing date of
the patent application”); ’618 patent, at [22] (noting that
the filing date of the ’618 Patent application was Septem-
ber 7, 1994).
Metso does not argue that the cited prior art combina-
tion does not meet the limitations of the relevant claims of
the ’618 patent, with one exception. Metso argues that
Powerscreen “failed to establish that the combination of
the two machines would be claim 1” because they “failed
to establish that there was any reason to keep the convey-
or of the Masterstock conveyor unfolded at a 90º angle
(i.e., in an L configuration) while being transported on a
road, or that there was a mechanism to retain the convey-
or at a 90º orientation [i.e., a ‘stop’ feature].” Metso Br. 48.
However, the absence of this feature is pertinent only if
the claims require the feature. See Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007) (noting that a
patented invention is obvious when “a skilled artisan
would have been motivated to combine the teachings of
the prior art references to achieve the claimed invention”
(emphasis added)).
Here, the asserted claims of the ’618 patent do not re-
quire that the head section of a lateral delivery conveyor
(the “head articulation means”) be locked into place, and
the district court’s claim construction of that term—which
is not challenged by Metso on appeal—rejected any re-
quirement of a “stop.” Significantly the district court in its
Markman order specifically rejected Metso’s argument
that the claims required a stop. It held that “the ‘fixed
stop’ and the other ‘stops’” were not part of the “head
articulation means” limitation because they “do not
connect the head section to the tail section” of the convey-
or. Metso Minerals, Inc. v. Powerscreen Int’l Distrib. Ltd.,
681 F. Supp. 2d 309, 324 (E.D.N.Y. 2010); see also Metso
METSO MINERALS v. POWERSCREEN INTL 15
Minerals, Inc. v. Powerscreen Int’l Distrib. Ltd., 722 F.
Supp. 2d 316, 320-21 (E.D.N.Y. 2010) (refusing to alter its
construction of “head articulation means” on reconsidera-
tion). In addressing obviousness in the context of Pow-
erscreen’s motion for a new trial, the district court
acknowledged that it “did not construe the patent claims
to require stops.” 833 F. Supp. 2d at 304. Since there was
no requirement of a “stop” in the ’618 patent, whether the
prior art taught a “stop” is irrelevant. We therefore con-
clude that the Dominator-Masterstock combination dis-
closed the limitations of the asserted claims. 5
Metso also argues that Powerscreen failed to establish
that “there was any . . . reason to combine [the prior art]
machines to result in the invention other than” hindsight.
Metso Br. 47. We disagree. As KSR made clear, the Su-
preme Court has “set forth an expansive and flexible
approach” to obviousness. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 415 (2007). Under this approach, “it
can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new inven-
tion does.” Id. at 418. The undisputed evidence of record
here establishes a clear motivation to combine the verti-
cal-folding Dominator screener with the side-folding
Masterstock conveyor.
Specifically, at the time the ’618 Patent was filed,
there was a motivation to create a screener that could
handle a greater capacity of sorted material (thereby
5 Metso also argues that certain components of the
Masterstock conveyor would need to be removed to com-
bine it with the Dominator screener (specifically, support
wheels that would otherwise hang off of the side of the
conveyor), but this is another difference that does not
negate the obviousness of the ’618 Patent in view of the
Dominator screener and Masterstock conveyors.
16 METSO MINERALS v. POWERSCREEN INTL
generating output at a faster rate) and, at the same time,
comply with road permit regulations that restricted the
width of screeners that could be transported on roads. The
challenge was that creating a higher-capacity machine
required widening the screener’s central conveyor, which
widened the screener’s body. Meanwhile, the over-the-top,
I-shaped folding configuration of a screener’s lateral
conveyors in the transport position also contributed to the
overall width of the machine when it was transported on
roads. Unsurprisingly, then, when designing the ’618
patent, Rafferty knew that “[t]here was no good in making
conveyors [like the ones] that [he] was already making
[i.e., the Dominator with its vertical fold], because with
this [new] wider machine [the conveyers would] be too
wide for the road.” J.A. 26,835. The side-fold taught by
the prior art Masterstock conveyors provided an obvious
solution to this problem. This evident motivation to
combine—to ensure that higher-capacity screeners com-
plied with road permit requirements—is not rebutted by
Metso. No contrary evidence suggests that there was a
lack of a motivation to combine, or that the prior art
“taught away” from the combination.
We therefore conclude that Powerscreen’s prima facie
case of obviousness is strong, even viewing the evidence in
a light favorable to Metso. This is because, following KSR,
this is a case where, in our view, “market demand . . .
dr[ove] design trends,” 550 U.S. at 419, “there [wa]s a
design need or market pressure to solve a problem,” and
“there [were] a finite number of . . . solutions” that could
have produced the desired outcome, id. at 421. Here, the
apparent solution to maintain a compact machine for
transport while increasing the screener’s output capacity
required a machine that folded the lateral conveyors in as
compact a manner as possible. This further suggests that
“ordinary skill and common sense,” rather than innova-
tion, fostered Rafferty’s invention of the ’618 Patent. Id.METSO MINERALS v. POWERSCREEN INTL 17
B
Although the relevant claims of the ’618 Patent are
prima facie obvious, Metso also argues that the secondary
considerations of commercial success, unexpected results,
and copying supported the jury’s verdict of non-
obviousness.
On commercial success, Metso notes that “[t]here was
substantial commercial success of the patented invention,
as embodied in the 1,271 mobile screeners sold by defend-
ants for sales of $158.7 million and the 365 screeners sold
by Metso for sales of $43.5 million.” Metso Br. 49. Metso
provides no evidence connecting the commercial success of
these screeners to the claimed advances in the ’618 Pa-
tent. “Our case law clearly establishes that the patentee
must establish a nexus between the evidence of commer-
cial success and the patented invention.” Wyers, 616 F.3d
at 1246. There was no evidence of any such connection.
Metso next argues that “[t]he double-fold, L design of
the ’618 patent had the new and unexpected result of
enabling dramatically higher product output and longer
lateral conveyors.” Metso Br. 49. However, this allegedly
unexpected result was the result of manufacturing
screeners with wider central conveyors (as opposed to the
side-folded lateral conveyors at issue here). This widening
of the central conveyor allowed more material to be sorted
and distributed to the lateral delivery conveyors, but the
width of the central conveyor is not part of the limitations
of the claimed invention. This factor therefore does noth-
ing to undermine Powerscreen’s obviousness claim.
The last secondary consideration Metso emphasizes is
copying. It notes the district court’s finding that “the
Defendants willfully and deliberately copied the ’618
patent” and “evinced ostrich-like, head-in-the-sand behav-
ior” when creating the its infringing screener. Metso, 833
F. Supp. 2d at 337-38. There is no dispute that during
Powerscreen’s redesign of its screener to create the ac-
18 METSO MINERALS v. POWERSCREEN INTL
cused models, Powerscreen was aware of Masterskreen’s
Senator screener, and of the ’618 patent that it embodied.
However, while there were similarities between the
accused screeners and Metso’s screeners, the products are
far from identical and there is no evidence that Pow-
erscreen copied a specific product developed by Metso
(such as the Senator screener). See Metso, 833 F. Supp. 2d
at 337-38 (citing no specific evidence of copying). Given
that “[o]ur case law holds that copying requires evidence
of efforts to replicate a specific product,” Wyers, 616 F.3d
at 1246, copying has not been established here.
* * *
In examining the evidence on obviousness as a whole,
including Powerscreen’s prima facie case and the evidence
of secondary considerations, we are persuaded that as a
matter of law the asserted claims of the ’618 patent would
have been obvious to a person of ordinary skill in the art.
We therefore reverse. Because we reverse on obviousness,
and the asserted claims of the ’618 patent are therefore
invalid, we need not reach other issues including whether
the accused devices were within the scope of the claims.
REVERSED
COSTS
No costs.