United States District Court, District of Columbia
MEMORANDUM OPINION, FINDINGS OF FACT, AND CONCLUSIONS
C. Lamberth United States District Judge
SD3, LLC ("SD3") brought this action under 35
U.S.C. § 145 (2002) 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.
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.
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.
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:
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
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
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
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
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.
BPAI also affirmed the rejection of claim 30 under 35 U.S.C.
§ 103(a) as being obvious in light of the Friemann
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
RELEVANT LEGAL AUTHORITY
patent application will be rejected for anticipation under 35
U.S.C. § 102(b) (2006) 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)).
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
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
(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.
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." PharmaStem Theapeutics, Inc. v.
ViaCell, Inc., 419 F.3d 1342, 1359 (Fed. Cir. 2007).
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.
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.
Court addresses the parties' respective evidence and
arguments for each of SD3's asserted grounds for
Friemann patent issued December 31, 1974 and is prior art to
the '211 application. See PX1. 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.
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
circuit shown in Figure 1 below depicts the circuit design
utilized by the Friemann patent to detect contact between a
person and the blade:
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.
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.
Embodiment and Disclosed in Figures 3 and 4
3 and 4 from the Friemann patent are reproduced below:
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,
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.
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.
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
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,
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.
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
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.
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. Likewise, if
overexcitation halved the closing times, it would still
require 12ms to begin motor braking.
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.
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.
Embodiment as Disclosed in Figures 5 and 6
provides an alternative circuit configuration for his band
cutting machine as demonstrated by Figures 5 and 6 below:
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.
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.
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 Gillilandalso 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.
according to SD3, Friemann's band cutter as disclosed in
Figures 5 and 6 could not initiate braking within 5ms or
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 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.
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
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
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:
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.
The Pulley and Roller Inertia, Blade Inertia, Gear Ratio, and
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.
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.
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
The Motor Inertia and Motor Torque
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