Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7718, 2008 WL 4083145 (N.D. Ill. Aug. 27, 2008) (Moran, Sen. J.)*
Judge Moran granted defendant’s summary judgment of invalidity as to plaintiff’s patented technology for cleaning printing press components. The Court previously granted defendants summary judgment of noninfringement on a reissued patent and the patent at issue in this opinion, but the Federal Circuit reversed as to the patent at issue after revising the Court’s claim construction – click here for more on this case in the Blog’s archives.
After holding that each element of the claims were taught by various pieces of prior art, the Court considered whether the art could be combined pursuant to the Supreme Court’s KSR standard. The Court held that the creation of strict new industry standards and a finite number of solutions that met the standards created jurisdiction for combining the prior art references:
The introduction of strict regulations regarding the use of high VOC solvents was an outside impetus to begin using low VOC solvents to clean presses. By plaintiff’s own admission, the existing spray bar/dry roll systems worked poorly with low VOC solvents. Therefore, a problem needed to be solved. The mechanics of printing press design led to a finite number of solutions. The pieces for the ultimately embraced solution were all present in the prior art, and it was only a matter of time before they were put together in the manner described in the asserted claims of the ‘976 patent. We find this to be true, particularly in light of KSR’s instruction that “Common sense teaches … that familiar items may have obvious uses beyond their primary purposes, and in many cases a person or ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 127 S.Ct. at 1742. See also, Muniauction, Inc. v. Thomson Corp., ___ F.3d ___, 2008 WL 2717689, at *6-*10 (Fed. Cir. July 14, 2008); Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1160-63 (Fed. Cir. 2007).
(parentheticals omitted).
The Court also found the patent invalid because “reduced air content” was indefinite. The patent did not teach how or when to measure the air content reduction. Because three different experts could start the calculation from three different baselines and get three different, but equally correct results, the term was indefinite.
* Click here for more on this case in the Blog's archives.
