Winner Int'l. Royalty Corp. v. Wang, No. 98-1553, 2000 U.S. App. LEXIS 2008 (Fed. Cir. Jan. 27, 2000).




Whether the district court erred in determining that one of ordinary skill would not have been motivated to combine the prior art into the claimed invention.


No. The district court did not err in its factual finding of non-obviousness. The district court validly made a de novo inquiry into the factual issues using both the Board record and the evidence from the district court proceeding.


Wu is the principal manufacturer and named inventor of an anti-theft car immobilization device commercially known as “The Super Club.” Wu initiated an interference action before the Patent and Trademark Office (PTO) against Wang, the principal manufacturer and named inventor of a similar antitheft device commercially known as “The Gorilla Grip.” Winner, as owner of Wu's patent, superseded Wu as plaintiff. Wang filed a motion alleging that both Wu and Wang’s patents were invalid as obvious in light of prior art. The PTO held all claims invalid except for claims 1 and 3 of Wu’s U.S. Patent No. 4,935,047 ("the ‘047 patent" that specified for “The Super Club”).

Both Winner and Wang appealed the PTO Board's decision. The District Court found the factual findings of the PTO Board were erroneous since no motivation to combine the prior art references was shown; thus invention claims 2 and 4 of the ‘047 patent were also not obvious.

Wang appealed, challenging, inter alia, the holding of non-obviousness that revived the ‘047 patent. Wang argued that combining prior art of US Patent No. 4,738,127 (the original “The Club”) and US Patent No. 3,462,982 ("Moore," a keyless, self-locking steering wheel lock) rendered the ‘047 patent obvious.

Obviousness is a question of law based on underlying factual inquiries including 1) the scope and content of the prior art, 2) the level of ordinary skill in the art, 3), the differences between the prior art and the claimed invention, and 4) the extent of any objective indicia of non-obviousness. See Monarch Knitting Mach. Group v. Sulzer Morat GMBH, 139 F.3d 877, 881 (Fed. Cir. 1998). When an obviousness determination is based on a combination of prior art references, there must be a showing of a "teaching, suggestion, or reason" to do so. See Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579 (Fed. Cir. 1997). Evidence of the suggestion, teaching, or motivation may come from the references themselves, the knowledge of one ordinarily skilled in the art, or from the nature of the problem to be solved. The Federal Circuit held that the district court did not clearly err because one of ordinary skill in the art would not have reasonably been motivated to trade the greater security of Johnson for the greater convenience of Moore. Moreover, Johnson's written description taught away from Moore. Because Wang failed to establish a prima facie case of obviousness, the Federal Circuit affirmed the decision of the lower court and did not reach the issue of whether Winner was required to establish commercial success.


Prepared by the liibulletin-patent Editorial Board.

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