January 3, 2013
`
`
`
`BY EDIS
`The Honorable Thomas B. Pender
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street SW, Room 317
`Washington, DC 20436
`
`337-TA-825: Certain Silicon Microphone Packages and Products Containing Same
`Re:
`
`
`Dear Judge Pender:
`
`I write on behalf of Complainant Knowles Electronics, LLC, in connection
`with the above-referenced investigation. I write to inform the Administrative Law Judge of
`newly-issued Federal Circuit authority that may bear upon issues to be addressed in the
`Administrative Law Judge’s forthcoming Initial Determination. The opinion, a copy of
`which is enclosed, is OSRAM Sylvania, Inc. v. Am. Induction Tech., Inc., __ F.3d. ___, No.
`2012-1091, 2012 WL 6200181 (Fed. Cir. Dec. 13, 2012).
`
`Knowles respectfully directs the Administrative Law Judge to the analysis set
`forth on pages 10-13 of the OSRAM opinion, as this portion of the decision is pertinent to the
`parties’ dispute concerning whether the Halteren reference anticipates the asserted claims. In
`particular, OSRAM emphasizes the role of expert testimony (e.g., that presented by
`Knowles’s expert, Dr. David Egolf, in this investigation) in the “critical[ly] importan[t]”
`inquiry of “[h]ow one of ordinary skill in the art would understand the scope of the
`disclosure” alleged to anticipate an asserted claim. OSRAM, slip op. at 13.
`
`In addition, I write to notify the Administrative Law Judge that on Friday,
`December 28, 2012, Knowles discovered that it had inadvertently delayed making the
`required 3.5-year maintenance fee payment for U.S. Patent No. 7,439,616, one of the patents
`asserted in this investigation. The grace period to make this payment had ended on October
`22, 2012. On Monday, December 31, 2012, Knowles promptly made the delayed payment
`and filed a petition to the United States Patent and Trademark Office to accept the
`unintentionally delayed payment under 37 C.F.R. 1.378(c). The United States Patent and
`Trademark Office granted the petition the same day. Therefore, the patent remains in effect
`and is considered as not having expired as a result of this unintentional delay. See 35 U.S.C.
`§ 41(c)(1); Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1554 (Fed. Cir. 1997).
`
`

`
`The Honorable Thomas B. Pender
`Administrative Law Judge
`January 3, 2013
`Page 2
`
`Accordingly, this should have no impact on the investigation. Nevertheless, in the interests
`of candor, Knowles wanted to apprise the Administrative Law Judge of this development.
`
`
`
`Enclosure
`cc: Counsel of Record
`
`
`Sincerely,
`
`/s/ Robert T. Haslam
`
`Robert T. Haslam
`
`

`
`
`
`United States Court of Appeals
`for the Federal Circuit
`__________________________
`
`OSRAM SYLVANIA, INC.,
`Plaintiff-Appellant,
`v.
`AMERICAN INDUCTION TECHNOLOGIES, INC.,
`Defendant-Cross Appellant.
`__________________________
`2012-1091, -1135
`__________________________
`Appeals from the United States District Court for the
`Central District of California in case no. 09-CV-8748,
`Judge Manuel L. Real.
`_________________________
`Decided: December 13, 2012
`_________________________
`GREGG F. LOCASCIO, Kirkland & Ellis, LLP, of Wash-
`ington, DC, argued for plaintiff-appellant. With him on
`the brief were NATHAN S. MAMMEN and LESLIE M.
`SCHMIDT. Of counsel on the brief was STEVEN M. COYLE,
`Cantor Colburn LLP, of Hartford, Connecticut.
`
`
`GLENN W. TROST, Connolly Bove Lodge & Hutz, LLP,
`of Los Angeles, California, argued for defendant-cross
`appellant.
`
`__________________________
`
`
`
`

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`OSRAM SYL INC v. AMER INDUCT TECH
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`2
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`
`
`Before O’MALLEY, PLAGER, and REYNA, Circuit Judges.
`O’MALLEY, Circuit Judge.
`OSRAM SYLVANIA, Inc., (“OSRAM”) appeals the dis-
`trict court’s grant of summary judgment of invalidity of
`claims 1, 17, 25, 27, and 32 of U.S. Patent No. 5,834,905
`(the “’905 patent”), issued to Valery A. Godyak et al., and
`assigned to OSRAM. Because we find genuine issues of
`material fact that preclude a finding of anticipation and
`obviousness on summary judgment, and because we find
`that the district court erred in failing to consider objective
`indicia of nonobviousness, we reverse and remand for
`proceedings in accordance with this ruling.
`BACKGROUND
`I. Technology at Issue
`OSRAM is the assignee of the ’905 patent, which
`claims a closed-loop tubular electrodeless lamp, having
`certain and specific discharge current and pressure pa-
`rameters. Claim 1, which is representative, recites:
`An electric lamp assembly comprising:
`an electrodeless lamp including a closed-
`loop, tubular lamp envelope enclosing
`mercury vapor and a buffer gas at a pres-
`sure less than 0.5 torr;
`a transformer core disposed so as to sur-
`round a portion of said closed-loop lamp
`envelope;
`an input winding disposed on said transformer
`core; and
`a radio frequency power source coupled to
`said input winding for supplying sufficient
`radio frequency energy to said mercury
`vapor and said buffer gas to produce in
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`OSRAM SYL INC v. AMER INDUCT TECH
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`said lamp envelope a discharge having a
`discharge current equal to or greater than
`about 2 amperes.
`’905 patent col. 8 ll. 7–19.
`This invention generally relates to “a low pressure,
`high intensity fluorescent light source that can produce
`considerably more light per unit length than conventional
`electroded fluorescent lamps.” Electrodeless fluorescent
`lamps were first disclosed in several patents issued to and
`articles authored by John Anderson of G.E. in the 1960s
`and 1970s. For example, as described in the ’905 patent’s
`“Background of the Invention,” Anderson claimed in U.S.
`Patent No. 3,987,334 (the “Anderson ’334 patent”) a lamp
`having a torodial discharge tube that forms a continuous
`closed electrical path that passes through a torodial
`ferrite core. Applying a voltage to the wire wrapped
`around the ferrite core creates a magnetic flux that in
`turn induces a discharge voltage along the tube. In effect,
`the wire around the ferrite core operates as the primary of
`a transformer with the lamp tube operating as the secon-
`dary of the transformer. Thus, “[t]he inner surface of the
`discharge tube is coated with a phosphor which emits
`visible light when irradiated by photons emitted by the
`excited mercury gas atoms.” ’905 patent col. 2 ll. 14–16.
`The lamps described in the Anderson ’334 patent operated
`with a buffer gas pressure of “approximately 1 torr or
`less.” The ’905 patent specification describes Anderson’s
`lamp as inefficient and impractical, however.
`The ’905 patent also describes “a closed-loop, tubular
`lamp envelope enclosing mercury vapor . . . a transformer
`core disposed around the lamp envelope, an input winding
`disposed on the transformer core and a radio frequency
`power source coupled to the input winding” but it specifies
`a buffer gas pressure of “less than about 0.5 torr.” ’905
`
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`OSRAM SYL INC v. AMER INDUCT TECH
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`4
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`patent col. 2 ll. 31–37. “The radio frequency source sup-
`plies sufficient radio frequency energy to the mercury
`vapor and the buffer gas to produce in the lamp envelope
`a discharge having a discharge current equal to or greater
`than about 2 amperes.” Id. col. 2 ll. 36–41. Operating a
`lamp at the parameters specified in the ’905 patent—
`namely a buffer gas pressure of less than 0.5 torr and a
`discharge current equal to or greater than 2 amperes—
`allegedly results in a lamp with high output, high effi-
`ciency, and long operating life as compared to conven-
`tional electroded fluorescent lamps. In its preferred
`embodiment, the lamp specified by the ’905 patent oper-
`ates with a buffer gas pressure equal to or less than about
`0.2 torr, and a discharge current equal to or greater than
`about 5.0 amperes. The specification of the ’905 patent
`makes clear that it is this novel relationship—high dis-
`charge current combined with low buffer gas pressure—
`that results in the increased efficiency and small power
`loss in the ferrite core.
`II. Procedural History
`On November 30, 2009, OSRAM filed a complaint al-
`leging that American Induction Technologies, Inc.’s,
`(“AITI”) 120-watt induction lamp infringes OSRAM’s ’905
`patent. AITI responded with counterclaims seeking
`declarations of non-infringement, invalidity, and unen-
`forceability. OSRAM moved for summary judgment that
`the ’905 patent was infringed and not invalid and AITI
`cross-moved for summary judgment of invalidity due to
`anticipation and obviousness based on the Anderson ’334
`patent. On February 14, 2011, the district court denied
`OSRAM’s motions and granted AITI’s motion with respect
`to claim 32. The district court ruled, from the bench, in
`relevant part:
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`OSRAM SYL INC v. AMER INDUCT TECH
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`Claim 32 of the ’905 patent is anticipated by
`Anderson’s Patent No. 3,987,334. All of the limi-
`tations of Claim 32 are disclosed either expressly
`or inherently in Anderson’s 334 patent. Because
`the buffer gas pressure disclosed in the Anderson
`334 patent completely encompasses that disclosed
`in the ’905 patent within a relatively narrow
`range, it discloses a pressure of less than .5 torr
`and renders Claim 32 invalid. Atofina versus
`Great Lakes Chemical Corporation, 441 F.3d 991
`(Fed. Cir. 2006).
`A4200–01. With respect to the remaining claims, the
`district court characterized the parties’ positions as a
`“battle of the experts” and found that genuine issues of
`material fact precluded summary judgment in favor of
`either party.
`After the court’s finding that the Anderson ’334 pat-
`ent anticipated claim 32 of the ’905 patent, AITI sought
`reconsideration of its motion for invalidity of the remain-
`ing independent claims—claims 1, 17, 25, and 27. AITI
`argued that these other claims differed from claim 32 only
`with respect to a specified discharge current of greater
`than 2 amperes and, therefore, were obvious combinations
`of lamps disclosed in the Anderson ’334 patent and those
`described in an article by D.O. Wharmby, Ph.D., entitled
`“Electrodeless Lamps for Lighting: A Review,” Vol. 140
`IEEE Proceedings-A no. 6, November 1993 (“Wharmby”).
`Notably, AITI relied on no other references or prior art to
`support its renewed motion for summary judgment. In
`opposition, OSRAM contended that AITI failed to raise
`this specific combination of prior art in its original motion
`for summary judgment and that, regardless, OSRAM’s
`expert presented testimony that the different shapes of
`the lamps disclosed in the Anderson ’334 patent and
`Wharmby precluded applying the teachings of one to the
`
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`OSRAM SYL INC v. AMER INDUCT TECH
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`6
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`
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`other. OSRAM, in particular, argued that Anderson ’334
`patent does not disclose all the shape limitations of claim
`17—requiring two parallel tubes joined by two lateral
`tubes at each end. OSRAM also noted that, in denying
`OSRAM’s motion for summary judgment, the district
`court ruled that material issues of fact existed with re-
`spect to the teachings of Wharmby. AITI acknowledged
`OSRAM’s arguments regarding the shape of the prior art
`lamps and removed claim 17 from its motion for reconsid-
`eration in reply “to avoid additional distraction from the
`discharge current teachings of the prior art.” J.A. 4142.
`The District Court granted AITI’s motion and declared
`the remaining independent claims, including claim 17,
`invalid as a matter of law. The court’s ruling was again
`read from the bench and states, in relevant part:
`Defendant has demonstrated that this Court, in-
`undated with complicated technical matters relat-
`ing to the history and operation of electrodeless
`induction lamps, failed to consider and appreciate
`the affect of certain prior art references on the ob-
`viousness of certain independent claims of the
`‘905 patent.
`
`***
`Given the virtually interchangeability between
`different topologies and the fact that the conse-
`quences of increasing radio frequency discharge
`was well known in a prior art and specifically dis-
`closed in the D.O. Wharmby article, the improve-
`ments reflected in independent Claims 1, 17, 25
`and 27 of increasing radio frequency discharge 2
`or more amperes was merely the predicable use of
`prior art elements according to their established
`functions; and a person of ordinary skill in the art
`would recognize that increasing radio frequency
`
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`OSRAM SYL INC v. AMER INDUCT TECH
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`discharge to 2 or more amperes would improve
`tubular lamps in the same way that globular
`lamps and lamps of other topologies.
`The increased radio frequency discharge was the
`only improvement presented in claims 1, 17, 25
`and 27. It was not found in claim 32, which this
`Court has already ruled invalid for reasons of an-
`ticipation. Pursuant to KRS International Com-
`pany versus Teleflex, Incorporated, these claims
`are obvious in light of the prior art and invalid.
`J.A. 4286–86 [sic throughout]. OSRAM requested clarifi-
`cation regarding the inclusion of claim 17 in the order and
`the court responded that “shape is irrelevant” and claim
`17 was, therefore, invalid as obvious. The district court
`ordered AITI to submit proposed findings of fact and
`conclusions of law relating to the independent claims but
`AITI did not comply with that order and the district court
`failed to issue its own.
`invalidated,
`After the
`independent claims were
`OSRAM granted AITI a covenant not to sue as to the
`dependent claims, and the district court dismissed AITI’s
`counterclaims concerning the validity of the ’905 patent’s
`dependent claims. The parties then proceeded with a
`three-day bench trial, from September 20-22, 2011, on
`AITI’s counterclaims of inequitable conduct, after which
`the district court found that no inequitable conduct was
`committed during the prosecution of the ’905 patent. The
`district court entered final judgment on November 28,
`2011. OSRAM timely appealed and we have jurisdiction
`pursuant to 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`On appeal, OSRAM argues that the district court
`erred in granting summary judgment that claim 32 of the
`
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`

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`OSRAM SYL INC v. AMER INDUCT TECH
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`8
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`’905 patent is anticipated by the Anderson ’334 patent
`and that claims 1, 17, 25, and 27 of the ’905 patent are
`obvious in view of Wharmby in combination with the
`Anderson ’334 patent. According to OSRAM, the district
`court resolved a disputed issue of material fact in its
`anticipation finding, namely that the Anderson ’334
`patent disclosed the operating condition of less than 0.5
`torr through its reference to a lamp with “a pressure of
`approximately 1 torr or less,” and resolved numerous
`disputed issues of fact in its obviousness finding relating
`the interchangeability of lamp shapes. Additionally,
`OSRAM asserts that the district court’s failure to address
`evidence of secondary considerations of nonobviousness
`alone warrants reversal. AITI counters that the earlier
`disclosed genus—1 torr or less—necessarily anticipates
`the later species—less than 0.5 torr—and that the claims
`are otherwise obvious in light of various combinations of
`prior art.1 AITI also contends that OSRAM failed to
`present evidence of a nexus between the claimed inven-
`tion and the alleged secondary considerations and we,
`
`
`1 With respect to both anticipation and obviousness,
`AITI, apparently relying on the principle that this court
`“reviews judgments, not opinions,” presents extensive
`argument on appeal relating to prior art that was not the
`subject of AITI’s motions for summary judgment. That
`OSRAM discussed these references in OSRAM’s motion
`for summary judgment of no invalidity—a motion that
`was denied because it raised disputed material issues of
`fact—does not permit AITI to rely on these references on
`appeal. AITI’s motions for summary judgment were
`predicated on only two references; the trial court’s judg-
`ment was predicated on only those same two references;
`this appeal must follow suit. Because we have not consid-
`ered the teachings of the references AITI raised for the
`first time on appeal, we express no opinion as to their
`relevance or impact on the issue of invalidity.
`
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`OSRAM SYL INC v. AMER INDUCT TECH
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`therefore, may overlook the district court’s failure to
`address them below.
`
`I.
`This court reviews a district court’s grant of summary
`judgment without deference. Dynacore Holdings Corp. v.
`U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004).
`Summary judgment is appropriate if no genuine issues of
`material fact exist such that the moving party is entitled
`to judgment as a matter of law. FED. R. CIV. P. 56(c); see
`also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.,
`149 F.3d 1309, 1315 (Fed. Cir. 1998). This court reviews
`the evidence in the light most favorable to the non-moving
`party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
`(1986).
`Anticipation, though a question of fact, may be re-
`solved on summary judgment if no genuine issue of mate-
`rial fact exists. Ormco Corp. v. Align Tech., Inc., 498 F.3d
`1307, 1319 (Fed. Cir. 2007). We review de novo the
`determination of whether the evidence in the record
`raises a genuine issue of material fact. Id. “Summary
`judgment is proper if no reasonable jury could find that
`the patent is not anticipated.” Zenith Elecs. Corp. v. PDI
`Commun. Sys., 522 F.3d 1348, 1357 (Fed. Cir. 2008).
`Similarly, “a district court can properly grant, as a
`matter of law, a motion for summary judgment on patent
`invalidity when the factual inquiries into obviousness
`present no genuine issue of material facts.” Ryko Mfg. Co.
`v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991).
`“When the facts underlying an obviousness determination
`are not in dispute, we review whether summary judgment
`of invalidity is correct by applying the law to the undis-
`puted facts.” Tokai Corp. v. Easton Enters. 632 F.3d 1358,
`1366 (Fed. Cir. 2011).
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`II.
`We begin by addressing the district court’s finding
`that the Anderson ’334 patent anticipates claim 32 of the
`’905 patent. A patent claim is anticipated if each and
`every limitation is found in a single prior art reference.
`35 U.S.C. § 102. Patents are presumed to be valid and
`invalidity must be proven by clear and convincing evi-
`dence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238,
`2242, 180 L. Ed. 2d 131 (2011). OSRAM argues that AITI
`faced an enhanced burden in establishing anticipation
`because the examiner considered the Anderson ’334
`patent during the prosecution of the ’905 patent. While
`prior consideration of a reference during prosecution may
`carry some weight, the burden to prove invalidity does not
`change; at all times, it remains a showing “by clear and
`convincing evidence.” Id.; see also Tokai, 632 F.3d at
`1367.
`The parties’ dispute centers on whether the Anderson
`’334 patent discloses a buffer gas pressure of less than 0.5
`torr. AITI primarily relies on the legal argument that
`“the disclosure of a small genus may anticipate the spe-
`cies of that genus even if the species are not themselves
`recited.” Bristol-Myers Squibb Co. v. Ben Venue Labs.,
`Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001). Referencing
`our decisions in Atofina v. Great Lakes Chemical Corp.,
`441 F.3d 991 (Fed. Cir. 2006) and ClearValue, Inc. v.
`Pearl River Polymers, Inc., 668 F.3d 1340 (Fed. Cir. 2012),
`AITI asserts that the range in the Anderson ’334 patent,
`which completely encompasses the range in the ’905
`patent, is sufficient to disclose the claimed buffer gas
`pressure in the ’905 patent.2
`
`2 AITI also claims, citing to the axiom “that which
`would literally infringe if later anticipates if earlier,"
`Bristol-Myers Squibb, 246 F.3d at 1378, that a lamp
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`We disagree. While it is true that an earlier disclosed
`genus may, in certain circumstances, anticipate a later
`species, this inquiry necessarily includes a factual compo-
`nent. See, e.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d
`1075, 1083 (Fed. Cir. 2008) (“[W]hether a generic disclo-
`sure necessarily anticipates everything within the genus .
`. . depends on the factual aspects of the specific disclosure
`and the particular products at issue.”); Atofina, 441 F.3d
`at 999; In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994). For
`example, in Atofina we analyzed a patent claiming a
`method of synthesizing difluoromethane at a temperature
`between 330-450 degrees Celsius. Atofina, 441 F.3d at
`993. The prior art, in contrast, disclosed a broad tem-
`perature range of 100-500 degrees Celsius. Id. at 999. In
`Atofina, we reversed the district court’s finding of antici-
`pation following a bench trial and we explained that our
`holding was premised on the “considerable difference
`between the claimed [temperature] range and the range
`in the prior art.” Id. Our decision in Atofina clarified
`that the prior art’s teaching of a broad genus does not
`necessarily disclose every species within that genus. Id.
`Under the circumstances presented in Atofina, “no rea-
`sonable fact finder could conclude that the prior art
`describes the claimed range with sufficient specificity to
`anticipate this limitation of the claim.” Id.
`Contrary to AITI’s assertions, our decision in Clear-
`Value does nothing to alter the unequivocal statements in
`Atofina. There, we analyzed a patent relating to clarify-
`ing low alkalinity water and found that the jury lacked
`substantial evidence to find that certain prior art—
`
`practicing the Anderson ’334 patent would anticipate the
`claims of the ’905 patent. But this argument ignores the
`fact that the Anderson ’334 patent could be practiced—
`with a buffer gas pressure of 0.5 torr or above—without
`infringing.
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`disclosing a chemical process with a range of 150 ppm or
`less—did not anticipate the asserted patent or disclose
`the claimed limitation of 50 ppm. ClearValue, 668 F.3d
`1340, 1344–45. In ClearValue, we explained that, in
`contrast to the patentee in Atofina, ClearValue did not
`argue that the 50 ppm limitation was critical, or that the
`claimed method worked differently at different points
`within the prior art range of 150 ppm or less. Id. And,
`ClearValue did not allege that one of ordinary skill would
`not have recognized 50 ppm as an acceptable value for the
`range provided in the prior art. Id. at 1345.
`A correct application of Atofina and ClearValue to the
`evidence presented here reveals clear disputed material
`issues of fact and mandates reversal of the district court’s
`finding of anticipation. OSRAM contends—and presented
`expert testimony and evidence to support its contention—
`that the limitation of less than 0.5 torr is central to the
`invention claimed in the ’905 patent and that a lamp
`would operate differently at various points within the
`range disclosed in the Anderson ’334 patent. Specifically,
`the patent itself claims that prior lamps, including those
`disclosed in the Anderson ’334 patent, are inefficient and
`impractical as compared to the ’905 lamp precisely be-
`cause they use pressure well above that claimed in the
`’905 patent.
`A trial may reveal a minimal difference between the
`Anderson ’334 patent prior range of “approximately 1 torr
`or less” and the less than 0.5 torr claimed in the ’905
`patent, or that one of ordinary skill would interpret
`“approximately 1 torr or less” as clearly disclosing less
`than 0.5 torr as an acceptable choice within that range,
`but those questions cannot be resolved as a matter of law
`on this record. Indeed, AITI made no effort to rebut the
`testimony of OSRAM’s expert regarding the importance of
`the claimed pressure to the invention or regarding what
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`one of ordinary skill would have understood from the
`disclosures in the Anderson ’334 patent. AITI relies,
`instead, on the conclusory claim that less than 0.5 torr
`necessarily falls within “approximately 1 torr or less” as a
`matter of fact. While true, the inquiry does not end there.
`How one of ordinary skill in the art would understand the
`scope of the disclosure or, stated differently, how one of
`ordinary skill in the art would understand the relative
`size of a genus or species in a particular technology is of
`critical importance. And the district court’s failure to
`explain or support its statement that “the buffer gas
`pressure disclosed in the Anderson ’334 patent completely
`encompasses that disclosed in the ’905 patent within a
`relatively narrow range,” or to justify its complete rejec-
`tion of OSRAM’s expert testimony, complicates our re-
`view. We have no choice but to reverse the district court’s
`finding of anticipation on this record.
`III.
`The district court’s obviousness rulings also fail be-
`cause they depend on resolution of disputed issues of fact.
`A patent may not issue “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). Obviousness is a
`question of law based on underlying factual findings: (1)
`the scope and content of the prior art; (2) the differences
`between the claims and the prior art; (3) the level of
`ordinary skill in the art; and (4) objective considerations
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Generally, a party seeking to invalidate a
`patent as obvious must demonstrate “by clear and con-
`vincing evidence that a skilled artisan would have been
`motivated to combine the teaching of the prior art refer-
`
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`ences to achieve the claimed invention, and that the
`skilled artisan would have had a reasonable expectation
`of success in doing so.” Pfizer, Inc. v. Apotex, Inc., 480
`F.3d 1348, 1361 (Fed. Cir. 2007); see also Amgen, Inc. v. F.
`Hoffmann-La Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir.
`2009) (“An obviousness determination requires that a
`skilled artisan would have perceived a reasonable expec-
`tation of success in making the invention in light of the
`prior art.” (citations omitted)). The Supreme Court has
`warned, however, that, while an analysis of any teaching,
`suggestion, or motivation to combine known elements is
`useful to an obviousness analysis, the overall obviousness
`inquiry must be expansive and flexible. KSR Int’l Co. v.
`Teleflex, Inc., 550 U.S. 398, 415, 419 (2007).
`A.
`The district court did no more than recite the test of
`KSR and draw general conclusions based thereon in its
`ruling on obviousness. The court did not make any spe-
`cific findings of fact and gave no basis—other than an
`admission that it previously failed to consider submis-
`sions by the parties—for reversing its prior statement
`that disputed issues of fact existed. OSRAM recognizes—
`correctly—that Rule 52(a)(3) states that a “court is not
`required to state findings or conclusions when ruling on a
`motion under Rule . . . 56.” But, as OSRAM correctly
`notes, both this Circuit and the Ninth Circuit repeatedly
`have made clear that a trial court must at least provide
`its analysis and grounds for entering judgment some-
`where in the record. AITI counters that the district
`court’s findings are ascertainable from the parties’ own
`arguments and again contends that, because we review
`judgments not opinions, we are free to affirm on any
`ground supported by the record.
`
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`
`It is not our role to scour the record and search for
`something to justify a lower court’s conclusions, particu-
`larly at the summary judgment stage. Whether dealing
`with an issue of law like claim construction or an issue of
`fact such as infringement, this court must be furnished
`“sufficient findings and reasoning to permit meaningful
`appellate scrutiny.” Nazomi Communs., Inc. v. Arm
`Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005)
`(quoting Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed.
`Cir. 1997)). Where, as here, the record is devoid of mean-
`ingful analysis, we will not conduct such an analysis in
`the first instance. Id; see also Research Corp. Techs. v.
`Microsoft Corp., 536 F.3d 1247, 1254 (Fed. Cir. 2008)
`(“Microsoft’s motions for summary judgment were granted
`without a proper analysis regarding inequitable conduct.
`This court therefore lacks findings and conclusions for
`adequate review.”). We previously have had occasion to
`remind this very district court of these important princi-
`ples; we do so once more here.
`In TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1343
`(Fed. Cir. 2010), we reversed this district court’s obvious-
`ness ruling for failing to address, among other things,
`what the asserted prior art teaches:
`Both the record in this case and the order grant-
`ing Stryker’s motion for summary judgment are
`devoid of such reasoning. Instead of supporting
`its obviousness analysis with cogent reasoning,
`the order merely states that “[a] common sense
`[sic] solution to this problem [i.e., pin migration]
`involves stabilizing the pin against . . . displace-
`ment . . . [and] the logical solution would be to se-
`lect a prior art plate that had holes with an
`appropriate diameter . . . .” Order Granting
`Stryker’s Mot. For Summ. J. of Invalidity 14. Nei-
`ther the record before us nor the order of the dis-
`
`
`
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`OSRAM SYL INC v. AMER INDUCT TECH
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`16
`
`
`
`trict court explains why one of ordinary skill in
`the art at the time of the invention would have
`found replacing a cast normally used to stabilize a
`pin with a subcutaneous metal plate to be a logi-
`cal, commonsense solution to this problem.
`Merely saying that an invention is a logical, com-
`monsense solution to a known problem does not
`make it so.
`Id. AITI tries to limit TriMed to scenarios where the
`district court explicitly references only “common sense” as
`the basis for its obviousness findings. There is no justifi-
`cation for limiting TriMed in that fashion, however. The
`point made there, as here, is that the trial court must
`explain how it reached the conclusions it does, particu-
`larly where there is evidence in the record supporting the
`non-movant’s position. AITI’s request that we forgive the
`lower court’s failure to explain its ruling—and insistence
`that we should review the record in the first instance to
`ascertain what the lower court might have been think-
`ing—rings particularly hollow given AITI’s failure to
`respond to the trial court’s order to submit findings of fact
`and conclusions of law.
`
`B.
`With respect to the substance of the district court’s
`ruling on obviousness, OSRAM primarily takes issue with
`the district court’s pronouncement that “shape is irrele-
`vant” and that “a person of ordinary skill in the art would
`recognize that increasing radio frequency discharge to 2
`or more amperes would improve tubular lamps in the
`same way that [sic] globular lamps and lamps of other
`topologies.” J.A. 4286. AITI responds that claims 1, 25,
`27, and 32 of the ’905 patent are prima facie obvious
`based on Wharmby. According to AITI, Wharmby dis-
`closes a lamp meeting the physical configurations of the
`
`
`
`

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`OSRAM SYL INC v. AMER INDUCT TECH
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`’905 patent lamp by way of reference to an earlier Ander-
`son article regarding operating conditions within the
`scope of those claimed by the ’905 patent.
`Substantial factual disputes exist, however, as to
`whether one of ordinary skill would consider the lamp
`shape to be irrelevant or, more specifically, whether one of
`ordinary skill would have been motivated to combine the
`Anderson lamp with Wharmby or operate the Anderson
`lamp at the conditions disclosed in Wharmby. OSRAM’s
`expert, Dr. Lawler, testified that Wharmby “teaches away
`from the closed-loop tubular design of the ’905 patent”
`and AITI’s expert, Mr. Edward Hammer, acknowledged
`that Wharmby disparages the very external ferrite core,
`closed-loop tubular design of the Anderson patent that
`AITI argued would be obvious to combine with Wharmby.
`J.A. 4101; A4106–07.
` OSRAM also references Dr.
`Lawler’s opinion that “discharge plasmas are inherently
`unpredictable and may behave differently in different
`lamp topologies . . . . One