Gemtron Corp. v. Saint-Gobain Corp - Determining the scope and context of the prior art Cases of Interest >  IP >  Patent >  Obviousness

Gemtron Corp. v. Saint-Gobain Corp

TO: Professor Risch
FROM: Christopher Lanks
DATE: December 13, 2007
RE: Patent Law Case Brief – Writing Assignment

Gemtron Corp. v. Saint-Gobain Corp., 2007 U.S. Dist. Lexis 89816 (S.D. Mich. 2007)

Decided December 6, 2007

The plaintiff, Gemtron, is suing defendant, Saint-Gobain, for patent infringement. Gemtron owns the rights to the 573 patent which covers a Refrigerator Shelf. The three main elements of the 573 patent are a glass panel, a plastic frame, and snap-securing one member of a device to another member of a device. Although each of these elements are old in the art, the fashion called for in the 573 patent in snap-securing a glass panel to a plastic frame in a refrigeration shelf in not old in the art. Saint-Gobain is accused of selling a device manufactured in Mexico with the same elements performing the same function. As a defense to infringement, Saint-Gobain has filed for summary judgment alleging that the 573 patent is invalid for lack of non-obviousness. More specifically, Saint-Gobain alleges that Gemtron’s combination of prior art elements was obvious.

The issue before the Court is whether the combination of these elements to invent the 573 patent was obvious in light of the prior art. The issue in this case encompasses the principles laid out in KSR.

The Court begin their analysis by identifying the factors the Court will use to determine obviousness under KSR. These factors are:

1. determine the scope and context of the prior art
2. determine the differences between the claimed invention and the prior art
3. determine the level of ordinary skill in the art
4. determine if there is any objective evidence.

Once these factors are analyzed the Court will then look at the invention and determine if it displays predictable use of the prior art elements according to their established function and if it is the likely product not of innovation but of ordinary skill and common sense. Once these two factors are examined by the Court, the judge will make the determination of whether or not the invention is obvious.

In order to establish obviousness, Saint-Gobain offered testimony from an expert in the field of refrigerator shelves. This expert testified to each of the elements in the 573 patent. First he came to the conclusion that snap-fitting was know in the prior art according to the 982 patent and a book written by Muccio entitled Plastic Part Technology. Next, Saint-Gobain’s expert concluded that a glass panel and plastic frame was old in the art. Saint-Gobain introduced the 627 patent as evidence that mounting glass panels to frames as in the 573 patent was prior art.

Gemtron also called experts to testify and demonstrate that the combination of these elements was non-obvious, and although each of the elements existed, the snap-fitting fashion used in the 573 patent was not an element in the prior art. To establish non-obvious, the expert testified that the 982 patent is not prior art because the patent was for a watering system for poultry, small animals, and the like. Additionally, the 627 patent related to mounting a mirror vertically. The expert testified that one of ordinary skill in the art of refrigerator shelf design would not look to a watering system designed for animals. Furthermore, the expert testified that the design considerations for mirrors and refrigerator shelves are substantially different and as such, should not be included in the prior art.

The Court reasoned that Saint-Gobain’s expert simply made conclusionary opinions as to how a person of ordinary skill in the art would look at the prior art elements. Saint-Gobain relied only on the rationale of the Patent Office Guidelines which state that it is obvious to combine elements know in the prior art according to known methods to yield predictable results. Saint-Gobain offered no evidence which would suggest that the 982 and 627 patents are relevant or prior art in the scope and context of refrigerator shelves. Therefore the Court concluded that the motion for summary judgment should be denied and the question concerning the validity of the 573 patent is a question for the jury.

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