Para-Ordnance Manufacturing, Inc. v. Sgs Importers International, Inc., Defendant/cross-Appellant

Opinion for the court filed by Circuit Judge SCHALL.

Dissenting opinion filed by Chief Judge ARCHER.

SCHALL, Circuit Judge.

Para-Ordnance Manufacturing, Inc. (Para-Ordnance) appeals the June 2, 1994 decision and the June 9, 1994 order of the United States District Court for the Eastern District of Virginia. Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., Docket No. 94-117-A. Following a bench trial in Para-Ordnance’s patent infringement suit against SGS Importers International, Inc. (SGS), the district court determined that all of the claims of United States Patent No. 4,862,618 (the ’618 patent) 1) are obvious over the prior art and are therefore invalid under 35 U.S.C. § 103 (1988), and 2) were not infringed by SGS. We affirm the court’s determination of invalidity and do not address infringement.

BACKGROUND

The ’618 patent discloses and claims a “conversion kit” for expanding the ammunition capacity of semi-automatic handguns. An expansion in ammunition capacity is accomplished for any particular handgun by providing a widened ammunition magazine to accommodate an increased number of cartridges arranged in a staggered side-by-side configuration. The kit of the ’618 patent has a one-piece handgun frame with a grip portion that is wide enough to hold an enlarged magazine.

The ’618 patent contains thirteen claims, with one independent claim and twelve dependent claims. Claim 1 reads as follows:¹

1. A conversion kit to convert a semiautomatic hand-gun of a predetermined round capacity to a hand-gun of a higher round capacity, comprising: a frame made in one piece including an elongated top part having a constant width throughout its length and flat, parallel external side faces, each with an open-ended groove defining guides for the conventional slide of said hand-gun, and a grip downwardly depending at an angle from an intermediate portion of said top part and having a bottom end, said grip having a width greater than the width of said top part with external side faces merging with the external side faces of said top part below said grooves, said frame having a through-bore defining a magazine chamber extending through said grip and through said top art and forming a bottom opening through said bottom end and a top opening through said top part, said through-bore having opposite side faces substantially parallel to the long axis of said top part and defining lower side face portions which are straight and parallel to each other, starting from said bottom end to a zone just below said top part, followed by intermediate face portions which are converging and in turn followed by upper face portions which are substantially parallel to each other, said grooves being uninterrupted from end to end and adapted to slidably retain said slide for reciprocating movement of the latter.

Para-Ordnance, the exclusive licensee of the ’618 patent with the exclusive right to sue for infringement,² brought suit against SGS, alleging that SGS's Llama IX-C and IX-D handguns infringed the claims of the ’618 patent. In addition to denying infringement, SGS countered that the claims of the patent were invalid under 35 U.S.C. § 108. SGS asserted that the claims were obvious from the following items: the Colt 1911 .45 caliber handgun, the Browning Hi-Power 9mm handgun, and the Llama Omni .45 caliber handgun. Of this prior art, the Colt 1911, a frame and magazine similar to the Browning Hi-Power, and a magazine similar to the Llama Omni magazine were before the Patent and Trademark Office during prosecution of the ’618 patent. The complete Llama Omni handgun was not.

At the conclusion of the trial, the district court concluded that claim 1 would have been obvious to one of ordinary skill in the art and thus is invalid. The district court based its conclusion of obviousness on the prior art and the testimony of SGS’s expert, David Findlay. In determining obviousness, the court found that claim 1 differs from the prior art primarily in the means used to implement the mechanical transition between the handgun frame’s widened grip portion and its narrower top portion. These means are found in the claim limitation which refers to “intermediate face portions which are converging.”

DISCUSSION

Under 35 U.S.C. § 103, “[a] patent may not be obtained ... 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.” Obviousness may not be established using hindsight or in view of the teachings or suggestions of the inventor. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). Additionally, when determining obviousness, the claimed invention should be considered as a whole; there is no legally recognizable “heart” of the invention. W.L. Gore & Assocs., 721 F.2d at 1548, 220 USPQ at 309. In addition, such secondary considerations of nonobviousness as commercial success, long felt but unsolved needs, failures of others, and copying are considered in determining obviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545 (1966); Avia Group Int’l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1564, 7 USPQ2d 1548, 1554 (Fed.Cir.1988). Obviousness must be established by clear and convincing evidence. Glaverbel Societe Anonyme v. Northlake Marketing & Supply, Inc., 45 F.3d 1550, 1555, 33 USPQ2d 1496, 1499 (Fed.Cir.1995).

The ultimate determination of obviousness is a question of law, which we review de novo. Stiftung v. Renishaw PLC, 945 F.2d 1173, 1182, 20 USPQ2d 1094, 1102 (Fed.Cir.1991). The scope and content of the prior art, differences between the prior art and the claimed invention, the level of ordinary skill in the art, and objective evidence of secondary considerations of patentability are fact determinations. Id. What the prior art teaches and whether it teaches toward or away from the claimed invention also is a determination of fact. In re Bell, 991 F.2d 781, 784, 26 USPQ2d 1529, 1531 (Fed.Cir.1993) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960-61, 220 USPQ 592, 599-600 (Fed.Cir.1983), cert. denied, 469 U.S. 835, 105 S.Ct. 127, 83 L.Ed.2d 69 (1984)). Following a bench trial, we review the findings of fact underlying a determination of obviousness for clear error. Stiftung, 945 F.2d at 1183, 20 USPQ2d at 1102. “A finding is ‘clearly erroneous’ when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.” United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948); see also Milmark Servs., Inc. v. United States, 731 F.2d 855, 857 (Fed.Cir.1984) (same (quoting United States Gypsum Co., 333 U.S. at 395, 68 S.Ct. at 542)).

On appeal, Para-Ordnance advances four contentions: 1) that the district court focused on the “heart” of the ’618 patent instead of the invention as a whole; 2) that the court did not address motivation to modify the prior art; 3) that the court erred in its analysis of secondary considerations of non-obviousness; and 4) that the court used hindsight in its obviousness analysis. We address each of these contentions in turn.

A.

Para-Ordnance’s first contention requires little discussion. In performing its obviousness analysis, the district court properly viewed the claimed invention as a whole, and did not improperly focus on what it perceived to be the heart of the invention. To the extent the court focused on the claimed invention’s converging intermediate faces, it did no more than give appropriate attention to the feature of the invention that was central to the obviousness inquiry.

B.

Para-Ordnance’s main argument is that the district court did not address how a person of ordinary skill in the handgun design art would have been motivated to make the modifications to the prior art necessary to arrive at the converging intermediate face portions of the claimed invention. We disagree.

The problem addressed by the claimed “intermediate face portions which are converging” is making the mechanical transition between the widened grip portion and the narrower top portion of the handgun frame of the Para-Ordnance kit. As explained above, the grip portion of the frame is wider than the top portion because the grip must accommodate a widened magazine. Thus, the question is whether, in light of the prior art, it would have been obvious to one of ordinary skill in the art to use a one-piece frame with converging areas at the top of the grip that is claimed in the ’618 patent. Put another way, would one of ordinary skill in the art who set out to solve the problem of increasing ammunition capacity, and who had before him in his workshop the prior art, have been reasonably expected to use the solution that is claimed in the ’618 patent. We have no difficulty concluding that the answer is yes.

A person of ordinary skill in the art would have had before him various prior art handguns, including the Colt 1911 and the Browning Hi-Power, neither of which teach the concept of convergence to solve the problem confronting the person of ordinary skill in the art. Instead, those references merely teach the use of side faces of a frame to guide magazines snugly into their frames. Those two references, as noted, were before the examiner during prosecution of the ’618 patent. The most important prior art available to the person of ordinary skill in the art as he set out to solve his problem — art which was not put before the examiner — is the Llama Omni. As seen in the photograph below, the Llama Omni’s two grip covers include angled plastic tabs, which converge in the direction of the top of the grip. These tabs function to guide the magazine into its proper position inside the grip. The Llama Omni’s magazine, in turn, is widened so that it can hold more cartridges, and it shows convergence at its top portion. This convergence allows cartridges which are inside the magazine in a staggered side-by-side configuration to feed into the narrowed top portion of the magazine and then into the chamber. Thus, not only was convergence in the prior art, but it was there as part of the solution to the need for a handgun with an increased magazine capacity — precisely the same need that is addressed by the Para-Ordnance conversion kit.

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It is true that the plastic tabs inside the Llama Omni grip covers are not part of the frame and that the frame itself, without the grip covers attached, shows no convergence of the kind claimed in the ’618 patent. We return, though, to the person of ordinary skill in the art in his workshop. We can presume that he would have carefully examined all the components of the Llama Omni. He no doubt would have examined the gun’s magazine, frame, and grip covers as separate pieces. In so doing, he would have seen that the problem of expanding ammunition capacity was solved by widening the magazine so that it could hold more cartridges in a staggered side-by-side configuration. Essentially, at this point, the person of ordinary skill in the art was half way home. All he had to do now was to decide how to merge the widened grip necessarily resulting from the widened magazine with the handgun’s top portion. Continuing his examination of the components of the Llama Omni, he no doubt would have attached the grip covers to the frame. Then, holding the Llama Omni with its grip covers attached but with no magazine inside, and looking up into the grip from the bottom, he would have seen, just as we can see from examining Para-Ordnance’s Trial Ex. 6a-l (the Llama Omni), convergence inside a unitary frame, once the grips are attached, as they must be for the handgun to be of any practical use. Indeed, the naked eye could not distinguish this convergence— created by the attachment of the grip covers — from the convergence created by the single piece frame of the ’618 patent, except to recognize, of course, that the converging areas in the frame of the ’618 patent are broader. Quite simply, the person of ordinary skill in the art would have found himself looking into a converging frame, just as if he were looking into the frame of the Para-Ordnance kit. When he did this, he would have seen the converging frame as the solution to the merging problem.

The district court based its conclusion of obviousness on “both the prior art and the teachings of the prior art ... [,] and also ... general knowledge of one skilled in the art.” As just discussed, the court had before it the prior art and what it taught. As far as the general knowledge of one skilled in the art is concerned, the court had before it the testimony of David Findlay, SGS’s expert witness. With the prior art before him, Findlay testified that the use of a one-piece frame to provide convergence would have been obvious to one equipped with the knowledge generally available to one skilled in the art. Relying upon Findlay’s testimony, the district court determined that a person with the general experience and knowledge of one of ordinary skill in the art of gunsmithing'gun design would have chosen the solution claimed in the ’618 patent as a straightforward solution.

Based upon the foregoing, with particular emphasis on what the Llama Omni reference teaches, we are unable to say that the district court’s determination of obviousness is either incorrect as a matter of law or based upon findings of fact that are clearly erroneous. Moreover, the district court’s failure to set forth an explicit explanation as to how a person of ordinary skill in the pertinent art would have combined the prior art described by the court in order to arrive at the claimed invention does not require reversal. See Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-87 (Fed.Cir.1985) (upholding district court’s finding of obviousness even though the district court did not explain how prior art teachings could be combined to produce patented invention).

The dissent makes two points. The first is that there was no “motivation or teaching for a person of ordinary skill in the art to use a frame made in a single piece with converging side face portions.” As we have demonstrated, the motivation leaps at a person of ordinary skill in the art from thorough inspection of the assembled Llama Omni, inside the frame of which he observes converging side faces which snugly accommodate the prior art magazine. From the decision of the district court, we can, and do, accept the implicit fact-finding that the assembled Llama Omni suggests, if not actually teaches, the marriage of convergent side face portions with and into a single frame piece. While we assume that the dissent must view the assembled Llama Omni differently, we cannot say that the evidence before the court proves its conclusion to be clearly erroneous. We do not believe this is the case, however. As just discussed, there plainly was such motivation and teaching in the prior art.

The dissent’s second point is that “the prior art references teach away from making the combination in the claimed invention.” In that regard, the dissent takes the position that the Browning Hi-Power “teaches away from using convergence at all” because it supports the magazine “with a rounded frame that does not converge.”

“A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.Cir.1994). That the Browning Hi-Power does not have a converging frame does not require a finding that it “teaches away.” While it does not teach convergence, there is nothing about the Browning Hi-Power to warn a person of ordinary skill against using convergence. See In re Fine, 837 F.2d at 1074, 5 USPQ2d at 1599 (citing W.L. Gore & Assocs., 721 F.2d at 1550, 220 USPQ at 311). In other words, there is nothing about the Browning Hi-Power that teaches that convergence should not, or cannot, be used to guide the magazine. Moreover, the teachings of the Browning must be weighed alongside the teachings of the Llama Omni, which, as explained above, teaches the propriety of employing convergence to guide the frame. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed.Cir.1991).

C.

Para-Ordnance also argues that the district court erred in analyzing secondary considerations of nonobviousness. As noted above, such considerations include commercial success, long-felt but unsolved needs, failures of others, and copying. See Graham, 383 U.S. at 17-18, 148 USPQ at 467; Avia Group Int’l, Inc., 853 F.2d at 1564, 7 USPQ2d at 1554. The district court considered the evidence presented in relation to the secondary considerations and concluded that there was no commercial success, no long-felt but unsolved need, and no copying that favored a finding of nonobviousness. Determining whether these considerations exist in a given case is a factual inquiry. Specialty Composites v. Cabot Corp., 845 F.2d 981, 989-90, 6 USPQ2d 1601, 1607 (Fed.Cir.1988). This court gives great deference to the district court’s decisions regarding credibility of witnesses. Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1580, 27 USPQ2d 1836, 1842 (Fed.Cir.1993) (citing Anderson v. City of Bessemer City, 470 U.S. 564, 575-76, 105 S.Ct. 1504, 1512-13, 84 L.Ed.2d 518 (1985)). Given this deferential standard and the strong showing of obviousness discussed above, we cannot say that the district court’s conclusions regarding secondary considerations are clearly erroneous. See Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 719, 21 USPQ2d 1053, 1058 (Fed.Cir.1991) (the weight of secondary considerations may be of insufficient weight to override a determination of obviousness based on primary considerations); Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed.Cir.1988) (secondary considerations “must be considered, [but] they do not control the obviousness conclusion” (citations omitted)), cert. denied, 493 U.S. 814, 110 S.Ct. 62, 107 L.Ed.2d 30 (1989).

D.

Finally, in asserting that the district court used hindsight, Para-Ordnance challenges the court’s reliance on one of SGS’s trial exhibits (Exhibit 77).³ Para-Ordnance argues that Exhibit 77 improperly suggested to the court that the claimed invention’s converging intermediate face was the most obvious way to form the mechanical transition between the invention’s widened grip portion and its narrower top portion.

We agree with Para-Ordnance that Exhibit 77 improperly suggested that the claimed invention’s converging intermediate face was the most obvious way to form the mechanical transition between the invention’s widened grip portion and its narrower top portion, and that the exhibit therefore improperly suggested the finding of obviousness which SGS sought to obtain at trial. Because Exhibit 77 was improperly suggestive, and therefore, in the circumstances of this ease, may have constituted a type of hindsight analysis, we have given no weight to it or to the testimony relating to it. Having carefully reviewed the record, however, we hold that the district court’s obviousness analysis was proper in every other respect, and that the remainder of the evidence— discussed above — supports the court’s finding that the claims of the ’618 patent are obvious from the prior art.

CONCLUSION

Based upon the foregoing, we hold that the district court’s finding of invalidity is neither incorrect as a matter of law nor based upon findings of fact that are clearly erroneous.

COSTS

Each party shall bear its own costs.

AFFIRMED

1 . Para-Ordnance concedes on appeal that all claims of the '618 patent stand or fall with claim 1.

2 . See Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 874-76, 20 USPQ2d 1045, 1049-50 (Fed.Cir.1991).

3 . Exhibit 77 is a drawing depicting a rear-view cross section of a handgun frame. The drawing shows all of the elements of the '618 patent except the convergence of the side faces. The area where the side faces converge is replaced by a blank box.