Securitypoint Holdings, Inc. v. United States

In the United States Court of Federal Claims
No. 11-268C
(Filed: October 28, 2016)
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SECURITYPOINT HOLDINGS, INC.,
35 U.S.C. § 103; Patent validity;
Obviousness; Graham factors;
Plaintiff, Secondary considerations;
Objective indicia of non-
v. obviousness; hindsight bias.
THE UNITED STATES,
Defendant.
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Bradley C. Graveline and Manish K. Mehta, Chicago, IL, with whom
was Laura M. Burson, Los Angeles, CA, for plaintiff.
Lindsay K. Eastman, United States Department of Justice, Civil
Division, Commercial Litigation Branch, Washington, DC, with whom were
Benjamin C. Mizer, Principal Deputy Assistant Attorney General, and John
Fargo, Director, for defendant.
OPINION
BRUGGINK, Judge.
This is a patent infringement action brought pursuant to 28 U.S.C. §
1498 (2012). Plaintiff, SecurityPoint Holdings, Inc. (“SecurityPoint”), alleges
that the Transportation Security Administration (“TSA”) has infringed claims
1-4, 6-9, and 12-15. of U.S. Patent No. 6,888,460 (“460 patent”) by employing
similar or identical means and method for recycling trays and carts at airport
security screening checkpoints. Defendant has stipulated to infringement but
alleges that the patent is invalid because it was obvious at the time of
invention. Trial on the validity of the patent was held on October 19 through
October 28, 2015. Because defendant has not met its burden in proving that
a person of ordinary skill in the art would have found it obvious to use the
method taught by independent Claim 1, we affirm the patent’s validity.
BACKGROUND
The statutory framework of the United States’ patent system contains
instructions regarding what may be patented, and, if patentable, conditions for
patentability. One such condition is that the subject matter of the patent not be
obvious. 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.”
35 U.S.C. § 103 (2006).1 Defendant asserts that a person of ordinary skill in
the art of industrial engineering would have considered the 460 patent obvious
at the time of invention.
I. Patent and Procedural History
The 460 patent teaches a system of recycling trays through security
screening checkpoints by use of movable carts and also teaches the display of
advertising and identification tags on the trays. The patent’s priority date is
July 3, 2002, which is when the inventor, Mr. Joseph Ambrefe, first filed a
provisional patent application at the Patent and Trademark Office (“PTO”).
Mr. Ambrefe also filed a Petition to Make Special in February 2004, asking for
expedited consideration of his application because the patent’s use in security
screening was related to countering terrorism. That petition was granted by the
PTO on May 7, 2004.
During patent prosecution, the PTO examiner initially rejected the
application as obvious based on three references, one of which was relevant
at trial. That initial rejection was overcome, however, by the addition of
language to the first claim, which will be laid out below. The 460 patent was
issued on May 3, 2005.
The 460 patent is comprised of one independent claim and 14
1
Because the patent application was filed before the effective date of the
America Invents Act, the earlier version of section 103 applies to the patent.
See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 293
(2011).
2
dependant claims.2 Claim 1 discloses a method of
positioning a first tray cart containing trays at the proximate end
of a scanning device through which objects may be passed,
wherein said scanning device comprises a proximate end and a
distal end,
removing a tray from said first tray cart,
passing said tray through said scanning device from said
proximate end through to said distal end,
providing a second tray cart at said distal end of said scanning
device,
receiving said tray passed through said scanning device in said
second tray cart, and
moving said second tray cart to said proximate end of said
scanning device so that said trays in said second cart be passed
through said scanning device at said proximate end.
JX 1 at 17 (the 460 patent).3 Claim 2 teaches that the scanning device is
“selected from a group consisting of a manual inspection station, an x-ray
machine, a conveyor belt, and a particulate matter sensor.” Id. Claims 3 and
4 add that the trays are “nestable” and have “exposed sides capable of
displaying advertising.” Id. Claim 6 instructs that the “tray carts are adapted
to be rollable.” Id. Claim 7 adds that the method of Claim 1 also includes “the
step of repositioning said second tray cart from said distal end to said
proximate end.” Id. Claims 8 and 9 inform that a plurality of the trays are
“adapted to receive” various items such as a laptop, camera, purse, coat,
2
Patents are comprised of two types of claims: independent and dependent.
Independent claims stand on their own as described in a single claim;
dependent claims refer to and add further limitations to an independent claim
or claims. See 35 U.S.C. § 112 (2012).
3
“JX” refers to admitted exhibits offered jointly by both parties. “PX” refers
to admitted exhibits offered by plaintiff; “DX” refers to admitted exhibits
offered by defendant.”
3
wallet, cell phone, and other similar items. Id. Claim 12 continues by adding
a third cart to be used in the method described in Claim 1. Claim 13 inserts a
step in which the third cart “containing a plurality of trays” is substituted to
replace the first cart. Id. Claim 14 makes the bottoms of the trays “adapted to
display advertising” on the interior surface of the trays, and Claim 15 teaches
that the trays “are adapted to display a tag number.” Id.It was the final step in the method of claim one – “moving said tray cart
to said proximate end of said scanning device”–that was added at the PTO to
overcome the examiner’s initial obviousness concern. That step differentiated
the claimed method from the combination of three prior art references that
taught a system to move and/or store trays in a security scanning setting.
The parties asked the court to construe some of the terms used in the
claims. After briefing and holding a claim construction hearing, we construed
the following terms in the following ways:
The Patent Term The Court’s Construction
tray a base with upwardly extending
walls
trays no construction
tray cart a movable cart capable of holding
one or more trays
proximate end proximal or nearest to; referring to
the end of the scanning device
where an object enters the device
distal end farthest from; referring to the end
of the scanning device where an
object exits the device
nestable capable of fitting compactly within
one another
adapted suited
receiving said tray passed through no construction
said scanning device in said second
tray cart
4
SecurityPoint Holdings, Inc. v. United States, 111 Fed. Cl. 1, 11 (2013). As
is evident above, we declined to construe two of the terms about which the
parties disagreed, holding that their ordinary meaning was sufficient. Id. at 6,
10. The court also declined to adopt a specific field of relevant art at the time
of claim construction because the words of the patent were understandable
without doing so. Id. at 6.
After claim construction, the parties reached agreement on a stipulation
that, presuming the court’s claim construction to be correct and thereafter
undisturbed, TSA had infringed the 460 patent at various airports around the
country. We accepted that stipulation by order on July 3, 2013. Thus only the
issues of patent validity and damages remain.
Defendant moved for summary judgment on the issue of invalidity
shortly after the infringement stipulation, arguing that the 460 patent was both
anticipated by one prior patent and was made obvious by the combination of
several prior art references, both patents and other publications. After
extensive briefing, we denied that motion because the parties and their experts
disagreed as to the field of relevant art and thus what prior art the court should
consider, making summary judgment inappropriate. SecurityPoint Holdings,
Inc. v. United States, No. 11-268C, 2014 WL 810929, at *2 (Fed. Cl. Feb. 24,
2014). We then set the matter for trial.
Before trial, however, defendant moved to stay the case pending an ex
parte patent reexamination at the PTO. Defendant had requested
reexamination in September 2013, which was subsequently granted. We
denied the request for a stay because the PTO’s determination would not be
binding on the court, and we set a pretrial schedule shortly thereafter. In
preparation for trial, defendant dropped its anticipation defense, and the parties
proceeded to prepare for trial on the defense of obviousness.
In August 2014, the PTO issued a notice that it intended to confirm the
patentability of all claims of the 460 patent, which it subsequently did.4 This
4
The PTO had preliminarily concluded that the claims of the 460 patent were
obvious in view of the combination of two pieces of prior art discussed at trial,
which will be discussed more fully later in this opinion. The first, “Kierpaul,”
is an American patent describing an airport checked baggage transport system,
and the second, “Heptner,” is a European patent application for a tray return
5
prompted defendant to move for reconsideration of our construction of three
terms of the patent: “tray cart” and “proximate end of a scanning device
through which objects may be passed,” and “distal end of said scanning
device.” We granted defendant’s request for reconsideration in part, reopening
the question of the meaning of the term “tray cart” and ordered further briefing
on the matter. The chief question presented by defendant, which prompted
reconsideration, was whether plaintiff had made a disavowal during the PTO
reexamination effectively limiting the meaning of the term “tray cart” in the
patent to be “substantially non-metallic.” After briefing and argument, we
resolved the question in the negative and confirmed our earlier construction of
the term. SecurityPoint Holdings, Inc. v. United States, No. 11-268C (Fed. Cl.
Feb. 4, 2015) (order confirming earlier construction of the term “tray cart”).
After extensive pretrial motion practice concerning the sufficiency of
defendant’s earlier disclosures of its invalidity contentions and proffered prior
art, we limited defendant’s experts at trial to testify consistent with their
deposition testimony and expert reports regarding combinations of prior art or
elements of prior art. SecurityPoint Holdings, Inc. v. United States, No. 11-
268C (Fed. Cl. July 7, 2015) (order partially granting plaintiff’s May 5, 2015
motion in limine). In these depositions, defendant’s experts disclaimed any
opinion regarding combinations of prior art and motivations to do so. We
instructed defendant that its experts would be so limited in their testimony, and
they were so limited at trial.5
system at security checkpoints. Ultimately, after voluminous submissions
from SecurityPoint, including from the experts it used at trial, the PTO upheld
the validity of the 460 patent. The PTO found that the two references
combined did not teach each of the steps of Claim 1, and specifically, did not
disclose a first and second tray cart. See JX 3 at 13198-200. The parties
disagree about the importance of this finding by the PTO, both as to the
framing of the question to be answered at trial and the burden that defendant
must meet to prove obviousness.
5
In a later order, we similarly limited defendant’s experts’ testimony regarding
modifications to prior art. See SecurityPoint Holdings, Inc. v. United States,
No. 11-268C (Fed. Cl. Sep. 1, 2015) (pretrial order granting in part plaintiff’s
July 6, 2015 motion in limine).
6
II. Evidence And Testimony At Trial
At trial, defendant offered the court a combination of patents and other
contemporaneous publications that it argues render the method of the 460
patent obvious. It presented these references through the testimony of its
experts, most of whom are trained as industrial engineers and work or worked
in the airport design or airport security industry.
A. Patents
Defendant offered eight patents which it argues render the 460 patent
obvious. Three of them were considered by the PTO in its examinations of the
460 patent. They are as follows.
1. U.S. Patent No. 6,507,278 (“Brunetti”), a system for control of
passenger ingress and egress for airport concourses and other access controlled
areas. DX 10. The Brunetti patent teaches a system in which passengers place
objects into trays at security screening checkpoints for x-ray or other
screening; those trays are then run through a scanning device on conveyor
belts. The trays, in the Brunetti system, are “dispensed via chutes adjacent [to]
each conveyor” which are “continually supplied from the backside” of the
checkpoint by security personnel who are placing the emptied trays back into
the chute. DX 10 at 7.
2. U.S. Patent No. 5,934,444 (“Kierpaul”), a tote transport system.
DX 17. The Kierpaul patent teaches a tote return system for use in airport
luggage handling systems.6 The means of which consists of placing luggage
in totes at the check-in counter, moving the loaded totes to the airplane loading
areas, and then returning the empty, nested totes to the check-in counter on a
conveyor. DX 17 at 1, 5. Kierpaul describes the prior art for returning totes
to the proximate end of the system to have been the use of carts to manually
transport the empty totes back to the beginning of the system. DX 17 at 6; JX
3 at 1031 (Patent Reexam.).
6
The totes themselves are not described by the Kierpaul patent other than the
introductory paragraph noting that the term “tote” could be used
interchangeably with “pallets, containers, bins, or other items suitable for”
transporting luggage. DX 17 at 6.
7
3. European Patent Application No. 1151919 (“Heptner”), a return
apparatus for containers. PX 235. Heptner teaches a return system for
recycling containers at a security screening checkpoint by sliding the emptied
trays back over the screening device on a frame constructed above the
screening machine–essentially a slide system for returning the trays using
gravity as the prime mover. Id. at 19. The Heptner system was intended to be
used for a variety of different-sized, nestable trays.
Defendant also offered five other patents not considered by the PTO but
which were issued at least one year prior to the priority date of the 460 patent
and would have been known to a person skilled in the art of industrial
engineering. They are as follows.
4. U.S. Patent No. 3,420,392 (“Flint”), a tray filling and handling
system. The Flint patent teaches a system for “filling and handling . . . a
plurality of interchangeable, modular trays for loading and unloading the trays
at a tray washer, a tray filler, and a tray emptier.” DX 13 at 1:1-15. Flint
involved the use of carts to transport large trays between multiple stations and
then eventually back to the beginning of the system. The trays are filled with
frozen food a the first station, emptied at the second station, washed at the
third, and lastly, returned to the first station to be filled again.
5. U.S. Patent No. 6,253,948 (“Ficker”) describes a nestable container
with an expandable closure panel covering an access opening in container
wall. The Ficker patent teaches a nestable container with at least one opening
in a side or end wall for use particularly in retail displays. Also taught by
Flicker is the use of a disposable panel which could be displayed on the side
of the container suitable for displaying advertising or other information. DX
18 at 2.
6. U.S. Patent No. 6,102,433 (“Stevens”) teaches a compact, manually
propelled, wheeled cart for use by passengers to move luggage through
airports. DX 28.
7. U.S. Patent No. 5,160,154 (“Seydel”) describes a hand truck for
transporting multiple bins. DX 32. The Seydel patent covers a “hand truck[]
adapted for holding and transporting more than one . . . package, bundle, open
carton, and the like.” DX 32 at 1:8-10. The importance of the Seydel patent
in this case is not the particulars of the design but rather that it is an example
of carts being used to transport containers in order to save human effort.
8
8. U.S. Patent No. 3,908,831 (“Brendgord”) teaches the use of a
modular system for efficiently handling and storing materials. “The invention
relates to a modular system for use in the handling and transfer of materials
from storage/retrieval areas, to work areas, to use areas, to post-use disposal
or treatment areas, to supply areas and back to storage/retrieval areas for re-
use.” DX 38 at 1. Carts are used to transport the modular containers to and
from the work and storage areas.
B. Other Prior Art
Defendant also offered four non-patent references, or excerpts from
them, as relevant prior art. They are as follows.
1. FAA Recommended Security Guidelines for Airport Planning,
Design, and Construction, June 2001. (“2001 FAA Guide”). DX 4. The 2001
FAA Guide was a distributed by the FAA to airports and other industry groups.
It instructed airports on best practices in security system design. Plaintiff cited
the FAA Guide during the patent reexamination process as indicative of the
state of the relevant field of art at the time of the invention.
2. TSA Passenger Security Field Guide, June 2002 (“2002 TSA
Guide”). DX 5. This was another public document available prior to the 460
patent priority date. It is descriptive of the field of relevant art at the time of
the invention, particularly in its instruction regarding the use of trays at
screening checkpoints.
3. Handbook of Industrial Engineering, 1992 (“IE Handbook”). DX
6. The IE Handbook is a printed publication used widely in the field of
industrial engineering as reference material. It describes general principles
and practices known to the field, especially regarding materials handling. This
edition’s 1992 date makes it relevant as of the time of the invention.
4. Apron and Terminal Building Planning Manual, July 1975
(“Terminal Manual”). DX 8. This was a printed publication available to the
airport industry and used as a reference in the design and planning of airports.
Defendant’s expert, Ms. Bender, testified to using it in her practice of
designing and optimizing baggage systems.
5. Airport Development Reference Manual, April 1995 (“Airport
Reference Manual”). DX 9. Similar to the Terminal Manual, this was a
9
printed publication used as a reference in the design of airports. Ms. Bender
also testified to her use of this document in her practice.
Other exhibits were also introduced and testified about during trial,
relating to the secondary objective considerations that we must also consider
in reaching an obviousness determination. Those will be separately discussed
when relevant below.
C. Testimony at Trial: Defendant’s Witnesses
Defendant presented the testimony of five witnesses regarding the field
of the invention and what was known in that field prior to the patent date. We
list the witnesses and give a brief summary of their testimony here and
examine the particulars of their testimony in more detail later.
1. Gloria Bender
Ms. Bender is an industrial engineer who works in the field of
transportation and airport security screening operations. She testified
regarding the field of art, her experience in it, the prior art within that field,
and the sorts of things that someone skilled in the art of industrial engineering
would be familiar with and would have employed to solve the sorts of
problems aimed at by the 460 patent. She also recalled her own involvement
in attempts to streamline security screening checkpoint operations.
2. Robert Cammaroto
Mr. Cammaroto is an expert in airport security screening operations
before and after the priority date. He worked his entire career for the FAA and
the TSA. He testified regarding the operation of security checkpoints before
and after September 11, 2001, what was known in that field prior to the
invention (prior art), the level of ordinary skill in that field, and specifically
whether the use of carts to move trays through a checkpoint was something
known in the field prior to the invention.
3. Robert Gentry
Mr. Gentry is the Assistant Security Director for TSA at the Dallas-Fort
Worth International airport. He is a licensed professional engineer in Texas
and has a degree in mechanical engineering. He is an expert in industrial
10
engineering as of 2002 and an expert in security screening operations as of
today. He testified regarding the field of art of the invention, the level of
ordinary skill in that art, and the application of that skill to the problems aimed
at by the 460 patent. He examined several patents and other proffered prior
art, explaining to the court what was disclosed by them. He also testified on
cross-examination regarding his efforts while at TSA to increase screening
efficiency at the airports in Omaha and Dallas/Fort Worth.
4. Jim Spriggs
Mr. Spriggs is the TSA Federal Security Director for the state of
Mississippi. He has a degree in industrial engineering and is an expert in both
industrial engineering and security screening checkpoint operations both
before and after 9/11/2001. He testified regarding the claims of the 460 patent,
his opinion of what the field of art of the patent is, the level of ordinary skill
in it, the scope and content of other prior art in the field relevant to the
problems known in the field, and testified regarding particular pieces of prior
art and what is taught by them. He also testified regarding his own experience
designing security checkpoints at Detroit Metropolitan Airport.
5. Scot Thaxton
Mr. Thaxton is a TSA employee and was the rule 30(b)(6) designee of
defendant. His testimony was presented by agreed-upon deposition excerpts.
He testified regarding airport design and planning guides used by FAA and
TSA, efforts to standardize and optimize trays and carts at screening
checkpoints, and the success of the 460 patent in doing so.
D. Testimony at Trial: Plaintiff’s Witnesses
Plaintiff presented seven witnesses who testified regarding the
invention itself, efforts to sell the invention, the early results from using the
invention, the field of the invention, and why it was not obvious to one skilled
in the art of security screening operations to use the method claimed by the 460
patent.
1. Joseph Ambrefe
Mr. Ambrefe, the inventor of the 460 patent, testified regarding his “ah
ha” moment and how the idea for the 460 patent came about. He testified
11
extensively regarding the business that he built to sell the method to airports
and the TSA and his early endeavors in doing so. He testified regarding the
success of the method in early tests and the eventual commercial success after
it was adopted at more airports.
2. Douglas Linehan
Mr. Linehan is the Vice President of Operations at SecurityPoint. He
offered additional testimony regarding the success of the method once
employed at airports and facts relevant to various objective indicia of non-
obviousness. He testified about the process of patenting the invention and then
the early efforts to market the method to airports and TSA once patented.
3. Marcus Arroyo
Mr. Arroyo is an expert in security checkpoint operations. He worked
for the FAA from 1986 until 2002 and then for TSA from 2002 through 2006.
While at TSA, he served as the Federal Security Director at Newark Airport.
He testified regarding security screening checkpoint operations, before and
after the patent date. He also opined regarding the non-obviousness of each
of the claims of the 460 patent. He also gave testimony regarding several of
the secondary considerations of non-obviousness: long-felt need, failure of
others, copying, professional approval, and unexpected results.
4. Dr. Layek Abdel-Malek
Dr. Abdel-Malek is an expert in industrial engineering. He testified
regarding the field of pertinent art, the level of ordinary skill within that field,
the prior art within that field, the differences between the claimed method and
that prior art, and the secondary considerations of non-obviousness. His
testimony mainly concerned why the claims of the 460 patent would not have
been obvious to an industrial engineer at the time of the invention.
5. Monica Serrano
Ms. Serrano is SecurityPoint’s Director of Network Development.
Prior to her employment at plaintiff, she worked in the airline industry and was
involved in security screening projects for United Airlines and other industry
groups. At United, she oversaw the airline’s compliance with FAA security
regulations, overseeing the checkpoints prior to 9/11/2001, when airlines were
12
responsible for checkpoint operations. After September 11, 2001, she was the
security manager for United Airlines at the Denver airport. She testified
regarding the field of security checkpoint operations prior to the invention and
the problems then encountered. She testified regarding her involvement in
redesigning security checkpoints in an effort to decrease waiting times and
increase efficiency at the Denver airport in October 2001.
6. Timothy Hollifield
Mr. Hollified is a manufacturing and mechanical engineer who was
involved in security checkpoint operations at the National Safe Skies Alliance
(“NSSA”) in Knoxville, TN from 2001 to 2011. He testified regarding the
testing that NSSA did for TSA of security screening checkpoint operations
after 9/11/2001, which included testing of SecurityPoint’s patented method.
He further testified regarding the rollout of live testing of the 460 method at
the McGhee Tyson Airport in Knoxville. He testified regarding the success
of these tests and the efficiency gained from the 460 method.
7. Scot Thaxton
Plaintiff also designated portions of Mr. Thaxton’s deposition
testimony.
8. Michael Elliot
Mr. Elliot is an Assistant Federal Security Director for screening at
Baltimore-Washington International Airport (“BWI”). He has been in that
position since December 2006. Prior to that he worked in security for a private
contractor at the Harrisburg International Airport from 1992-2002. Mr. Elliot
testified by video deposition regarding efforts to speed up screening at BWI
in 2008. One method in particular which was attempted for approximately 90
days included the use of a mechanized tray return.
We will discuss the particulars of the testimony in more detail below as
relevant to our examination of each of the questions involved in the
obviousness determination.
DISCUSSION
An invention is entitled to be patented so long as the invention is novel,
13
meaning that it was not already known publically at the time of the claimed
invention as evidenced by a prior patent, sale to the public, disclosure in a
publication, or was otherwise generally known. 35 U.S.C. § 102(a) (2012).
Additionally,“if the differences between the claimed invention and the prior
art are such that the claimed invention as a whole would have been obvious
before the effective filing date . . . to a person having ordinary skill in the art
to which the claimed invention pertains,” the invention is not patentable, or,
if a patent was issued, it is invalid. Id. § 103. The question of obviousness is
thus a comparison between what is claimed to have been invented in the patent
and what was already known to a person of ordinary skill in the field of art
pertaining to the invention.
The inquiry begins with the statutory presumption that a patent is valid.
See 35 U.S.C. § 282 (2012) (“A patent shall be presumed valid.”). The party
challenging a patent bears the burden of proving invalidity by clear and
convincing evidence.7 Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1327 (Fed. Cir. 2008). Patent validity is a question of law. Graham v. John
Deere Co., 383 U.S. 1, 17 (1966). But the question can only be answered after
making certain factual determinations. Id. In the context of an obviousness
inquiry, the trier of fact must determine “the scope and content of the prior
art,” the “differences between the prior art and the claims” of the patent at
issue, and “the level of ordinary skill in the pertinent art.” Id. Further relevant
to the question of obviousness are “secondary considerations” such as
“commercial success, long felt but unsolved needs, failure of others, etc.,”
which can be “utilized to give light to the circumstances surrounding the origin
of the subject matter sought to be patented.” Id. at 17-18.
7
Plaintiff also argued that when, as here, a patent has been upheld by the PTO
in an ex parte review, the burden of proof is increased for the challenger of
validity because it must also prove the PTO wrong. See Am. Hoist & Derrick
Co. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984) (“When an
attacker simply goes over the same ground travelled by the PTO, part of the
burden is to show that the PTO was wrong in its decision to grant the patent.”).
Defendant disagrees, arguing that the law imposes a single standard for
obviousness regardless of whether the patent has been reexamined by the PTO.
We need not resolve this disagreement, however, because of our holding that
defendant did not meet its burden of clear and convincing evidence of
obviousness.
14
I. The Problem Solved By The Invention
In determining the scope and content of the prior art, courts often
consider the problem solved by the invention because it is instructive as to
what a person reasonably skilled in the art of the invention would have known
or would have consulted to answer the question presented by the problem.
See, e.g., Circuit Check, Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir.
2015) (“Prior art is analogous . . . if it is reasonably pertinent to the particular
problem the inventor is trying to solve.”). The Supreme Court has stated one
formulation of the broader obviousness inquiry thus as “one of the ways in
which a patent’s subject matter can be proved obvious is by noting that there
existed at the time of the invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Here, the words of the patent’s background section and testimony of its
inventor, Mr. Ambrefe, are quite clear as to the general problem at which the
invention is aimed: “There exists a need for a system for a security area for
moving the trays from a starting position to an ending position which allows
the trays to be efficiently utilized, gathered and stored to be later used again.”
JX 1 at 12. There was a need to effectively position and efficiently move the
trays used by passengers because of the ever-increasing number of items that
had to be divested from passengers and then screened at security checkpoints,
especially after September 11, 2001. The number of trays necessary to gather
and move the items through the screening device created clutter and general
inefficiency at the checkpoints. Id. Mr. Ambrefe explained that efficiency is
gained by providing a single location for the trays to be placed when not in use
and a means for recycling those trays from the end of the screening device
back to the beginning. Tr. 1111. In simple terms, the question confronted by
the 460 patent’s method is what to do with the trays at security screening
checkpoints when they are not yet in use by passengers, both before passengers
divest their personal items into the trays and then after they retrieve their items
on the other side of the scanner. The 460 patent answers that question by
teaching a method of using standardized trays and employing multiple carts to
recycle the trays from the end of the scanning device back to the beginning of
it. As Mr. Ambrefe phrased it, the trays “live” in the carts when not in use by
passengers.
15
II. The Scope And Content Of The Prior Art
In order to properly compare the prior art with the claims of the patent,
the court, as the trier of fact, must limit the references that it considers to those
which are in the same field of endeavor as that of the invention and those
reasonably analogous to it. Wyers v. Master Lock Co., 616 F.3d 1231, 137-38
(Fed. Cir. 2010). Similarity in structure and function between the claimed
invention and the cited prior art is indicative of the field in which the invention
belongs. See In re Bigio, 3118 F.3d 1320, 1325-26 (Fed. Cir. 2004); State
Contracting v. Condotte Am., 346 F.3d 1057, 1069 (Fed. Cir. 2003). Highly
relevant are the words of the patent’s description, but the “inventor’s
subjective intent or knowledge at the time of the invention” is not controlling.
In re Singhal, 602 Fed. Appx. 826, 830 (Fed. Cir. 2015).
A. The Field of Endeavor is Security Screening Checkpoint Operations
The parties disagree as to the field in which the invention belongs.
Defendant offers the field of industrial engineering. It argues that the efficient
movement of objects through a closed loop system is a classic problem
embraced by the field of industrial engineering. It avers that trays and carts are
classical implements used by industrial engineers to solve similar problems in
the field. Defendant further points to the incidence of these implements in the
prior art references that it offers the court from the field of industrial
engineering, arguing that this shows a similarity in structure and function
between the 460 patent and these references.
Plaintiff responds that the 460 patent’s method for revolving trays and
carts around a scanning device is properly understood only within the field of
security screening checkpoint operations. Plaintiff points to the words of the
patent’s description, in which the setting is clearly security screening
checkpoints, and the patent’s petition to make special based on its application
in security in screening. Plaintiff also argues that defendant’s witnesses either
failed to rebut or affirmatively agreed with SecurityPoint’s position that the
field of the invention is security screening.
Plaintiff points out that defendants own experts, Ms. Bender, Mr.
Gentry, Mr. Cammaroto, and Mr. Spriggs, all have experience working in the
airline industry or airline security industry and have worked on projects
regarding security checkpoints. Plaintiff further offers the testimony of its
own two experts, Mr. Arroyo and Dr. Abdel-Malek, who both testified that
16
security checkpoint/screening operations is a specialized field of knowledge
with its own particular complexity; and Dr. Abdel-Malek, himself an industrial
engineer, claimed that a “common industrial engineer will not be able to
comprehend the entirety of the complexity within that endeavor.” Tr. 1847.
We begin by noting that the law regarding the obviousness of patents
imposes an unfortunate level of artificiality when, as here, the patent at issue
concerns common implements and simple terminology. As we noted during
claim construction, a finding of a specific field of art was unnecessary to
understand and construe the patent’s terms. 111 Fed. Cl. at 6. In fact, at the
time, defendant did not offer a specific field because of the simplicity of the
patent’s terms. Id. During summary judgment briefing on the question of
validity, defendant agreed for the purposes of those motions that the field was
security screening operations, but its experts made no effort to neatly limit
themselves, which, in part, created a fact issue amenable only to resolution at
trial. After hearing two weeks of testimony at trial, we are sympathetic to their
earlier lack of precision.
The unfortunate result of the artificiality of having to choose either of
two proposed fields of art, is that, by choosing between them, otherwise
relevant and seemingly knowledgeable testimony regarding the patent’s claims
and other prior art is unavailable. An expert in any field other than that chosen
as the relevant one is presumed by the law to be ignorant of anything useful
regarding the patent or comparing it to other pieces of art, even if those other
pieces of art are in that particular expert’s field of expertise. See Sundance,
Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008). An
expert in the field chosen by the court, however, need not limit his or her
opinion to pieces of art only in that field if that expert’s side can show that the
outside pieces of art are reasonably pertinent to the problem aimed at by the
patent.8
Forced to choose a field of art rather than craft a hybrid, we choose
plaintiff’s field. The invention is used at security screening checkpoints and
8
A similar rule for considering the testimony of experts in fields reasonably
related to the questions answered by the patent at issue might allow, at least in
some circumstances, the sort of flexibility in the obviousness determination
that Supreme Court has stated should be employed in this context. See KSR,
550 U.S. at 415-19.
17
the problems aimed at by the patent are a result of that setting. Although the
patent is simple and we remain convinced that no specialized training or
experience is needed to understand its words, it must reside within some field
of speciality. It cannot claim every possible pattern of moving trays by carts
around a stationary scanning device within all the fields of human endeavor.
The problem aimed at, the inefficient movement of passengers and their
property through the checkpoint, suggests the field of art. To say that the
problem is more simply one of the efficient movement of material in a closed
loop system ignores the particularities of the security screening setting, which
create the very problems embraced by the patent.
A good example of the problem of removing the 460 patent from its
intended setting is seen in one of defendant’s proffered pieces of prior art, the
Flint patent.9 Flint teaches a system for processing and packaging frozen foods
by means of trays circulated through various stations of a closed loop system.
Although it shares the commonality of being a closed loop system that recycles
trays by use of carts, its setting in an industrial facility makes it alien to the
space constraints imposed by the setting of the 460 patent. Further, when
considering the variable of a fluctuating stream of humans (not operators)
through the security screening system, the Flint patent is further divorced from
the reality of the 460 patent’s world. Industrial engineering is a field too broad
for the problems embraced by the patent in suit.
The fact that defendant’s experts, Ms. Bender, Mr. Gentry, Mr.
Cammaroto, and Mr. Spriggs, are employed or have been employed in
capacities involving security screening checkpoint operations is telling. Their
testimony was often imprecise regarding whether the opinion offered was
coming from their vantage point as engineers or whether their expertise in
security screening had also informed their answer. Dr. Abdel-Malek testified
that he found it difficult to distinguish which expertise was being applied when
he reviewed defendant’s experts’ reports as well. See Tr. 1871. Mr. Spriggs
admitted during cross-examination that, although he thought that the relevant
field of art was industrial engineering, experience with the operation of
security screening checkpoints would be very helpful in understanding the 460
9
We note that none of defendant’s experts actually testified that the Flint
patent resides in the field of industrial engineering, and it certainly does not
reside in the field of security screening checkpoint operations. We assume
defendant proffered the Flint patent as from the field of industrial engineering.
18
patent. Tr. 228-29. He was careful, however, not to admit that such
experience is necessary to understand the patent. Mr. Gentry likewise thought
that experience with security screening operation would be helpful for a person
of ordinary skill in the art. Tr. 677.
Mr. Arroyo’s testimony that the operation of security checkpoints is
complex and offers its own set of unique challenges is credible, particularly in
light of the consistent testimony of many of the witnesses on both sides that the
problem of checkpoint efficiency was difficult and largely unsolved prior to
the implementation of the 460 patent’s method.107 Mr. Arroyo concluded, when
considering the difficulties faced in the field of security screening and the
problems embraced by the patent, that the relevant field of the 460 patent is
security screening checkpoint operations. We agree.118
B. The Person of Ordinary Skill in the Art is an Expert in Security
Screening Checkpoint Operations
Having established that the field of endeavor is security screening
checkpoint operations, it follows that the person of ordinary skill in the art is
a person with a comprehensive understanding of the operation of security
screening checkpoints. We note that defendant’s experts all have this
experience themselves, and we have thus considered their testimony as
relevant as it applies to the particular questions answered below.
10
We note that our holding in this regard is not dependent on Dr. Abdel-
Malek’s testimony that he could not understand the mysteries of the 460
patent’s method as an industrial engineer. Although he offered that bare
opinion at trial, he did not explain how or why the methods taught were too
opaque for him and those like him in his field. It matters not, however, as we
find the problem sought to be solved by the patent is constrained to the field
of security screening checkpoint operations.
11
That is not to say, however, that we have thus ignored all of the testimony
from defendant’s experts from the vantage point of their expertise as industrial
engineers. Our ultimate conclusion remains the same whether the field of art
is industrial engineering or security screening checkpoint operations. We have
thus discussed, when relevant, citations by defendant’s experts to pieces of art
outside of the field chosen here.
19
C. The Scope of the Prior Art
The scope of the analogous prior art is a product of the field of the
invention and the question sought to be solved by the invention. See Circuit
Check, Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). Even if not in
the same field of invention as the patent, if a reference is reasonably pertinent
to the problem sought to be solved, it is analogous. Id. We have established
that the field of the invention is security screening checkpoint operations.
Thus the scope of the analogous prior art includes references reasonably
pertinent to that. Brunetti, Heptner, the 2001 FAA Guide, the 2002 TSA
Guide, the Terminal Manual, and the Airport Reference Manual are all within
this field or reasonable pertinent to it.
We also hold that the Kierpaul patent is relevant, as did the PTO, and
have considered it below as prior art. The Federal Circuit, applying KSR, has
made clear that analogous art should be construed broadly because “‘familiar
items may have obvious uses beyond their primary purposes, and a person of
ordinary skill often will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Wyers, 616 F.3d at 1238 (quoting KSR, 550 U.S. at
420). The Kierpaul patent involves the movement of checked airline baggage,
a field reasonably analogous to security screening and also set in the larger
airport context.
The references regarding specific cart designs and modular storage
systems, however, we find to be too far afield. They are not reasonably
pertinent to the problems aimed at by the patent and are thus not analogous art.
No expert testified why these references would have been obvious to use in
combination with any of the references above or why they might have been
consulted at all by a person of ordinary skill in the operation of security
checkpoints.
We also find that the Flint patent is not analogous art. Beyond the fact
that it has nothing to do with security screening, no witness explained why it
would be consulted by a skilled artisan outside of the inference drawn from the
fact that it also moves trays with carts. This is true even assuming the field of
art were industrial engineering. We simply did not hear why it would have
been obvious to look to Flint for the solution of using of multiple carts in the
setting embraced by the 460 patent nor how Flint would suggest that carts be
used in the specific steps taught by the 460 patent.
20
III. Comparing The Prior Art With The Claimed Invention
The court must now compare the prior art with the claims of the 460
patent. The 460 patent teaches a method in independent Claim 1 whereby a
tray full of carts is positioned at the proximate end of a scanning device (the
end that feeds the scanner), a tray is taken from the first tray cart and passed
through the scanning device to the distal end, the tray is placed in a second tray
cart positioned at the distal end of the scanning device, and the second tray cart
is moved to the proximate end of the scanning device, thereby bringing empty
trays back to the proximate end.129 JX 1 at 17. The dependent claims that
follow the first claim further refine and limit it, but we begin with the simpler
method as described in Claim 1.
A. The Trays and Carts Method of Claim 1
The parties collectively refer to independent Claim 1 as the “trays and
carts method.” As a matter of law, if it stands as valid, the rest of the
dependent claims follow. Hartness Int’l, Inc. v. Simplimatic Eng’g Co., 819
F.2d 1100, 1108 (Fed. Cir. 1987) (stating that it is a fortiori that a dependent
claim is not obvious when the independent claim that it incorporates is not
obvious). Because we find Claim 1 not to be obvious, we need not separately
consider the validity of the dependent claims.
Defendant presents the Brunetti patent, filed in 2000, as indicative of
the state of the art, specifically in airport checkpoints, prior to the invention.
Brunetti describes checkpoints as including conveyors to move items through
a scanning device and trays into which passengers could put their personal
items while being screened. DX 10 at 13 (conveyors), 16 (trays), 17 (trays).
As to how trays might be resupplied at the start of the process, Brunetti
describes a chute “adjacent [to] each conveyor” though which trays “are
continually supplied from the backside . . . by screening personnel.” Id. at 16.
Although no witness testified that this method was adopted in whole at any
specific airport, defendant presents it as a general picture of the state of the
12
As a preliminary matter, the parties presented the court with a disagreement
in the post-trial briefing regarding whether the steps of Claim 1 must be
performed in order. We find it unnecessary to resolve that dispute because
defendant’s obviousness challenge fails for a more basic reason.
21
field at the time of the invention.1310
Plaintiff’s witnesses, Mr. Arroyo and Ms. Serrano, described the state
of the art at the time regarding the recycling of trays to be accomplished by
security personnel carrying trays from the end point back to the beginning
point. Likewise, the 2002 TSA Guide states that a “bin runner” was employed
to bring empty bins from the exit side of the checkpoint back to the entrance
side. DX 5 at 42. The Kierpaul patent similarly describes the state of a
baggage handling systems at airports as requiring the use of a cart to manually
return luggage totes to the check-in counter. DX 17 at 6.
Defendant points the court to the Flint patent as supplying the missing
link between what was already known in the art–using trays and carts
generally–with the use of multiple carts to recycle the trays from the end back
to the beginning of the system. The Flint invention includes the use of six
carts to move trays from station to station in a tray filling and handling system,
eventually ending with the recycling of the first tray back to the beginning of
the system for reuse. DX 13 at 1 (Figure 1).
In defendant’s view, the combination of Brunetti and Flint provide all
of the elements of the 460 patent’s method. Defendant asks the court to
consider the ordinary creativity of an industrial engineer to combine the
teachings of Flint and Brunetti to come up with the method of the 460 patent.
Defendant points to the testimony of Ms. Bender, who informed the court that
carts are commonly employed in the field of industrial engineering as a means
of solving materials handling problems. She went as far as to state that they
are “ubiquitous” in the field. Tr. 889. This is enough, according to the
government, because carts are a common implement in the field and a person
of ordinary skill using ordinary creativity “knows how to combine familiar
prior art elements to achieve the same functions.” Tyco Health Grp. v. Ethicon
Endo-Surgery, 774 F.3d 968, 978 (Fed. Cir. 2014). Carts not being novel in
industrial engineering and having been disclosed in the Flint and Kierpaul
patents, defendant argues that it has met the burden of clear and convincing
evidence that Claim 1 of the 460 patent is obvious.
13
This is another example of the imprecision in choosing a field of art.
Defendant’s proffered field is that of industrial engineering. Despite that, or
perhaps as a tacit admission, the reference offered as a general description of
the field is much more narrowly tailored towards security screening.
22
Plaintiff counters that defendant has proved no such case because, even
assuming the field of industrial engineering as relevant, the government’s
witnesses did not testify that they would have used ordinary creativity to
combine these familiar elements in the same way as the method described in
Claim 1. SecurityPoint asks the court to ignore Ms. Bender’s statement about
the common use of carts in the field because it is too broad to be of relevance
to the problem encountered by the 460 patent. It is not that carts are used
generally in the field of industrial engineering that is relevant, but instead the
application of that element to the problem at hand that is important, argues
plaintiff. Plaintiff points out that Ms. Bender was not asked nor did she
otherwise opine that she would have used a first and second tray cart in the
manner described by the 460 patent.
Plaintiff further offers as a counterpoint the testimony of Mr. Arroyo.
He opined that it would not have been obvious to use carts in a security
screening checkpoint prior to the invention. He testified that this was
primarily for two reasons: 1) carts were thought to be a safety hazard at
checkpoints, and 2) carts would have impeded the flow of passengers through
a checkpoint.1411 Tr. 1593-94. He also opined that several prior art references
taught methods that would suggest against using tray carts as employed by the
460 patent. Tr. 1612, 1635 (referencing Heptner and the 2002 TSA Guide as
teaching away because they both employed tray return methods other than the
use of carts). Regarding Brunetti, Mr. Arroyo stated that it did not render the
460 patent obvious because the return of carts at a checkpoint was only
addressed in a passing reference to the use of a chute adjacent to the conveyor
belt to return trays. For Flint, he testified that it had little to no relevance to the
question at hand because it did not involve the movement of people
whatsoever, a crucial element in the problem aimed at by SecurityPoint’s
patent. With regard to Kierpaul, he found it not to be analogous, i.e., not
related to security screening, and further that it did not disclose any steps of the
460 method. He noted that the Kierpaul invention was largely a process of
14
Mr. Arroyo was also asked a series of direct questions regarding the
obviousness of each of the claims of the 460 patent. His answers in the
negative were largely without explanation or reason for his opinion. We did
not find this particular series of answers helpful. That, however, is not
particularly problematic for plaintiff because it does not bear the burden of
proving validity. As explained further herein, Mr. Arroyo provided other
testimony that was helpful to the court.
23
automation of tray return, aimed at reducing or eliminating manual labor and
oversight of tray return. Although unstated by Mr. Arroyo, the inference is
that this is unlike the 460 method’s use of a cart, which, although faster and
more efficient than without, still requires manual operation.
We begin with the obvious: carts were not altogether unknown in the
airport setting, and as previously stated, we do find Kierpaul to be analogous
art. Further, presuming arguendo that the government’s field is correct, carts
were well known in the field of industrial engineering for handling and
transporting material. Granting either point does not end the inquiry, however.
The party asserting obviousness must prove by clear and convincing evidence
that employing the known element in the claimed manner would have been
obvious to a person of ordinary skill at the time of invention.
Although Ms. Bender’s testimony regarding carts was more specific
than plaintiff’s characterization of it, we find it insufficient in this regard. She
testified that the use of carts would have been the simplest and most cost
effective way to transport trays at a security screening checkpoint, Tr. 884, and
that it thus would have been obvious to use a cart to return trays to the start of
screening checkpoint, Tr. 888. That opinion stops short of the critical step of
using them in the manner described by Claim 1: positioning a first cart at the
proximate end, positioning a second cart at the distal end, and then recycling
the cart containing the trays that have passed through the screening device by
repositioning the second cart at the proximate end of the checkpoint.1512 We
also have the testimony of Mr. Arroyo, which stands in opposition to Ms.
Bender’s regarding the design incentives and reasons known at the time to use
carts at security checkpoints.
The trays and carts method of the 460 patent, while simple and
employing common implements, was not disclosed by any single reference
offered at trial nor did any witness opine that a combination of those
references would have been obvious. Defendant’s argument that ordinary
creativity of the skilled artisan suggested the combination of Brunetti (trays)
and Flint (carts) is a bridge too far. Defendant’s disavowal in pretrial practice
of having its experts combine prior art was a serious handicap at trial. Not
having elicited such an opinion directly, defendant offers another approach to
15
We note that it was that critical third step that the patent examiner found to
have made the invention novel during its original patent prosecution.
24
reaching the obviousness conclusion.
Defendant asks the court to bridge the gap between the various prior art
references and the claimed invention by taking notice of
the knowledge of those of ordinary skill in the art, the nature of
the problem to be solved, market forces, design incentives, the
interrelated teachings of multiple patents, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent, or the background knowledge,
creativity, and common season of the person of ordinary skill.
Def.’s Post-Trial Br. 24 (quoting Cimline, Inc. v. Crafco, Inc., 413 F. App’x
240, 245 (Fed. Cir. 2011)). In view of all of these relevant considerations,
defendant argues that direct opinion testimony from a skilled artisan regarding
the combination of references to reach a conclusion of obviousness is
unnecessary, particularly when both the invention and prior art references are
“easily understandable without the need for expert explanatory testimony.”
Union Carbide Corp. v. Am. Can. Co., 724 F.2d 1567,1573 (Fed. Cir. 1984).
Defendant lays out the following points for us to consider in hopes that
we will bridge that gap. It points to the known problem of the increase in the
number and size of trays employed at checkpoints after September 11, 2001,
as testified to by Mr. Cammaroto and recognized in the 2002 TSA Guide.
Defendant argues that the evidence further shows a recognized need for an
efficient and flexible tray return system prior to the invention, as evidenced by
the TSA Guide and the Heptner and Brunetti patents. Defendant urges that
there was a reasonable expectation of success in applying the steps of the 460
patent as written because there was sufficient space available at checkpoints
to position carts. Mssrs. Spriggs and Cammaroto testified that concessions
were carried through checkpoints on carts to retailers inside the secured area
prior to the invention. Further, wheelchairs were routinely allowed through
checkpoints, suggesting sufficient space for several carts at a checkpoint. The
use of carts was widely known at airports for the transport of luggage from
curb to check-in, and the 2001 FAA Guide recommended positioning such
carts on both sides of security checkpoints. Carts were known in the field of
industrial engineering as a flexible and efficient solution for materials handling
and transport problems, says defendant, citing the IE Handbook, and the
Brendgord patent (modular storage system), Seydel (hand cart), and Stevens
(cart) patents. The use of carts as claimed by the patent would not have
25
required any undue experimentation to invent by a person of ordinary skill
because carts were used at airports routinely and were an elegant and known
solution to problems at hand, states defendant in its briefing. The net effect of
all of which is that the court has ample evidence upon which to rest a
conclusion that a combination of the known elements in the manner claimed
by the invention was obvious. We cannot go so far.1613
In the absence of direct testimony from one skilled in the art as to the
obviousness of each step of Claim 1, finding it obvious would require an
impermissible exercise of hindsight. Courts have long cautioned against
interjecting into the obviousness determination the fact finder’s own opinion
on the novelty of the invention. See, e.g., Diamond Rubber Co. of NY v.
Consol. Rubber Tire Co., 220 U.S. 428, 435 (1911) (“Knowledge after the
event is always easy, and problems once solved present no difficulties, indeed,
may be represented as never having had any . . . .”); Plantronics, 724 F.3d at
1354.
There are two primary safeguards against that hindsight. The first is
testimony of skilled artisans. Outside the Box Innovations, LLC v. Travel
Caddy, Inc., 695 F.3d 1285, 1297 (Fed. Cir. 2012) (“The foil to judicial
hindsight is the testimony of persons experienced in the field.”). We have the
testimony of Ms. Bender that the use of a cart to transport trays through a
checkpoint was the simplest method available at the time and was thus obvious
to her. We have already explained that this testimony, even if wholly credited,
is insufficient. It fails to consider the steps claimed in the method of the 460
patent’s first claim.
Further, Ms. Bender’s testimony in this regard smacks of hindsight.
16
It bears repeating that this string of evidence cited by defendant is in large
part either irrelevant or incomplete. The references dealing with cart and
modular tray design are not in the relevant field of art, and no person with
ordinary skill in the art testified why they should otherwise have been
consulted, not did any industrial engineer. Further, the fact that carts are
known in one capacity or another at airports, though somewhat relevant, is not
the end of the inquiry. Asking the court to supply the logic link between the
fact that carts were on occasion allowed through checkpoints for other reasons
and the idea that they should thus be employed in the fashion taught by the 460
patent would be an exercise impermissibly biased by hindsight.
26
She was herself employed to consider the precise questions embraced by the
patent at issue. She and her firm conducted field studies and modeling at
various airport checkpoints and attempted to find solutions for the growing
congestion post-9/11/2001, both before and after the invention date (July
2002). She did not offer a cart in any capacity as a solution to the problem of
growing security lines, let alone the dual cart method as laid out in Claim 1 of
the 460 patent. When asked “why” on cross-examination, she stated that the
lack of bins (trays) at the airports she studied did not suggest a solution that
involved speeding up their return from one end of a checkpoint to the other
and that she has otherwise struggled with that very question. Tr. 1029, 1037-
38. She also agreed that, as of July 2002, space constraints at checkpoints
were a problem confronting her and others in the field. Tr. 1038. We must
conclude that her testimony regarding the use of carts at security checkpoints
as of July 2002 is insufficient to prove the steps of Claim 1 obvious. Some of
her testimony in this regard even suggests the opposite, that plaintiff’s
position, especially as evinced by the testimony of Mr. Arroyo is correct: the
space constraints at checkpoints suggests away from introducing carts to the
setting, and the fact that trays were already present at checkpoints did not make
it obvious to use them along with carts in the manner prescribed by the 460
patent.
B. Secondary Considerations
The second safeguard against hindsight bias in the obviousness
determination is “evidence of the objective indicia of nonobviousness.”
Plantronics, 724 F.3d at 1354-55. These factual considerations assist the court
in judging the novelty of an invention by providing a tool to view the subject
of the patent as of the time it was invented. They are often the most probative
evidence and may not be ignored. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1983).
The burden to produce evidence of the objective indicia is on plaintiff.
As part of that burden, plaintiff must make a prima facie demonstration of a
nexus between the claimed method and the secondary evidence of success.
MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1336 (Fed. Cir.
2014). That is to say that the success claimed as evidence of the novelty of the
invention must be due to the thing claimed by the patent or be sufficiently
related to it. See Demaco Corp. v. F. Von Langsdorff Licensing, Ltd., 851 F.2d
1387, 1392 (Fed. Cir. 1988). Once that prima facie showing has been made,
the burden shifts to defendant to rebut that evidence. Crocs, Inc. v. ITC, 598
27
F.3d 1294, 1311 (Fed. Cir. 2010).
Here, plaintiff argues that the evidence establishes seven separate
objective indicia of non-obviousness. We consider them each in turn below.
1. Unexpected Results
When “the claimed invention exhibits some superior property or
advantage that a person of ordinary skill in the relevant art would have found
surprising or unexpected,” that suggests to the court that it was not obvious.
In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Plaintiff points to a major
increase in efficiency in passenger throughput and safety resulting from the use
of its method as just such an unexpected result.
Plaintiff cites a TSA Information Bulletin, dated December 22, 2006,
in which the agency cited an 80 percent increase in screening efficiency and
a 90 percent reduction in injury after implementing SecurityPoint’s trays and
carts method during a three month pilot program at Los Angeles International
Airport (“LAX”). See PX 84. Those figures were again recited in a TSA
publication several days later. See PX 202 at 3 (TSA Public Affairs Guidance,
December 28, 2006).
Defendant disputes that these two TSA documents show anything of the
sort. First, defendant argues semantically that they state, not an 80 percent
increase in efficiency, but only that the number of bin return trips was
decreased by 80 percent. Defendant also challenges the three-month duration
of the LAX pilot program as insufficient to establish the figures as definitive.
The testimony of Ms. Bender on the point also supports defendant’s position.
She posited that it would be routinely expected for injuries to decrease when
substituting a cart for manual carrying and similarly that using a cart to carry
material would necessarily result in less trips taken.
More basically, defendant argues that plaintiff made no attempt to
compare the results achieved by the invention to those prior to its use nor a
more specific comparison between the closest prior art to the invention’s
method. See In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that
a claim of unexpected results failed because, inter alia, the patentee did not
compare the claimed results with those achieved without the invention nor did
it compare the patented device with the most similar prior art). Finally,
defendant challenges SecurityPoint’s evidence on the point as failing to show
28
a nexus between the claimed results and the invention, pointing to plaintiff’s
touting the use of ergonomic carts, which is not a feature claimed by the
patent. See Pl.’s Post-Trial Br. 33.
We disagree with defendant. The TSA documents show both decreased
injury and decreased time spent returning trays to the beginning of the
checkpoint. The latter at least clearly implies an increase in efficiency, which
is directly linked to the patent’s claimed method. Mr. Arroyo also testified that
a person skilled in the art at the time would not have expected carts to increase
efficiency because they would have expected them to clutter the area. We
weight that testimony more heavily than Ms. Bender’s because Mr. Arroyo’s
statements were in the context of the security screening checkpoint while Ms.
Bender’s comments were more general and in the context of the knowledge of
an industrial engineer. Plaintiff has established, using government-generated
data, the existence of an unexpected result as an objective indicator of its
invention’s novelty, and a statement touting an increase in any metric implies
a comparison to the state of matters prior to the triggering event.
2. Long-Felt Need
A long-felt, unresolved need for a solution within a field of art is an
objective indicator that an invention providing such a solution was not obvious
to those skilled in that art at the time. See WBIP, LLC v. Kohler Co., 829 F.3d.
1317, 1332 (Fed. Cir. 2016). The absence of an invention by itself is not
evidence of need, however. Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004).
Plaintiff presents the court with the testimony of Ms. Serrano, Mr.
Arroyo, and the inventor, Mr. Ambrefe, in support of its position that a long
and unresolved need for improved airport security screening existed in 2002.
Ms. Serrano, who worked for United Airlines from 1986-2006 and was
involved in security screening operations from 1994 forward, testified that
security checkpoint crowding was a problem as early as the mid-90s. She
observed a lack of uniformity across various airports as to the process for
divestment of passengers’ personal items. After the attacks of 9/11/2001, she
became the security manager for United at Denver International Airport,
specifically tasked with improving wait times at checkpoints, which were often
reaching “three to five hours” in length. Tr. 1455. She was a representative
on a checkpoint redesign team, formed in October 2001, which included
representatives from airlines, terminal operators and designers, the FAA, and
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other airport consultants. She testified that the team never considered using
a trays and carts method as a solution. Tr. 1457.
Mr. Arroyo also testified that, prior to September 2001, security
screening of airline passengers was beset by a number of problems causing a
drop in efficiency and complaints from passengers about the long waits. These
included a lack of tray standardization and misplacement of passenger
property. After September 2001, the problem became more acute. He testified
that he observed “extreme clutter and disorganization.” Tr. 1566. He stated
that adding space to address the clutter was not an option at many airports
because space was at a premium. Tr. 1567 (using Newark Airport as an
example). He was asked whether he observed the use of trays and carts in the
method described by the 460 patent at checkpoints as of the patent’s priority
date. His answer was that he had not observed such use.
Mr. Ambrefe’s testimony was similar to Mr. Arroyo’s regarding the
chaotic organization of passengers and their property at checkpoints in 2001.
He noted a difference in layout and design from airport to airport but
remembered that all were crowded and lines were lengthy. These problems
were only magnified after September 2001, said Mr. Ambrefe. These
recollections, for plaintiff, establish a need in the field of security checkpoint
operations for a greater efficiency and standardization of the screening
process.
Defendant answers that SecurityPoint’s evidence, at best, showed a 10-
month need for greater efficiency in screening operations: September 11,
2001-July 2, 2002 (patent’s priority date). In defendant’s view, this is
insufficient to meet the requirements for this factor. Defendant cited
Ecolochem Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1377 (Fed. Cir. 2000),
where the Federal Circuit upheld the district court’s rejection of a claim of
long-felt need when the evidence showed a need lasting only a year.
Defendant also criticizes Mr. Arroyo’s testimony as very general and
insufficient to show how long any such problem existed or whether a skilled
artisan recognized the need for the fix.
We agree with plaintiff. First, the law imposes no per se floor on the
length of time needed to establish a long-felt need in the art. The
circumstances of each individual obviousness determination are unique and are
to be viewed as such by the finder of fact. Neither party disputes that the
events of September 1, 2001, greatly magnified the problem of efficiency in
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passenger screening at airports because of regulatory changes that greatly
increased the need to divest items and due to the introduction of more sensitive
magnometers. Here, plaintiff presented the uncontroverted testimony of two
individuals, experienced in the field of security screening operations, that the
need was great even prior to September 11, 2001. Under these circumstances,
we find that plaintiff has established a long-felt need for greater efficiency and
standardization in the field of security checkpoint screening operations.
3. Failure of Others
The failure of others in the field of endeavor to meet the problem is
evidence of an invention’s novelty. KSR, 550 U.S. at 427. Plaintiff presents
the court with the testimony of both its and the government’s witnesses
regarding failed attempts at improvements at specific airports and more
general failures system-wide. It is clear from multiple witnesses and
documents that the prevailing method prior to the widespread implementation
of the trays and carts method was the manual carrying of trays from the end of
the checkpoint back to the beginning.
Mr. Spriggs was involved in the design of security checkpoints for the
FAA at the Detroit Metro Airport. He testified that a system very similar to
the Brunetti patent was installed there in February 2002. Tr. 144. He stated
that it was quickly outdated because it lacked sufficient space for passenger
divestment and because the steel equipment tripped the new, more sensitive,
post-9/11 magnetometers. He also testified that rather than use a chute to
resupply the trays, as outlined in Brunetti, the Detroit airport screeners
manually carried the trays from one end to the other.
Mr. Elliot, who is an assistant Federal Security Director at Baltimore-
Washington International Airport (“BWI”), testified regarding an attempt to
use an automated bin return as part of a new system at BWI in 2008. He
recalled that the test was a failure. The tested system, which included a
mechanized tray return placed on the bottom of the scanning device, was too
slow in his opinion and was quickly abandoned. Although he was hesitant to
place the blame squarely on the tray return, on the whole, he thought the
system too slow. He also stated that the normal scanning devices at BWI did
not have room for tray returns on the bottom and that a tray return placed on
the top had its own set of problems, though he did not specify them. See Tr.
1490-91.
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Mr. Arroyo informed the court regarding a similar effort to employ a
slide rail system to return trays at the Newark airport in 2003 or 2004. He
testified that it failed because it was too large and impeded the movement of
passengers. Tr. 1707.
Mr. Gentry testified that, as part of his work for TSA in 2006, he
considered different methods for bin return at checkpoints. These included
rolling slides, other mechanized forms of tray return, and the use of carts.
Prior to his position at DFW airport, he was stationed at the Omaha, Nebraska
airport and helped to implement a variety of efforts to increase screening
efficiency, none of which were carts. Despite these efforts at various
locations, he recollected that, as of November 2006, there was no standardized
system across TSA nationwide to return trays from the end of the checkpoint
to the beginning. Ms. Serrano likewise testified that a standardized bin return
system was never put in place during her tenure at the Denver International
Airport. She and the checkpoint redesign team implemented other solutions,
such as lengthening divestment tables, increasing the number of passenger
lanes per checkpoint, and public education regarding screening procedures.
She testified that these measures “didn’t have the results we had hoped for.”
Tr. 1459.
Ms. Bender and her company also were employed to come up with
efficiency solutions at several airports. She never suggested the use of carts
to transports trays, albeit she did not consider tray return to be a problem at the
airport checkpoints that she was retained to work on.
Defendant dismisses all of this evidence as largely irrelevant, because
it argues that plaintiff has not shown, or even attempted to show, how the
failures relate to the method of the 460 patent. Thus no nexus has been
established between the failure and the invention, says the government.
Further, defendant points out that Mr. Gentry testified as to having
experimented with carts at DFW in 2006, and Ms. Bender testified that it
would have been within the ambit of an industrial engineer to try using a cart
to carry the trays.
It is not clear how the evidence that defendant points to regarding the
general knowledge of an industrial engineer or Mr. Gentry’s failed attempts at
employing carts at DFW support a finding that there was no relevant failure of
others to solve this problem. It is not disputed that wait times at security
checkpoints was a nearly universal problem at airports, especially after
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September 11, 2001. The trial record is replete with examples of failed
attempts to relieve congestion and speed up the lines, one of which was even
an attempt at using carts. That an industrial engineer would have known to try
carts and that one security screening expert did unsuccessfully try suggests
only that SecurityPoint’s method of using them was novel.
Further, requiring plaintiff to establish a nexus between its method and
the failure of others to solve the problem makes no sense and begs an effort in
the impossible. Defendant cited no law in support of that notion and we are
aware of none. Further, we have the testimony of Mr. Gentry that TSA tried
a close approximation of the Brunetti patent’s system, but that it failed. We
find that plaintiff established the widespread failure of others to solve the
problem of checkpoint efficiency prior to the implementation of
SecurityPoint’s patented method.
4. Commercial Success
Plaintiff argues that it established the commercial success of its
invention by showing its wide-spread adoption in the industry and the fact that
there are no competitors in the field. SecurityPoint admits that its sharing of
the revenue generated by advertising on trays with the airport operators is a big
part of it success: $7.8 million in revenue for 2012 and above $15 million
thereafter. The success of its advertising revenue model is consistent with a
finding of commercial success, according to plaintiff, because the suitability
of the trays for advertising is claimed by the 460 patent.
Defendant responds that the successes of plaintiff are unrelated to the
patent’s methods and therefore insufficient to establish commercial success as
an indicia of non-obviousness. Defendant points to the testimony from Mr.
Ambrefe and others at SecurityPoint regarding their extensive efforts to
convince TSA to try the method and then their effort to market it to airports
throughout the country. Citing McNeil-PPC Inc. v. L. Perrigo Co., 337 F.3d
1362, 1370 (Fed. Cir. 2003), they argue that large marketing campaigns tend
to show a lack of nexus between the invention and the patent holder’s success
in the marketplace.
We begin by noting that our holding is limited to the method as
described in Caim 1. Therefore, we do not reach whether the advertising
revenue is largely to account for plaintiff’s success and whether that is
attributable to the patent or not. The suitability for displaying advertising is
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not part of the patent’s first claim limitation. Further, that plaintiff underwent
serious and long efforts to get both the TSA and the airport operators to adopt
its method tends to cut against the finding of a nexus. Thus, under these
circumstances, we do not find that this particular indicia supports plaintiff’s
position as it relates to the novelty of Claim 1.
5. Copying
Copying by others in the field is a strong indicator that a patent is not
obvious. E.g., Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272,
1285 (Fed. Cir. 2000). The Federal Circuit has accepted circumstantial
evidence to establish copying. See Wyers v. Master Lock Co., 616 F.3d 1231,
1246 (Fed. Cir. 2010). Here, plaintiff presents the fact that TSA uses its
method in over 400 airports nationwide and the fact that defendant has
stipulated to infringement in this litigation. Mssrs. Ambrefe and Linehan
testified regarding SecurityPoint’s efforts to entice TSA with its trays and carts
method beginning in 2002. Mr. Hollifield testified that he was tasked with
testing plaintiff’s method in 2005 and did not remember any efforts to use a
similar method prior to that test at the National Safe Skies Alliance. It is not
in dispute that TSA has since copied the 460 patent’s method nationwide.
Defendant challenges the relevance of those facts by arguing that
plaintiff has not made a showing that the copied features relate to the technical
merits of the invention. Defendant also argues that a stipulation of
infringement is not, by itself, probative of copying. See Iron Grip Barbell Co.,
Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).
Plaintiff has established relevant and universal copying by the TSA
after the date of the patent. The record evidence establishes that defendant
tested plaintiff’s patented method at the airports in Knoxville and Los Angeles
in two separate pilot programs. They were both successful, and TSA has since
implemented the method nationwide. The fact that defendant itself tested the
patented method and then adopted it implies the direct link between the copied
features and the invention. We find that the secondary indicia of copying
supports a holding of non-obviousness.
6. Professional Approval
Praise and approval by others in the field is one of the oldest cited
objective considerations when determining the novelty of an invention. See
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Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 488-89 (1877) (citing
praise from a rival inventor as indicative of the invention’s novelty).
“Appreciation by contemporaries skilled in the field of the invention is a useful
indicator of whether the invention would have been obvious to such persons
at the time it was made.” Vulcan Eng’g Co. v. FATA Aluminium, Inc., 278
F.3d 1366, 1373 (Fed. Cir. 2002).
Plaintiff cites a letter from the Federal Security Director at LAX, dated
September 5, 2006, praising the “patented process” for reducing injuries and
streamlining the screening process. PX 126. Plaintiff also points to the
aforementioned TSA Informational Bulletin, PX 84, and the TSA Public
Affairs Guidance, PX 202, both dated in December 2006, which tout the
reduction in injuries and increased efficiency resulting from the trays and carts
pilot at LAX. Mr. Ambrefe testified that he and Mr. Linehan received awards
from the TSA security directors at LAX and the Orlando International Airport
for their contribution to improving screening efficiency at those airports. Tr.
1326-28. Lastly, plaintiff cites the 2009 TSA Checkpoint Design Guide as
evidence of professional approval because it contains a recommendation of the
use of bin carts positioned in the same manner as Claim 1 of the patent. PX
159 at 27.
Defendant disagrees that these pieces of evidence support such a
finding. As to the 2006 letter, defendant argues that it is not authored by
someone versed in the patent’s specifics and is mainly praising the cost savings
aspect of SecurityPoint’s business model as opposed to the details of the 460
patent’s method. As to the rest of the cited evidence, defendant argues that
plaintiff has generally failed to draw a connection between that praise and any
particular feature of the patent, rendering the evidence inconclusive.
We agree with plaintiff. Plainly, the TSA was happy with results of the
pilot study at LAX. Two publications and one internal document (the letter)
praise the patent’s method as increasing efficiency and decreasing injuries.
The fact that the letter from the deputy security director also praises the cost
savings does not render the other praise moot. Specifically stated is that the
patented method prevents injuries by eliminating the need to lift the trays and
streamlines the process while increasing throughput. PX 126 at 1. Also cited
is the feature of the tray carts providing a place for the storage of bins at the
proximate end of the scanner, which is touted in the letter as decreasing clutter
and increasing the room for divesting passenger property on the divesting
tables. Id. The position of the tray cart at the proximate end of the scanner is
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specifically claimed, which shows a direct nexus between a claimed feature
and the praise received. We find that plaintiff has established a prima
facie case of professional praise and that defendant has failed to rebut it.
7. Commercial Acquiescence
The licensing of an invention to competitors is also relevant evidence
of novelty, but the mere fact of licensing alone may not be enough to prove a
patent not obvious if it cannot also be shown that the licensees did so out of
respect for the patent rather than to avoid litigation expense. See Pentec, Inc.
v. Graphic Controls Corp., 776 F.2d 309, 316 (Fed. Cir. 1985). Here, the
plaintiff points to its settlement of a district court infringement action against
a private third party, which included a limited license granted to that company
for certain airports, as establishing commercial acquiescence.
Defendant contends in response that the procedural history of that case
(defendant there had an unresolved challenge to the validity of the patent prior
to the settlement) is conclusive evidence to the contrary. Further, defendant
points out that the licensee quickly went bankrupt after the settlement,
indicating to defendant that the settlement was motivated by cost concerns.
We find that, under these circumstances, plaintiff has not established
commercial acquiescence as an objective indicator of non-obviousness. With
only one license granted as part of a lawsuit settlement, we cannot conclude
with any certainty that the licensee did so out of reverence to the patent as
opposed to a cost-saving measure.
We find that the balance of the evidence regarding the objective indicia
of non-obviousness weighs strongly in favor of plaintiff. Plaintiff has shown
unexpected results from its patent’s method, a long-felt need in the industry for
the solution provided by the patent, widespread failure of others to relieve
congestion at airport checkpoints prior to using the trays and carts method,
universal copying of its method, and professional approval by defendant itself.
CONCLUSION
In sum, without some testimony from a person skilled in the art why he
or she would combine the elements described in the prior art and use them in
the manner taught by the patent, we cannot find it obvious. On its face, the
patent is simple and employs common implements. Patents are presumed
valid, however, and courts must guard against exercises in hindsight. The lack
36
of testimony regarding a reason to use trays and carts in the manner taught by
Claim 1 of the 460 patent in combination with the numerous objective
indicators of the invention’s novelty lead to the conclusion that defendant has
not proven by clear and convincing evidence that the patent in suit was
obvious at the patent’s priority date under 35 U.S.C. § 103. Thus, the case
proceeds. The parties are directed to file a joint status report regarding the
scheduling of further proceedings on or before November 18, 2016.
s/Eric G. Bruggink
ERIC G. BRUGGINK
Senior Judge
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