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LLC v. Lee

United States District Court, District of Columbia

August 31, 2016

SD3, LLC, Plaintiff
v.
MICHELLE K. LEE, Under Secretary for Intellectual Property and Director, United States Patent and Trademark Office, Defendant

          MEMORANDUM OPINION, FINDINGS OF FACT, AND CONCLUSIONS OF LAW

          Royce C. Lamberth United States District Judge

         Plaintiff SD3, LLC ("SD3") brought this action under 35 U.S.C. § 145 (2002)[1] to set aside a decision by the United States Patent Office ("PTO") Board of Patent Appeals and Interferences ("BPAI") rejecting a patent application by SD3 for safety technology associated with power tools, and more specifically, power cutting tools.

         This case, was tried to the Court on May 10-13, 2016. The Court has considered the evidence presented at trial, facts stipulated to by the parties, the arguments of counsel, and the controlling legal authority. The Court has ascertained the credibility of each witness and evaluated the probative value of all relevant evidence admitted at trial. Based upon the foregoing, the Court makes the following findings of fact and conclusions of law.

         I. BACKGROUND

         A. Procedural History

         The factual and procedural history of this case is set forth in detail in two prior rulings by this Court, SD3, LLC v. Dudas, 952 F.Supp.2d 97 (D.D.C. 2013) and SD3, LLC v. Rea, 71 F.Supp.3d 189 (D.D.C. 2014). Only limited factual and procedural information is therefore given here.

         SD3 filed U.S. Patent Application Serial No. 10/100, 211 ('"211 application") on March 13, 2002. That application claims priority to U.S. Provisional Application 60/275, 583 filed on March 13, 2001. At issue in this proceeding are claims 1, 22-24 and 30 of the '211 application, which recite:

         1. A machine compromising:

an operative structure adapted to perform a task, where the operative structure includes a mechanical cutting tool adapted to move in at least one motion; and
a safety system adapted to detect the occurrence of an unsafe condition between a person and the cutting tool, where the safety system includes a detection subsystem adapted to detect the unsafe condition, and a reaction subsystem adapted to mitigate the unsafe condition
where the reaction subsystem includes a brake mechanism adapted to stop at least one motion of the cutting tool within 10 milliseconds after detection of the unsafe condition.
22. The machine of claim 1 where the brake mechanism is adapted to stop at least one motion of the cutting tool within 7 milliseconds after detection of the unsafe condition.
23. The machine of claim 1 where the brake mechanism is adapted to stop at least one motion of the cutting tool within 5 milliseconds after detection of the unsafe condition.
24. The machine of claim 1 where the mechanical cutting tool is adapted to rotate and where the brake mechanism is adapted to stop that rotation.
30. The machine of claim 1 where the brake mechanism is adapted to stop at least one motion of the cutting tool in less than 5 milliseconds after detection of the unsafe condition.

         The BPAI affirmed a rejection of claims 1 and 22-24 under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 3, 858, 095 issued December 31, 1974, to Wolfgang Friemann and Josef Proschka ("Friemann patent"). The Friemann patent claims in pertinent part:

1. A protective device for use in cutting machines having a moving cutting member compromising:
safety circuit means, responsive to touching of the cutting member by an operator, for generating an output signal; and
braking means electrically connected to said safety circuit means for substantially instantaneously stopping the cutting member in response to said generated output signal of said safety circuit means.
2. The protective device of claim 1 wherein said cutting member compromises a band cutter having a drive motor; and said safety circuit means compromises a bridge circuit balanced during normal operation and when unbalanced by the operator touching the band cutter provides an output signal by which full braking of said band cutter is triggered, wherein said band cutter is electrically insulated from the rest of the cutting machine and is connected as capacitance in said bridge circuit.

         The BPAI also affirmed the rejection of claim 30 under 35 U.S.C. § 103(a) as being obvious in light of the Friemann patent.

         In response, SD3 instituted the current action under 35 U.S.C. § 145, alleging that the PTO's rejections should be reversed because the Friemann patent fails to enable one skilled in the art to construct a band cutter capable of stopping its blade within 5ms or 10ms without undue experimentation. Therefore, according to SD3, the Friemann patent could not anticipate or make obvious SD3's claimed invention.

         III. RELEVANT LEGAL AUTHORITY

         A. Enablement

         A patent application will be rejected for anticipation under 35 U.S.C. § 102(b) (2006)[2] if "the invention was patented or described in a printed publication in this or a foreign country... more than one year prior to the date of the application for patent in the United States." "A prior art reference can only anticipate a claim if it discloses all the claimed limitations 'arranged or combined in the same was as in the claim.'" Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012)). "However, a reference can anticipate a claim even if it does not expressly spell out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would at once envisage the claimed arrangement or combination." Id. (internal punctuation omitted) (internal quotation marks omitted) (quoting In re Petering, 301 F.2d 676, 681 (1962)).

         To be anticipatory, prior art must be enabling. "A prior art reference cannot anticipate a claimed invention 'if the allegedly anticipatory disclosure . . . [is] not enabled."' In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012) (internal quotation marks omitted) (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc. , 314 F.3d 1313, 1354 (Fed. Cir. 2003)). Claimed and unclaimed materials in a patent are presumptively enabled. In re Antor Media Corp., 698 F.3d 1282, 1287 (Fed. Cir. 2012). Therefore, the burden of proof is on the party challenging the patent as nonenabled to rebut the presumption of enablement by a preponderance of the evidence. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). If the challenging party succeeds in rebutting the presumption of enablement, it falls to the opposing party to produce evidence sufficient to rebut the challenging party's contention. Id. If the opposing party succeeds in doing so, the ultimate burden then rests with the challenging party. Id.

         "Enablement requires that 'the prior art reference must teach one of ordinary skill in the art to make or carry out the claimed invention without undue experimentation.'" Elan Pharms., Inc. v. May Found., 346 F.3d 1051, 1054 (Fed. Cir. 2003) (quoting Minnesota Mining & Mfg. Co. v. Chemique, Inc., 303 F.3d 1294, 1301 (Fed. Cir 2002)). "Undue experimentation" is determined by evaluating eight factors:

(1) the quantity of experimentation;
(2) the amount of direction or guidance present;
(3) the presence or absence of working examples;
(4) the nature of the invention;
(5) the state of the prior art;
(6) the relative skill of those in the art;
(7) the predictability or unpredictability of the art; and
(8) the breadth of the claims

Impax Labs., Inc. v. Aventice Pharms., Inc., 545 F.3d 1312, 1314-15 (Fed. Cir. 2003) (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). Enablement is a "question of law based upon underlying factual findings." Id. at 1315. Whether the Friemann patent is sufficiently enabling "must be considered together with the knowledge of one of ordinary skill in the pertinent art" on the date SD3 filed its application. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (internal quotation marks omitted) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). Thus, for present purposes, the question is whether Friemann enables one of ordinary skill in the art in 2001 to construct his band cutting machine without undue experimentation.

         B. Obviousness

         A patent application will be rejected for obviousness where "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(a) (2006). Obviousness is a legal conclusion underpinned by "factual questions relating to the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the art, and any relevant secondary considerations such as commercial success, long-felt need, and the failure of others."[3] PharmaStem Theapeutics, Inc. v. ViaCell, Inc., 419 F.3d 1342, 1359 (Fed. Cir. 2007).

         But to render a claimed invention obvious, the prior art must allow or enable one skilled in the art to create the claimed invention. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (citing Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1471 (Fed. Cir. 1997)); cf. KSR Int'l v. Teleflex Inc., 550'U.S. 398, 421 (2007) ("If [an obvious combination of elements] leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense."). The prior art itself need not be enabled, since even "a non-enabling reference may qualify as prior art for the purpose of determining obviousness, and even an inoperative device is prior art for all that it teaches." ABT Sys. LLC v. Emerson Elec. Co., 797 F.3d 1350, 1360 n.2 (Fed. Cir. 2015) (internal punctuation omitted) (internal quotation marks omitted) (quoting Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed Cir. 1991) and Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)).

         IV. DISCUSSION

         Although the BPAI provided two distinct grounds for rejecting SD3's claims, the dispute as to both grounds largely centers on a single determination: whether Friemann's patent enables one skilled in the art in 2001 to build Friemann's band cutter without undue experimentation. Unsurprisingly, the parties have largely-if not exclusively-focused on resolving that determination in their respective favor. Accordingly, SD3 has adduced evidence tending to demonstrate the Friemann band cutter could not be constructed by one skilled in the art in 2001 without undue experimentation. Conversely, the PTO has adduced evidence tending to show a number of methods and components available to one skilled in the art in 2001 that would enable the building of Friemann's band cutter.

         The Court addresses the parties' respective evidence and arguments for each of SD3's asserted grounds for nonenablement.

         A. Ground One

         The Friemann patent issued December 31, 1974 and is prior art to the '211 application. See PX1.[4] The Friemann patent explains that "in the case of band cutter machines used in the textile industry for cutting out garment blanks, a large number of accidents, some very serious, have occurred as a consequence of the operator touching the moving band cutter." Id. at col. 1, ll. 10-14. To address this problem, the Friemann patent discloses a band cutting machine provided with a "protective circuit arrangement suitable for a motor driven band cutter and which immediately stops the band cutter when it is touched." Id. at col. 1, ll. 45-47.

         The Friemann patent states that "[experiments have shown that with a protective circuit arrangement in accordance with the invention it is possible for a band cutter to be stopped in about 1/200th of a second, so at the usual speed of rotation of the band cutter of 14 meters per second the run-on distance amounts to 3-5 cm." Id. at col.2, ll. 15-20. One two-hundredth of a second is 5ms. The Friemann patent also claims to stop the blade in 10ms. Id. at col. 4, 1. 6. SD3 claims that stopping times in these ranges cannot be obtained by one of ordinary skill in the art using the Friemann patent without undue experimentation.

         The circuit shown in Figure 1 below depicts the circuit design utilized by the Friemann patent to detect contact between a person and the blade:

         (IMAGE OMITTED)

         PX1. When contact between a person and the blade is detected, the circuit shown in Figure 1 energizes the relay depicted as R1. A relay is an electromagnetic or electromechanical switch used to make or break and electrical connection. TT. 5/10/2016 A.M. at 58:25 to 59:3.[5]

         The Friemann patent discloses the use of motor braking in conjunction with electromechanical braking to stop the blade. The Friemann patent discloses two alternate circuit arrangements to accomplish such braking. One circuit is depicted in Figures 3 and 4, and the other in Figures 5 and 6. The Friemann patent does not disclose any other circuit arrangements to control or initiate braking.

         1. Embodiment and Disclosed in Figures 3 and 4

         Figures 3 and 4 from the Friemann patent are reproduced below:

         (IMAGE OMITTED)

         PX1. The Figures 3 and 4 depict relay h2 being energized when relay R1 closes contact pair R11 - R12. PX1 at col. 3, ll. 55-56. When energized, relay h2 opens contact to h21 which then de-energizes motor relay c1 cutting off power to the motor. Id. at col. 3, ll. 56-59.

         The Friemann patent identifies relay c1 as connecting the three-phase electrical power to the motor by way of contact clm. Id. at col. 3, ll. 48-50. Contact c1m. must therefore be of sufficient size to supply current to the motor.

         Relay h2 also closes contact h22 when energized. Id. at col. 3, ll. 59-60. Closing contacts h22 energizes the relay c2 as depicted in Figure 3 above. Id. at col. 3, 1. 160. When energized, relay c2 closes contact c21 as depicted in Figure 4 above to initiate motor braking and electromechanical braking. Contact c21 must be of a size sufficient to supply current to the motor for motor braking and to the electromechanical brake for additional braking.

         Thus, for Figures 3 and 4, the Friemann patent contemplates the following sequence when a user's flesh makes contact with the cutting blade: first, contact pair R1 1 - RI2; second, contact h21 opens and contact h22 closes; third, contact c1m closes and contact c11 opens; fourth, contact c21 closes.

         Relays require time to open and close. SD3 introduced evidence suggesting relays require between 3ms and 25ms to close and between 2ms and 25ms to open. See PX305. SD3 also introduced evidence showing closing and opening times of 3ms and 5ms respectively for "subminiature" signal relays. PX306. Dr. Stephen Gass, who is both one of the listed inventors of SD3's claims as well as an expert in the field, testified that relay R1, if it is a typical relay, will switch in between 3 and 5ms. TT. 5/10/2016 A.M. at 70:19-20. The same is true for relay h2. However, because relays c1 and c2 provide power to the motor, their opening and closing times will typically be longer. See PX303. The PTO's expert, Dr. Charles Landy, [6] testified at deposition that "a contactor would work in a system as disclosed by Friemann" in "10, 15 milliseconds." Deposition of Dr. Charles Landy, May 21, 2014, at 131:12-16. Lastly, because Friemann teaches direct current ("DC") injection braking, each relay in the sequence must perform its function-that is open or close-before the next relay can safely begin its function.

         Thus, according to SD3, a formula for determining the amount of time it would take for the embodiment contained in Figures 3 and 4 to begin motor and electromechanical braking is:

Tr1 Th2 Tcl TC2 - Tinitiate braking

         Where T is the amount of time it would take the respective relay to open or close. Taking SD3's relay opening and closing time estimates at face value, the formula suggests that the time it would take Friemann's band cutter to begin braking to be between 18ms and 20ms.[7]

         In response, the PTO contends that SD3 overestimates the amount of time it would take the relays to close because SD3 fails to take into account overexcitation, which entails the application of current in excess of the normal operating current. In response, Dr. Gass testified that while overexcitation may increase the speed at which a relay closes, it cannot increase the speed at which a relay opens, because the opening of a relay relies not on the building up of a magnetic field, but upon a magnetic field's decay. TT. 5/10/2016 A.M. at 83:3-14. The PTO did not dispute that assertion. Nor did the PTO provide evidence detailing the reduction in closing times one would expect from an over-excited relay. However, SD3 contends that even accepting overexcitation could decrease closing time by a third, it would still require the Friemann band cutter, as depicted in Figures 3 and 4, 15ms to being braking.[8] Likewise, if overexcitation halved the closing times, it would still require 12ms to begin motor braking.[9]

         Accordingly, SD3 argues Friemann, as disclosed in Figures 3 and 4, could not enable one of ordinary skill in the art to stop the band saw blade in 5ms or 10ms.

         Beyond its reliance on overexcitation, the PTO offers no other method for permitting Friemann's embodiment as disclosed in Figures 3 and 4 to being braking within 5ms or 10ms.

         2. Embodiment as Disclosed in Figures 5 and 6

         Friemann provides an alternative circuit configuration for his band cutting machine as demonstrated by Figures 5 and 6 below:

         (IMAGE OMITTED)

         PX1. Figures 5 and 6 depict relay R1 being energized when contact between a person and the band blade is detected. When energized, R1 closes contact pair Rl1 - R12 and Rl5 - Rl6, and opens contact pair Rl3 - R14. See PX1, col. 4, ll. 40-42. The closing of contact pairs R11 - R12 and R15 - RU actuates an electronic reversing switch-denoted as "15" in Figure 6-to initiate motor braking, and simultaneously close relay c2 to energize electromechanical braking. Id. at col. 4, ll. 45-53.

         The Friemann patent identifies electronic reversing switch 15 as being of the type "Rewimat 2000." Id. at col. 4, 1. 48. SD3 introduced evidence that the Rewimat 2000 is a type of reversing switch known as a triode for alternating current ("TRIAC") solid state relay. See PX314. Dr. Gass testified that, at minimum, a relay like the Rewimat 2000 at 60 Hz would require 5.5ms to switch from three-phase alternating current ("AC") to direct current because at that frequency 5.5ms is the shortest possible time in which voltage on all three phases to cross to zero. TT. 5/10/2016 A.M. at 90:10-22.

         It is extremely important that, prior to switching from AC, the three phases reach zero voltage, elsewise a short circuit will result with possibly grave results. TT. 5/10/2016 A.M. at 93:4-7; TT. 5/11/2016 P.M. at 60:8. As a result SD3 introduced evidence demonstrating that manufacturers typically include an interlock time in their electronic switches in order to avoid short circuits. PX302; TT. 5/10/2016 A.M. at 92:21-93:10. One of the PTO's experts, Mr. Michael Gilliland[10]also testified that reversing switches include interlock times. TT. 5/11/2016 P.M. at 59:19-60:11. SD3 introduced evidence demonstrating that in commercially available TRIAC-based solid state relays, the interlock time is between 50ms and 100ms. See PX302; TT. 5/10/2016 A.M. at 94:15-17.

         Thus, according to SD3, Friemann's band cutter as disclosed in Figures 5 and 6 could not initiate braking within 5ms or 10ms.

         Contrary to SD3's assertions, the PTO's experts testified that a person of ordinary skill in the art would use electronic switches such as silicon controlled rectifiers ("SCR") to initiate braking. E.g., TT. 5/11/2016 P.M. at 61:9-62:7. One of the PTO's experts, Dr. Bruno Lequesne[11] stated that SCRs were invented in the 1950s, and widely used in the 1970s and 1980s, but were largely displaced by power transistors in 2001. TX300 at ¶66; TT. 5/12/2016 P.M. at 37:24-38:8. Dr. Lequesne went on to testify that in 2001 one of ordinary skill in the art would have used power transistors, rather than SCRs or electromechanical relays. TT. 5/12/2016 P.M. at 37:24-38:5. These SCRs and power transistors can switch power on the order of microseconds.

         SD3 did not contest the PTO's assertion that SCRs could be designed to switch power off in microseconds. SD3 did contest the assertion that such an SCR could be purchased commercially; SD3 also claimed that the design and construction of such an SCR would be "a new invention." TT. 5/10/2016 A.M. at 96:20-23. Mr. Gililland echoed this point. When asked whether the Friemann specification contained the requisite circuitry to operate an SCR that could switch power off in microseconds, Mr. Gililland responded: "[n]o, you have to have more circuitry than that." TT. 5/11/2016 P.M. at 91:17. When asked whether an SCR that would meet the requirements to implement the Friemann patent was available commercially in 2001, Mr. Gililland responded: "I could probably find some control circuits that could be adapted to do that . . . ." Id. at 92:4-6. Accordingly, SD3 asserts one of ordinary skill in the art could not design such a circuit without undue experimentation, and, therefore, could not build Friemann's band cutting machine without undue experimentation.

         B. Ground Two

         SD3's second ground for nonenablement is that the motor and electromechanical braking as disclosed in the Friemann patent cannot stop the blade in the time frames specified in SD3's claims.[12]

         SD3 focused its arguments here on the amount of inertia contained in a band cutting machine like Friemann's, and using various estimates of pulley inertia, pulley ration, motor inertia, motor torque, and so forth, SD3 calculated the time it would take to stop the blade. The basic formula for that calculation is: stopping time (t) = inertia (J) x angular velocity (ω) ÷ torque (τ). As applied to this case, the equation is:

         (IMAGE OMITTED)

         Due to the nature of the above equation, the time required to stop can be reduced in a number of ways. For instance, the motor inertia and speed can be reduced. The same is true for the inertia and speed of the pulleys. Alternatively, the motor torque can be increased. Torque may also be increased by the addition of electromechanical braking. Theoretically, any one of these changes or combination of them, will lead to faster stopping times. The parties principally dispute what changes are practically possible without undue experimentation, and indeed, what changes are possible within the realm of current knowledge and capability.

         1. The Pulley and Roller Inertia, Blade Inertia, Gear Ratio, and Angular Velocity

         The parties disputed the pulley inertia and belt pulley ratio that should be included in the equation. According to SD3, the Friemann patent speaks to "industrial" band cutters, and, therefore, the pulleys would be made of metal-a material that would have a higher inertia than materials like plastic. TT. 5/10/2016 P.M. at 26:8-13. The PTO disputes that characterization of Friemann, noting that neither Friemann nor SD3's claims are limited to "industrial" applications. Accordingly, the PTO adduced evidence of a consumer-grade, 1/3 horsepower band saw that had pulleys made of fiberglass. PX29; PX30. Dr. Landy, one of the PTO's experts, calculated that pulley would have a rotational inertia of .0055 kg-m2. At trial, SD3 accepted, for the sake of argument, the .0055 kg-m2 estimate. TT. 5/10/2-2016 P.M. at 25:6-26:13.

         For the belt pulley inertia, both parties utilized .0015 kg-m2, though that number would necessarily be higher if a heavy-duty pulley were utilized. Further, based on the 1/3 horsepower saw, SD3 utilized a 1.1 rather than 2 gear ratio.

         The parties did not disagree that a blade inertia of .00162 kg-m2 was reasonable. Furthermore, the parties did not dispute that a 1, 500 RPM or 157 rad/sec angular velocity for the motor was reasonable. Both parties utilized a 140 rad/sec roller angular velocity.

         2. The Motor Inertia and Motor Torque

         The parties principally dispute the amount of torque that can be reliably produced by induction motors, and, to a lesser degree, the amount of inertia those motors would have. At trial, the parties centered their arguments on a motor called the FL-1838 which is manufactured by a company named Baldor. PX 320(d)(1). The FL-1838 is a "Medium and Low Inertia (DPG-FV) Induction Servo" motor. Id. at 44. According to the Baldor catalogue, these types of motors inherently have the "lowest inertia (highest torque to inertia ratio) of any induction motor." Id. The catalogue lists the FL-1838 as a "Non-Stock Custom Built Motor[.]" Id. It has a rotational inertia of .022 kg-m2 and produces 81 Newton-meters continuous torque, and 121 Newton-meters peak torque. According to the Baldor ...


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