Case 3:09-cv-02495-GEB-DEA Document 119 Filed 02/07/11 Page 1 of 12 PageID: 5092
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`NOT FOR PUBLICATION
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`__________________________________________
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`INTERNATIONAL DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`SIMON NICHOLAS RICHMOND and
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` MEMORANDUM OPINION
`ADVENTIVE IDEAS, LLC,
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`Defendants.
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`_________________________________________ )
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`BROWN, Chief Judge
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` This matter comes before the Court on Plaintiff’s motion for summary judgment to
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`declare that certain claims of Defendants’ two patents are invalid. (Doc. No. 89). Defendants
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`submitted an opposition to the motion and Plaintiff replied. (Doc. Nos. 104, 106). The Court
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`has considered all of the parties’ submissions and decided the motion without oral argument
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`pursuant to Federal Rule of Civil Procedure 78. For the reasons set forth below, Plaintiff’s
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`motion is denied.
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`I.
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`BACKGROUND
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` This is a declaratory judgment action for non-infringement and invalidity of patents
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`directed to solar powered garden lamps that can produce a variety of colors. (Compl. at ¶4; Doc.
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`No. 1.) Defendant, Simon Richmond, is the inventor of the two patents at issue in this case, U.S.
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`Patent Numbers 7,196,477 (“the ‘477 patent”) and 7,429,827 (“the ‘827 patent). The patents are
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`both titled “Solar Powered Light Assembly to Produce Light of Varying Colors.” (‘477 patent,
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`Richmond, Exh. 2007, p.1
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`Case 3:09-cv-02495-GEB-DEA Document 119 Filed 02/07/11 Page 2 of 12 PageID: 5093
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`‘827 patent, Title). The ‘827 patent is a continuation in part (CIP) of the ‘477 patent, meaning
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`that the ‘827 patent’s specification adds to the disclosure of the ‘477 patent but includes all of the
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`disclosure of the ‘477 patent. (See ‘477 and ‘827 patents, Specification). The primary
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`differences between the two specifications are that the claim language in the ‘827 patent is
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`presented in the specification as well and there is one page of additional figures and their
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`accompanying description (Fig. 11-13) depicting a “modification” that includes a spherical lens.
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`(See ‘827 patent, 8:25-9:9.)
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`This action began when Defendants threatened some of Plaintiff’s customers with suit.
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`Plaintiff International Development (“IDC”) distributes a variety of solar garden lamps to
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`customers, including to QVC, Inc. (Compl. at ¶7; Doc. No. 1). Defendant Richmond, as
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`president and sole owner of Adventive Ideas, contacted International Development’s customer
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`QVC and accused it of infringing his patents. (Id. at ¶8-11; Pls.’ R. 56.1 at ¶4; Defs.’ R. 56.1 at
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`¶4). In order to resolve the dispute, IDC brought this declaratory judgment action against
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`Defendants for non-infringement and for invalidity of Richmond’s patents. (Compl. at ¶4; Doc.
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`No. 1).
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`After conducting discovery and participating in a Markman hearing, IDC filed this
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`motion for summary judgment that the claims of Richmond’s patents are invalid because they are
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`anticipated or would have been obvious to one of ordinary skill in the art.
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`II.
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`DISCUSSION
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`A.
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`Standard of Review
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`A party seeking summary judgment must “show that there is no genuine issue as to any
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`Richmond, Exh. 2007, p.2
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`Case 3:09-cv-02495-GEB-DEA Document 119 Filed 02/07/11 Page 3 of 12 PageID: 5094
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`material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265
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`(1986); Hersh v. Allen Prods. Co., 789 F.2d 230, 232 (3d Cir. 1986). The threshold inquiry is
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`whether there are “any genuine factual issues that properly can be resolved only by a finder of
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`fact because they may reasonably be resolved in favor of either party.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 250, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986) (noting that no issue for
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`trial exists unless there is sufficient evidence favoring the nonmoving party for a jury to return a
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`verdict in its favor). In deciding whether triable issues of fact exist, a court must view the
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`underlying facts and draw all reasonable inferences in favor of the nonmoving party. Matsushita
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`Elec. Indus. Co., v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538
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`(1986); Pa. Coal Ass'n v. Babbitt, 63 F.3d 231, 236 (3d Cir. 1995); Hancock Indus. v. Schaeffer,
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`811 F.2d 225, 231 (3d Cir. 1987). However, the nonmoving party “may not rest upon the mere
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`allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in
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`this rule, must set forth specific facts showing that there is a genuine issue for trial. If he does
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`not so respond, summary judgment, if appropriate, shall be entered against him.” Matsushita,
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`475 U.S. at 586.
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`B.
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`Application
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`IDC argues that claims 1-9, 13-16, 20-22, and 26 of the ‘477 patent and claims 27, 32,
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`and 35 of the ‘827 patent are anticipated by several of IDC’s own products, referred to as the
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`“Four Season Solar Lights,” which were on sale more than one year prior to the application date.
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`(Pl’s. Br. at 9-21); See 35 U.S.C. § 102(b). The Court disagrees because there is a material fact
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`as to whether the Four Seasons lamps could create the “varying color” limitation that is present
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`in all of the claims. The Court addresses this issue first. IDC also contends that claims in the
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`Richmond, Exh. 2007, p.3
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`‘827 patent, claims 28-31, 33, and 34, are obvious based on the combination of the Four Seasons
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`lamps in view of the Piepgras patent publication. The Court also finds that there is a material
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`fact as to obviousness because there is evidence of secondary considerations of nonobviousness.
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`The Court addresses this issue after the anticipation analysis.
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`1.
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`Anticipation Standard
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`To anticipate the claims of a patent, and thereby render them invalid, a single prior art
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`reference must include each and every limitation of the claim. Schering Corp. v. Geneva
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`Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003); see also 35 U.S.C. § 102. Anticipation is a
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`question of fact, including the determination of whether an element is inherent in the prior art.
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`Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006).
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`However, anticipation “may be decided on summary judgment if the record reveals no genuine
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`dispute of material fact.” Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1321 (Fed.
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`Cir. 2008). A prior art reference can inherently anticipate a patent, if a person of skill in the art
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`would understand the limitations are implicitly disclosed. Helifix Ltd. v. Blok-Lok, Ltd., 208
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`F.3d 1339, 1347 (Fed. Cir. 2000).
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`Patents are presumed valid and as a result “[a]nticipation must be proved by clear and
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`convincing evidence.” 35 U.S.C. § 282; Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34
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`F.3d 1048, 1052 (Fed. Cir. 1994). However, “‘[t]he presumption [of validity] is one of law, not
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`fact, and does not constitute ‘evidence’ to be weighed against the challenger’s evidence.’”
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`Chiron Cop v. Genentech, 363 F.3d 1247, 1258-59 (Fed. Cir. 2004). When the prior art at issue
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`was not considered by the Patent Office during prosecution, then it is easier for the moving party
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`to overcome the presumption of validity. Alco Standard Corp. v. Tennessee Valley Auth., 808
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`Richmond, Exh. 2007, p.4
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`F.2d 1490, 1497 (Fed. Cir. 1986); American Hoist and Derrick Co. v. Sowa & Sons, Inc., 725
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`F.2d 1350, 1360 (Fed. Cir. 1984).
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`2.
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`There is a Dispute as to a Material Fact of Anticipation
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`As an example of the subject matter at issue in this patent, claim 1 of the ‘477 claims:
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`A lighting device to produce a light of varying colour,1
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` said device including:
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`a body including a spike;
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`a lens mounted on the body and generally enclosing a chamber having an
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`upper rim surrounding a top opening, and a bottom region;
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`a cap assembly including a securing means to releasably engage the rim so
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`that cap assembly can be selectively removed from the lens; assembly including;
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`a base; and
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`a circuit having at least two lamps of different colours to produce a desired
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`colour including a varying colour, the lamps being mounted to direct light into
`said chamber, connections for at least one rechargeable battery to power the
`circuit and a solar cell mounted on the surface of the assembly so as to be exposed
`to light and operatively associated with the connections to charge the battery, and
`a switch operated to control delivery of electric power from the battery to operate
`said circuit, the switch being exposed to provide for access thereto by a user.
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`(‘477 patent, Certificate of Correction) (emphasis added).
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`IDC argues that claims 1-9, 13-16, 20-22 and 26 of the ‘477 patent and claims 27, 32 and
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`35 of the ‘827 patent are anticipated by IDC’s Four Season Solar Lights, which were on sale
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`more than one year prior to the application date. (Pl’s. Br. at 9-21); See 35 U.S.C. § 102(b).
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`While IDC concedes that Defendants’ expert, Dr. Ducharme, found that those models could not
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`produce a “varying colour” as required by the all of claims at issue, it argues that this does not
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`create a material fact because he examined only the diagrams of those models and did not
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`1 The patent at various points uses “colour,” the British spelling of the American word “color”; at other points it uses
`the American spelling. The Court treats them interchangeably because neither party has disputed that they have the
`same meaning.
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`Richmond, Exh. 2007, p.5
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`examine the behavior of the models themselves. (Pls.’ Rep. Br. at 4-7; Ducharme Decl. ¶¶ 28,
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`34, 19-34). The Court disagrees – this is a classic example of a dispute of material fact where
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`credibility is at issue.
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`IDC’s point is essentially that its expert, Dr. Laurent, is more believable than Dr.
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`Ducharme. IDC supports this by showing that its expert examined the electrical diagrams of its
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`Four Seasons models as well as their actual operation, and concluded that it produced a varying
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`color, as reflected in the following intensity diagram of intensity of the red and blue LEDs in
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`these models:
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`(Laurent Reply Decl. at ¶¶8, 9). Defendants’ expert did not observe the actual Four Seasons
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`product despite IDC offering him such an opportunity. IDC’s expert determined that as a result,
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`Richmond, Exh. 2007, p.6
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`he missed an important portion of the electrical schematic that allows the product to have more
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`than one intensity in order to mix colors. (Id. at ¶7).
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`However, while this fact affects his credibility, Dr. Ducharme’s methods are not
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`improper. Indeed, IDC makes no Daubert challenge to his report. It is perfectly reasonable to
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`believe that an expert may determine the way an electrical device works from its electrical
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`schematic; indeed, electrical engineers devised the system of schematics because they were able
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`to impart the electrical reality of a circuit system. It is a jury’s role to determine whether the
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`failure to inspect the device should lead them to conclude that Dr. Ducharme made an error in his
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`report and, as a result, should not be credited.
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`Further, the Court notes that it is skeptical of the graph reproduced above. Plaintiffs state
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`that they have removed the time units because the Court’s construction does not make them
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`relevant. (Pls.’ Rep. Br. at 7). However, if those units are very small, such as nanoseconds, the
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`intensity change will look to a viewer as “blinking” a not changing to a varying color “over
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`time.” While it is the jury’s role to apply the Court’s construction to the prior art to determine
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`whether every element of the claims appears there, it would be a somewhat strained conclusion
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`for the jury to find that “a color that changes over time by varying the intensity of one or more
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`lamps with time” to apply to something that, in the normal human perception looks like binary
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`blinking.2
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` The “varying color” was intended to be observed by humans – if they cannot perceive
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`its variance or the change in intensity over time, then the purpose of the invention would be
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`frustrated.
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`2 The Court notes that the normal scope of time and the non-blinking nature of the term was not disputed in the
`Markman hearing as Plaintiff’s counsel conceded that “Varying means varying. It doesn’t [mean] instantaneously
`on, off, or binary.” (Markman Tr. at 23).
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`Richmond, Exh. 2007, p.7
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`3.
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`Obviousness Standard
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`IDC contends that claims in the ‘827 patent, claims 28-31, 33, and 34, are obvious based
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`on the combination of the Four Seasons lamps in view of the Piepgras patent publication. The
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`Patent Act provides that:
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`A patent may not be obtained . . . 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[.]
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`35 U.S.C. § 103(a); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). Obviousness is a
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`question of law with underlying fact issues. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 427,
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`127 S.Ct. 1727, 7 L. Ed. 2d 705 (2007); Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811,
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`106 S. Ct. 1578, 89 L.Ed.2d 817 (1986). “What a particular reference discloses is a question of
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`fact, as is the question of whether there was a reason to combine certain references.” Transocean
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`Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed.
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`Cir. 2010) (internal citation omitted). Under the four part test for obviousness detailed in
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`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545
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`(1966), a court must consider:
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` (1) the scope and content of the prior art;
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`(2) the differences between the prior art and the claimed invention;
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`(3) the level of ordinary skill in the art; and
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`(4) any objective evidence of nonobviousness, such as skepticism of those in the art,
`long-felt industry need, commercial success, and copying.
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`See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008). All of these are
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`questions of fact that underlie the question of obviousness.
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`Richmond, Exh. 2007, p.8
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`Questions of fact on any of these issues may prevent summary judgment on obviousness.
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`For example, in Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., the Federal Circuit
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`found that the case was inappropriate to dispose of on summary judgment despite the fact that all
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`elements of the claimed invention were contained in the prior art. The invention at issue was an
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`intervertebral implant, whose only difference from a prior patent was the use of a single anchor
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`attached it to the adjacent vertebrae. 620 F.3d 1305, 1312 (Fed. Cir. 2010). That reference
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`could be combined with several other intervertbral implants that disclosed a single anchor. Id. at
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`1311-12. However, the Federal Circuit found that there was a material fact as to whether
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`combining the references would have been obvious – the inventor testified, and documents
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`supported, that guidance in the art taught using a single anchor put strain on the weakest part of
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`the vertebrae. Id. at 1312. Thus, because a reasonable jury could have found that rather than
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`suggest combining the references, the art taught away from the combination, the Federal Circuit
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`determined that summary judgment would have been inappropriate. Id.
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`Similarly, even if there is an express suggestion in the art to combine the references, if
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`there is evidence of industry praise of the invention, industry skepticism of the combination, and
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`commercial success, that evidence prevents summary judgment. In Transocean v. Maersk
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`Contractors, a case involving drilling rigs, patents for prior drilling rigs disclosed all of the
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`elements of the patent and one of the references even a suggested the combination of those
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`elements. 617 F.3d 1296, 1303-04 (Fed. Cir. 2011). However, the Federal Circuit found that
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`because there was evidence of these secondary considerations, if all factual disputes were
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`resolved in favor of Transocean, there was a strong basis for rebutting the prima facie case. Id.
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`at 1305 (“Viewing the objective evidence of nonobviousness in a light most favorable to
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`Transocean, we cannot hold that the claims would have been obvious as a matter of law.”).
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`Richmond, Exh. 2007, p.9
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`4.
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`There is a Dispute of Material Fact as to Obviousness
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`IDC contends that claims in the ‘827 patent, claims 28-31, 33, and 34 are obvious based
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`on the combination of the Four Seasons lamps in view of the Piepgras patent publication. Both
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`parties agree that the Piepgras patent publication discloses varying the intensity of one or more
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`lamps with time to produce a continuous color changing cycle. (Piepgras, PCT Publication No.
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`WO 203/026358 (“Piepgras”); Defs.’ Br. at 19). Both parties agree that Piepgras is relevant
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`prior art and that, and that, when combined with the prior art IDC models, shows all aspects of
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`the invention.
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`This case is similar to both Transocean and Spine Solutions in that all elements of the
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`invention are contained in the prior art. Further, Piepgras does contain two suggestions that,
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`when themselves combined would yield the invention. First, Piepgras contains a suggestion for
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`combining its teachings with garden lamps; second, it contains a suggestion for combining its
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`teachings with solar power; however, it does not suggest combining its teachings with solar-
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`powered garden lamps. (Piepgras at p. 18, ll. 13-29, p.47, ll. 21-24). This does create a prima
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`facie case, but it is not as strong as in Transocean because Piepgras do not suggest the full
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`combination; rather, two suggestions would have to be read together to arrive at the combination.
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`Further, despite this less than solid prima facie case, there is a dispute of material fact about
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`whether the art taught away from such a combination, whether success was suggested by the
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`prior art, and whether the commercial success of the claimed invention suggests nonobviousness.
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`The Declaration of Dr. Ducharme states that the complex microprocessor and memory
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`system in Piepgras had never been used in solar powered garden lights. (Ducharme Decl. ¶55).
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`He suggests that one reason that other inventors had never combined Piepgras with solar
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`Richmond, Exh. 2007, p.10
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`powered garden lights is that the complex microprocessor contained in Piepgras had increased
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`power consumption that a small on-board solar cell may not have been able to meet. (Ducharme
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`Dec. at ¶¶50-52, 45, 47, 55, 93). Essentially, knowledge in the prior art taught away from the
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`invention and suggested that the combination would not be successful.
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`The sections of Piepgras do not contradict his statements, they state:
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`As will be appreciated from the foregoing examples, an LED system such as
`that described . . . may be adapted to a variety of lighting applications . . .
`including . . . [a] lantern . . ., or camp light. The system may have applications
`to architectural lighting, including . . . outdoor walkway lighting, [and] patio
`lighting.
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`(Piepgras '358 Publication at p. 18, ll. 13-29). In a separate section, Piepgras states:
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`In an embodiment, the lighting device 5000 may include a power adapter 208
`to connect the lighting device 5000 to a power source such as that found on a
`bicycle or other system for generating power (e.g. solar, generation through
`the Seebeck effect, wind, etc.).
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`(Piepgras at p.47, ll. 21-24) (emphasis added). The first passage suggests camp lights and
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`lanterns, but does not suggest solar power and a reasonable jury could find that it contemplated
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`only “plugged in” power for these camp lights. The second passage does suggest solar power,
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`but does not seem to suggest the type of small on-board solar power that is at issue in this patent.
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`Rather, it may suggest attaching the Piepgras innovation to a larger solar generation system using
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`a power adapter. Thus, a reasonable jury could find that these do not contemplate the exact
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`combination of the invention and there is evidence that a reasonable jury could use to determine
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`that art taught away from the combination. A jury should evaluate the credibility of that
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`evidence.
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`Further, there is evidence of the commercial success of the product: IDC’s allegedly
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`infringing products have enjoyed substantial success, and the Ducharme Declaration states that
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`Richmond, Exh. 2007, p.11
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`such success cannot be wholly attributed to the prior art product, which has been dropped by
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`IDC, or other non-invention related factors. (See Ducharme Decl. ¶¶85-89).3
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`Thus, like in Transocean, there is a prima facie case of obviousness, but if the jury were
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`to credit the testimony of Dr. Ducharme, the secondary factors may be strong enough to rebut the
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`prima facie case. Further, the Court notes that the parties have a substantial dispute over the
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`level of ordinary skill in the art. Consequently, there is a dispute as to a material fact for
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`obviousness of the patented invention and summary judgment would be inappropriate.
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`III. CONCLUSION
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`The Court determines that because there is a dispute as to material facts for both
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`anticipation and obviousness of the disputed claims, summary judgment for invalidity is
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`inappropriate.
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`Dated: February 7, 2011
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` /s/ Garrett E. Brown, Jr.
`GARRETT E. BROWN, JR., U.S.D.J.
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`3 The Court does not rely on the Richmond Declaration’s statement of industry skepticism. (Richmond Dec. ¶ 17).
`Richmond has no knowledge or basis to conclude what the reason was for the manufacturer’s rejection, and the
`manufacturer’s stated basis had nothing to do with skepticism that the invention could work.
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`Richmond, Exh. 2007, p.12