HITACHI KOKI CO., LTD. v. DUKAS

MOTION for Summary Judgment

D.D.C.December 19, 2007

The complaint erroneously names the defendant as Jon W. Dukas. The proper spelling1/ of defendant’s last name is Dudas, as indicated in the first line of the complaint. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA ) HITACHI KOKI CO., LTD., ) ) Plaintiff, ) ) v. ) Civil Action No. 07-cv-01504 (ESH) ) JON W. DUDAS, Director, )1/ United States Patent And Trademark Office ) ) Defendant. ) ) ) DEFENDANT’S MOTION FOR SUMMARY JUDGMENT Defendant Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“USPTO”), hereby moves pursuant to Federal Rule of Civil Procedure 56 for an order granting defendant summary judgment on the grounds that no genuine issue of material fact exists and defendant is entitled to judgment as a matter of law. In support of this motion, defendant files this memorandum of law as well as his statement of material facts not in dispute. Respectfully submitted, s/ Jeffrey A. Taylor JEFFREY A. TAYLOR, D.C. BAR # 498610 United States Attorney s/ Rudolph Contreras RUDOLPH CONTRERAS, D.C. BAR # 434122 Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 1 of 34 Assistant United States Attorney s/ Michelle N. Johnson MICHELLE N. JOHNSON, D.C. BAR # 491910 Assistant United States Attorney United States Attorney's Office Civil Division 555 4th Street, N.W. – Room E4212 Washington, D.C. 20530 (202) 514-7139 COUNSEL FOR DEFENDANT Of Counsel: STEPHEN WALSH Acting Solicitor JOSEPH G. PICCOLO SYDNEY O. JOHNSON, JR. Associate Solicitors United States Patent and Trademark Office Alexandria, Virginia Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 2 of 34 The complaint erroneously names the defendant as Jon W. Dukas. The proper spelling1/ of defendant’s last name is Dudas, as indicated in the first line of the complaint. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA ) HITACHI KOKI CO., LTD., ) ) Plaintiff, ) ) v. ) Civil Action No. 07-cv-01504 (ESH) ) JON W. DUDAS, Director, )1/ United States Patent And Trademark Office ) ) Defendant. ) ) ) DEFENDANT’S MEMORANDUM OF LAW IN SUPPORT OF HIS MOTION FOR SUMMARY JUDGMENT Defendant Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“USPTO”), hereby moves pursuant to Federal Rule of Civil Procedure 56 for an order granting defendant summary judgment on the grounds that no genuine issue of material fact exists and defendant is entitled to judgment as a matter of law. As the evidence before the Court establishes, Hitachi Koki Co., Ltd. (“Hitachi”)’s representative claim 1 was not patentable because, in light of the prior art references, the claim was obvious. This finding, which was reached by the Board of Patent Appeals and Interferences (the “Board”), is supported by substantial evidence and should therefore be affirmed by the Court. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 3 of 34 A patent is divided into a number of sections including a drawing and specification2/ (i.e., a written description) section. At the end of the specification is a set of claims, which establishes the metes and bounds of the patent – the same way in which a lot/plot description defines the boundaries of real property. The USPTO examines claims in each application to determine whether claims are patentable, or should be rejected for failing to satisfy a condition for patentability such as obviousness under 35 U.S.C. § 103. 2 I. PRELIMINARY STATEMENT This case concerns the denial of a patent regarding a desk-top cutting machine with tiltable saw on the ground that the representative claim was obvious. A patent may not be afforded to a party if the invention is “obvious” in light of existing references, or prior art. 2/ Specifically, 35 U.S.C. section 103 bars the USPTO from issuing a patent 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.” This test is commonly referred to as the obviousness test for patentability. The Supreme Court has recently discussed the standard for obviousness in KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007). There, the Court held that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. . . . When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” Id. at 1739, 1742. Plaintiff Hitachi Koki Co., Ltd. (“Hitachi”) requested a reissue of its patent under 35 U.S.C. § 251, but the USPTO determined Hitachi’s claims could not be reissued. In reaching its conclusion, the USPTO Board of Patent Appeals and Interferences (the “Board”) identified Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 4 of 34 3 several prior art references that bore on the obviousness of claim 1, the claim Hitachi stated was representative of all the claims. Two references each describe most of the invention, with the remainder of the claim, i.e., a motor offset from the saw blade, being expressly found in the other three prior art references. Specifically, the Hitachi patent’s prior art sections disclose the features of the claimed saw except for the saw and motor shafts being shifted away from each other enough to permit 45E descension of the saw. The Board found that a prior patent issued to Ito shows a similar saw except for the shifted shafts. Furthermore, the Board found that the missing feature identified in Hitachi’s patent – i.e., the ability to use the saw to make cuts at + 45 degrees – is disclosed in the following additional prior art references: Johnson; Langworthy; and Ambrosio. Specifically, Johnson discloses a saw blade set away from its motor by a belt permitting 45E or greater cuts, without obstruction. Langworthy also shows the cutting capability of a saw, when displaced from its motor, to allow for cutting at various angles. Ambrosio similarly discloses a motor, belt, saw blade combination for varying the angle of cutting relative to the work table. All of these secondary references show the mechanical position of the motor relative to the blade and, when there is displacement, larger angles for cutting are achievable. In sum, the problem identified by Hitachi – i.e., the need to permit angular cuts + 45 degrees without turning the saw – was in essence solved by the prior art references. Hitachi’s drawings of the prior art and Ito show claim 1, except for displacement of the motor enough from the blade to permit varied cutting, something that in fact is shown by the three other references. These references also demonstrate the benefits of achieving larger angle cutting. Thus, in view of the prior art, the USPTO properly established a prima facie case of obviousness because it is Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 5 of 34 4 apparent that persons having ordinary skill in the art would have understood the materials and modifications that would be required to make and use inexpensive desk-top cutting machines, similar to Hitachi’s, capable of making angular cuts at + 45 degrees. The decision of the Board should be affirmed. Because this Court reviews USPTO findings of fact under the Administrative Procedure Act’s (“APA”) substantial evidence standard of review, the burden is on Hitachi to show that a finding is not supported by substantial evidence. In this case, however, the voluminous findings leading to the Board’s obviousness finding are all supported by substantial evidence and, thus, the record supports summary judgment in favor of the USPTO Director. II. FACTUAL BACKGROUND A. Procedures Regarding Reissue Applications. Pursuant to 35 U.S.C. § 251 a patentee may surrender his or her patent if a defect is found. The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. 35 U.S.C. § 251. Until a reissue application is granted or denied, the patent shall remain in effect. 37 C.F.R. § 1.178(a). An application for reissue must contain the entire specification, including the claims, and the drawings, of the patent. 37 C.F.R. § 1.173(a). A reissue application will be examined in the same manner as a newly submitted application and will be subject to all of the requirements of the rules related to newly submitted applications. 37 C.F.R. § 1.176(a). When the USPTO receives a patent application, it is assigned to a patent examiner for examination of the application and claims. 35 U.S.C. § 131. Thus, a patent owner’s filing of a reissue application places the claims in examination before a USPTO examiner the same as Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 6 of 34 Pursuant to LCvR 7(n), an appendix containing the parties’ exhibits will be filed with3/ the Court within ten days following the final memorandum concerning defendant’s motion. LCvR 7(n). 5 though the claims were being submitted in the first instance. As with a newly submitted patent application, the examiner considers whether the application satisfies the conditions for patentability. 35 U.S.C. § 101 et seq. One of the conditions is that the claims in the application must not be obvious under 35 U.S.C. § 103. If the examiner determines that a legal requirement has not been satisfied, he or she issues a “rejection” setting forth the pertinent grounds. 35 U.S.C. § 132; 37 C.F.R. § 1.104. In response to a rejection, the applicant may (i) amend the rejected claim and/or (ii) argue against the rejection. 37 C.F.R. § 1.111. A second or subsequent rejection by the examiner may be considered a “final rejection.” 37 C.F.R. § 1.113. An applicant may appeal a final rejection to the USPTO Board of Patent Appeals and Interferences. 35 U.S.C. § 134. On appeal, the Board can affirm, reverse or vacate the examiner’s decision. 35 U.S.C. § 134. If the Board affirms the examiner’s rejection of the application, the applicant may then either appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. § 141 or bring a civil action in the U.S. District Court for the District of Columbia under 35 U.S.C. § 145. B. Hitachi’s Reissue Application. On June 20, 1995, the USPTO issued U.S. Patent Number 5,425,294 to Hitachi (“Hitachi patent”). Exhibit (“Ex.”) 1 at 1. This patent disclosed a desk-top cutting machine with a tiltable3/ saw. On June 20, 1997, Hitachi filed a reissue application under 35 U.S.C. § 251 of the Hitachi patent, resulting in claims 1-3, 26, 27, 37, 48-56 and 58-62 being part of that application. Ex. 2 (Board’s Decision on Appeal) at 2. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 7 of 34 References to “col.” are to the column in the patent under which material appears. 4/ “Lines” refers to the lines of text being referred to, which can be determined by reference to the line numbers appearing in the center column on the pages. 6 Claim one reads as follows: A desk-top cutting machine, comprising: a base on which a workpiece to be cut is supported, said base including a top surface; a turntable rotatably disposed in said base and including a top surface; a holder supported by said turntable for tilting transversely in opposite directions about a zero-tilt angle position; a circular saw blade; 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; a circular saw assembly having a motor covered by a housing; a motor shaft of said motor being disposed in parallel with and above said saw shaft; 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. Ex. 1, col. 4, lines 15-41.4/ Hitachi’s patent discloses a prior art cutting machine. Ex. 1, Sheet 3, Figures 6 and 7; col. 1, lines 11-33. Hitachi patent’s prior art sections reveal all of claim 1 except that the saw shaft and the motor shaft are spaced apart in parallel planes. Ex. 1, Sheet 3, Figures 6 and 7; col. 1, lines 11-33. In addition, the Hitachi patent’s prior art sections disclose that the saw shaft and the motor shaft lie in a single plane. Ex. 1, Sheet 3, Figures 6 and 7; col. 1, lines 11-33. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 8 of 34 In addition to the identified prior art references, the Board considered Hitachi’s prior5/ patent as relevant prior art, which was admitted by Hitachi. Ex. 2, at 4. 7 Hitachi relied on claim 1 as representative of all of its reissue application claims. Ex. 2, at 3 (quoting Hitachi’s statement: “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.”). See also id. at 4 (“Accordingly, we proceed to review the examiner’s rejections of the invention appellant claims, as represented by Claim 1, under 35 U.S.C. § 103 . . . .”). The Board of Patent Appeals and Interferences (the “Board”) affirmed the examiner’s rejection of Hitachi’s representative claim 1 finding that the claim was unpatentable because it was obvious in light of prior art. Id. at 23-24. See also Ex. 3 (Board’s Decision on Request for Rehearing), at 2-4. C. The Board’s Decision Affirming the Denial of Hitachi’s Reissue Application. 1. Prior Art Considered by the Board. The Board identified several prior art references that led to its conclusion that Hitachi’s5/ claim 1 was obvious. Ex. 2, at 23-24. (a) The Ito Patent Prior art U.S. Patent 5,357,834 issued to Ito et al. (“Ito”) is identical to Hitachi’s claim 1 except for the saw shaft and the motor shaft being spaced apart in parallel planes. Ex. 4, Figure 2; col. 1, lines 10-22. Specifically, Ito discloses the saw shaft and the motor shaft lie in separate planes. Id. Figure 2; col. 4, lines 10-53. Notably, Ito addressed the problem faced by Hitachi, i.e., to use the saw to cut at a 45Eangle, by discussing that the motor shaft is positioned parallel to the saw blade and the gear train must involve a number of parts and consequently becomes costly. Id. at col. 1, lines 23-30. Ito’s solution to the problem was to use beveled gears. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 9 of 34 8 Id. Figure 2, col. 4. (b) The Johnson Patent On March 11, 1986, U.S. Patent 4,574,670 was issued to George W. Johnson (“Johnson”) and discloses a cutting machine. Ex. 5. The Johnson patent discloses a motor shaft in parallel to the saw shaft, shifted by a distance greater than the radius of the saw blade. Ex. 5, Figure 1; col. 5, lines 49-59. The Johnson patent contains the capability for ±45E positioning of the cutting member positioning mechanism 17. Ex. 5 at col. 5, lines 13-15; col. 7, lines 9-12. Thus Johnson states that an additional axis of rotation “permits smaller or larger angles of cut in addition to the plus or minus 45E capability of the cutting member positioning mechanism.” Id. col. 7, lines 9- 12. See also Ex. 5, Figure 1. (c) The Langworthy Patent On May 30, 1922, U.S. Patent 1,417,669 was issued to Mitchell Langworthy (“Langworthy”). Ex. 6 (United States Patent No. 1,417,669). This patent discloses a surgical saw cutting machine. Id. col.1, line 10. Langworthy presents a surgical saw “by means of which cranial and other incisions or cuts may be made with accuracy and precision . . . .” Id. col. 1, lines 10-14. Langworthy utilized a “well known or standard type of electric motor 1 . . . and the saw 3 is of the disk type, of which various sizes may be used to adapt it to different conditions.” Ex. 6 at col. 2, lines 74-76. The Langworthy patent discloses that “[t]he arm may readily be manipulated to attain cuts at various angles and depths for cranial and other cuts, and the laterally disposed saw affords an instrument which may be manipulated with facility and accuracy in the operations.” Id. col. 4, lines 69-74. Langworthy’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id. Langworthy’s patent provides that “[t]he saw may Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 10 of 34 9 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.” Id. at col. 3, lines 49- 53. (d) The Ambrosio Patent On December 19, 1961, U.S. Patent 3,013,592 was issued to Ambrosio et al. (“Ambrosio”). Ex. 7 (United States Patent No. 3,013,592). The patent discloses a cutting machine, specifically a tilting table saw with a “new and improved means for varying the angular position of the saw blade relative to the work supportable table. Id. at col. 1, lines 8-11. The Ambrosio patent discloses that the motor shaft is parallel to the saw shaft. Id., Figures 1 and 2; col. 1, line 70 - col. 2, line 63. The Ambrosio patent discloses that the motor shaft is shifted from the saw shaft by a distance greater than the radius of the saw blade. Id., Figures 1 and 2; col. 1, line 70 - col. 2, line 63. Ambrosio’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id., Figures 1 and 2; col. 1, line 70 - col. 2, line 63. 2. The Board Concludes that Representative Claim 1 is Obvious. The Board issued a final agency action adverse to Hitachi regarding Hitachi’s re-issue application. Ex. 2. Based upon Hitachi’s statement to the Board, the Board limited its review to Hitachi’s claim 1. Ex. 2, 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.” ); see also id. at 4 (“Accordingly, we proceed to review the examiner’s rejections of the invention appellant claims, as represented by Claim 1, under 35 U.S.C. § 103 . . . .”). The Board found the Hitachi’s patent discloses a prior art cutting machine. Ex. 2, at 12- 13. The Board found the Hitachi patent’s prior art sections show all of claim 1 except for the Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 11 of 34 10 saw shaft and the motor shaft being spaced apart in parallel planes. Id. at 12-13. Furthermore, the Board found the Hitachi patent’s prior art sections show that the saw shaft and the motor shaft “lie in a single plane.” Id. at 13. The Board found that the prior relevant art demonstrated that Hitachi’s representative claim 1 was obvious under 35 U.S.C. § 103. Specifically, the Board determined that Ito, which was prior relevant art, shows all of claim 1 except for the saw shaft and the motor shaft being spaced apart in parallel planes. Id. at 12-14. The Board found Ito shows that the saw shaft and the motor shaft “lie in separate planes[,]” and do not lie in “parallel planes[,]” and that Ito’s saw shaft and motor shaft are “in intersecting planes.” Id. at 14. The Board found Ito addressed the problem faced by Hitachi, i.e., to use the saw to cut beyond 20 degrees, by discussing that the motor shaft should be positioned parallel to the saw blade and “‘the gear train must involve a number of parts and consequently becomes costly.’ (Ito, col. 1, lines 29-30).” Ex. 2, at 15-16. The Board found Ito’s solution to the problem was “the use of expensive beveled gears.” Id. at 20. The Board found that the Johnson patent is relevant prior art. Id. at 8-12. The Board found that the Johnson patent discloses “‘±45E capability of the cutting member positioning mechanism 17’ (Johnson, col. 5, lines 13-15; col. 7, lines 9-12).” Id. at 16. The Board found that “persons having ordinary skill in the art would have understood from Johnson’s teaching that the sizes and configuration of his composite driving motor 41, drive train 43, and cutting member 19 impart ±45E capability to the cutting member.” Id. at 17. The Board found that the Langworthy patent is relevant prior art. Id. at 5-12. The Board found Langworthy has as a workpiece “a living body.” Id. at 17. The Board found Langworthy Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 12 of 34 11 has as a workpiece base “an operating table.” Id. at 17. The Board found that “persons having ordinary skill in the art would have understood that a surgeon utilizing Langworthy’s surgical saw would not have wanted to turn the living workpiece to make angular cuts to both sides of zero-tilt[,]” which was a problem faced by the Hitachi patent. Id. at 17. The Board noted that Langworthy instructs: ‘By utilization of my invention many different styles of incisions or cuts, with the instrument at various angles, may be made, and the saw manipulated to penetrate to unusual depths. The invention consists in certain novel combinations and arrangements of parts, involving the driving motor . . . and certain features of construction . . . .’ Id. at 17-18 (quoting Langworthy, at 1, lines 26-35). The Board noted that Langworthy states that “the saw 3 is of the disk type, of which various sizes may be used to adapt it to different conditions.” Id. at 18 (quoting Langworthy, at 1, lines 71-76). The Board found Langworthy’s Figures 2 and 3 show the motor shaft is parallel to the saw shaft. Id. at 18. The Board found Langworthy’s Figures 2 and 3 show the motor shaft is shifted from the saw shaft by a distance greater than the radius of the saw blade. Id. at 18. The Board found Langworthy’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id. at 19. The Board noted that “Langworthy contributed the following: ‘The arm may readily be manipulated to attain cuts at various angles and depths for cranial and other cuts, and the laterally disposed saw affords an instrument which may be manipulated with facility and accuracy in the operations.’” Id. at 19 (quoting Langworthy, at 2, lines 69-74). The Board determined that Ambrosio is relevant prior art. Ex. 2, at 5-12. The Board concluded that Ambrosio discloses that the motor shaft is parallel to the saw shaft. Id. at 19. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 13 of 34 12 The Board found Ambrosio discloses that the motor shaft is shifted from the saw shaft by a distance greater than the radius of the saw blade. Id. at 19-20. The Board found Ambrosio’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id. at 20. The Board found Johnson, Langworthy and Ambrosio each describe a motor shaft in parallel to the saw shaft, shifted by a distance greater than the radius of the saw blade. Id. at 21. The Board held that in view of the prior art shown in Hitachi’s accompanying specification and drawings, as well as the patents of Ito, Johnson, Langworthy, and Ambrosio, Hitachi’s representative claim 1 was obvious under 35 U.S.C. § 103. Id. at 23-24. 3. The Board’s Denial of Hitachi’s Request for a Rehearing. After the Board held claim 1 unpatentable, Hitachi requested rehearing, wherein it presented specific arguments to the Board. Ex. 8 (Request for Rehearing Under 37 C.F.R. 1.197(b)). In its request for rehearing, Hitachi contended that the Johnson, Langworthy, and Ambrosio patents should not have been considered relevant prior art in assessing the patentability of claim 1 because: (1) The pertinent passages of Johnson are directed to mitre cutting, not bevel cutting, as encompassed by claim 1 (Ex. 8 at 1-3); (2) Langworthy is in the surgery field and therefore is not analogous art (Ex. 8 at 3-4); and (3) Ambrosio is larger than a desktop cutting machine and therefore is not analogous art (Ex. 8 at 4). The Board denied Hitachi’s request for rehearing. Ex. 3, at 2. In doing so, the Board addressed Johnson and found that “based on Johnson’s teaching as a whole . . .” the Johnson Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 14 of 34 13 patent’s claimed compound angle disk cutting apparatus reasonably appears to have both + mitre cutting capability and + bevel cutting capability. Johnson’s Figure 3 reasonably supports our finding.” Ex. 3, at 3. In its decision denying rehearing, the Board also considered and rejected Hitachi’s arguments that Langworthy and Ambrosio were not analogous art. Id. at 4. Specifically, the Board rejected Hitachi’s notion that because Langworthy and Ambrosio are not of the same size or used for precisely the same reasons that they are not analogous art. Rather, the Board concluded that “‘the motor/saw designs utilized by the cutting machine appellant claims and those described by the cited prior art all have a basic parallel motor shaft/blade shaft configuration, for straight, mtire, bevel and compound cutting.’” Id. at 4 (quoting Board’s Decision on Appeal, at 5-6). The Board also found that Hitachi’s attack was improper because it was directed to “references individually” whereas the Board’s rejection of Hitachi’s patent was “based upon the teachings of a combination of references.” Id. III. ARGUMENT A. Standard of Review. 1. Summary Judgment In A Civil Action Under 35 U.S.C. § 145. Summary judgment pursuant to Fed. R. Civ. P. 56(c) is appropriate when the record shows that there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). In determining whether a genuine issue of material fact exists, the trier of fact must view all the facts, and the reasonable inferences to be drawn from them, in a light most favorable to the non-moving party. Anderson, 477 U.S. at 255. If the evidence Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 15 of 34 The U.S. Court of Appeals for the Federal Circuit has exclusive jurisdiction over any6/ appeal that may be sought in this case. 28 U.S.C. § 1295(a)(1) and (4). 14 favoring the non-moving party is “merely colorable, or is not significantly probative, summary judgment may be granted.” Id. at 249-50. In order to withstand summary judgment, the non- moving party is not at liberty to rest upon mere allegations or denials but must come forth with evidence establishing a material issue of fact for trial. Id. at 248. The mere existence of some factual dispute is insufficient to withstand summary judgment; there must be a genuine issue of material fact. Id. at 247-48. If the submitted evidence is of such a character that it would not permit a reasonable fact-finder to find in favor of the non-moving party, summary judgment is appropriate. Id. at 251. With respect to the USPTO administrative record, there can be no genuine issue as to what it contains. See Camp v. Pitts, 411 U.S. 138, 142 (1973); R.R. Donnelley & Sons Co. v. Dickinson, USPTO Director, 123 F. Supp. 2d 456, 458 (N.D. Ill. 2000). Because this case presently involves only the USPTO record, it stands as an appeal of agency action under the standards of the Administrative Procedure Act (“APA”), 5 U.S.C. § 701 et seq. See Mazzari v. Rogan, 323 F.3d 1000, 1004 (Fed. Cir. 2003) (holding that the USPTO is an agency subject to the APA, and therefore “a reviewing court must apply the APA’s court/agency review standards”). Accordingly, the Court may only set aside a factual finding which the plaintiff6/ shows is “unsupported by substantial evidence.” 5 U.S.C. § 706(2)(E); Mazzari, 323 F.3d at 1005. Substantial evidence “is something less than the weight of the evidence but more than a mere scintilla of evidence.” In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). It “means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 16 of 34 Notably, to the extent that Hitachi would seek to introduce any experts before this Court,7/ it would be statutorily obligated to pay for any experts designated by defendant. 35 U.S.C. § 145. 15 Consol. Edison Co. v. Nat’l Labor Relations Bd., 305 U.S. 197, 229 (1938). “[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence.” Consolo v. Fed. Maritime Comm’n, 383 U.S. 607, 620 (1966). “If the evidence in record will support several reasonable but contradictory conclusions,” the Court “will not find the Board’s decision unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative.” In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002). Review by the Court is generally limited to the evidence that was presented to the Board during the administrative proceedings. 5 U.S.C. § 706. If the parties present additional evidence to the Court, which on review under 35 U.S.C. § 145 may be done only in limited circumstances, the Court makes “de novo factual findings” regarding the newly presented evidence. Mazzari, 323 F.3d at 1005. But the Court must accept the Board’s ultimate decision as controlling unless Hitachi presents sufficient argument and evidence to overcome the deferential “substantial evidence” standard applied to the Board’s findings. Mazzari, 323 F.3d at 1005. If certain new evidence is permitted, the USPTO record is still the “evidentiary nucleus” of this case. Fregeau v. Mossinghoff, 776 F.2d 1034, 1042 (Fed. Cir. 1985). Hitachi is not permitted to “start over to prosecute its application before the district court unfettered by what happened” below. Id. at 1038. Rather, “the applicant has the laboring oar to establish error by the board.” Id.7/ 2. Obviousness. “The ultimate determination of whether an invention would have been obvious is a legal Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 17 of 34 16 conclusion based on underlying findings of fact.” In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006). For example, what a particular prior art reference discloses is a factual inquiry. Para-Ordnance Mfg., Inc. v. SGS Imp. Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Accord In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003) (“As persons of scientific competence in the fields in which they work, examiners and administrative patent judges on the Board are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art and the motivation those references would provide to such persons”). “Determining whether the claimed invention would have been obvious to a person of ordinary skill requires the finder of fact (a) to review the scope and content of the prior art, (b) to ascertain the level of ordinary skill in the art, and (c) to identify the differences between the prior art and the claimed invention.” Markman v. Lehman, 987 F. Supp. 25, 29 (D.D.C. 1997), aff’d, 178 F.3d 1306 (Fed. Cir. 1998). “The identification of analogous prior art is a factual question.” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). However, “[t]he ultimate determination of obviousness is a legal determination.” KSR Int’l Co. v. Telefax, Inc., 127 S. Ct. 1727, 1745 (2007). As explained by the Court: In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims. Id. at 1741-42. As shown below, the Board’s findings are supported by substantial evidence and the USPTO Director is entitled to judgment as a matter of law. Specifically, the Board properly Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 18 of 34 In its brief to the Board, Hitachi stated:8/ 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. Ex. 2, at 3. In view of Hitachi’s brief and argument, the Board addressed only claim 1. Id.; see also id. at 4 (“Accordingly, we proceed to review the examiner’s rejections of the invention appellant claims, as represented by Claim 1, under 35 U.S.C. § 103 . . . .”). In Hitachi’s Request for Rehearing to the Board, Hitachi maintained addressing only claim 1. Ex. 8. Based on Hitachi’s Request for Rehearing, the Board subsequently addressed only claim 1. Ex. 3. Thus, because Hitachi separately argued only claim 1 to the Board, that claim is representative for all of its claims. See, e.g., In re Dance, 160 F.3d 1339, 1340 n.2 (Fed. Cir. 1998) (requiring an appellant to separately argue claims for multiple claims to be addressed). Accordingly, defendant’s arguments are directed solely to representative claim 1. “A ‘person of ordinary skill in the art’ is a ‘hypothetical person who is presumed to9/ know the relevant prior art.” Markman, 987 F. Supp. at 36 (quoting In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). 17 determined that Hitachi’s representative claim 1 was obvious in light of the identified prior art. B. Substantial Evidence Supports the Board’s Finding that Hitachi’s Representative Claim 1 Would Have Been Obvious In View Of Hitachi’s Admitted Prior Art Or8/ Ito In Combination With Johnson, Langworthy Or Ambrosio. A new invention may not be patented 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[ ] to9/ which said subject matter pertains.” 35 U.S.C. § 103. As the Supreme Court has stated, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 127 S.Ct. at 1739. And, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” Id. at 1742. In supporting a determination of obviousness, the Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 19 of 34 18 USPTO should “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. at 1741. Accord Kahn, 441 F.3d at 988. As the Board found (Ex. 2, at 12-13), Hitachi’s admissions on the prior art show claim 1, except for the motor shifted from the blade to permit 45E descension of the blade. See Ex. 1, Figure 7 (displayed above). Specifically, Hitachi’s Figure 7 entitled “PRIOR ART” shows all of claim 1 except a distance between the saw shaft 9 and motor shaft 12, which would permit the motor to tilt 45E to the right without hitting the table 1. Ex. 1, Figure 7. This area of the prior art revealed that for tiltable-saws, the saw shaft 9 and the motor shaft 12 are in parallel with each other, and that this arrangement created a significant problem, as identified by Hitachi: Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 20 of 34 19 Description of the Prior Art FIGS. 6 and 7 show a conventional desk-top cutting machine in which a saw shaft 9 supporting a saw 10, and the shaft 12 of a motor 11 are connected to each other through toothed engagement to transmit the motive power of the motor to the saw. Since the saw shaft 9 and the motor shaft 12 are disposed in parallel with each other, the motor 11 projects sideward from a circular saw assembly 8. To tilt the circular saw assembly 8, a clamping lever 5 is loosened, a holder 6 is tilted, and the lever is thereafter tightened to keep the holder at a desired tilt angle. When a workpiece is normally cut by the tilted saw assembly 8, the angle of the desired tilt is usually 45 degrees. However, the end 15a of a motor housing 15 comes into contact with the top of base 1 when the saw assembly 8 is tilted rightward by an angle of 20 to 30 degrees, as shown in FIG. 7.” Ex. 1, at col. 1, lines 10-27 (emphasis added). Accordingly, the problem in this art was the motor hitting the table when the saw is tilted 20-30 degrees. As the Board found (Ex. 2, at 12-14), Ito provided a solution to the problem by using an angle between the saw shaft and motor shaft. Ito, Ex. 4, Figure 2 (displayed below): Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 21 of 34 20 That is, Ito discloses using an angle between motor shaft 42 and saw shaft 33 to avoid the problem of hitting item 6, when dropping the saw down for more-angled cutting. See also Ito, Ex. 4 at col. 1, lines 10-22. Specifically Ito provides: Description of the Prior Art In a conventional miter saw having a miter saw unit pivotable to incline a saw blade relative to a base: there has been a possibility that a cutting operation cannot be properly performed since a motor housing formed on the miter saw unit may abut on a work to be cut when the miter saw unit is inclined. To solve this problem, Japanese Laid-Open Utility Model Publication No. 63-49901 proposes to position a motor shaft of a motor in parallel with a Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 22 of 34 21 saw blade so as to preclude obstruction caused by a motor housing when a miter saw unit is pivoted. (Emphasis added). Thus, the Hitachi patent’s prior art sections and Ito show a saw blade shaft with a motor shaft and the problem of the motor’s housing hitting the work table, when the user tilts the saw past 20 degrees. Ex. 2 at 12-14. Such evidence is directly relevant to the question of obviousness. See KSR, 127 S.Ct. at 1742 (“to solve a problem . . . a person of ordinary skill has good reason to pursue the known options within his or her technical grasp”); Kahn, 441 F.3d at 988 (“the problem examined is . . . the general problem that confronted the inventor before the invention was made”). As to the missing feature of displacing the motor from the saw to permit greater angles of cutting, the Board found (Ex. 2, at 16-19) that three additional references (Johnson, Langworthy, and Ambrosio) each disclose that feature. Notably, Langworthy states: By the utilization of my invention many different styles of incisions or cuts, with the instrument at various angles, may be made, and the saw manipulated to penetrate to unusual depths. Ex. 6 at 1, lines 26-30 (emphasis added). Langworthy also states: The arm may readily be manipulated to attain cuts at various angles and depths for cranial and other cuts, and the laterally disposed saw affords an instrument which may be manipulated with facility and accuracy in the operations. Ex. 6 at 2, lines 69-74 (emphasis added). Specifically, Johnson (as shown below in Figure 1) expressly discloses “±45E capability Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 23 of 34 22 of the cutting member positioning mechanism 17.” Ex. 5 at col. 5, lines 13-15, col. 7, lines 9-12. Specifically, Johnson’s Figure 1 shows saw blade 19 displaced from motor shaft 41 by drive train 43. The shaft of saw blade 19 is parallel to “carry motor 41,” which is displaced from the saw shaft a distance more than the radius of the saw. Ex. 5 at col. 5, lines 49-59. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 24 of 34 23 Similarly, Langworthy, displayed above, shows the motor shaft 16 displaced from, and parallel to, the saw blade shaft at 22. Langworthy makes it clear that parallel shafts separated by a distance greater than the radius of the saw blade made “various angles” for cutting achievable. Ex. 6 at 1, lines 26-30, at 2, lines 69-74. Finally, Ambrosio discloses “a tilting table saw having new and improved means for varying the angular position of the saw blade relative to the work-supportable table.” Ex. 7 at col. 1, lines 8-11 (emphasis added). Also, Ambrosio discloses that the motor shaft is parallel to the saw shaft, shifted from the saw shaft by a distance greater than the radius of the saw blade, which may then be tilted in either direction by an angle greater than or equal to 45 degrees. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 25 of 34 24 Ambrosio, Ex. 7, Figure 1. As seen below, motor means 11 is parallel to the shaft of saw blade 10, separated by a distance greater than the radius of the saw blade. Ex. 7 at col. 1, line 70 - col. 2, line 63. As with Johnson and Langworthy, Ambrosio displays an “improved means for varying the angular position of the saw blade relative to the work-supportable table.” Ex. 7 at col. 1, lines 9- Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 26 of 34 25 11. Thus, these additional references teach the benefits of having larger angle cutting and all of them do so by having the motor shaft laterally displaced from the saw shaft. In addition, these three teachings on displacement of the motor show more than substantial evidence to modify Hitachi and Ito’s prior art saw by the distance-displacements expressly shown in the other references to achieve the above-discussed clear benefits of having larger angle-cutting possibilities and no hitting of the workpiece table when the user is seeking to cut at larger angles. See KSR, 127 S.Ct. at 1742 (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton”); In re Sovish, 769 F.2d 738, 742-43 (Fed. Cir. 1985) (when combining prior art teachings for obviousness skill is presumed, not something less); Berg, 320 F.3d at 1315 (USPTO examiners and administrative patent judges are “persons of scientific competence in the fields in which they work . . . informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art”). Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 27 of 34 26 For the convenience of the Court, the below chart shows each claim limitation and where it is described in the prior art: Claim 1 Prior Art Citations A desk-top cutting machine, comprising: Hitachi Figure 7, col. 1, lines 10-27 Ito Figure 2, col. 1, lines 10-17 a base on which a workpiece to be cut is supported, said base including a top surface Hitachi Figure 7, item 1 Ito Figure 2, item 2 a turntable rotatably disposed in said base and including a top surface Hitachi Figure 7, item 2 Ito Figure 2, item 5 a holder supported by said turntable for tilting transversely in opposite directions about a zero-tilt angle position Hitachi Figure 7, item 4 Ito Figure 2, item 8 a circular saw blade Hitachi Figure 7, item 10 Ito Figure 2, item 36 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 Hitachi Figure 7, item 9 Ito Figure 2 a circular saw assembly having a motor covered by a housing Hitachi Figure 7, items 11 and 15 Ito Figure 2 a motor shaft of said motor being disposed in parallel with and above said saw shaft Hitachi Figure 7, item 12 Ito, col. 1, lines 17-22 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 Johnson Figure 1 Johnson, col. 5, lines 13-15, 49-59 Johnson, col. 7, lines 9-12 Langworthy, Figure 1 Langworthy, col. 1, lines 1-30 Langworthy, col. 2, lines 74-76 Langworthy, col. 3, lines 49-53 Langworthy, col. 4, lines 69-74 Ambrosio, Figures 1 and 2 Ambrosio, col. 1, line 70 - col. 2, line 63 Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 28 of 34 27 As demonstrated in the above-referenced chart, each of the claimed limitations is described in the combination of Hitachi’s admitted prior art, Ito, Johnson, Langworthy, and Ambrosio. As the Board expressly stated in its decision denying Hitachi’s request for rehearing: The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’ KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007). ‘[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result . . . .’ KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. at 1740, 82 USPQ2d at 1395. ‘If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.’ Id. at 1740, 82 USPQ2d at 1396. ‘[I]f a technique has been used to improve one device, and a person or ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.’ Id. ‘Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.’ Id. at 1742, 82 USPQ2d at 1397. ‘[T]he results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.’ Id. at 1746, 82 USPQ2d at 1400. After all, as noted in KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007), ‘A person of ordinary skill is also a person or ordinary creativity, not an automaton.’” Ex. 3, at 4-5. Thus, the Board correctly held that claim 1 would have been unpatentable under 35 U.S.C. § 103 for obviousness in view of the foregoing prior art references. The Supreme Court’s decision in KSR Int’l Co. supports the Board’s conclusion in this case. KSR Int’l Co. involved automobile pedal and sensor technology. 127 S. Ct. at 1736. KSR developed an adjustable mechanical pedal for the Ford motor company and obtained a patent for the design. Id. Subsequently KSR was chosen by General Motors Corporation to supply adjustable pedal systems for Chevrolet and GMC light trucks that used engines with computer Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 29 of 34 28 controlled throttles. Id. To make its previously patented design compatible with the Chevrolet and GMC light trucks, KSR merely took its prior design “and added a modular sensor.” Id. One of KSR’s rivals, Teleflex, obtained a patent of an adjustable electronic pedal assembly containing an electronic pedal position sensor attached to the support member of the pedal assembly. Id. at 1737. Upon learning of KSR’s design for GMC, Telefax sent a letter warning KSR that its proposal would violate Telefax’s patent. Id. KSR refused to enter into a royalty arrangement with Telefax, so Telefax sued for patent infringement arguing that KSR’s pedal infringed on Telefax’s patent. The district court granted KSR’s motion for summary judgment, finding that Telefax’s patent was obvious. Id. at 1738. The Federal Circuit reversed. Id. The Supreme Court, in reversing the Federal Circuit, concluded that, in light of the relevant prior art, “attaching the sensor where both KSR and [the Telefax patent] put it would have been obvious to a person of ordinary skill.” Id. at 1744. The Court held that summary judgment in favor of KSR was appropriate, despite the presence of a conclusory expert affidavit that had been submitted addressing the issue of obviousness. “The ultimate judgment of obviousness . . .[,]” the Court held, “is a legal determination.” Id. at 1745. And, “[w]here, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment in appropriate.” Id. As in KSR Int’l Co., here, Hitachi’s representative claim 1 was obvious in light of the teachings of the relevant prior art. The Board here found that the relevant prior art all sought solutions to substantially the same problem, i.e., how to make compound angular cuts, including left and right 45 degree angular cuts, on a workpiece without flipping the workpiece. To solve the Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 30 of 34 29 problem, each of Johnson, Ambrosio, and Langworthy describes a compound angle disk cutting apparatus comprising ‘a circular saw assembly having a motor [is] disposed in parallel with and above the circular saw shaft’ as required for the cutting machine of [Hitachi’s] claim 1. Ex. 2, at 9-10. Because the Board’s findings concerning the obviousness of claim 1 are supported by substantial evidence and these supported-findings lead to the correct legal conclusion of obviousness, the USPTO Director is entitled to judgment as a matter of law. C. Substantial Evidence Supports the Board’s Findings Ito, Johnson, Langworthy and Ambrosio are Relevant Prior Art. In denying Hitachi’s request for rehearing, the Board explicitly addressed Hitachi’s argument that the prior art references were improper. Contrary to Hitachi’s position asserted before the USPTO, the prior art references identified by the USPTO are proper prior art references in regard to claim 1. When considering the question of obviousness, decision-makers commonly use printed publications showing technology that was known and existed prior to the time that the patent was applied for, with such publications generally referred to as “prior art” or “prior art references.” Markman, 987 F. Supp. at 29. Specifically, as to what is permissible prior art for patent cases, the Federal Circuit has held: Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 31 of 34 30 Bigio, 381 F.3d at 1325 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). Here, the Board found that, because all the references relate to saw-cutting, they are either from the same field of endeavor or reasonably pertinent to the problem of saw-cutting. Ex. 2, at 10-12. The relevancy of the prior art references becomes readily apparent when looking at claim 1. Claim 1 is in the saw-cutting field. Specifically, the claim is directed to a cutting base, with turntable and holder, a motor with specific placement, and “a circular saw blade.” Ex. 1, col. 4, lines 15-41. The relevant field for claim 1 therefore encompasses “a circular saw blade” cut. See, e.g., In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“the name of the game is the claim”). This field is the same as the field for Johnson, Langworthy, Ambrosio, and Ito. See Ex. 4 (Ito patent entitled “Miter Saw”); Ex. 5 (Johnson patent entitled “Multiple Angle Cutting Apparatus); Ex. 6 (Langworthy patent entitled “Surgical Saw”); Ex. 7 (Ambrosio patent entitled “Tilting Table Saw”). Specifically as it as it concerns the prior art references as found by the Board, the Johnson patent concerns the field of saw-cutting. See, e.g., Ex. 5 at 1 (prominently discussing cutting member 19). The Langworthy patent contains a circular saw for cutting. Ex. 6 (showing and discussing saw 3 throughout). The Ambrosio patent is concerned with a circular saw 10. Ex. 7. And Ito shows numerous embodiments for “saw blades” and the machinery associated with them. Ex. 4. Because the references all relate to circular saws, the central part of claim 1, every patent in this case is from that same field and thus the USPTO properly determined that these references were analogous prior art. Even assuming the prior art references were not in the same field as Hitachi, it is clear that the references were “reasonably pertinent to the particular problem with which [Hitachi] is Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 32 of 34 31 involved.” Bigio, 381 F.3d at 1325 (citations omitted). Hitachi was concerned with saw-cutting and how to prevent the motor from hitting the work base, or work table, in order to increase the possible angles of cut. See Ex. 1, at col. 1, lines 24-33: the end 15a of a motor housing 15 comes into contact with the top of base 1 when the saw assembly 8 is tilted rightward by an angle of 20 to 30 degrees, as shown in FIG. 7. For that reason, the workpiece cannot be cut at 45 degrees. Therefore, to cut the workpiece, the saw assembly 8 is tilted leftward, the workpiece is cut at the left-hand end and then the workpiece is flipped around and cut at the right-hand end. This means that the efficiency of the cutting work is very low. The prior art references identified by the Board each pertain to having flexibility when determining the angle of cut. Specifically, Johnson discloses “±45E capability of the cutting member positioning mechanism 17.” Ex. 5 at col. 5, lines 13-15; col. 7, lines 9-12. Langworthy is concerned with “many different styles of incisions or cuts, with the instrument at various angles.” Ex. 6 at col. 1, lines 26-28. Ambrosio’s saw reveals that it may be tilted “for varying the angular position of the saw blade relative to the work-supportable table.” Ex. 7 at col. 1, lines 8-11. And, although Ito did not expressly solve the problem faced by Hitachi, like the other prior art references, Ito concerns saw blade cutting, which is especially pertinent to the problem of moving a saw blade. Ex. 4. Thus, even if this Court does not conclude that the prior art references are from the same field of endeavor, it is apparent that the references identified by the Board were all “reasonably pertinent” to the problem faced by Hitachi, i.e., permitting the saw to make angular cuts at 45E. Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 33 of 34 32 CONCLUSION For the reasons set forth above, the USPTO Director respectfully requests this Court to enter summary judgment in his favor. Respectfully submitted, Jeffrey A. Taylor JEFFREY A. TAYLOR, D.C. BAR # 498610 United States Attorney Rudolph Contreras RUDOLPH CONTRERAS, D.C. BAR # 434122 Assistant United States Attorney /s/ Michelle N. Johnson MICHELLE N. JOHNSON, D.C. BAR # 491910 Assistant United States Attorney United States Attorney's Office Civil Division 555 4th Street, N.W. – Room E4212 Washington, D.C. 20530 (202) 514-7139 COUNSEL FOR DEFENDANT Of Counsel: STEPHEN WALSH Acting Solicitor JOSEPH G. PICCOLO SYDNEY O. JOHNSON, JR. Associate Solicitors United States Patent and Trademark Office Alexandria, Virginia Case 1:07-cv-01504-ESH Document 7 Filed 12/19/2007 Page 34 of 34 The complaint erroneously names the defendant as Jon W. Dukas. The proper spelling1/ of defendant’s last name is Dudas, as indicated in the first line of the complaint. Pursuant to LCvR 7(n), an appendix containing the parties’ exhibits will be filed with2/ the Court within ten days following the final memorandum concerning defendant’s motion. LCvR 7(n). IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA ) HITACHI KOKI CO., LTD., ) ) Plaintiff, ) ) v. ) Civil Action No. 07-cv-01504 (ESH) ) JON W. DUDAS, Director, )1/ United States Patent & Trademark Office ) ) Defendant. ) ) ) DEFENDANT’S STATEMENT OF MATERIAL FACTS NOT IN DISPUTE Pursuant to LCvR 56.1 and 7(h), Defendant Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“USPTO”), respectfully submits this statement of material facts as to which there is no genuine issue in support of his Motion for Summary Judgment. A. Hitachi’s Patent Application 1. On June 20, 1995, the USPTO issued U.S. Patent Number 5,425,294 to Hitachi (“Hitachi patent”). Exhibit (“Ex.”) 1 at 1. This patent disclosed a desk-top cutting machine2/ with a tiltable saw. Id. 2. On June 20, 1997, Hitachi filed a reissue application under 35 U.S.C. § 251 of the Hitachi patent, resulting in claims 1-3, 26, 27, 37, 48-56 and 58-62 being part of that application. Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 1 of 11 References to “col.” are to the column in the patent under which material appears. 3/ “Lines” refers to the lines of text being referred to, which can be determined by reference to the line numbers appearing in the center column on the pages. 2 Ex. 2 (Board’s Decision on Appeal) at 2. 3. Claim one reads as follows: A desk-top cutting machine, comprising: a base on which a workpiece to be cut is supported, said base including a top surface; a turntable rotatably disposed in said base and including a top surface; a holder supported by said turntable for tilting transversely in opposite directions about a zero-tilt angle position; a circular saw blade; 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; a circular saw assembly having a motor covered by a housing; a motor shaft of said motor being disposed in parallel with and above said saw shaft; 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. Ex. 1, col. 4, lines 15-41.3/ 4. Hitachi’s patent discloses a prior art cutting machine. Ex. 1, Figures 6 and 7; col. 1, lines 11-33. 5. The Hitachi patent’s prior art sections disclose all of claim 1 except for the saw shaft and the motor shaft being spaced apart in parallel planes. Id. Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 2 of 11 3 6. The Hitachi patent’s prior art sections disclose that the saw shaft and the motor shaft lie in a single plane. Id. 7. Hitachi relied on claim 1 as representative of all of its reissue application claims. Ex. 2, at 3 (quoting Hitachi’s statement: “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.”). See also id. at 4 (“Accordingly, we proceed to review the examiner’s rejections of the invention appellant claims, as represented by Claim 1, under 35 U.S.C. § 103 . . . .”). 8. The Board of Patent Appeals and Interferences (the “Board”) affirmed the examiner’s rejection of Hitachi’s representative claim 1 finding that Hitachi’s representative claim 1 was unpatentable because it was obvious in light of the prior art. Id. at 23-24. See also Ex. 3 (Board’s Decision on Request for Rehearing), at 2-4. B. Prior Art References Considered by the Board 9. In denying Hitachi’s reissue patent application the Board identified several prior art references which led to the conclusion that Hitachi’s claim 1 was obvious. Ex. 2, at 23-24. The Ito Patent 10. Prior art U.S. Patent 5,357,834 issued to Ito et al. (“Ito”) on October 25, 1994 is identical to Hitachi’s claim 1 except for the saw shaft and the motor shaft being spaced apart in parallel planes. Ex. 4 (United States Patent No. 5,357,834), Figure 2; col. 1, lines 10-22. 11. Ito discloses the saw shaft and the motor shaft lie in separate planes. Id., Figure 2; col. 4, lines 10-53. 12. Ito addressed the problem faced by Hitachi, i.e., to use the saw to cut at a 45E angle, by discussing that the motor shaft is positioned parallel to the saw blade and the gear train Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 3 of 11 4 must involve a number of parts and consequently becomes costly. Id. at col. 1, lines 23-30. 13. Ito’s solution to the problem was to use beveled gears. Id. Figure 2, col. 4, lines 10-53. The Johnson Patent 14. On March 11, 1986, U.S. Patent 4,574,670 was issued to George W. Johnson (“Johnson”) and discloses a cutting machine. Ex. 5 (United States Patent No. 4,574,670). 15. The Johnson patent discloses a motor shaft in parallel to the saw shaft, shifted by a distance greater than the radius of the saw blade. Ex. 5, Figure 1; col. 5, lines 49-59. 16. The Johnson patent contains the capability for ±45E positioning of the cutting member positioning mechanism 17. Ex. 5 at col. 5, lines 13-15; col. 7, lines 9-12. Thus Johnson states that an additional axis of rotation “permits smaller or larger angles of cut in addition to the plus or minus 45E capability of the cutting member positioning mechanism.” Id. col. 7, lines 9- 12. See also Ex. 5, Figure 1. The Langworthy Patent 17. On May 30, 1922, U.S. Patent 1,417,669 was issued to Mitchell Langworthy (“Langworthy”). Ex. 6 (United States Patent No. 1,417,669). This patent discloses a surgical saw cutting machine. Id. col.1, line 10. 18. Langworthy presents a surgical saw “by means of which cranial and other incisions or cuts may be made with accuracy and precision . . . .” Id. col. 1, lines 10-14. 19. Langworthy utilized a “well known or standard type of electric motor 1 . . . and the saw 3 is of the disk type, of which various sizes may be used to adapt it to different conditions.” Ex. 6 at col. 2, lines 74-76. Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 4 of 11 5 20. Langworthy’s Figure 1 shows the motor shaft 16 is parallel to the saw shaft 22. Ex. 6, Figure 1. 21. Langworthy’s Figure 1 shows the motor shaft is shifted from the saw shaft by a distance greater than the radius of the saw blade. Id. 22. The Langworthy patent discloses that “[t]he arm may readily be manipulated to attain cuts at various angles and depths for cranial and other cuts, and the laterally disposed saw affords an instrument which may be manipulated with facility and accuracy in the operations.” Id. col. 4, lines 69-74. 23. Langworthy’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id. 24. Langworthy’s patent teaches 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.” Id. at col. 3, lines 49-53. The Ambrosio Patent 25. On December 19, 1961, U.S. Patent 3,013,592 was issued to Ambrosio et al. (“Ambrosio”). Ex. 7 (United States Patent No. 3,013,592). The patent discloses a cutting machine, specifically a tilting table saw with a “new and improved means for varying the angular position of the saw blade relative to the work supportable table. Id. at col. 1, lines 8-11. 26. The Ambrosio patent discloses that the motor shaft is parallel to the saw shaft. Id., Figures 1 and 2; col. 1, line 70 - col. 2, line 63. 27. The Ambrosio patent discloses that the motor shaft is shifted from the saw shaft by a distance greater than the radius of the saw blade. Id., Figures 1 and 2; col. 1, line 70 - col. 2, Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 5 of 11 6 line 63. 28. Ambrosio’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id., Figures 1 and 2; col. 1, line 70 - col. 2, line 63. C. The Board’s Decision Denying Hitachi’s Re-Issue Patent Application for Obviousness 29. The Board issued a final agency action adverse to Hitachi regarding Hitachi’s re- issue application. Ex. 2. 30. Based upon Hitachi’s statement to the Board, the Board limited its review to Hitachi’s claim 1. Ex. 2, 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.” ). See also id. at 4 (“Accordingly, we proceed to review the examiner’s rejections of the invention appellant claims, as represented by Claim 1, under 35 U.S.C. § 103 . . . .”). 31. The Board found the Hitachi’s patent discloses a prior art cutting machine. Id. at 12-13. 32. The Board found the Hitachi patent’s prior art sections show all of claim 1 except for the saw shaft and the motor shaft being spaced apart in parallel planes. Id. at 12-13. 33. The Board found the Hitachi patent’s prior art sections show that the saw shaft and the motor shaft “lie in a single plane.” Id. at 13. 34. The Board found Ito is relevant prior art. Id. at 8-12. 35. The Board found Ito shows all of Hitachi’s claim 1 except for the saw shaft and the motor shaft being spaced apart in parallel planes. Id. at 12-14. 36. The Board found Ito shows that the saw shaft and the motor shaft “lie in separate Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 6 of 11 7 planes[,]” and do not lie in “parallel planes.” Id. at 14. 37. The Board found Ito’s saw shaft and motor shaft are “in intersecting planes.” Id. at 14. 38. The Board found Ito addressed the problem faced by Hitachi, i.e., to use the saw to cut at a 45E angle, by discussing that the motor shaft should be positioned parallel to the saw blade and “‘the gear train must involve a number of parts and consequently becomes costly’ (Ito, col. 1, lines 29-30).” Id. at 15-16. The Board found Ito’s solution to the problem was “the use of expensive beveled gears.” Id. at 20. 39. The Board found that the Johnson patent is relevant prior art. Id. at 8-12. 40. The Board found that the Johnson patent discloses “‘±45E capability of the cutting member positioning mechanism 17.’ (Johnson, col. 5, lines 13-15; col. 7, lines 9-12).” Id. at 16. 41. The Board found that “persons having ordinary skill in the art would have understood from Johnson’s teaching that the sizes and configuration of his composite driving motor 41, drive train 43, and cutting member 19 impart ±45E capability to the cutting member.” Id. at 17. 42. The Board found that the Langworthy patent is relevant prior art. Id. at 5-12. 43. The Board found Langworthy has as a workpiece “a living body.” Id. at 17. 44. The Board found Langworthy has as a workpiece base “an operating table.” Id. at 17. 45. The Board found that “persons having ordinary skill in the art would have understood that a surgeon utilizing Langworthy’s surgical saw would not have wanted to turn the living workpiece to make angular cuts to both sides of zero-tilt.” Id. at 17. Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 7 of 11 8 46. The Board noted that Langworthy instructs: ‘By utilization of my invention many different styles of incisions or cuts, with the instrument at various angles, may be made, and the saw manipulated to penetrate to unusual depths. The invention consists in certain novel combinations and arrangements of parts, involving the driving motor . . . and certain features of construction . . . .’ Id. at 17-18 (quoting Langworthy, at 1, lines 26-35). 47. The Board noted that Langworthy states that “the saw 3 is of the disk type, of which various sizes may be used to adapt it to different conditions.” Id. at 18 (quoting Langworthy, at 1, lines 71-76). 48. The Board found Langworthy’s Figures 2 and 3 show the motor shaft is parallel to the saw shaft. Id. at 18. 49. The Board found Langworthy’s Figures 2 and 3 show the motor shaft is shifted from the saw shaft by a distance greater than the radius of the saw blade. Id. at 18. 50. The Board found Langworthy’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id. at 19. 51. The Board noted that “Langworthy contributed the following: ‘The arm may readily be manipulated to attain cuts at various angles and depths for cranial and other cuts, and the laterally disposed saw affords an instrument which may be manipulated with facility and accuracy in the operations.’” Id. at 19 (quoting Langworthy, at 2, l. 69-74). 52. The Board found Ambrosio is relevant prior art. Ex. 2, at 5-12. 53. The Board found Ambrosio discloses that the motor shaft is parallel to the saw Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 8 of 11 9 shaft. Id. at 19. 54. The Board found Ambrosio discloses that the motor shaft is shifted from the saw shaft by a distance greater than the radius of the saw blade. Id. at 19-20. 55. The Board found Ambrosio’s saw may be tilted in either direction by an angle greater than or equal to 45 degrees. Id. at 20. 56. The Board found Johnson, Langworthy and Ambrosio each describe a motor shaft in parallel to the saw shaft, shifted by a distance greater than the radius of the saw blade. Id. at 21. 57. The Board held that in view of the prior art shown in Hitachi’s accompanying specification and drawings, as well as the patents of Johnson, Langworthy, and Ambrosio, Hitachi’s claim 1 would have been obvious under 35 U.S.C. § 103 because “[p]ersons having ordinary skill in the art reasonably would have expected to be able to inexpensively eliminate the prior art-recognized requirement to turn the workpiece in order to cut angles + 45 degrees with respect to the zero-tilt angle position using a desk-top cutting machine by applying the design, materials, and construction taught by Johnson, Langworthy, and Ambrosio and altering the conventional desk-top cutting machines depicted in Figures 6 and 7 of appellant’s specification and described by Ito in accordance therewith.” Id. at 21-22. D. The Board’s Decision Denying Hitachi’s Request for Rehearing 58. After the Board held claim 1 unpatentable, Hitachi requested rehearing, wherein it presented specific arguments to the Board. Ex. 8 (Request for Rehearing Under 37 C.F.R. 1.197(b)). 59. In its request for rehearing, Hitachi contended that the Johnson, Langworthy, and Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 9 of 11 10 Ambrosio patents should not have been considered relevant prior art in assessing the patentability of claim 1 because: (1) The pertinent passages of Johnson are directed to mitre cutting, not bevel cutting, as encompassed by claim 1 (Ex. 8 at 1-3); (2) Langworthy is in the surgery field and therefore is not analogous art (Ex. 8 at 3-4); and (3) Ambrosio is larger than a desktop cutting machine and therefore is not analogous art (Ex. 8 at 4). 60. The Board denied Hitachi’s request for rehearing. Ex. 3, at 2. 61. In denying Hitachi’s request for rehearing, the Board addressed Johnson and found that “based on Johnson’s teaching as a whole . . .” the Johnson patent’s claimed compound angle disk cutting apparatus reasonably appears to have both + mitre cutting capability and + bevel cutting capability. Johnson’s Figure 3 reasonably supports our finding.” Ex. 3 (Board’s Decision on Request for Rehearing), at 3. 62. The Board also found that Hitachi’s attack was improper because it was directed to “references individually” whereas the Board’s rejection of Hitachi’s patent was “based upon the teachings of a combination of references.” Id. 63. In its decision denying rehearing, the Board also considered and rejected Hitachi’s arguments that Langworthy and Ambrosio were not analogous art. Id. at 4. 64. Specifically, the Board rejected Hitachi’s notion that because Langworthy and Ambrosio are not of the same size or used for precisely the same reasons that they are not analogous art. Rather, the Board concluded that “‘the motor/saw designs utilized by the cutting Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 10 of 11 11 machine appellant claims and those described by the cited prior art all have a basic parallel motor shaft/blade shaft configuration, for straight, mtire, bevel and compound cutting.’” Id. at 4 (quoting Board’s Decision on Appeal, at 5-6). Respectfully submitted, /s/ Jeffrey A. Taylor JEFFREY A. TAYLOR, D.C. BAR # 498610 United States Attorney /s/ Rudolph Contreras RUDOLPH CONTRERAS, D.C. BAR # 434122 Assistant United States Attorney /s/ Michelle N. Johnson MICHELLE N. JOHNSON, D.C. BAR # 491910 Assistant United States Attorney United States Attorney's Office Civil Division 555 4th Street, N.W. – Room E4212 Washington, D.C. 20530 (202) 514-7139 COUNSEL FOR DEFENDANT Of Counsel: STEPHEN WALSH Acting Solicitor JOSEPH G. PICCOLO SYDNEY O. JOHNSON, JR. Associate Solicitors United States Patent and Trademark Office Alexandria, Virginia Case 1:07-cv-01504-ESH Document 7-2 Filed 12/19/2007 Page 11 of 11 The complaint erroneously names the defendant as Jon W. Dukas. The proper spelling1/ of defendant’s last name is Dudas, as indicated in the first line of the complaint. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA ) HITACHI KOKI CO., LTD., ) ) Plaintiff, ) ) v. ) Civil Action No. 07-cv-01504 (ESH) ) JON W. DUDAS, Director, )1/ United States Patent And Trademark Office ) ) Defendant. ) ) ) [PROPOSED] ORDER This matter having come before the Court on Defendant’s Motion for Summary Judgment, Plaintiff’s Response in Opposition, if any, and Defendant’s Reply, if any, it is hereby ORDERED that Defendant’s Motion for Summary Judgment is GRANTED. And it is further ORDERED that judgment is granted in favor of defendant. SO ORDERED on this ________ day of _____________________________, 200___. __________________________________________ ELLEN SEGAL HUVELLE UNITED STATES DISTRICT JUDGE Case 1:07-cv-01504-ESH Document 7-3 Filed 12/19/2007 Page 1 of 1