American Innotek, Inc. v. United States ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN INNOTEK, INC., A CALIFORNIA
CORPORATION,
Plaintiff-Appellant
v.
UNITED STATES,
Defendant-Appellee
______________________
2017-1178
______________________
Appeal from the United States Court of Federal
Claims in No. 1:11-cv-00223-MCW, Judge Mary Ellen
Coster Williams.
______________________
Decided: December 19, 2017
______________________
DANIEL W. ERNSBERGER, Behrend & Ernsberger, PC,
Pittsburgh, PA, argued for plaintiff-appellant.
JOHN J. FARGO, Commercial Litigation Branch, Civil
Division, United States Department of Justice, Washing-
ton, DC, argued for defendant-appellee. Also represented
by CHAD A. READLER, GARY L. HAUSKEN.
______________________
Before MOORE, TARANTO, and STOLL, Circuit Judges.
2 AMERICAN INNOTEK, INC. v. UNITED STATES
TARANTO, Circuit Judge.
American Innotek, Inc., owns U.S. Patent 5,116,139.
It sued the United States in the Court of Federal Claims
under 28 U.S.C. § 1498, asserting that the government
was using the subject matter of claims 1–4 and 17 of the
patent without a license from American Innotek. The
Court of Federal Claims, after holding a trial, entered
judgment for the United States based on the conclusion
that the asserted claims are invalid for obviousness under
35 U.S.C. § 103. Am. Innotek, Inc. v. United States, 128
Fed. Cl. 135, 167–68 (2016). American Innotek appeals.
We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(3).
We affirm.
We see no clear error in the findings of the Court of
Federal Claims regarding the scope and content of the
prior art, the differences between the prior art and the
’139 patent, and the existence of a motivation to combine
the prior art elements with a reasonable expectation of
success to arrive at the claimed inventions. We see no
clear error in the findings of the Court of Federal Claims
about the facts bearing on objective indicia of non-
obviousness. And we agree with the legal conclusion of
obviousness, considering all the pertinent facts, including
objective indicia.
This conclusion is a case-specific one. The Court of
Federal Claims suggested the existence of a categorical
rule that objective indicia, no matter how indicative of
non-obviousness they are, “cannot overcome a strong
showing of obviousness based on combinations of prior art
applied according to the prior art’s expected function.”
Am. Innotek, 128 Fed. Cl. at 163 (citing Apple Inc. v.
Samsung Elecs. Co., Ltd., 816 F.3d 788, 804 (Fed. Cir.
2016)). That goes too far. “Objective indicia of nonobvi-
ousness must be considered in every case where present,”
Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034,
1048 (Fed. Cir. 2016) (en banc), cert. denied, No. 16-1102,
AMERICAN INNOTEK, INC. v. UNITED STATES 3
2017 WL 948834 (U.S. Nov. 6, 2017) (vacating panel
decision cited by Court of Federal Claims); and the Su-
preme Court has warned against transforming “[h]elpful
insights” about assessing obviousness into “rigid and
mandatory formulas,” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007). The cases from this court cited by
the Court of Federal Claims all include case-specific
judgments weighing the particular objective indicia (on
the facts found) along with the evidence addressing the
prior art, motivations to combine or modify, and expecta-
tions of success (on the facts found). 1 Certainly, this court
has often determined that particular objective indicia
were not decisive in the face of strong other evidence of
obviousness, but those results reflect case-specific as-
sessments. In the present case, taking the evidence-
supported facts found as a given, we weigh the objective
indicia with the other facts and agree with the conclusion
of obviousness drawn by the Court of Federal Claims.
We therefore affirm the judgment of that court.
AFFIRMED
1 See ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d
1350, 1361–62 (Fed. Cir. 2015); Allergan, Inc. v. Sandoz
Inc., 726 F.3d 1286, 1293 (Fed. Cir. 2013); Wyers v. Master
Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007); see also Asyst Techs., Inc. v. Emtrak, Inc.,
544 F.3d 1310, 1316 (Fed. Cir. 2008) (stating that “evi-
dence of secondary considerations does not always over-
come a strong prima facie showing of obviousness” and
finding such evidence not to do so “in this case”); Agrizap,
Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir.
2008) (stating similar case-specific judgment and describ-
ing Leapfrog as a case-specific judgment).