Commonwealth Scientific and Industrial Research Org. v. Buffalo Technology, Inc., 542 F.3d 1363 (Fed. Cir. 2008).
Facts: Commonwealth Scientific and Industrial Research Org. does research in a range of scientific areas. One such research project has dealt with wireless local area networks and the problem of multiple, echoed signals traveling between transmitters and receivers. This echo effect causes the multipath problem, where a single signal sent from a transmitter will will be received multiple times by the receiver over a short period of time. This may cause a masking of subsequent transmissions. Commonwealth invented and patented ('069 patent) a solution to this problem. The solution called for transmitting the signal over different frequencies.
Procedural History: Commonwealth filed an infringement action against Buffalo Technology, Inc. and Buffalo, Inc., alleging infringement of several claims of the '069 patent. Buffalo filed a motion for summary judgment of invalidity of the '069 patent. Commonwealth filed a motion for summary judgment of infringement. The district court granted summary judgment in favor of Commonwealth. Commonwealth then moved for for the entry of a permanent injunction, which was granted. Buffalo appealed.
Issue: 1) Whether the invention was anticipated.
2) Whether the patent was invalid.
3) Whether the patent was infringed.
Holding: 1) The court affirmed that the invention was not anticipated.
2) The court reversed and remanded on the issue of obviousness.
3) The court affirmed that the patent was infringed.
Reasoning: 1) The court held that the invention was not anticipated by a 1989 article. Buffalo attempted to argue two different points concerning the preamble language as a limitation. However, the court held that Buffalo had waived the second argument because it had not argued it in district court. The court also rejected Buffalo's argument that the article's use of the invention in outdoor environments anticipates the use of the invention in an indoor environment.
Buffalo also argued that two other articles anticipated the '069 patent because they served as a single reference due to incorporation by reference. The court, however, rejects this argument finding that the articles may have been combined under obviousness, but they did not anticipate under incorporation by reference.
2) The court reversed and remanded on the issue of validity, particularly due to obviousness. It held that Buffalo had provided several references that when in combination could be found to have invalidated the '069 patent. Buffalo had provided a limitation-by-limitation analysis of each of the claims and where each limitation can be found in the various prior art references. The district court had relied on the TSM test in determining that the '069 patent was valid. The court then reversed the district court holding that there is a factual issue as to the motivation to combine prior art references, which is the correct test to use.
However, the court rejected Buffalo's argument that the patent was invalid due to an issue of new matter.
3) The court rejected Buffalo's argument that it did not infringe because a component of its invention is not identical or equivalent to that in the '069 patent. Buffalo's devices contain a structure that performs the data reliability enhancement function of that means-plus-function limitation within the '069 patent and the structure that performs that function in the accused devices is identical or equivalent to the structure described in the '069 specification.
The court also held that Buffalo did not provide any support of differences for its proposition that its device performed differently than the invention in the '069 patent.
Analysis: I thought it was interesting that the court rejected the anticipation claim due to a waiver of an argument because it seemed as if the '069 patent was anticipated by the article in that the only difference was indoor v. outdoor usage. However, their analysis of obviousness seemed to remedy this by rejecting the TSM test and using the motivation to combine prior art references based on the nature of the problem instead.
Facts: Commonwealth Scientific and Industrial Research Org. does research in a range of scientific areas. One such research project has dealt with wireless local area networks and the problem of multiple, echoed signals traveling between transmitters and receivers. This echo effect causes the multipath problem, where a single signal sent from a transmitter will will be received multiple times by the receiver over a short period of time. This may cause a masking of subsequent transmissions. Commonwealth invented and patented ('069 patent) a solution to this problem. The solution called for transmitting the signal over different frequencies.
Procedural History: Commonwealth filed an infringement action against Buffalo Technology, Inc. and Buffalo, Inc., alleging infringement of several claims of the '069 patent. Buffalo filed a motion for summary judgment of invalidity of the '069 patent. Commonwealth filed a motion for summary judgment of infringement. The district court granted summary judgment in favor of Commonwealth. Commonwealth then moved for for the entry of a permanent injunction, which was granted. Buffalo appealed.
Issue: 1) Whether the invention was anticipated.
2) Whether the patent was invalid.
3) Whether the patent was infringed.
Holding: 1) The court affirmed that the invention was not anticipated.
2) The court reversed and remanded on the issue of obviousness.
3) The court affirmed that the patent was infringed.
Reasoning: 1) The court held that the invention was not anticipated by a 1989 article. Buffalo attempted to argue two different points concerning the preamble language as a limitation. However, the court held that Buffalo had waived the second argument because it had not argued it in district court. The court also rejected Buffalo's argument that the article's use of the invention in outdoor environments anticipates the use of the invention in an indoor environment.
Buffalo also argued that two other articles anticipated the '069 patent because they served as a single reference due to incorporation by reference. The court, however, rejects this argument finding that the articles may have been combined under obviousness, but they did not anticipate under incorporation by reference.
2) The court reversed and remanded on the issue of validity, particularly due to obviousness. It held that Buffalo had provided several references that when in combination could be found to have invalidated the '069 patent. Buffalo had provided a limitation-by-limitation analysis of each of the claims and where each limitation can be found in the various prior art references. The district court had relied on the TSM test in determining that the '069 patent was valid. The court then reversed the district court holding that there is a factual issue as to the motivation to combine prior art references, which is the correct test to use.
However, the court rejected Buffalo's argument that the patent was invalid due to an issue of new matter.
3) The court rejected Buffalo's argument that it did not infringe because a component of its invention is not identical or equivalent to that in the '069 patent. Buffalo's devices contain a structure that performs the data reliability enhancement function of that means-plus-function limitation within the '069 patent and the structure that performs that function in the accused devices is identical or equivalent to the structure described in the '069 specification.
The court also held that Buffalo did not provide any support of differences for its proposition that its device performed differently than the invention in the '069 patent.
Analysis: I thought it was interesting that the court rejected the anticipation claim due to a waiver of an argument because it seemed as if the '069 patent was anticipated by the article in that the only difference was indoor v. outdoor usage. However, their analysis of obviousness seemed to remedy this by rejecting the TSM test and using the motivation to combine prior art references based on the nature of the problem instead.