The opinion of the court was delivered by: Ellen Segal Huvelle United States District Judge
Plaintiff Hitachi Koki USA, Ltd. ("Hitachi") seeks review under 35 U.S.C. § 145 of the denial by the United States Patent and Trademark Office's Board of Patent Appeals and Interferences ("Board") of Hitachi's application for a patent for its desktop cutting machine with a tiltable saw ("the Hitachi device"). After denying the parties' cross-motions for summary judgment, see Hitachi Koki Co., Ltd. v. Dudas ("Hitachi I"), 556 F. Supp. 2d 41, 49 (D.D.C. 2008), the Court conducted a trial on April 23 and 24, 2009, where the parties introduced expert testimony. Based on the entire record and the relevant law, the Court finds that the subject matter of Hitachi's patent would have been obvious to a person having ordinary skill in the art, and therefore it affirms the Board's denial of Hitachi's patent under 35 U.S.C. § 103(a).
On January 20, 1995, the United States Patent and Trademark Office ("PTO") issued U.S. Patent Number 5,425,294 ("the '294 patent" or "the Hitachi patent") to Hitachi, as assignee of named inventors Shigeharu Ushiwata and Ryuichi Imamura, for a "desk-top cutting machine with tiltable saw." (See Trial Joint Exhibit ["Jt. Ex."] 1 at 1.) This saw is depicted in the '294 patent in the following drawings, among others:
(See id.) The saw assembly is mounted atop a pivot point, so that the user pushes the saw downward in order to cut into the workpiece, which rests on a turntable that is part of the saw's base. The Hitachi device can be used to make (1) "miter" cuts, where the user first rotates the workpiece in the turntable and then cuts with the blade in a "zero-tilt" position perpendicular to the workpiece surface; (2) "bevel" cuts, where the workpiece is not rotated but the saw is tilted downward to the left or right from zero-tilt before cutting, so that the blade will intersect the workpiece surface at an acute angle; and (3) "compound" cuts, where the user both rotates the workpiece and tilts the saw assembly before making the cut. (See Jt. Ex. 11 (Decl. of Paul Hatch ["Hatch Decl."]) at 3-4 ¶ 7.) Devices that can make bevel cuts in one direction are known as "single-bevel" miter saws, while those (like Hitachi's) that can make bevel cuts in both directions are known as "dual-bevel" miter saws. (Id. at 4 ¶ 8.) Workpieces whose ends have been cut at a 45° angle can be fit together to form right-angled corners.
On June 20, 1997, pursuant to 35 U.S.C. § 251, Hitachi voluntarily surrendered the '294 patent and filed Reissue Application 08/879,517 ("the '517 application"), adding a number of patent claims. Reissue applications are examined in the same manner as newly submitted applications and are thus subject to the same requirements that govern newly submitted applications. See 37 C.F.R. § 1.176(a). After reviewing Hitachi's reissue application, the PTO Examiner ("Examiner") denied Claim 1, among others, as obvious under 35 U.S.C. § 103(a) and therefore not unpatentable. (See Jt. Ex. 4 (Feb. 2, 2005 PTO Final Office Action) ["Examiner's Decision"] at 2.) Plaintiff appealed to the Board but requested review only of Claim 1, leaving that as the sole claim at issue in this case. (Jt. Ex. 2 (Oct. 19, 2006 Board Decision on Appeal) ["Board's Decision"] at 3 ("For the convenience of the Board, Appellant will argue the patentability of independent claim 1. The other claims stand or fall together with claim 1." (quoting Hitachi's brief)).)
Claim 1 consists of eight elements (hereinafter, "Element 1" through "Element 8") and reads as follows, with numbers added for ease of reference:
A desk-top cutting machine, comprising:
(1) a base on which a workpiece to be cut is supported, said base including a top surface;
(2) a turntable rotatably disposed in said base and including a top surface;
(3) a holder supported by said turntable for tilting transversely in opposite directions about a zero-tilt angle position;
(4) a circular saw blade; (5) a saw shaft located above said holder for supporting said saw so that said saw is swung up and down relative to said base, about a pivot shaft;
(6) a circular saw assembly having a motor covered by a housing;
(7) a motor shaft of said motor being disposed in parallel with and above said saw shaft;
(8) transmission means through which said motor shaft is connected to said saw shaft so that an axis of said motor shaft is shifted from an axis of said saw shaft by a distance which is greater than or equal to the radius of said circular saw blade, wherein when said holder is tilted in either of said opposite directions by an angle greater than or equal to 45 degrees with respect to the zero-tilt angle position, said housing does not contact said top surface of said base.
The Board affirmed the denial of Claim 1 in light of five prior art references. (See Board's Decision at 12.) The first reference was what Hitachi's application recognized as prior art ("Applicant's Admitted Prior Art" or "AAPA"), as depicted in Figures 6 and 7 of the '294 patent and disclosed in lines 11 through 33 of column 1 of the patent specification. (Jt. Ex. 1 at 4 (figs.6 & 7), 8.) Resembling a conventional single-bevel desktop miter saw, the motor shaft of the AAPA is "disposed in parallel with" the saw shaft and connected through "toothed engagement," so that the motor projects perpendicularly from one side of the saw assembly, near the center of the blade:
The second reference discussed was U.S. Patent No. 5,357,834 (filed May 18, 1993), issued to Ito et al. ("Ito") on October 25, 1994. Ito discloses a dual-bevel desktop miter saw whose motor shaft projects upward at an angle from the center of saw blade and transmits power to the saw shaft using beveled gears:
The third reference was U.S. Patent No. 4,574,670, issued in 1986 to Johnson ("Johnson"). The patent describes a "multiple angle cutting apparatus" and features a motorized saw blade mounted on a positioning mechanism that can rotate and tilt:
The fourth reference was U.S. Patent No. 1,417,669, issued in 1922 to Langworthy ("Langworthy"), which describes a motorized surgical saw:
The fifth reference was U.S. Patent No. 3,013,592, issued in 1961 to Ambrosio et al. ("Ambrosio"), which describes a "tilting table saw" featuring a motorized blade mounted underneath the cutting surface:
The Board also discussed a sixth reference, Japanese Utility Model Application (OPI) No. 49901/88 ("JPN '901") (also known as Japanese Laid-Open Utility Model Publication No. 63-49901), which both the '294 patent and Ito "recognized [as] prior art designs." (Board's Decision at 20; see Jt. Ex. 1 at 8 (col.1 ll.35-36); Jt. Ex. 7 at 11 (col.1 ll.17-20).) JPN '901, a dual-bevel miter saw that was also designed by Ushiwata, permits unobstructed 45° bevel cuts in both directions by moving the motor shaft upward from and perpendicular to the saw shaft, such that the motor shaft is parallel to the saw blade:
(See Jt. Ex. 13 (Decl. of Shigeharu Ushiwata ["Ushiwata Decl."]) ¶ 15; id., Ex. D at 9.)
The Board found that Ito and the AAPA described every aspect of the desktop cutting machine defined in Claim 1 of the Hitachi patent except for Elements 7 and 8.*fn1 (See Board's Decision at 12-13.) The Board then considered what a person of ordinary skill in the art would have learned from the combined teachings of either the AAPA or Ito, coupled with Johnson, Ambrosio, and Langworthy. (Id. at 14-15.)
First, the Board concluded that both the AAPA and Ito's discussion of prior art would have taught an ordinarily skilled person that the conventional single-bevel saw assembly would prevent users from making cuts at 45° to either side of "zero-tilt," because on one side, the motor housing would hit the surface of the workpiece or base, thus requiring a user to rotate the workpiece 180° in order to make a bevel cut in the opposite direction. (See Board's Decision at 15.) Next, an ordinarily skilled person would recognize that Ito's solution to that problem requires turning the motor shaft upwards at an angle to the saw shaft and transmitting power to the saw shaft through angled beveled gears. (Id.) In addition, the hypothetical person of ordinary skill would learn that while JPN '901's placement of the motor shaft upwards from and perpendicular to the saw shaft similarly permits dual-beveling, it would also require an expensive multistage transmission system. (Id. at 15-16.)
The Board then determined that Johnson teaches that a cutting machine whose motor shaft is parallel to the saw shaft could be used to make -45° bevel cuts without hitting the workpiece or base and without rotating the workpiece. (Board's Decision at 16.) The Board next considered Langworthy and found that it also disclosed parallel motor and saw shafts that were connected by transmission means and displaced by a least one blade radius. (Id. at 18.) Although Langworthy is a handheld surgical saw, it was found to teach that "[t]he saw may be of various sizes, [and the guard is also made in various sizes] complementary to the saw... and these elements may be changed at will, to adapt them for different uses," and that the arm connecting the saw and motor could be manipulated "to attain cuts at various angles... with facility and accuracy in the operations." (Id. at 19 (quoting Jt. Ex. 9 at 3 (col.3 ll.49-53, col.4 ll.69-74)).) The Board also found that although Langworthy did not possess a base or other workpiece support, an ordinarily skilled person would have understood the human body to be Langworthy's "workpiece," and that because it would not be feasible or desirable to manipulate the patient's body, the ability to make angled cuts would depend upon the ability to change the angle of the saw without obstruction by the body. (Id. at 17, 19.) Finally, the Board determined that Ambrosio similarly would have taught a person of ordinary skill that unobstructed -45° bevel cuts could be made without rotating the workpiece if the motor and saw shafts were parallel and displaced by at least one blade radius. (Id. at 19-20.) The Board found that "[i]n light of the combined prior art teachings,... persons having ordinary skill in the art would have had the instruction and the motivation to make and use a desk-top cutting machine having the design and/or construction claimed." (Id. at 20.) Accordingly, the Board affirmed the Examiner's rejection of Claim 1 as obvious and unpatentable. (Id. at 24.)
On December 15, 2006, plaintiff requested rehearing, arguing that the Board misunderstood the teachings of Johnson with respect to its bevel-cutting capabilities and that Langworthy and Ambrosio were not analogous art. (See Jt. Ex. 15 (Hitachi's Req. for Reh'g) at 1-4.) On June 21, 2007, the Board denied rehearing and emphasized that the rejection of Claim 1 was consistent with the Supreme Court's intervening decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). (See Jt. Ex. 3 (Board Decision on Req. for Reh'g) at 4-6.) Thereafter, on August 21, 2007, plaintiff brought suit pursuant to 35 U.S.C. § 145, requesting that this Court reverse the decision of the Board and find that Hitachi is entitled to reissuance of its patent for the invention set forth in Claim 1. [See Dkt. No. 1.] On December 19, 2007, defendant filed a motion for summary judgment seeking affirmance of the Board's decision as supported by substantial evidence. [See Dkt. No. 7.] On February 13, 2008, plaintiff filed a cross-motion for summary judgment, supported by several new witness declarations that explained why Claim 1 was not obvious and that addressed "secondary considerations" of non-obviousness (i.e., the commercial success of plaintiff's design, its copying by competitors, and the fact that it filled a long-felt but unmet need). [See Dkt. No. 12.] On May 29, 2008, this Court denied the cross-motions and permitted plaintiff to submit the declarations insofar as they related to issues previously presented to the PTO, but excluded evidence of the secondary considerations of commercial success and copying because they had not been raised before the PTO. Hitachi I, 556 F. Supp. 2d at 47-48 & n.3, 49. The Court also allowed the parties to conduct discovery regarding obviousness and permitted the PTO to introduce expert testimony to rebut plaintiff's experts. See id. at 48 n.4.
The Court then conducted a bench trial on April 23 and 24, 2009. At the outset, the Court permitted Hitachi to introduce new evidence of the secondary consideration of "long-felt but unsolved need," denying defendant's motion to strike such evidence on the grounds that the issue had been expressly considered by the PTO. (See Examiner's Decision at 10 ("Applicant argues that motivation to pivot 45° both ways was known for years and yet the only solution was the overly expensive Ito '834, and therefor[e] the current solution is unobvious. However, Applicant has not proven this to be a longstanding problem that others (different assignees) have failed at.").) The Court then heard testimony from three witnesses.*fn2 Plaintiff's witness Gary Katz, an expert in the field of finish carpentry,*fn3 testified that the Hitachi design met a long-felt need among carpenters, because it enabled them to make bevel cuts in opposite directions on a workpiece without having to "helicopter" it (i.e., rotate it 180°) or flip it over onto its face. (See generally Trial Tr. ["Tr."] at 24-70, 339-41; Jt. Ex. 12 (Decl. of Gary Katz ["Katz Decl."]) ¶ 10.) Plaintiff's witness Paul Hatch, an expert in the field of power tool design, testified about the prior state of the art with respect to miter saws, the features of the Hitachi invention, the teachings of the relevant prior art references, and the fact that a person of ordinary skill in the art would have had no reason to combine those teachings. (See generally Tr. at 72-190, 342-52.) Defendant's witness Michael Gililland, an expert in the field of power tool design, offered testimony rebutting Hatch and Katz, expounding upon the teachings of the prior art and explaining that an ordinarily skilled person would have had sufficient reason to combine those teachings. (See generally id. at 220-339.)
Applying the legal standards set forth below to this evidence and to the record before the Board, and considering the arguments and pleadings of counsel, the Court makes the ...