Opinion
No. C-99-04064 CRB
May 22, 2001
ORDER GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY FOR OBVIOUSNESS
Now before the Court is the plaintiffs motion for summary judgment of invalidity and unenforceability. Having considered the parties' papers, and with the benefit of oral argument on May 18, 2001, the plaintiffs motion for summary judgment of invalidity due to obviousness is hereby GRANTED, rendering adjudication of the other issues unnecessary.
BACKGROUND
The plaintiff Janet Graham filed this action seeking a declaratory judgment that U.S. Patent No. 5,676,094 ("the `094 patent"), owned by the defendant Beverly Joy Gun-Munro, is invalid and unenforceable. The defendant filed a counterclaim for patent infringement. The defendant filed her patent application on September 26, 1994, and the patent issued on October 14, 1997.
As described in the Court's claim construction order filed on November 15, 2000, the `094 patent describes a leg wrap for protecting the legs of horses and other animals from insects and stickers. It contains three components: (1) a rectangular mesh panel wrapped around the leg of the animal designed to keep insects and stickers off the leg but to allow heat and air to circulate; (2) a plush binding material which extends along all four edges of the mesh panel to prevent insects and stickers from getting under the mesh panel and to prevent contact between the edges of the mesh panel and the leg of the animal; and (3) a fastening means such as Velcro to hold the wrap in place on the animal's leg without applying compressive forces.
The defendant also argues that "inherent to the invention" is "the proper design, selection, and sewing of materials which are noninjurious to and comfortable when worn on the leg and which have sufficient durability to be worn over long periods of time by a horse and to stand up to repeated washing." Def.'s Opp'n to Pl.'s Mot. for Summ. J. ("Opposition"), Apr. 17, 2001, at 3. In the defendant's view, the patent teaches the use of a flexible mesh panel which is washable yet durable. See id.
DISCUSSION
The plaintiff has moved for summary judgment on three grounds: (1) that the `094 patent is invalid for obviousness under 35 U.S.C. § 103; (2) that the `094 patent is invalid due to the addition of new subject matter during the course of patent prosecution without the submission of the applicable oath; and (3) that the `094 patent is unenforceable due to inequitable conduct committed by the defendant.
I. STANDARD FOR SUMMARY JUDGMENT
Summary judgment is appropriate when 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 judgment as a matter of law." Fed.R.Civ.P. 56(c). An issue is "genuine" only if there is sufficient evidence for a reasonable fact finder to find for the non-moving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). A fact is "material" if the fact may affect the outcome of the case. See id. at 248. "In considering a motion for summary judgment, the court may not weigh the evidence or make credibility determinations, and is required to draw all inferences in a light most favorable to the non-moving party." Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 1997). A principal purpose of the summary judgment procedure is to identify and dispose of factually unsupported claims. See Celotex Corp. v. Cattrett, 477 U.S. 317, 323-24 (1986).
II. WHETHER THE `094 PATENT IS IN VALID FOR OBVIOUSNESS
A patent is invalid "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." 35 U.S.C. § 103 (a). In determining whether a patent is invalid for obviousness, a court must consider four factors: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective indicia of non-obviousness such as commercial success, long felt but unsolved needs, and the failure of others to succeed in addressing those needs, occasionally referred to as "secondary considerations." See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Whether a patent is invalid for obviousness is ultimately a question of law based on those four underlying factual issues. See Richardson-Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997) ("It is black letter law that the ultimate question of obviousness is a question of law."). A party wishing to invalidate a patent for obviousness must show that the subject matter would have been obvious by clear and convincing evidence. See Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991).
A. The Scope and Content of the Prior Art
There are three prior art references that the plaintiff cites as demonstrating that the subject matter claimed in the `094 patent would have been obvious to one with skill in the art: (1) U.S. Patent No. 4,662,156 ("the Oettel patent"), which discloses a fly mask for horses; (2) a fly wrap on sale at the Oltimer's Tack Shop in Hampton, Virginia ("the Oltimer's fly wrap"); and (3) U.K. Patent Application CB 2 265 812 ("the British application"). The scope of the prior art "is defined by the nature of the problem confronting the would-be inventor." Ryko Mfg. Co., 950 F.2d at 716.
1. The Oettel Patent
The Oettel patent discloses a fly mask placed on a horse's head to keep flies out of the horse's eyes. See Pl.'s Mot. for Summ. J. ("Motion"), Feb. 28, 2001, Ex. 2 (containing the Oettel patent). The Oettel patent issued May 5, 1987, more than one year before the defendant's September 1994 filing date, so it qualifies as prior art. See 35 U.S.C. § 102 (b) ("A person shall be entitled to a patent unless — . . . (b) 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.
In the plaintiffs view, the Oettel fly mask renders the defendant's invention obvious. The invention claimed in the Oettel patent contains elements similar to the `094 patent, including a flexible mesh panel, plush material as a binding means, and fastening means such as Velcro. See Motion, Ex. 2, at 3:37-43. Like the `094 patent, the Oettel patent discloses lining the mesh panel with fleece or some other plush material in order to prevent insects from crawling beneath the edges of the mesh panel, to allow the mask to be loose and comfortable to the animal, and to prevent rubbing, scraping, and chaffing of the horse's ears, hair, or skin. See id. at 5:20-22, 5:34-39, 6:8-18, 6:49-52, 7:7-18, 8:36-49. As a result, the plaintiff contends that the Oettel fly mask is "substantially identical" to the defendant's fly wrap other than where it is placed on the horse. Motion at 5. The plaintiff also notes that the defendant has admitted that the Oettel fly mask was the inspiration for her invention. See Wright Decl., Feb. 28, 2001, Ex. E, ¶¶ 9-10 (containing a draft complaint sent to the plaintiff by the defendant threatening an infringement suit). Indeed, the `094 patent expressly cites the Oettel patent. See Motion, Ex. 1, at 1:18-22.
The defendant spends several pages in her brief outlining the differences between the Oettel patent and the invention claimed in the `094 patent, such as the distinct shapes of the inventions, where on the horse the devices are placed, and so forth. She asserts that a prior art reference is not invalidating unless the reference discloses the identical invention claimed in the patent at issue, and she concludes that the Oettel patent therefore cannot render the invention claimed in the `094 patent obvious.
As the plaintiff notes, however, the defendant has confused anticipation with obviousness. While a patent would not be invalid for anticipation under section 102 if only a portion of the invention was disclosed in a prior art reference, a patent can be invalid for obviousness under section 103 "though the invention is not identically disclosed or described as set forth in section 102 of this title." 35 U.S.C. § 103. Thus, even if none of the three references cited by the plaintiff contain all the elements present in the `094 patent and thus would not qualify as anticipating references, those references could still render the subject matter of the `094 patent obvious. The distinctions that the defendant cites between the two patents are only relevant to the obviousness inquiry to the extent that those differences would have made the invention in the `094 patent non-obvious to one with skill in the art.
2. The Oltimer's Fly Wrap
The Oltimer's fly wrap was practically identical to the defendant's claimed invention, except that it contained plush binding material only on the upper and lower edges of the esh panel but not along the side edges (referred to as the "interior marginal edge" and exterior marginal edge" in the Court's claim construction order). See Motion, Ex. 3 (containing a picture of the Oltimer's fly wrap); McQuillen Decl., Feb. 28, 2001, Exs. A D (same). The purpose of the Oltimer's fly wrap — to protect a horse's legs from flies without chapping the horse's legs and while allowing the flow of air and heat — was the same as the invention claimed in the `094 patent.
The parties dispute whether the Oltimer's fly wrap constitutes prior art under section 103. Under section 102(b), an invention that is on sale or in public use in the United States more than one year prior to the date of the patent application constitutes prior art for both section 102 and section 103. See 35 U.S.C. § 102 (b); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1574 (Fed. Cir. 1995) ("[A] non-anticipating public use more than one year before the claim's effective filing date may render the claim invalid for obviousness under 35 U.S.C. § 103."). Jeanne McQuillen, the inventor of the Oltimer's fly wrap, used her invention publicly and sold at least two dozen sets in the spring and summer of 1993, more than one year before the `094 patent's filing date. See McQuillen Decl. ¶¶ 3-4 (public use); id. ¶ 6 (on sale); id. Ex. B (containing receipts for sales of the Oltimer's fly wrap).
The defendant contends that the Oltimer's fly wrap does not constitute prior art for three reasons: (1) the Oltimer's fly wrap did not contain all the elements of the invention claimed in the `094 patent such as the plush binding material along the marginal edges; (2) the Oltimer's fly wrap did not function as effectively as the defendant's invention; and (3) McQuillen's declaration is not corroborated.
The defendant's first argument is without merit. As discussed supra, a prior art reference need not include all the limitations present in a patent to be potentially invalidating for obviousness. The plaintiff does not contend that the Oltimer's fly wrap renders the `094 patent invalid for anticipation; she is instead asserting that one with ordinary skill in the art would have regarded the `094 patent as obvious given what is taught by the Oltimer's fly wrap. The `094 patent may be obvious even if the Oltimer's fly wrap did not share all the same elements. For instance, the absence of plush binding material along the marginal edges of the Oltimer's fly wrap and the presence of surrey fringe as an additional deterrent to flies on the bottom of the Oltimer's fly wrap are pertinent to the obviousness analysis only to the extent that those differences would have made the invention in the `094 patent non-obvious to one with skill in the art. Even if a prior public use or sale does not anticipate, the invention is still prior art for the purpose of determining obviousness. See Elmer, 67 F.3d at 1574.
The defendant's second argument — that the Oltimer's fly wrap did not function as effectively as the invention claimed in the `094 patent — is also unpersuasive. The defendant notes that the mesh panel McQuillen used cracked after only a few weeks' use, that the Oltimer's fly wrap was designed to prevent flies from landing on a horse's leg rather than to stop flies from crawling under the wrap, and that McQuillen ultimately stopped making the Oltimer's fly wrap. See McQuillen Decl. ¶¶ 6-7 (noting that McQuillen stopped making the wraps because the mesh material she was using was not sufficiently flexible and cracked after washing). In the defendant's view, the flexibility of the mesh panel is a critical element of the invention claimed in the `094 patent. See Gun-Munro Decl., Apr. 17, 2001, ¶¶ 12, 20. None of those arguments undermine the significance of the Oltimer's fly wrap as a potentially invalidating prior art reference. A single sale or offer to sell is enough for an invention to qualify as prior art. See Intel Corp. v. International Trade Comm'n, 946 F.2d 821, 830 (Fed. Cir. 1991). A prior art reference does not have to work as effectively as the patented invention (or even function at all) to qualify as prior art for the purpose of an obviousness inquiry. See Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) ("Even if a reference discloses an inoperative device, it is prior art for all that it teaches."); see also Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (citing Beckman Instruments); Pfund v. United States, 40 Fed. Cl. 313, 348 (Fed.Cl. 1998) (same). Thus, even if the Oltimer's fly wrap had certain problems that precluded its widespread commercial success, the reference still qualifies as prior art in the Court's obviousness analysis.
Finally, the defendant's third contention — that McQuillen's declaration is not corroborated and cannot support summary judgment — is also unfounded. The defendant argues that McQuillen's declaration must be corroborated in order to find the `094 patent invalid. See Oney v. Ratliff, 182 F.3d 893, 896 (Fed. Cir. 1999) (noting that the "uncorroborated oral testimony of . . . the inventor and his close associates would be insufficient to prove invalidity"); Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (outlining eight factors for evaluating the credibility of an interested witness). While the Federal Circuit used to apply the corroboration requirement only to witnesses with an interest in the litigation, it has recently extended the requirement to uninterested witnesses as well. See Finnigan Corp. v. International Trade Comm'n, 180 F.3d 1354, 1367 (Fed. Cir. 1999) (holding that corroboration is required of any witness whose testimony alone is asserted to invalidate a patent and distinguishing Thomson, S.A. v. Quixote Corp., 166 F.3d 1172, 1176 (Fed. Cir. 1999)). Here, however, McQuillen's testimony is corroborated by the sales receipts from July 1993 and the presence of similar materials in her fabrication room. The Court therefore need not rely exclusively on McQuillen's testimony to determine that her invention was on sale more than one year before the `094 patent's filing date, so her invention qualifies as a prior art reference for obviousness purposes.
The defendant also questions whether McQuillen's declaration is trustworthy for a variety of reasons, including McQuillen's unwillingness to sign another declaration prepared by the defendant, some confusion in the precise meaning of her initial declaration, and her alleged bias in dealing with the defendant's counsel. However, none of the defendant's complaints address the content of the Oltimer's fly wrap or whether McQuillen actually sold the wrap. Indeed, it appears that the defendant's arguments address anticipation rather than obviousness. The defendant disputes whether the Oltimer's fly wrap was operable and whether it contained all the elements of the invention disclosed in the `094 patent, but the defendant has not disputed that McQuillen actually sold the Oltimer's fly wrap and that the device was constructed as she claims. Since the defendant has also failed to produce any evidence of McQuillen's bias and raises only immaterial factual disputes, a reasonable jury could only find that the Oltimer's fly wrap constitutes prior art as being in public use and on sale and that the wraps are practically identical to the defendant's invention other than the absence of plush binding material on the marginal edges and the absence of a flexible mesh panel.
3. The British Application
Finally, the plaintiff asserts that the British application constitutes prior art since it was published on October 13, 1993. See 35 U.S.C. § 102 (a) (noting that a reference that is "described in a printed publication in . . . a foreign country . . . before the invention thereof by the applicant for patent" constitutes prior art). The British application discloses a protective leg wrap with a rectangular panel, a cotton binding around the entire edge of the panel to reduce chaffing and rubbing, and a fastening means. See Motion, Ex. 4 (containing the British application). The British application is designed to protect a horse's legs from impact injuries and contains a non-porous laminated panel rather than a flexible mesh material. While the application does not teach the use of a flexible mesh panel or the use of plush material to prevent insects from crawling under the leg wrap, it does disclose the use of a rectangular panel, the use of soft material around the entire edge of the panel to prevent Chaffing, and the use of fastening means similar to those found in the `094 patent.
B. The Level of Ordinary Skill in the Art
The level of ordinary skill in the art depends on the inventor's education, the education of others working in the field, and the complexity of the technology at issue. See Ryko Mfg. Co., 950 F.2d at 718. Here, the defendant contends that a person with ordinary skill in the art is one who is familiar with: (1) a horse's anatomy; (2) a horse's responses to flies, such as bleeding, stomping, irritability, and kicking; (3) the danger of a horse ingesting fly eggs by licking its legs to relieve the irritation; (4) various stable and pasture conditions; (5) suitable materials to be applied to horses for effective and comfortable wear by the horses over a sustained period; (6) the requirements for the material that makes up the fly wraps, such as durability, washability, and sewing techniques; and (7) other commercial products on the market addressing the problem of flies. See Opposition at 17 (citing Luger Decl., Apr. 17, 2001, ¶ 13). The defendant cites an expert who owns or is otherwise very familiar with horses as the person with ordinary skill. See Luger Decl. ¶ 2. The plaintiff, however, contends that the level of skill in the art is a person with some formal education but little experience in manufacturing protective devices for animals with no special skills or training. In the plaintiffs view, the person with ordinary skill in the art would be familiar with horses and the problems they have with flies. See Motion at 8-9.
The parties' positions are somewhat unusual. Typically, the party seeking to establish invalidity through obviousness will argue that the level of skill in the art is high since inventions are more likely to be obvious to one who is highly skilled, while the patent-holder will assert that the level of skill is low, increasing the probability that an invention would not have seemed obvious. If the Court were to accept the defendant's view of the level of skill in the art, it would be even more likely that the invention claimed in the `094 patent would have been obvious, because a person who is familiar with horses' anatomy, responses to flies, and the materials necessary to address that problem would be even more likely to have knowledge of the various techniques and materials to prevent irritation caused by flies. Thus, because it must resolve disputed issues of fact in favor of the non-moving party, the Court hereby adopts the plaintiffs view of the level of ordinary skill in the art as one who is familiar with horses and the problems they have with flies and who possesses some formal education but with little or no experience in fabricating devices for animals and no special skills or training. The Court does so because the plaintiffs formulation of the level of skill in the art is actually more helpful to the defendant than that offered by the defendant.
C. The Differences Between the Invention and the Prior Art
When considering the Oettel patent and the Oltimer's fly wrap together, there are few differences between the prior art references and the invention disclosed in the `094 patent. The parties do not dispute that the Oltimer's fly wrap is identical to the `094 invention with two exceptions: (1) the Oltimer's fly wrap did not contain plush binding material along the marginal edges of the mesh panel and instead only had plush material on the upper and lower edges of the panel; and (2) the Oltimer's fly wrap did not employ a flexible material for the mesh panel. The Oettel patent also only contains plush binding material along its upper and lower edges as opposed to along all the edges of the mask. The shape of its flexible mesh panel is also distinct since it is applied to the horse's head rather than its leg and since the panel has a pair of pockets for the eyes of the horse. Finally, the Oettel patent only uses one Velcro strap, while the `094 patent suggests using at least two sets of straps. The British application does not contain a mesh panel; instead, it teaches a non-porous, laminated panel. It is designed to protect a horse's leg from impact injuries, not to prevent insects from crawling under the panel.
D. Objective Indicia of Non-Obviousness ("Secondary Considerations")
Another factor relevant to the obviousness inquiry is the presence of objective indicia of non-obviousness such as commercial success, long felt but unsolved needs, and the failure of others to succeed in addressing those needs. The defendant has presented several pieces of evidence that she characterizes as objective indicia of non-obviousness. First, the defendant contends that her invention was immediately commercially successful. Her sales grew exponentially in the first several years and she eventually executed a license and transfer agreement worth over $400,000. See Def.'s Exs. in Supp. of Opp'n to Pl.'s Mot. for Summ. J. ("Defendant's Exhibits"), Apr. 17, 2001, Ex. 10 (detailing the defendant's sales); id Ex 5 (containing the license agreement); Gun-Munro Decl. ¶ 16 (describing the license agreement). Second, the defendant asserts that there was a long-felt but unsolved need to protect horses' legs from flies without the use of insecticide and other sprays. See Luger Decl. ¶¶ 6-7. To illustrate that her product represented an important breakthrough in protecting horses' legs from flies, the defendant provides a positive review of her product in a horse magazine. See Defendant's Exhibits, Ex. 13 (containing the article). Third, the defendant notes that several companies have copied her product and that she has repeatedly sent cease and desist letters to alleged infringers. See Gun-Munro Decl. ¶ 24; Defendant's Exhibits, Exs. 26 28 (containing examples of allegedly infringing products and sample cease amid desist letters). Finally, the defendant also presents an expert declaration in which a riding instructor and inventor indicates that she believes that the defendant's product is "a significant addition to the equine care" that would have been non-obvious in 1994. Luger Decl. ¶ 10.
Because the plaintiffs claim of obviousness arises on summary judgment, the Court must accept the defendant's evidence as true, although the plaintiff has questioned some of the evidence by noting the correlation between the defendant's sales and her advertising expenditures, the defendant's overall net loss of over $20,000, and the lack of any evidence demonstrating that the defendant's commercial success was related to the innovations disclosed in the `094 patent rather than simply her marketing techniques. The defendant has produced some evidence of commercial success and has shown that the invention disclosed in the patent was that which was commercially successful, so the defendant has established prima facie evidence of a nexus between the merits of her invention and its commercial success. See Ryko Mfg. Co., 950 F.2d at 719.
That does not mean, however, that summary judgment is inappropriate. Where there are only minor differences between the claimed invention and the teachings of the prior art, objective indications of non-obviousness alone are not enough to overcome a clear and convincing demonstration of obviousness. See B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1583 (Fed. Cir. 1996) ("Considering the minor difference between the claimed invention and the teachings of [a prior art reference], the secondary considerations were not sufficiently compelling."); Ryko Mfg. Co., 950 F.2d at 719-20 (affirming a district court's grant of summary judgment even where the patent-holder had presented evidence of commercial success and noting that a district court may determine that secondary considerations do not carry sufficient weight to override a determination of obviousness based on primary considerations). It is important that none of the defendant's evidence — including the expert's declaration — compares the defendant's invention to the prior art references, especially the Oltimer's fly wrap, which was substantially identical. Moreover, because McQuillen made and sold the Oltimer's fly wrap before the defendant invented her fly wraps, the defendant cannot claim to have been the person to address the long-felt but unsolved need for leg wraps.
Thus, resolving all evidence and justifiable inferences in favor of the defendant, the Court finds that the objective indicia of non-obviousness weigh in favor of the defendant but are not of sufficient weight to override a determination based on the primary considerations that her invention would have been obvious. See Ryko Mfg. Co., 950 F.2d at 719 ("We conclude that such a determination can be made as long as the secondary considerations are contemplated by the court."). With no evidence that one with ordinary skill in the art would have regarded the defendant's invention as non-obvious in light of the prior art references teaching the very techniques employed by the `094 patent, it is difficult for the defendant to successfully oppose summary judgment.
E. The Court's Conclusion Regarding Obviousness
In viewing the scope and content of the prior art, the level of ordinary skill in the art, the differences between the prior art and the subject matter of the `094 patent, and objective indicia of non-obviousness, it is apparent that a reasonable jury could only conclude that the subject matter of the `094 patent would have been obvious to one with skill in the art at the time the defendant invented the fly wraps. Accordingly, the plaintiff is entitled to summary judgment of invalidity for obviousness under section 103.
The only differences between the Oltimer's fly wrap and the defendant's invention are the presence of plush material along the marginal edges and the use of flexible mesh material in the device claimed in the `094 patent. The defendant's use of plush material along the marginal edges in order to keep flies from crawling under the marginal edges would have been obvious to one with ordinary skill in the art at the time of the defendant's invention. Indeed, the use of plush material to keep insects away from a horse's leg is the very innovation disclosed in the Oltimer's fly wrap and the Oettel fly mask. Extending the plush material from the upper and lower edges to the marginal edges is precisely what those prior art references teach and would have been obvious to one with ordinary skill in the art. In fact, the British application teaches placing a binding material around the entire edge of the leg wrap.
As for the use of a flexible material for the mesh panel, that is also expressly taught by the Oettel patent and thus would have been obvious to one with skill in the art. "A suggestion or motivation to combine [elements in various prior art references] generally arises in the references themselves, but may also be inferred from the nature of the problem or occasionally from the knowledge of those of ordinary skill in the art." Al-Site Corp. v. VSI Int'l. Inc., 174 F.3d 1308, 1323-24 (Fed. Cir. 1999); see Motorola. Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997) ("[T]he suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art."). One with ordinary skill in the art presented with the Oettel patent and the Oltimer' s fly wrap would have regarded the subject matter in the `094 patent as obvious.
The Court is mindful that the plaintiff must establish that the invention disclosed in the `094 patent would have been obvious by clear and convincing evidence for the Court to invalidate the patent. Similarly, the Court appreciates that there must be no genuine issues of material fact for summary judgment to be appropriate. However, the defendant does not dispute these facts: (1) the Oltimer's fly wrap was on sale and in public use in the United States more than one year before the filing date of the `094 patent; (2) the Oltimer's fly wrap was identical to the `094 invention with the exception of the presence of plush binding means along the marginal edges and the use of a flexible mesh panel; (3) the Oettel patent and the Oltimer's fly wrap teach using plush material to keep insects from crawling under a mesh panel; (4) the British application teaches placing soft material around the entire edge of the panel; and (5) the Oettel patent teaches the use of a flexible mesh material. Given those undisputed facts, the plaintiff has established with clear and convincing evidence that one with ordinary skill in the art would have regarded the defendant's invention as obvious. No reasonable jury could find otherwise, even assuming a very low level of skill in the art and giving the defendant's evidence of objective indicia of non-obviousness full weight.
Thus, there are no genuine issues of material fact, and the plaintiff has established by clear and convincing evidence that the differences between the subject matter claimed in the `094 patent 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. Accordingly, the plaintiffs motion for summary judgment of invalidity is GRANTED as to obviousness.
III. WHETHER THE `094 PATENT IS INVALID FOR THE ADDITION OF NEW MATTER
Because the Court concludes that the `094 patent is invalid on obviousness grounds, the Court need not consider whether the patent is also invalid for the addition of new matter or the failure to file a proper supplemental oath.
IV. WHETHER THE `094 PATENT IS UNENFORCEABLE DUE TO THE DEFENDANT'S INEQUITABLE CONDUCT
Finally, because the Court concludes that the `094 patent is invalid on obviousness grounds, the Court need not consider whether the patent is unenforceable due to the defendant's allegedly inequitable conduct.
CONCLUSION
For the foregoing reasons, the plaintiffs motion for summary judgment of invalidity is GRANTED as to obviousness, rendering adjudication of the new matter and inequitable conduct issues unnecessary.
IT IS SO ORDERED.
JUDGMENT
The Court having granted the plaintiffs motion for summary judgment of invalidity for obviousness by order dated May 22, 2001, it is hereby ordered that judgment be entered in favor of the plaintiff and against the defendant.
IT IS SO ORDERED.