In a January 29, 2014 ruling, Judge Colleen McMahon granted plaintiff Medien Patent Veraltung AG’s motion for summary judgment of nonobviousness of the patent-in-suit, and denied defendant Deluxe Entertainment Services Group, Inc.’s cross motion for summary judgment of invalidity. The Court had previously entered summary judgment of infringement, so the only remaining issue was Deluxe’s invalidity contention. The parties stipulated that obviousness was the only arguable ground for invalidity.In considering the cross-motions, Judge McMahon first noted that summary judgment may be granted on the issue of nonobviousness, and that such “a motion does not require a court to find that a challenged patent claim is valid, but rather only that the claim in not invalid in view of the particular prior art references cited by the defendant.” The Court further wrote that obviousness “under 35 U.S.C. § 103 is an issue of law based on underlying issues of fact.” A determination of obviousness requires a “‘showing that a person of ordinary skill in the art at the time of the invention would have selected and combined [the] prior art elements in the normal course of research and development to yield the claimed invention.’”
Deluxe initially relied on six combinations to try to establish obviousness, with each combination consisting of the same primary prior art reference and a secondary reference. Although Deluxe essentially abandoned five of the combinations in the course of the summary judgment briefing, Judge McMahon nevertheless briefly considered and rejected them. The Court noted that none of the secondary references in these five combinations expressly disclosed the claim limitation for which it was being cited; instead, Deluxe’s expert asserted that certain testing using that limitation was “necessarily implicit” in arriving at the inventions in these prior art disclosures. Judge McMahon found that this “necessarily implicit” testing “is unconfirmed by a scintilla of evidence demonstrating that it was actually undertaken.” The Court concluded that “even if the hypothesized testing occurred, it could not be considered ‘prior art’ because information about such testing was not made publicly available.”
The applicability of the remaining prior art combination relied on the disputed construction of a term that had not been at issue in claim construction. Rejecting Deluxe’s contention that it was too late for the Court to engage in such construction, Judge McMahon ruled that “[o]nly the Court can resolve what is obviously a dispute about the meaning of the claim language, . . . and the fact that the dispute is raised late in the day does not relieve me of that burden.” The Court then emphatically and categorically rejected Deluxe’s proposed construction, in part because that construction was clearly at odds with positions that Deluxe had taken earlier in the case. Having rejected Deluxe’s construction, the Court likewise rejected the obviousness argument, noting that Deluxe’s own expert conceded that the prior art reference did not disclose the limitation as construed by the Court. Having previously found infringement, and now having rejected Deluxe’s invalidity defense, Judge McMahon thus set a date for a damages trial.
