Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

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.

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Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2007 WL 1610449 (N.D. Ill. Mar. 21, 2007) (Moran, J.).*

Judge Moran granted defendant Siebert’s motion for reconsideration of the Court’s earlier claim construction ruling.  Based upon it reconsidered construction, the Court granted Siebert summary judgment of noninfringement of plaintiff Baldwin Graphic Systems’ (“Baldwin”) patent claiming printing press cleaning components. The Court originally construed the claims at issue and then denied Siebert’s first motion for reconsideration in 2005 -- the Court held that Siebert's 2005 motion for reconsideration simply repackaged arguments the Court considered in its original claim construction opinion. At that time the Court construed “reduced air content cleaning fabric” as not excluding fabric having its air content reduced by winding or rewinding the fabric on to a roll. In its current motion, Siebert argued that “reduced air content cleaning fabric” includes only fabric having its air content reduced by mechanical means before being wound on to a roll. The Court acknowledged that this was a new argument and, therefore, considered it.  The Court held that the claim language itself was not helpful in construing the term, but the language of the dependent claims combined with the patent’s specification made clear that “reduced air content cleaning fabric” required that the fabric have its air content reduced by “some method” before being wound on to a roll. Because there was no evidence that Siebert’s fabric underwent no mechanical process for removing air prior to being wound on to a roll, the Court granted Siebert summary judgment of noninfringement.

This opinion is especially remarkable because, while I do not have statistics confirming this, motions for reconsideration do not have a high success rate.  And it is even more rare for a second motion for reconsideration of the same opinion to succeed.

* You can read more about this case in the Blog’s archives.

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Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2006 WL 3718074 (N.D. Ill. Dec. 14, 2006) (Moran, J.).

Judge Moran's opinion addressed several motions in limine in preparation for a February 5 trial (good luck to both sides).  Of special note, the Court delayed ruling upon plaintiff's motion to exclude deposition testimony of two witnesses regarding prior use as hearsay .  Defendant argued, not surprisingly, that the testimony it intended to introduce was not hearsay.  The Court, however, could not rule on the motion because neither party provided the Court with copies of the relevant deposition testimony.  Practice tip:  always provide the Court with the evidence underlying your motions and arguments.  It is hard for a court to rule without seeing the evidence it is ruling upon.

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