Stone Strong, LLC v. Del Zotto Products of Florida, Inc. , 455 F. App'x 964 ( 2011 )

NOTE: This disposition is nonprecedential
United States Court of Appeals
for the Federal Circuit
__________________________
STONE STRONG, LLC,
Plaintiff-Appellee,
v.
DEL ZOTTO PRODUCTS OF FLORIDA, INC.,
Defendant-Appellant,
and
DOES 1-10, INCLUSIVE,
Defendants.
__________________________
2011-1156
__________________________
Appeal from the United States District Court for the
Middle District of Florida in case no. 08-CV-0503, Judge
Wm. Terrell Hodges.
___________________________
Decided: October 17, 2011
___________________________
JOSEPH J. WEISSMAN, Johnson, Pope, Bokor, of
Tampa, Florida, argued for plaintiff-appellee.
STONE STRONG v. DEL ZOTTO PRODUCTS 2
JACKSON O. BROWNLEE and AMBER N. DAVIS, Beusse
Wolter Sanks Mora & Maire, P.A., of Orlando, Florida,
argued for defendant-appellant.
__________________________
Before DYK, CLEVENGER, and REYNA, Circuit Judges.
DYK, Circuit Judge.
Del Zotto Products of Florida, Inc. (“Del Zotto”) ap-
peals the judgment of the United States District Court for
the Middle District of Florida in favor of Stone Strong,
LLC (“Stone Strong”). After a bench trial the district
court concluded that the asserted claims of U.S. Patent
Nos. 6,796,098 (the “’098 patent”) and 7,073,304 (the “’304
patent) (collectively, the “patents in suit”) were not inva-
lid and were infringed by Del Zotto’s Gold Rock block.
Stone Strong, LLC v. Del Zotto Prods. of Fla., Inc., No. 08-
CV-0503, 2010 WL 4259371, at *3–4 (M.D. Fla. Oct. 25,
2010) (“Memorandum Opinion”). Because we conclude
that the asserted claims of the patents in suit would have
been obvious as a matter of law to a person of ordinary
skill in the art at the time of filing, we reverse.
BACKGROUND
Stone Strong is a Nebraska limited liability corpora-
tion which licenses its Stone Strong retaining wall blocks
and retaining wall systems. Those blocks and systems
embody the patents in suit, which are owned by Stone
Strong. Del Zotto is a Florida corporation that manufac-
tures pre-cast concrete products, forms, and equipment.
The claims of Stone Strong’s patents—the ’098 and
’304 patents—cover pre-cast concrete blocks and a system
and method for making pre-cast concrete blocks for use in
constructing retaining walls. The ’098 patent, issued on
September 28, 2004, contains three independent claims—
3 STONE STRONG v. DEL ZOTTO PRODUCTS
claims 1, 7, and 13—directed to the block itself, independ-
ent claim 14 directed to the wall system, and independent
claim 22 directed to a method for building a wall. The
’304 patent, a continuation-in-part of the ’098 patent,
issued on July 11, 2006, and has seven independent
claims, three directed to a corner block and the other four
describing a wall system and a method for building a
block wall involving corner blocks and regular blocks. As
best we can determine, only claims 1, 7, 13, and 22 of the
’098 patent and claims 1 and 11 of the ’304 patent were
asserted in this case.
Independent claim 1 of the ’098 patent is representa-
tive of the blocks claimed in both patents in suit. It
claims a block with a front surface, first and second side
surfaces, a top surface, a bottom surface, and a back
surface, where
the top surface includes at least one alignment de-
vice, each alignment device comprising a device
for lifting the block when the block is being
placed; [and]
. . . the bottom surface including at least one re-
cess positioned to receive at least one alignment
device of a previously-placed block to align the
block with respect to the previously-placed block . .
..
’098 Patent col.13 ll.46–55 (emphasis added).
STONE STRONG v. DEL ZOTTO PRODUCTS 4
Id. fig. 3.
As illustrated in Figure 3 above, the lift loop or pick-
up bar (170) protrudes from the top surface (150) of the
block (100). The lift loop, referred to as the “alignment
device” or “lift and alignment device” in the claims, fits
into a recess (162) in the bottom surface (160) of another
block. This device “fulfill[s] a dual function: first, it
enables the lifting and placement of the block in the wall
by a crane or similar machine; and, second, it enables the
alignment of the blocks one upon another as the building
of the wall proceeds.” Memorandum Opinion, 2010 WL
4259371, at *1. Both parties agree that the novelty of the
invention is primarily the combination of a lifting device
(such as a lift-loop) with an alignment device so that the
lifting device serves both a lifting function and an align-
ment function. The best mode portion of the specification
describes the patented device as follows, with reference to
Figure 3 above:
The semicircular shape of protruding portion of
the lift and alignment rings 170 shown in FIG. 3
and the shape of the alignment channels 162 pro-
5 STONE STRONG v. DEL ZOTTO PRODUCTS
vide a mechanism for easily aligning a block on
top of a previously-laid block. The block 100 of
FIG. 1 is preferably heavy enough that it will
typically be set in place using suitable equipment,
such as a crane. The lift and alignment rings 170
provide easy loops for attaching hooks to lift the
block 100. As the block is lowered into place on
previously-set blocks, the shape of the alignment
channel 162 has an aligning effect on the block as
it is lowered onto the lift and alignment rings 170
of one or more previously-laid blocks. If the block
is slightly too far to the front or back, the weight
of the block will cause the block to shift as it is
lowered until the lift and alignment rings 170 lie
within the alignment channels 162. This is how
the lift and alignment rings 170 perform their
aligning function. The lift and alignment rings
thus provide a dual function. They provide lift
hooks that allow lifting the block and placing it in
a wall. They also provide an alignment mecha-
nism to align the alignment channel of a subse-
quently-placed block with one or more lift and
alignment devices of one or more blocks that have
been previously placed. This dual function for lift
and alignment rings 170 provide significant ad-
vantages over known building blocks.
’098 Patent col.4 l.55–col.5 l.12.
Stone Strong first noticed Del Zotto’s accused block
(the “Gold Rock block”) at a trade show in February 2008.
Stone Strong subsequently received a high priority e-mail
from one of its licensees that included a Del Zotto bro-
chure advertising forms for making the accused Gold Rock
retention block. Stone Strong’s counsel wrote Del Zotto on
March 3, 2008, requesting that Del Zotto immediately
cease and desist the advertising, production, and sale of
STONE STRONG v. DEL ZOTTO PRODUCTS 6
its form, alleging that the form produced blocks that
infringed one or both of Stone Strong’s patents. Del Zotto
responded, denying that its forms produced infringing
retention blocks and indicating: “It is our intention to
continue to market and sell this block form.”
On November 28, 2008, Stone Strong filed suit
against Del Zotto in the United States District Court for
the Middle District of Florida, apparently alleging that
Del Zotto both directly and indirectly infringed claims 1,
7, 13, and 22 of the ’098 patent and claims 1 and 11 of the
’304 patent. Del Zotto responded by denying infringement
and requesting a declaration of invalidity and/or unen-
forceability of the patents in suit. Stone Strong later
determined that it would seek only injunctive relief.
A bench trial took place before the district court on
September 27–29, 2010. At trial, Del Zotto argued that it
did not infringe the claims either directly or indirectly
and presented evidence that the claims were anticipated
under 35 U.S.C. § 102 or, in the alternative, were obvious
under § 103, in light of two patents: U.S. Patent No.
5,651,642 (the “’642 patent”), issued July 29, 1997, and
U.S. Patent No. 6,557,818 (the “’818 patent”), issued May
6, 2003 (collectively, the “prior art patents”).
On October 25, 2010, the district court issued its
Memorandum Opinion, finding that Del Zotto literally
infringed, infringed under the doctrine of equivalents, and
indirectly infringed the claims of the patents in suit.
Memorandum Opinion, 2010 WL 4259371, at *3 & n.10.
With little elaboration of its reasoning, the court con-
cluded that Del Zotto had not established either anticipa-
tion or obviousness through clear and convincing
evidence. Id. at *4. On November 19, 2010, the district
court entered the Corrected Final Injunctive Decree.
7 STONE STRONG v. DEL ZOTTO PRODUCTS
Del Zotto timely appealed. We have jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, we need address only the question of obvi-
ousness since we conclude that the asserted claims of both
patents are obvious as a matter of law.
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.” 35 U.S.C. § 103(a) (2006).
“Obviousness is a question of law based on underlying
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009).
I
In determining whether a patent is invalid for obvi-
ousness, “the first step is to determine the meaning and
scope of each claim in suit.” Amazon.com, Inc. v. Barne-
sandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)
(internal quotation marks omitted) (quoting Lemelson v.
Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992)).
Patent claim construction is an issue of law, which this
Court reviews without deference. Cordis Corp. v. Boston
Scientific Corp., 561 F.3d 1319, 1325 (Fed. Cir. 2009).
Here, the parties disagree as to the meaning and scope of
the claims of the patents in suit.
The primary claim construction disagreement be-
tween the parties is the proper interpretation of the
“alignment device” limitation in the asserted claims.
Each of the asserted independent claims requires a “lift
and alignment device” (or in some cases, simply an
“alignment device”) to “align” a subsequently-placed block
STONE STRONG v. DEL ZOTTO PRODUCTS 8
with respect to the first block. ’098 Patent cls. 1, 7, 13, 14
and 22; ’304 Patent cls. 1, 9, 10, 11, 21, 22 and 23.
Stone Strong argued in the district court that the re-
cess on the bottom of the block can serve an alignment
function regardless of its size in relation to the lift hooks,
so long as it is shorter than the width of the block from
the face shell to the rear shell. Accordingly, as Stone
Strong’s expert testified, “so long as the alignment loop
ultimately falls within that recess in the bottom of the
block, . . . we’ve satisfied this description and definition of
‘align.’” J.A. 711. On the other hand, Del Zotto argues
that the “the lifting devices must substantially fill the
recess (‘alignment channel’ . . . ) in order for the block to
come to rest in an aligned state.” Appellant Br. 16.
We largely agree with Del Zotto’s construction of the
alignment limitation. Insofar as alignment is concerned,
the object of Stone Strong’s invention was to achieve
alignment of retaining wall blocks, including setback,
without requiring manual alignment as the block is
lowered or adjustment after it has been placed. At the
time of the invention, the existing art disclosed “relatively
small blocks that a construction worker must manually
lift and put in place.” ’098 Patent col.1 ll.33–34. There
was a need for “a large block that is especially well-suited
for retaining walls that has a large surface, and that may
be lifted into place using a crane or other suitable equip-
ment . . . . This allows a wall to be quickly and efficiently
constructed using much less skilled labor.” ’098 Patent
col.1 ll.35–40. Along these lines, Stone Strong’s own
expert testified that the purpose of the Stone Strong
system was to make “it much more efficient to install, so
every time the contractor picks that thing up and swings
it in place and sets it down, it’s aligned.” J.A. 700.
9 STONE STRONG v. DEL ZOTTO PRODUCTS
Stone Strong’s contention that so long as the lifting
hooks end up within the recess, they have acted as an aid
in alignment is inconsistent with the object of its inven-
tion’s alignment function. Given the object of the inven-
tion to achieve alignment of retaining wall blocks
(including necessary setback) without requiring manual
alignment as the block is lowered or after it has been
lowered in place, the alignment function is accomplished
only if no further manual adjustment is required. This
function cannot be served if the recess is nearly as large
as the width of the block itself, as Stone Strong contends.
With such a large recess, there would be too much play
between the rings and the outer edges of the recess to
automatically align the block with respect to another.
With a recess nearly as large as the width of the block,
the block could end up shifted forward with the rings
abutting the back edge of the recess, shifted back with the
rings abutting the front edge of the recess, or anywhere in
between. At the extreme the top block would receive little
or no support from the bottom block. This arrangement
does not guarantee proper alignment. Instead, it would
require further manual alignment once placed “to align
the block with respect to the previously-placed block,” ’098
Patent col.13 ll.54–55, thus frustrating the object of the
invention.
We note that the patent’s preferred embodiment dis-
closes that “the radius of the outside of the lift and align-
ment devices 170 is preferably 4 inches (10.2 cm), and the
alignment channel 162 is configured to receive a lift and
alignment ring with a radius of 4.5 inches (11.4 cm).” ’098
Patent col.4 ll.36–40. These disclosures are consistent
with the object of the invention and our interpretation of
the alignment limitation.
We therefore construe the alignment limitation to re-
quire that when the lift loops of one block are inserted
STONE STRONG v. DEL ZOTTO PRODUCTS 10
into the recess on the bottom of another, there is not
enough play to allow the blocks to be misaligned without
further manual adjustment.
II
In light of this claim construction we consider
whether the asserted claims would have been obvious in
light of the prior art. Amazon.com, 239 F.3d at 1351. At
trial, both sides presented expert testimony as to obvious-
ness. This testimony, however, was largely conclusory
and so truncated as to be unhelpful. Nevertheless, be-
cause the technology at issue is “easily understandable,”
expert testimony is not necessary. Wyers v. Master Lock
Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010) (internal quota-
tion marks omitted). The Supreme Court in KSR Interna-
tional Co. v. Teleflex Inc. requires an “expansive and
flexible approach” in determining whether a patented
invention was obvious at the time it was made. 550 U.S.
398, 415 (2007). In particular, the Court emphasized the
role of “common sense”: “[r]igid preventative rules that
deny factfinders recourse to common sense . . . are neither
necessary under our case law nor consistent with it.” Id.
at 421.
Following KSR we held that the legal determination
of obviousness, especially where the technology at issue is
“easily understandable,” “may include recourse to logic,
judgment, and common sense, in lieu of expert testi-
mony.” Wyers, 616 F.3d at 1239, 1242. “Thus, in appropri-
ate cases, the ultimate inference as to the existence of a
motivation to combine references may boil down to a
question of ‘common sense.’” Id. at 1240.
In particular, our cases emphasize that “where all of
the limitations of the patent were present in the prior art
references, and the invention was addressed to a ‘known
problem,’ ‘KSR . . . compels [a determination of] obvious-
11 STONE STRONG v. DEL ZOTTO PRODUCTS
ness.’” Wyers, 616 F.3d at 1240 (citing Ball Aerosol &
Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009)). As KSR stated,
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of ordi-
nary skill has good reason to pursue the known
options within his or her technical grasp. If this
leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense.
550 U.S. at 421.
In the present case, all of the relevant elements of the
claimed invention, the lifting device and the alignment
mechanism, existed in the prior art. Both prior art pat-
ents disclose a lifting device and an alignment mecha-
nism. Notably, the prior art patents, the ’642 and ’818
patents, were not before the examiner during prosecution,
and thus, under KSR, “the rationale underlying the
presumption [of validity] . . . seems much diminished.”
550 U.S. at 426; see also Microsoft Corp. v. i4i Ltd. P'ship,
131 S. Ct. 2238, 2250–51 (2011). The ’818 patent dis-
closes a rod, recessed and embedded in the concrete block,
“for lifting and positioning the blocks . . . when construct-
ing a retaining wall.” ’818 Patent col.4 ll.45–50. It also
discloses a heavy wire or rebar lifting loop extending from
the rear side of the block used to lift the block from the
form in which it was cast. ’818 Patent col.4 ll.38–43. The
patent also discloses an alignment mechanism in the form
of projections or knobs extending above the top of the
block with a corresponding rabbet or groove on the bot-
tom, such that “[w]hen two blocks 10 are stacked, a knob
18 on a lower one of the blocks extends into the groove 17
STONE STRONG v. DEL ZOTTO PRODUCTS 12
on the adjacent upper block 10 to align the blocks.” ’818
Patent col.4 ll.4–11.
Likewise, the ’642 patent discloses a lifting eye
formed from a looped cable which “allows the block to be
engaged by a lifting device . . . to facilitate movement and
placement.” ’642 Patent col.3 ll.50–57. The lifting eye can
either extend above the top of the block or be configured
to be essentially flush with the top so it “does not interfere
with the structural mating of the blocks.” ’642 Patent
col.3 ll.61–64. The patent also discloses connector pins
with corresponding connector sockets on the bottom of the
block designed to receive the connector pins. ’642 Patent
col.3 ll.40–49. Notably, as seen in Figure 4 below, the
lifting eye (46) (“lifting device”) of the patent can project
from a well within a connector pin (28, 34) (“alignment
mechanism”) in the block.
With both of these limitations existing in the prior art
for the same purposes, the only claim to novelty is the
combination of the two into a single device serving both
13 STONE STRONG v. DEL ZOTTO PRODUCTS
functions. Stone Strong makes no claim that additional
features in claims other than claim 1 of the ’098 patent
render those nonobvious. The only question for us, then,
is whether it would have been obvious for one of skill in
the art to combine the lifting device and alignment
mechanism of the prior art patents into a single device
serving both functions.
We conclude that, because the ’098 and ’304 patents
represent no more than the predictable use of prior art
elements to address a known problem, their claims are
obvious as a matter of law. See KSR, 550 U.S. at 417,
421. Stone Strong’s own expert testified that, at the time
the invention was made, there was a known problem with
lifting devices interfering with retaining wall blocks:
These lifting devices were treated as something
that were in the way. You had to get them out of
the way somehow, so they were all recessed and
hidden away. The ones in the back of the block
that were used to pull the blocks out of the form
were typically torched off just to get rid of them,
and they were treated as such, that they were
something in the way.
J.A. 702.
Accordingly, it would be natural that one of skill in
the art would consider all available solutions to address
the problem presented by lifting devices. Being a simple
mechanical invention, there were only a number of possi-
ble techniques to avoid interference between the lifting
devices and subsequently-placed blocks. In lieu of hiding
the lifting device within a recess (as was done in the ’642
patent), it would have been obvious for one of ordinary
skill in the art to consider using an exposed lifting device
as an alignment mechanism. This solution would be
especially apparent to one of skill in the art based on Fig.
STONE STRONG v. DEL ZOTTO PRODUCTS 14
4 of the ’642 Patent, which already depicts a lifting device
housed inside of the alignment mechanism. A skilled
artisan would also have perceived a reasonable expecta-
tion of success as a result of combining these two ele-
ments of the prior art. Wyers, 616 F.3d at 1242 (citing In
re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For
obviousness under § 103, all that is required is a reason-
able expectation of success.”)). Therefore, it would have
been a matter of common sense to combine the lifting
device and the alignment mechanism. See Wyers, 616
F.3d at 1241 (“It is simply a matter of common sense that
the sleeve used in Down, in a towing attachment quite
similar to the hitch receiver/tow bar arrangement, could
be combined with a barbell-shaped hitch pin lock in order
to address the known problem of different aperture sizes
in standard hitch receivers and the shelf-space problem
experienced by retailers.”).
At trial, as a secondary consideration of nonobvious-
ness, Stone Strong presented evidence that Del Zotto had
intentionally copied aspects of its marketing brochure for
its patented block system. However, the Del Zotto Gold
Rock block is materially different from patented inven-
tion, as reflected in the Stone Strong block. The location
of the two webs connecting the front and back surfaces of
the blocks is different, the recesses on the bottom of the
blocks are different in both size and location, and the
front of the Stone Strong block is much thicker than the
back whereas both front and back walls of the Gold Rock
block are of equal thickness. In any event, “secondary
considerations of nonobviousness . . . simply cannot
overcome a strong prima facie case of obviousness.”
Wyers, 616 F.3d at 1246. “[W]here the inventions repre-
sent[] no more than ‘the predictable use of prior art ele-
ments according to their established functions,’ the
secondary considerations are inadequate to establish
15 STONE STRONG v. DEL ZOTTO PRODUCTS
nonobviousness as a matter of law.” Id. (quoting KSR,
550 U.S. at 417). The secondary consideration of copying,
even if established by Stone Strong at trial, is insufficient
to overcome the strong prima facie case of obviousness
discussed above.
We therefore reverse the trial court’s determination
and hold that the asserted claims of the ’098 and ’304
patents are obvious as a matter of law.
REVERSED
COSTS
No costs.