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March 12, 1990

DONALD J. QUIGG, Defendant

The opinion of the court was delivered by: BENNETT


This patent case is before the court on the summary judgment motion of the defendant Commissioner of Patents and Trademarks. The motion is denied because genuine issues of material fact exist concerning the objective indicia of nonobviousness. It appears from the parties' submissions that the plaintiff has failed to raise a genuine issue as to many of the other facts essential to deciding the case as a matter of law. Therefore, pursuant to Fed.R.Civ.P. 56(d), those facts shall be deemed established. They are identified in the Memorandum and are set forth in the order issued today.

 I. Background

 Joy Technologies, Inc. (Joy), is the assignee of U.S. Patent 4,042,864 (the '864 patent), which issued August 16, 1977, and named Melvin N. Norris as inventor. The patent includes 18 claims directed to an AC-DC traction drive control system for a mining machine, a mining machine embodying that system, and methods of operating such a machine.

 On August 23, 1985, a business competitor of Joy's, National Mine Service Company (NMS), requested reexamination of the '864 patent by the Patent and Trademark Office (PTO). The PTO determined that substantial new questions of patentability existed and that the patent should be reexamined. The patent examiner rejected claims 1 to 4, 11, 12, 16, and 18 under 35 U.S.C. § 102 (1982) (lack of novelty) and section 103 (obviousness). Joy appealed to the Board of Patent Appeals and Interferences (Board). On October 31, 1988, the Board rendered its decision, reversing the section 102 rejection but affirming the section 103 rejection.

 Joy filed this suit against the Commissioner of Patents and Trademarks (Commissioner) under 35 U.S.C. § 145 (1982), which creates a remedy by civil action for patentees and applicants dissatisfied with the decision of the Board. This court (Gasch, J., presiding) granted the Commissioner's partial summary judgment motion to dismiss Joy's claims relating to the PTO's exercise of discretion in initially granting the reexamination and the alleged unconstitutionality of reexamination proceedings, as well as to strike Joy's request for a jury trial. 12 USPQ2d 1112 (D.D.C. 1989). Thereafter, the Commissioner filed the present motion for summary judgment that the invention of the '864 patent would have been obvious under section 103 and that the decision of the Board was correct.

 II. The Standards for Summary Judgment

 Rule 56(c) of the Federal Rules of Civil Procedure sets forth the standard for granting summary judgment. "The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." As the Supreme Court has stated, "summary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed 'to secure the just, speedy and inexpensive determination of every action.'" Celotex Corp. v. Catrett, 477 U.S. 317, 327, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986) (quoting Fed.R.Civ.P. 1).

 Rule 56 further provides that "when a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party." Fed.R.Civ.P. 56(e). The Supreme Court stated in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986), "there is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (citations omitted). The nonmoving party must do more than merely raise some doubt as to the existence of a fact; the nonmoving party must present evidence sufficient to require submission of the issue to the trier of fact. Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1560, 7 USPQ2d 1548, 1550 (Fed.Cir. 1988).

 As the Federal Circuit has held, "with respect to whether there is a genuine issue, the court may not simply accept a party's statement that a fact is challenged. The party opposing the motion must point to an evidentiary conflict created on the record at least by a counter statement of a fact or facts set forth in detail in an affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient." Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835-36, 221 U.S.P.Q. 561, 564 (Fed.Cir. 1984). See also Russell v. Commissioner of Patents & Trademarks, 695 F. Supp. 572, 573, 8 USPQ2d 1452, 1453 (D.D.C. 1988).

 While the nonmovant must come forward with some evidence showing that there is a genuine issue of material fact, the established facts, as well as any inferences reasonably drawn from those facts, must be viewed in a light most favorable to the nonmovant. Barmag Barmer, 731 F.2d at 836, 221 U.S.P.Q. at 564.

 In this case, Joy has failed to show that there are genuine issues with respect to most of the facts of this case. The Commissioner's motion for summary judgment sets forth in great detail the material facts relevant to the obviousness question. The motion is well supported by the reexamination record. By contrast, Joy's opposition relies primarily on unsupported allegations of its attorneys and on conclusory denials and statements of its affiants. Thus, as to most of the facts of this case, Joy has failed to show there are triable issues. Nevertheless, it appears from the record and from the evidence Joy has submitted that there are genuine issues relating to the "secondary considerations" of nonobviousness. Therefore, summary judgment on the entire case is inappropriate.

 Joy argued in its motion papers that summary judgment would deny its right under 35 U.S.C. § 145 to supplement the reexamination record with additional evidence. Joy also argues that this case involves a highly technical subject where explanatory testimony is necessary. The Federal Circuit has made it clear that summary judgment is appropriate in patent cases, as in any other case. Barmag Barmer, 731 F.2d at 835, 221 U.S.P.Q. at 564. Moreover, Joy is not "deprived" of a trial where the Commissioner has submitted evidence supporting its position on the relevant issues, and Joy has failed to identify evidence sufficient to create a triable issue of material fact. See Avia Group, 853 F.2d at 1560-61, 7 USPQ2d at 1551. Joy has every right in this proceeding to supplement the reexamination record with additional evidence, whether at trial or in opposing a motion for summary judgment. Where it fails to provide evidence, including such supplemental evidence, so as to create a triable issue, summary judgment is appropriate.

 III. The Patent at Issue

 The '864 patent relates to an AC-DC traction drive control system for a coal mine shuttle car. Shuttle cars are used in coal mines to transfer the material being mined from the work area to an unloading area, where conveyor belts or cars transfer the material out of the mine. Because it is desirable to excavate only the coal seam, rather than the rock surrounding the coal seam, the shuttle car must often operate in a limited space. In addition, the coal mine is often an explosive environment, and legal restrictions limit the type of electrical circuitry that can be used on the shuttle car.

 As described in the Joy patent, prior art shuttle cars are of two types, namely, the AC type and the DC type. AC type shuttle cars are powered by alternating current (AC) supplied by a trailing cable. They utilize AC motors for driving the wheels of the car. DC type shuttle cars utilize direct current (DC) supplied by a trailing cable to power DC drive motors. Each of the types of prior art shuttle cars has a number of advantages and disadvantages.

 The shuttle car described in the Joy patent has a machine body and four steerable wheels. The wheels are separately driven by DC traction motors. Electrical power is supplied to the car by means of a trailing cable. The power supply is three phase alternating current (AC). The shuttle car includes conversion circuitry for converting the AC to DC in order to power the traction motors. The patent drawings and specification describe in detail the conversion circuitry; however, the circuitry is broadly claimed in the independent claims. Briefly, the incoming AC is applied to the primary windings of a transformer. The AC output from the secondary windings of the transformer is rectified to DC and applied to the traction motors.

 The shuttle car described in the patent includes a control means which permits the transformer to be selectively activated in different winding configurations to provide different levels of output to the traction motors. The shuttle car may include auxiliary motors, such as a pump motor for the hydraulic system and a conveyor motor for operating the conveyor on the shuttle. The auxiliary motors may be powered by a portion of the AC from the trailing cable.

 The three independent claims, as amended in the reexamination proceeding, are as follows:

1. A steerable mobile machine energized through a trailing cable for use in forming a passageway by mining and hauling coal from an underground seam, such as a mined material transporting shuttle car, comprising a machine body, a plurality of surface engaging means carried by said body and relatively movable with respect thereto and continuously engaging the ground, at least one DC traction motor carried by said body and cooperable with at least some of said surface engaging means to cause movement thereof, steering means carried by said body for selectively controlling said surface engaging means to move said machine body in a selected path, conversion means carried by said body for converting a three phase AC input to an electrical DC output, control means carried by said body for controllably applying said DC output to said DC traction motor, and a flexible trailing cable connected to said conversion means for selectively supplying said three phase AC input to said conversion means.
16. In a control drive system for a steerable wheeled vehicle energized through a trailing cable, for use in forming a passageway by mining and hauling coal from an underground seam, such as a mined material transporting shuttle car operative between a work area and a station point which is supplied with three phase AC via said cable connected between a source of three phase AC at said station point and said vehicle, said vehicle being driven by at least one DC traction motor, the combination of: conversion means carried by said vehicle for converting said AC from said cable to DC, said conversion means including transformer means having primary and secondary windings responsive to the AC from said cable for providing a three phase AC output; rectifier means responsive to the AC output of said transformer means for providing said DC; and control means for controllably applying said DC from said conversion means to said traction motor for controllably driving said vehicle; said control means operative to control the output of said transformer means to said conversion means by selection of one of a plurality of different configurations of said secondary windings so that the degree of energization of said traction motor is selectively controlled for acceleration of said vehicle.
18. A method of operating a mobile machine of the type which is driven by traction motors electrically energized through a trailing cable in an underground passageway of a mine in which mining operations are conducted, comprising the steps of: selectively reeling and unreeling said trailing cable with respect to said machine as required during movement of said machine through selectable paths spaced from said source and with some paths of said selectable paths constituting random paths; converting at the machine end of said trailing cable at least a portion of a three phase AC input to a DC output; and selectively energizing at least the traction motors of said mobile machine by said DC output.

 Several of the claim limitations are written in the "means plus function" format. Under 35 U.S.C. § 112, para. 6, those "means" for performing the function are construed to cover the corresponding structure described in the specification and equivalents thereof.

 The '864 patent includes several dependent claims. Joy has not argued the patentability of those claims separate from the independent claims, either in the reexamination or in this proceeding. Thus, the dependent claims stand or fall with the independent claims. In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed.Cir. 1987).

 The Board affirmed the examiner's rejection of claims 1-4, 11, 12, 16, and 18 as obvious under 35 U.S.C. § 103. The claims were rejected over the patentee's discussion of the prior art shuttle cars in his patent and the references relating to the P & H mining shovel. The Board stated that the artisan would have been strongly motivated to combine the prior art AC and DC types of shuttle cars into a hybrid system based on the patentee's thorough discussion of the advantages and disadvantages of each system. The P & H shovel references show the conversion of three phase AC to DC through use of transformers and rectifiers for application to DC motors. According to the Board, the P & H shovel would have shown to the artisan that such a hybrid system was viable in an underground mining environment because the P & H shovel was in reality in an aboveground mining environment.

 The claims were also rejected as unpatentable under section 103 over the patentee's admissions, French Brevet d'Invention No. 1,152,782 (the French patent), U.S. Patent No. 2,599,061 to Lee (the Lee patent), and U.S. Patent No. 2,434,585 to Renshaw (the Renshaw patent). According to the Board, the French patent shows an AC-DC conversion system on board an electric locomotive. The patent shows various taps available on the secondary windings of a transformer utilized for controlling the speed of DC traction motors. The Board observed that the patentee had admitted in the prosecution that mine locomotives are old in the art and work side by side with the shuttle cars underground. The Board held that the teachings of the French patent, together with the advantages and disadvantages of the AC and DC shuttle cars, would have led the artisan to conclude that it would have been obvious to utilize the teachings to combine the AC and DC systems into a hybrid control system. According to the Board, the Lee and Renshaw patents provide cumulative teachings as to the obviousness of the claims rejected. Those patents relate, respectively, to a shuttle car with a cable reel and an electric mine locomotive which may utilize a cable reel. Claim 16 was rejected over the additional reference to the Muskingum Electric Railroad article, which, according to the Board, shows a conversion means having a transformer with primary and secondary windings and an associated rectifier means with the capability to select among a plurality of configurations of the secondary windings. In the motion for summary judgment, the Commissioner has also cited other references.

 V. The Obviousness Issues

 The Commissioner's motion seeks summary judgment that the claims at issue are obvious under 35 U.S.C. § 103. That section provides, in relevant part, that a patent on an invention 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.

 As set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966), four factual inquiries must be made in the obviousness determination: (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed invention; (3) the level of ordinary skill in the art; and (4) the "secondary considerations" which may serve as objective indicia of nonobviousness, such as commercial success, unexpected results, and failure of others who have tried to solve the problem. The ultimate obvious-nonobvious question is one of law, but the underlying inquiries that must be made are questions of fact. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed.Cir.), cert. denied, 481 U.S. 1052, 107 S. Ct. 2187, 95 L. Ed. 2d 843 (1987).

 A. Scope and Content of the Prior Art

 The first factual inquiry under the Graham test is the determination of the scope and content of the prior art. The "scope" of the prior art determines what references fall within the relevant prior art that can be applied to reject a claim. The "content" of the prior art is ...

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