Citations
- 665 F. Supp. 2d 830
Full opinion text
MEMORANDUM & ORDER
KATHLEEN McDONALD O’MALLEY, District Judge.
Before the Court are several motions for summary judgment, including Defendant’s Motion for Summary Judgment Based on Invalidity (“Invalidity MSJ”) (Doc. 128), which was filed by the Defendants, IPS Corporation (“IPS”) on January 9, 2009. IPS’s Invalidity MSJ challenges the validity of Plaintiff Oatey Company’s (“Oatey”) patent, U.S. Patent No. 6,148, 850 (“'850 Patent”), on various grounds. For the reasons fully articulated below, IPS’s Invalidity MSJ is GRANTED because the Court finds the '850 Patent invalid on obviousness grounds. Accordingly, the other pending motions are MOOT and this case is DISMISSED.
I. BACKGROUND
The six-year history of this patent litigation features a Markman hearing, stipulated dismissal, a trip to the United States Court of Appeals for the Federal Circuit and back, and buffet-style motions for summary judgment complete with voluminous briefing and oral argument. The patent at issue in this case, Oatey’s '850 Patent, relates to an improvement to washing machine outlet boxes (“WMOB”) that facilitates compliance with certain municipal plumbing codes and ease of installation. In its Markman Opinion (Doc. 67, Markman Opinion) the Court provided the following detailed description of WMOB and the '850 Patent based on the parties’ Markman briefs and oral argument:
A. Overview of the Invention.
The Court begins its analysis with an overview of the plumbing problems that the patented invention is directed at solving. As anyone who has done their own laundry knows, a washing machine, during various points of its clothes-washing cycle: (I) receives hot and cold water; and (2) expels waste water. The hot and cold water arrive via plumbing supply pipes contained in the building or house where the washing machine resides; the waste water is pumped out of the washing machine through a drain pipe or hose, which is connected to the drainage system of the same building. In older homes, these supply and drain pipes are often not neatly grouped. For example, the washing machine’s drain hose may simply expel the waste water into a large sink basin, which is itself connected to a drain in the floor. The end points of the cold and hot water supply pipes (e.g., wall-mounted faucets) may be some distance from this drain, and the two faucets may not be situated closely together. This arrangement is, at the very least, inelegant, and can make connection of a washing machine messy or difficult.
In contrast, relatively newer homes are frequently constructed with a built-in device known as a “washing machine outlet box” or “WMOB.” See illustration below. A fairly uncomplicated device, which was first invented in the 1950s, the WMOB is sized to fit between two wall studs, with the outer edge of the open-faced box flush with the wall. The simplest WMOB generally has: (1) two inlet holes (usually 1” in diameter), which receive the hot and cold water supply pipes, and that hold the hot and cold water faucets to which the washing machine hoses connect; and (2) an outlet hole (usually 1 ½ or 2” in diameter), which is connected to the house drainage system in which the drain hose from the washing machine is hooked. Thus, contained within the WMOB are all the connections necessary for the washing machine: the hot and cold supply pipe faucets, and also the drain connection. This design allows for a clean and neat plumbing installation and simplifies a homeowner’s effort to connect his washing machine.
While the simplest WMOB is essentially an open-faced box with three holes — two holes for supply pipes, and one hole for a drain pipe — inventors have created WMOB designs to accommodate various additional needs. For example, inventors have designed WMOBs to include electrical connections and dryer vent connections, as well as the plumbing connections. WMOBs are also often designed to allow for various configurations and juxtapositions for all of these connections, such as placement of the two supply faucets on the top or the side of the WMOB, instead of the bottom. Furthermore, plumbers often use WMOBs as a connection point for other home appliances that require a drain pipe, including air conditioners, water softeners, or swamp coolers.
Regarding this latter point, up until the 1980s, plumbers routinely connected drain lines from additional appliances to the WMOB by simply running the waste water hose from the appliance into the same drain port used by the washing machine. In other words, plumbers would hook both the drain hose from the washing machine and the drain hose from the air conditioner into the same WMOB outlet hole. In the 1990s, however, changes in municipal plumbing codes began to prohibit the sharing of a WMOB drain port by both a washing machine and another appliance. Accordingly, plumbing supply manufacturers began to design WMOBs with two separate drain ports.
One example of such a design is shown below. This illustration is a modified drawing of a dual-drain-port WMOB disclosed in U.S. Patent No. 6,125,881, which was issued in October of 2000 to LSP Products Group (“LSP”). As this illustration suggests, once the dual-drain-port WMOB is installed between the wall studs, a plumber must join each of the two drain ports to a single drain line, typically using various pieces of pipe to create a Y-shaped connector.
Defendant IPS was one of the first large-scale manufacturers of WMOBs using injection-molded plastic, and IPS developed and patented a dual-drain-port WMOB as early as 1990. A drawing from IPS’s U.S. Patent No. 4,934,-410[, issued in 1990,] is shown [at left below]. This WMOB is configured with two drain ports, each located toward the outer edge of the WMOB, in between which are located two centrally-placed supply line ports.
Like the LSP dual-drain-port WMOB shown on the previous page, IPS’s WMOB required a plumber to use a series of pieces of pipe to create a Y-shaped connector, to join the two drain ports to a single drain line. In fact, a plumber would often have to complete six or seven plumbing weld joints to complete these connections. See welds numbered in illustration at right [below].
As for plaintiff Oatey, it obtained the '850 patent in November of 2000, one month after the '881 patent issued to LSP. The two drawings below, taken from Oatey’s '850 patent, show two drain ports next to each other on one side of the WMOB, and two supply line ports next to each other on the other side of the WMOB. The two drain ports lead to a common “tailpiece,” which is connected by a plumber to the building’s drainage system. It is this “tailpiece,” in combination with the two drain ports, that was the primary novelty disclosed in Oatey’s patent. As Oatey explains, to connect other, prior dual-drain-port WMOBs to the building’s drainage system, “a plumber was required to piece and weld together several different plumbing pipe sections to connect separate tailpieces leading from each drain [port].” Oatey’s Constr. Br. at 1. In contrast, the configuration of the drain ports and tailpiece in the Oatey WMOB “greatly reduces the number of joints necessary to connect the washing machine hose drain port and the condensate line drain port to the drain pipe. For example, in the preferred [WMOB], only one joint is needed between the tailpiece outlet and the [budding’s] drain pipe to connect both drain ports to the drain pipe.” '850 Patent, col. 2, lines 12-19. Thus, “Oatey’s WMOB is considerably faster and less expensive to install because it requires only a single weld.” Oatey’s Constr. Br. at 1. Put simply, plumbers found that Oatey’s tailpiece, which connected to both of the WMOB drain ports, was an improvement over having to piece together a Y-shaped connector, to join the two drain ports to the drain line.
Oatey set out in its '850 patent the particularities of the structure and configuration of its novel WMOB tailpiece and the two drain ports.
B. The Language of Oatey’s Patent
Having described and illustrated its invention, Oatey made, among others, the following actual claims in its patent:
1. A washing machine outlet box comprising a housing including a bottom wall, first and second juxtaposed drain ports in said bottom wall, and a common tailpiece for both of said drain ports extending from said bottom wall, said tailpiece extending completely around both of said drain ports in said bottom wall said tailpiece having an outlet for connection to a drain pipe.
2. A washing machine outlet box as set forth in claim 1 wherein said tailpiece includes wall sections defining a first fluid passageway from said first drain port to said outlet and a second fluid passageway from said second drain port to said outlet.
3. A washing machine outlet box as set forth in claim 1 wherein the said tailpiece is integrally formed with said bottom wall of said housing.
5. A washing machine outlet box as set forth in claim 1 wherein said bottom wall of said housing has an elongated opening communicating with both of said drain ports, said tailpiece surrounding said elongated opening.
17. A washing machine outlet box comprising a housing including a bottom wall, first and second juxtaposed drain ports in said bottom wall, and a common tailpiece for both of said drain ports extending from said bottom wall, said tailpiece having an outlet for connection to a drain pipe, said tailpiece including a chamber, and a dividing wall section within said chamber dividing said chamber into two passageways, one of said passageways providing fluid communication between said first drain port and said outlet, and the other of said passageways providing fluid communication between said second drain port and said outlet.
'850 Patent, cols. 6-8.
(Markman Opinion at 7-16.) In this lawsuit, Oatey claims that IPS’s competing WMOBs infringe all of these claims. IPS denies it sells an infringing product and asserts that all of the asserted claims are invalid for a variety of reasons.
After the Court issued its Markman Opinion, Oatey concluded that it could not prove infringement if it was bound by the claim construction in that Opinion. Given that conclusion, the parties stipulated to the entry of summary judgment in favor of IPS so that Oatey would have a final, appealable, Order, and IPS dismissed its invalidity contentions without prejudice. (Doc. 82, Judgment Entry.) Oatey appealed to the Court of Appeals for the Federal Circuit, which vacated this Court’s Mark-man Opinion, finding that, while its claim construction was correct in many respects, this Court had misconstrued one aspect of the claims at issue. Oatey Co. v. IPS Corp., 514 F.3d 1271 (Fed.Cir.2008). Specifically, the Federal Circuit concluded that this Court erred to the extent it concluded that its construction of claim 1 of the '850 Patent excluded the embodiment disclosed in Figure 3 of the patent.
Upon remand, the Court established a Case Management Plan. At the Case Management Conference, the Court ordered IPS to file a notice specifically identifying any invalidity defenses it intended to assert. (Doc. 90, Case Management Plan.) IPS complied, identifying the anticipation and obviousness arguments it asserts by way of the Invalidity MSJ now before the Court, as well as the inequitable conduct and public policy arguments it raised in its unenforceability motion. (Doc. 110, Brief Defining Invalidity Arguments.) In addition, the parties conducted discovery and filed the motions for summary judgment that are now pending.
Although each of the motions for summary judgment addresses a potentially dispositive issue, the motions addressing invalidity and unenforceability present threshold issues that are best resolved pri- or to any infringement analysis. Further, because the Court concludes that IPS’s Invalidity MSJ is well-taken, it is not necessary to analyze the unenforceability motions and, in the interest of judicial economy, the Court declines to do so., Likewise, although IPS’s Invalidity MSJ is premised upon both anticipation pursuant to 35 U.S.C. § 102 and obviousness pursuant to 35 U.S.C. § 103, the Court does not address its anticipation finding (rejecting a portion of IPS’s argument and declining to address another) in detail because it concludes that IPS has met its burden with respect to obviousness. Accordingly, the Court turns to IPS’s obviousness arguments in its Invalidity MSJ.
II. DISCUSSION
A. THE LEGAL STANDARD FOR A MOTION FOR SUMMARY JUDGMENT
Rule 56 of the Federal Rules of Civil Procedure governs summary judgment motions and provides in pertinent part:
The judgment sought should be rendered if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56(c); see also Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1322 (Fed.Cir.2009). This standard applies in patent cases just as it does in other areas of law. Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994).
In reviewing summary judgment motions, this Court must view the evidence in a light most favorable to the non-moving party to determine whether a genuine issue of material fact exists. Adickes v. S.H. Kress & Co., 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 991 (Fed.Cir.2009); Daugherty v. Sajar Plastics, Inc., 544 F.3d 696, 702 (6th Cir.2008). A fact is “material” only if its resolution will affect the outcome of the lawsuit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Determination of whether a factual issue is “genuine” requires consideration of the applicable evidentiary standards. Thus, in most civil cases, the Court must decide “whether reasonable jurors could find by a preponderance of the evidence that the [non-moving party] is entitled to a verdict.” Id. at 252, 106 S.Ct. 2505.
Upon filing a motion for summary judgment, the moving party has the initial burden of establishing that there are no genuine issues of material fact as to an essential element of the non-moving party’s claim. Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479-80 & n. 12 (6th Cir.1989). The moving party, however, is not required to file affidavits or other similar materials negating a claim on which its opponent bears the burden of proof, so long as the moving party relies upon the absence of the essential element in the pleadings, depositions, answers to interrogatories, and admissions on file. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
In response, if the moving party establishes the absence of a genuine issue of material fact, to defeat summary judgment, the non-moving party “may not rely merely on allegations or denials in its own pleading; rather, its response must — by affidavits or as otherwise provided in this rule — set out specific facts showing a genuine issue for trial.” Fed.R.Civ.P. 56(e)(2); see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). In this regard, “Rule 56 does not impose upon the district court a duty to sift through the record in search of evidence to support a party’s opposition to summary judgment;” rather, “Rule 56 allocates that duty to the opponent of the motion, who is required to point out the evidence, albeit evidence that is already in the record, that creates an issue of fact.” Williamson v. Aetna Life Ins. Co., 481 F.3d 369, 379-80 (6th Cir.2007) (citation omitted). Moreover, the non-moving party must show more than a scintilla of evidence to overcome summary judgment; it is not enough for the non-moving party to show that there is some metaphysical doubt as to material facts. Matsushita Elec. Indus. Co., 475 U.S. at 586-87, 106 S.Ct. 1348; Vita-Mix, 581 F.3d at 1322-23.
Accordingly, the ultimate inquiry is whether the record, as a whole, and upon viewing it in the light most favorable to the non-moving party, could lead a rational trier of fact to find in favor of the non-moving party. Id.; see also Anderson, 477 U.S. at 252, 106 S.Ct. 2505 (“The judge’s inquiry, therefore, unavoidably asks whether reasonable jurors could find by a preponderance of the evidence that the [non-moving party] is entitled to a verdict — whether there is [evidence] upon which a jury can properly proceed to find a verdict for the party producing it, upon whom the onus of proof is imposed.”) (emphasis in original) (internal quotations omitted); Amgen, Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1351-52 (Fed.Cir.2009).
In its Invalidity MSJ, IPS argues that claims 1, 2, 3, 5, and 17 of the '850 Patent are obvious in light of prior art. (Invalidity MSJ at 1.) To prevail on this argument, IPS must establish that, construing the facts in the light most favorable to Oatey, there is no genuine issue of material fact and it is entitled to judgment as a matter of law that the '850 Patent is invalid under the applicable law of obviousness.
B. THE LEGAL STANDARD FOR OBVIOUSNESS
1. The Requirement of Nonobviousness for Patentability
A patent cannot be infringed unless it is valid, i.e., the invention at issue must satisfy the requirements of patentability. 35 U.S.C. § 282. Invalidity is, thus, an affirmative defense to a patent infringement lawsuit.
One of the statutory requirements of patentability is nonobviousness. The Patent Act does not confer patent protection on an invention
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); see also Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed.Cir.2009). The United States Supreme Court clearly articulated the rationale for the nonobviousness requirement of 28 U.S.C. § 103(a) in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007):
We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. See U.S. Const., Art. I, § 8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in § 103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose.
Section 103 thus codifies one of the fundamental principles underlying the policy the framers intended to advance by including patent protection in the Constitution.
2. The Test for Obviousness
A properly issued patent is presumed valid. 35 U.S.C. § 282; see also AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1238-39 (Fed.Cir.2003). A party seeking to invalidate a patent based on obviousness must prove by clear and convincing evidence “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble, Co., 566 F.3d at 994 (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.Cir.2007)). Evidence is clear and convincing when the factfinder has “an abiding conviction that the truth of [the] factual contentions are highly probable.” Id. (quoting Colorado v. New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984)).
Furthermore, obviousness is a question of law to be determined based on underlying factual considerations. Ball Aerosol, 555 F.3d at 991 (“Obviousness under 35 U.S.C. § 103 is a question of law, with underlying factual considerations regarding (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations.”),
a. The Graham Analysis
To evaluate obviousness, the Court must conduct a four-pronged inquiry into the following underlying factual considerations identified by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966):
(1) the scope and content of the prior art;
(2) the differences between the prior art;
(3) the level of ordinary skill in the art; and
(4) any relevant secondary considerations.
Ball Aerosol, 555 F.3d at 991 (citing Graham, 383 U.S. at 17-18, 86 S.Ct. 684). The Graham analysis is designed to provide the factual basis necessary to address the question set forth in § 103(a) — whether the invention “would have been obvious at the time [it] was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103.
In KSR, the Supreme Court analyzed obviousness in the summary judgment context and explained the interplay between the ultimate legal determination and the analysis of the Graham factors:
The ultimate judgment of obviousness is a legal determination. Graham, 383 U.S. at 17, 86 S.Ct. 684 .... Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.
550 U.S. at 427, 127 S.Ct. 1727; see also Ball Aerosol, 555 F.3d at 993 (quoting KSR); Tokyo Keiso Co., Ltd. v. SMC Corp., 307 Fed.Appx. 446, 450 (Fed.Cir.2009) (same). Accordingly, the Court must first evaluate each of the Graham factors, construing the disputed, material facts in the light most favorable to the non-moving party, Oatey. Then, after making findings based on the facts so construed, the Court must determine whether, as a matter of law, IPS has submitted clear and convincing evidence “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble, Co., 566 F.3d at 994 (omitting quotation and citation); see generally Peter S. Menell, et al., Patent Case Management Guide, Berkeley Center for Law & Technology, University of California at Berkeley School of Law § 6.2.1.1.1 (2008).
b. The TSM Test Is Informative, Not Mandatory
Once the Court has conducted the Graham analysis to set the factual stage, it must determine whether, as a matter of law, the invention is obvious or patentable. Graham, 383 U.S. at 17-18, 86 S.Ct. 684 (“Against this background the obviousness or nonobviousness of the subject matter is determined.”). Prior to the Supreme Court’s decision in KSR, the Federal Circuit applied the “teaching/suggestion/motivation” (“TSM”) test in making this determination. See Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (Fed.Cir.2005). Under the TSM test, “a patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.” KSR, 550 U.S. at 407, 127 S.Ct. 1727 (omitting citation and internal quotations). In KSR, the Supreme Court clarified the appropriate use of the Federal Circuit’s TSM test — as a “helpful insight” but not a “rigid and mandatory formula[ ].” Id. at 419, 127 S.Ct. 1727.
c. The Governing KSR Approach to Determining Obviousness
KSR provides lower courts with clear guidance regarding the ultimate determination of obviousness. Because KSR articulates significant explanations and clarifications of the law and standards applicable to the lower courts’ obviousness determinations, the Court will discuss it in detail and highlight several of the key instructions before applying those principles to the facts at bar.
i. Expansive/Flexible/Functional
First, the Supreme Court in KSR explained that its prior decisions dictate that courts use an approach that is “expansive,” “flexible,” or “functional” as opposed to formulaic. Id. at 415, 127 S.Ct. 1727. “To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at secondary considerations that would prove instructive.” Id. (citing Graham, 383 U.S. at 17, 86 S.Ct. 684). In describing this flexible approach, the Supreme Court noted that, although “[a] fact-finder should be aware, of course, of the distortion caused by hindsight bias” in evaluating obviousness, the proper approach must allow for “recourse to common sense[.]” Id. at 421, 127 S.Ct. 1727 (quoting DyStar Textilfarben, GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (2006), noting that the Federal Circuit’s prior precedent “not only permits, but requires, consideration of common knowledge and common sense”).
ii. Combinations of Prior Art to Achieve Predictable Results
Second, KSR emphasizes the importance of disallowing patents for combinations of elements found in prior art which merely yield a predictable result. The purpose of this prohibition is to avoid stifling innovation by “diminish[ing] the resources available to skillful men.” Id. at 416, 127 S.Ct. 1727 (quoting Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950) and concluding that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Accordingly, to prove obviousness, a defendant must show that, at the time of the invention, a known problem existed “for which there was an obvious solution encompassed by the patent’s claims.” Id. at 420, 127 S.Ct. 1727. In other words, a designer is not entitled to patent protection for solving an apparent problem by virtue of an apparent solution to achieve a predictable result. The Supreme Court thus instructed courts to “ask
whether the improvement is more than the predictable use of prior art elements according to their established functions[,]” and to “look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 417-18, 127 S.Ct. 1727.
As a corollary to the known problem/predicable result principle, in determining whether the problem and solution are apparent, the Court should not focus naiTowly on the specific field of endeavor in which the invention exists or artificially naiTOW the awareness and creativity of the person of ordinary skill in the art. “Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.... A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-21, 127 S.Ct. 1727.
The Supreme Court further explained that a person of ordinary skill in the art may find predictable solutions in analogous fields of endeavor; a designer who interrelates prior art from other fields within the scope of the designer’s skill is not entitled to patent protection for the combination.
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.
KSR, 550 U.S. at 417, 127 S.Ct. 1727. Combinations of prior art, moreover, may be obvious even in the absence of extensive discussion of the technique in industry literature. As the Supreme Court instructed:
In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
Id. at 419, 127 S.Ct. 1727.
KSR clearly cautions against insisting upon a strict correlation between the specific field of endeavor and the relevant prior art. This does not make all prior art relevant, however. As the Federal Circuit has reiterated since KSR, there must be a logical relationship between prior art in a different field and the problem facing the designer.
‘A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.’ In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992). In other words, ‘familiar items may have obvious uses beyond their primary purposes.’ KSR ..., 550 U.S. 398, 127 S.Ct. 1727 .... We therefore have concluded, for example, that an inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other ‘housings, hinges, latches, springs, etc.,’ which in that case came from areas such as ‘a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes.’ [In re] Paulsen, 30 F.3d [1475,] 1481-82 [(Fed.Cir.1994)].
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed.Cir.2007).
iii. The Factfinder’s Analysis Must Be Explicit
Third, the Supreme Court specifically instructed courts to articulate their analysis explicitly “[t]o facilitate review,” although “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 127 S.Ct. 1727. Therefore, while the motivation to combine elements of prior art may be implicit in that prior art such that a person of ordinary skill in the art would easily perceive the desirability of the combination, the Court must explicitly identify that motivation in its analysis of obviousness. See Ball Aerosol, 555 F.3d at 988-89.
iv. “Obvious to Try”
Fourth, the Supreme Court clarified that it is possible to prove obviousness by showing “that the combination of elements was ‘obvious to try.’ ” Id. at 421, 127 S.Ct. 1727 (omitting citation). As explained by the Supreme Court:
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.
Id.
The Federal Circuit has since discussed the “obvious to try” doctrine in a number of cases. See, e.g., Bayer Schering Pharma A G v. Barr Labs., Inc., 575 F.3d 1341, 1347-48 (Fed.Cir.2009); Ball Aerosol, 555 F.3d at 991-92; In re Kubin, 561 F.3d 1351, 1358-60 (Fed.Cir.2009). For example, the Federal Circuit recently provided a detailed and instructive analysis of the “obvious to try” doctrine in In re Kubin, 561 F.3d at 1358-60. In that case, the Federal Circuit noted that its own authority presaged KSR’s discussion of the “obvious to try” doctrine by describing when the fact that a combination was “obvious to try” would not invalidate a patent. Id. (citing In re O’Farrell, 853 F.2d 894, 903 (Fed.Cir.1988)). Specifically, prior to KSR, the Federal Circuit had explained that the “obvious to try” doctrine cannot invalidate a patent when:
what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful.
In re O’Farrell, 853 F.2d at 903. As the Federal Circuit explained in In re Kubin, the O’Farrell insights still apply after KSR:
[W]here a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness. The inverse of this proposition is succinctly encapsulated by the Supreme Court’s statement in KSR that where a skilled artisan merely pursues ‘known options’ from a ‘finite number of identified, predictable solutions,’ obviousness under § 103 arises. 550 U.S. at 421, 127 S.Ct. 1727.
In re Kubin, 561 F.3d at 1359. Similarly, “obvious to try” does not invalidate a patent when
what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.
Id. (quoting O’Farrell, 853 F.2d at 903). “Again, KSR affirmed the logical inverse of this statement by stating that § 103 bars patentability unless ‘the improvement is more than the predictable use of prior art elements according to their established functions.’ ” Id. (quoting KSR, 550 U.S. at 417, 127 S.Ct. 1727.); see also Barr Labs., 575 F.3d at 1347-48.
Thus, KSR marks a departure from, or, at least, a clarification of, prior precedent regarding obviousness. The Supreme Court’s endorsement of the “obvious to try” doctrine is illustrative of the overall effect of KSR, which was to broaden and strengthen the nonobviousness requirement of patentability.
d. The Relative Importance of Secondary Considerations
To complete the Graham analysis, the Court must evaluate secondary considerations, also known as “objective evidence of nonobviousness.” Graham, 383 U.S. at 17-18, 86 S.Ct. 684; Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed.Cir.2000) (holding that district court erred in failing to consider evidence of secondary considerations). That is, after examining .the prior art, comparing it to the claims at issue, and defining ordinary skill in the art, “a court may consider secondary objective evidence of non-obviousness, such as commercial success, long felt but unresolved need, failure of others, and the like.” Id. KSR did not change this; the Supreme Court noted that “Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive.” 550 U.S. at 415, 127 S.Ct. 1727 (citing Graham, 383 U.S. at 17, 86 S.Ct. 684).
It is, nonetheless, necessary to understand the relative importance of secondary considerations in the overall obviousness analysis. Graham and KSR qualify the role of secondary considerations to some extent: in Graham, the Supreme Court said that the court “may” consider secondary considerations, 383 U.S. at 17, 86 S.Ct. 684, and it confirmed this approach in KSR by stating that Graham had “invited” courts to consider secondary considerations “where appropriate.” KSR, 550 U.S. at 415, 127 S.Ct. 1727. Although courts have not interpreted this language as making secondary considerations an optional step in the obviousness analysis, see Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1008 (Fed.Cir.2009) (citing Ruiz, 234 F.3d at 667 and instructing district court to consider secondary considerations on remand, as failure to do so may constitute error), the Federal Circuit has repeatedly stated that secondary considerations cannot generally overcome a strong prima facie showing of obviousness. See, e.g., Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed.Cir.2009) (citing Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.Cir.2007) and stating that “a strong prima facie obviousness showing may stand even in the face of considerable evidence of secondary considerations.”); Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991-92 (Fed.Cir.2009); Tokyo Keiso, 307 Fed.Appx. at 453. In fact, the Federal Circuit articulated this rule in Leapfrog, the first obviousness case it decided after KSR. Leapfrog, 485 F.3d at 1162 (affirming the district court’s finding that, despite “substantial evidence of commercial success, praise, and long-felt need, ... given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion [of obviousness]”).
C. ANALYSIS
The Court concludes that Oatey’s '850 Patent is invalid on obviousness grounds. To explain this conclusion, the Court will proceed through the factual inquiries described in Graham, as informed by KSR and its progeny, and in light of the standards applicable to a motion for summary judgment. That is, since obviousness is a legal determination for the Court, the question is whether, construing the facts relating to the underlying Graham factors in the light most favorable to Oatey, there is a genuine issue of material fact as to one or more of those factors sufficient to preclude the legal determination of obviousness. KSR, 550 U.S. at 427, 127 S.Ct. 1727.
1. The Level of Ordinary Skill in the Art is Undisputed
First, the level of ordinary skill in the art is undisputed. According to Oatey’s expert, a person of ordinary skill in the art for purposes of this case “would typically be a master plumber with several years of practical experience in the field or an engineer with at least an undergraduate engineering degree and several years of experience designing or developing plumbing supply products.” (Invalidity MSJ at 26 (quoting Ex. K, Expert Report of Ronnie Jackson at 12).) IPS does not object to this description of the level of ordinary skill in the art for purposes of their Invalidity MSJ. The Court finds, moreover, that Mr. Jackson’s description of the level of ordinary skill in the art is reasonable based on the now extensive record before it regarding this invention.
2. The Scope & Content of the Prior Art
a. The Definition of Prior Art in the Obviousness Context
In general, “prior art” in the obviousness context is “technology already available to the public.” See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed.Cir.1997) (quoting Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed.Cir.1984)). Thus, prior art essentially amounts to the publieally available material described in the novelty provision of the Patent Act, § 102(a), (e), (g), and (f). See id.; see also Mass Eng’d Design, Inc. v. Ergotron, Inc., 633 F.Supp.2d 361, 371 (E.D.Tex.2009); Trading Techs. Intern., Inc. v. GL Consultants, Inc., No. 05 C 4120, 2007 WL 1468552, at *2 (N.D.Ill. May 16, 2007); cf. Ormco Corp. v. Align Tech, Inc., 463 F.3d 1299, 1305 (Fed.Cir.2006) (citing Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed.Cir.2003)). The material described in these provision of § 102 includes patents and printed publications of all kinds available to the public prior to the date of the invention at issue, as well as prior use or knowledge that occurred in the United States before the date of the invention. See 35 U.S.C. § 102.
Further, as discussed above, prior art relevant to the obviousness inquiry is not strictly limited to the specific field of endeavor of the invention at issue, but extends to fields logically related to the general problem facing the inventor. See In re ICON Health & Fitness, 496 F.3d at 1379-80 (citing In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992); In re Kahn, 441 F.3d 977, 987 (Fed.Cir.2006); In re Paulsen, 30 F.3d 1475, 1481-82 (Fed.Cir.1994); Hitachi Koki Co., Ltd. v. Doll, 620 F.Supp.2d 4, 19-20 (D.D.C.2009) (“Where an inventor is considering how to design a particular mechanism to fit a specific type of device, he ‘would naturally look to references employing’ other forms of that mechanism, even where they are found in different types of devices.” (omitting citations and quotations)); cf. KSR, 550 U.S. at 420, 127 S.Ct. 1727 (“[F]amiliar items may have obvious uses beyond their primary purposes.”). The nature of the problem defines the scope of the prior art a person of reasonable skill in the art would consult in attempting to solve it.
b. The Scope of the Claims as Construed by this Court and the Federal Circuit
At the Markman stage of this case, the parties asked the Court to construe just one term of claim 1 of the '850 Patent: “first and second juxtaposed drain ports.” Oatey Co. v. IPS Corp., 2006 WL 581240, at *8, n. 9 (N.D.Ohio Mar. 8, 2006). Applying the applicable principles of claim construction, the Court concluded “that when Oatey claimed ‘first and second juxtaposed drain ports,’ it claimed two separate identifiable physical elements that are adjacent or near each other.” The Court expressly rejected Oatey’s argument that Oatey had implicitly redefined the term “drain ports” to include a “partial opening” of a larger single structure by including an alternative embodiment in its specifications. Id. at *11. The Court reasoned that “acknowledgment of a possible alternative structure in the specification is not the same as claiming the alternative structure. Oatey chose its claim language; it may not use its specification to now ‘imply’ it out of existence.” Id. at *12. As noted previously, moreover, in response to Oatey’s request for clarification regarding the effect of its Markman Order on the embodiment disclosed in Figure 3, the Court concluded that, because claims 2 and 17 contained language not found in claim 1, which specifically claimed a “dividing wall” in the tailpiece whose function was to create “fluid passageways” designed to “communicate with” the separate drain ports referenced in claim 1, that dividing wall could not serve as the structure which also created the separate drain ports claimed there. Again, as noted above, the Federal Circuit rejected that aspect of this Court’s analysis, agreeing with Oatey that the separate drain ports of claim 1 could be formed by separating a larger opening in the bottom wall with the dividing wall of the tailpiece.
Specifically, the Federal Circuit noted that it “normally do[es] not interpret claim terms in a way that excludes embodiments disclosed in the specification ... [unless] those embodiments are clearly disclaimed in the specification ... or prosecution history .... ” Oatey, 514 F.3d at 1276-77. After finding that the alternative embodiment depicted in Figure 3 of the '850 Patent was not disclaimed, the Federal Circuit held that that embodiment “was improperly excluded from the scope of claim 1.” Id. at 1277 (stating that: “The recitation in claim 1 that the drain ports are in the bottom wall does not exclude the Figure 3 embodiment whereby the ports are formed using a dividing wall provided by the tailpiece. In Figure 3 the juxtaposed drain ports are defined by the perimeter of the oblong opening in conjunction with the dividing wall.”). Accordingly, the Federal Circuit altered this Court’s construction as follows:
Although the term “first and second juxtaposed drain ports in said bottom wall” defines distinct openings, this does not exclude the distinct openings formed as shown in the structure of Figure 3. The district court erred in construing claim 1 as excluding this embodiment. The claim construction is modified accordingly-
c. Summary of the Parties’ Arguments
IPS has submitted a relatively broad set of patents, printed publications, and knowledge in the industry for the Court’s consideration in support of their argument that the '850 Patent is obvious. First, IPS directs the Court to numerous patents. Some of the patents reveal the historical evolution of WMOBs — from the pre-WMOB era, to single-drain-port systems, to dual-drain-port systems, and, ultimately, dual-drain-port systems employing a common tailpiece. See U.S. Pat. Nos. 2,884,947 (1959) (“Gerhardt '947”); 3,096,782 (1963) ("Williams '782”); 3,834,781 (1974) (“Logsdon '781”); 4,410,004 (1983) (“Kifer '004”); 4,934,410 (1990) (“Humber '410”); 5,592,964 (1997) (“Traylor '964”); 6,125,881 (2000) (“Hobbs '881”). Other patents to which IPS refers the Court relate generally to methods of combining multiple streams of effluent into a single outlet. See U.S. Pat. Nos. 3,476,852 (1969) (“Shattuck '852”); 4,815,274 (1989) (“Piatti '274”); 5,216,883 (1993) (“Flugger '883”); see also Gerhardt '947. In addition, IPS refers the Court to the Southern Nevada 1997 Plumbing Code Amendments as an example of changes in regulatory standards that affect the design requirements of WMOBs. (Invalidity MSJ, Exs. H-I.) Finally, IPS directs the Court to Gerhardt '947, which discloses a funnel-shaped tailpiece at the bottom of a divided wash basin that extends completely around the drain ports on each side of the basin. IPS argues that Gerhardt '947 demonstrates that the use of similar funnel-shaped “adaptors,” “manifolds,” or “tailpieces” was common knowledge in the plumbing and engineering field as a method of combining multiple streams of effluent into a single outlet.
Oatey disagrees with IPS’s description of the relevant prior art in two ways. First, Oatey argues that the patents relating to methods of combining effluent streams in automobile exhaust systems are too far afield to be considered. Second, Oatey specifically contends that the Hobbs '881 Patent is not prior art. Neither of these asserted factual disputes preclude summary judgment, however.
d. Discussion of the Scope & Content of the Prior Art
The history of WMOBs is set forth above. Without repeating it here, the Court will highlight certain aspects of it in order to tie that history to the prior art submitted by IPS and to clearly articulate the scope and nature of the prior art in the context of the obviousness inquiry. Upon full consideration of the parties’ arguments and submissions, the Court finds as follows with respect to the first Graham consideration.
The history of WMOBs is not in dispute. Since the 1950s WMOBs have been commonly installed in homes to accommodate all of the plumbing connections and outlets associated with a washing machine in one neat and tidy box that fits between the two studs in a wall. The pre-WMOB approach is demonstrated above by Fig. 1 of a 1959 patent, Gerhardt '947, which shows a washing machine [A] that drains waste water [27] into a large basin [B] over an open drain in the floor. A typical early WMOB design is illustrated at right by
Fig. 5 of a 1963 patent, Williams '782, which shows a WMOB with hot and cold water faucets [23, 24] in the bottom wall on either side of a single drain port [52] attached to a drain pipe [25], and an opening in the top wall to accommodate at least one source of waste water from a washing machine and/or appliance such as an air conditioner. In designs like Williams '782, the waste water drains through a single port in the bottom wall, even if the source of the effluent comes from multiple appliances. Thus, the effluent streams are co-mingled at the bottom wall and are not separated there or for any distance in the tailpiece.
The parties do not dispute that changes to plumbing codes in certain regions of the country in the 1990s required a separate drain port for each different source of waste water. The Southern Nevada 1997 Plumbing Code Amendments referenced by IPS provide an example of this requirement, and fall within the definition of prior art since they are in a printed publication that was available to the public prior to the invention of the '850 Patent. A WMOB design like Williams '782 would be non-compliant in a jurisdiction with a plumbing code like Southern Nevada’s if a plumber wanted to use it to drain more than one appliance — i.e., Williams does not provide the “additional or second port” for “discharge piping other than the discharge from the wash machine]!]” (Doc. 129-10.)
The problem presented by the new plumbing codes was solved by new WMOB designs adding an additional drain port to accommodate each source of waste water entering the WMOB. Such a design is illustrated below in Fig. 5 of IPS’s 1990 patent, Humber '410, which shows two drain ports [57, 67], one on each side of the bottom wall of the WMOB, separated by the adjacent hot and cold water faucets [21, 19]. Comparing Fig. 5 in Williams '782 (1963) to Fig. 5 in Humber '410 (1990), the latter includes the extra drain port, which addresses the requirements of the plumbing codes.
As explained in detail above, however, the design reflected in Humber '410 requires a plumber to use multiple connections between pipes below the WMOB to combine the effluent from the two drain ports before the streams flow out of a single drain pipe. These connections are illustrated by numbers 1-6 in the figure to the bottom right. In fact, throughout this litigation, Oatey has been clear that this was the problem it set out to solve, and did solve by virtue of the '850 Patent. The solution, illustrated by Fig. 1 of Oatey’s '850 Patent, was to (1) place the drain ports next to each other and (2) use a “tailpiece” [22] that extends completely around both drain ports [24, 26] to combine separate streams of waste water flowing out of the WMOB through each separate drain port. LSP used the same solution around the same time, as reflected below in Figs. 8-10 of the '881 Patent.
IPS has, accordingly, submitted prior art identifying the source and development of the problem the '850 Patent seeks to address: i.e., an improvement over prior WMOBs that simplifies the combination of multiple streams of effluent from multiple drain ports to facilitate both compliance with plumbing codes and ease of installation.
Oatey contends that automobile exhaust systems are not within the scope of the prior art. Oatey does not submit any testimony or evidence in support of this contention; instead, Oatey argues that IPS has not satisfied its burden to submit clear and convincing evidence demonstrating that exhaust systems are analogous prior art. In light of the problem to be solved, the Court finds that the patents IPS referenced relating to automobile exhaust systems that combine multiple sources of effluent into one outlet are pri- or art in the context of the obviousness analysis. First, although Oatey correctly assigns the burden of producing clear and convincing evidence of invalidity to IPS, the exhaust system patents IPS submits are themselves evidence. And, again, the person of ordinary skill in the art in this case is “a master plumber with several years of practical experience in the field or an engineer with at least an undergraduate engineering degree and several years of experience designing or developing plumbing supply products.” The proper question, therefore, is whether a reasonable juror could conclude that a master plumber or an experienced plumbing engineer would be inclined to consider the various methods of combining streams of effluents used in other fields of endeavor to determine the best way to do so in a WMOB. As the Federal Circuit stated in In re ICON Health & Fitness, 496 F.3d at 1379-80, “even though [automobile exhaust systems] may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals [i.e., ways of combining multiple streams of effluent], logically would have commended itself to an inventor’s attention in considering his problem.” Consequently, Oatey’s contention that the automobile exhaust system patents are not prior art because “you [would not] hire a plumber to fix your car’s combustion engine” misses the mark. (Opp’n to Invalidity MSJ at 15.) Recalling that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton[,]” KSR, 550 U.S. at 420-21, 127 S.Ct. 1727, the Court finds that no reasonable juror could conclude that the exhaust system patents IPS submits are not prior art.
3. Comparison of the '850 Patent & Prior Art
The next consideration under Graham is comparison of the '850 Patent to the prior art.
a. Humber '410 Compared to the '850 Patent
The undisputed historical development of prior art relating to WMOB discussed above establishes a relatively consistent single drain port design, e.g., Williams '782. The dual-drain-port design exemplified by Humber '410 coincides with, and responds to, amendments to plumbing codes requiring a separate drain port for each source of waste water. In the dual drain port era, comparing the 1990 Humber '410 Patent to Oatey’s '850 Patent is particularly instructive because both patents teach two drain ports, reflecting the state of the art in the industry at that time. Thus, there are two meaningful differences between Humber '410 and Oatey’s '850 Patent. First, the '850 Patent teaches adjacent or “juxtaposed,” drain ports; Humber '410 does not. Second, the '850 Patent teaches a common tailpiece extending completely around the drain ports to combine the two separate streams of waste water flowing through the drain ports; Humber '410 does not.
b. Traylor '964 Compared to the '850 Patent
Oatey vigorously opposes the idea that Traylor '964 is a dual-drain-port system, and submits the expert testimony of Mr. Jackson in support of this argument. (Opp’n Br. at 10, Ex. D.) Therefore, construing the facts in the light most favorable to Oatey, the Court accepts Oatey’s contention that Traylor '964 is a single-drain-port system. Nonetheless, Traylor '964 bears important similarities to the double-drain-port system of the '850 Patent. Traylor '964 teaches a single drain port, but that drain port is configured such that two independent streams of waste water flow into the drain port, each from a different pipe or hose inserted into the drain port. In this manner, the two independent streams of waste water are directed toward a single outlet and combined just below the circumferential lip of the drain port. Although it is a single drain port system, as IPS points out repeatedly, Traylor '964 uses a tube or hose to divide the drain port and maintain the separation between the two streams of waste water until each is inside the drain port, below the circumferential lip of the drain port. Therefore, the point at which the separate streams of waste water are combined is similar in Traylor '964 and the '950 Patent. The difference is that Traylor '964 substitutes the end of the tube or hose for the drain port in the '850 Patent, and the drain port itself for the tailpiece in the '850 Patent.
As noted above, this distinction precludes IPS from proving that Traylor '964 anticipates the '850 Patent; but the similarities between the '850 Patent and Traylor '964 reveal a similar approach to solving the problem of satisfying the plumbing codes requiring the WMOB to separate streams of waste water until they reach the pipe directly connected to the home’s drainage system. Figures 9,11,12, and 13 illustrate the drain port in Traylor '964.
c. Comparison of Prior Art Relating to the Common Tailpiece
With respect to the common tailpiece, the 1959 Gerhardt '947 Patent is noteworthy because it discloses a funnel-shaped tailpiece extending completely around two drain ports in the bottom of a wash basin connected to a washing machine. This tailpiece is similar to the '850 Patent’s tailpiece in both its design and function. It is also the simplest example of the prior art IPS submits in support of its argument that, decades before the '850 Patent, use of a funnel-shaped “adapter,” “manifold,” or “tailpiece” was a well-known technique for combining multiple streams of effluent into one outlet. Indeed, the funnel-shaped tailpiece disclosed in Gerhardt '947 physically resembles the '850 Patent’s tailpiece, is generally in the plumbing field, and has two openings from the basin which drain into it.
Oatey argues that Gerhardt '947 does not disclose a structure designed for a WMOB and does not appear to contain any structure that continues to separate the effluent streams for any distance beyond the bottom wall. It is undisputed that Gerhardt '947 is not a WMOB. Furthermore, construing the facts in the light most favorable to Oatey, the Court assumes that Gerhardt '947 does not disclose a divider of any kind below the bottom wall, i.e., within the tailpiece itself. Accordingly, the Court will consider Gerhardt '947 only for the technology it undisputedly discloses: a tailpiece completely extending around two drain ports in a bottom wall to combine two independent streams of effluent.
In addition, as discussed above, the Court finds that the adaptors and manifolds disclosed in the automobile exhaust systems IPS references address the same problem — how to combine multiple streams of effluent from different sources into a single outlet. Clearly, these references were intended to address the concerns expressed in the '850 Patent. Therefore, those patents are comparable to the common tailpiece disclosed in the '850 Patent, in function and design. For example, Piatti '274 discloses a tailpipe that merges separate streams of exhaust into a single outlet. Figure 8 of Piatti '274, below, illustrates an exhaust system for a four-cylinder internal combustion engine. The purpose of the invention is to provide an exhaust system that increases the power and efficiency of the engine by maintaining a single exhaust channel for each of the four cylinders for as long as possible before combining the exhaust from all four channels in a single outlet 13. See Piatti '274, col. 1-2. As described in the specifications:
To this end the invention consists in an exhaust system for a mu1ti~cy1inder internal combustion engine including a plurality of individual primary exhaust tubes or channels leading from different exhaust ports and connected at their outlet ends into the inlet end of a common tailpipe, characterized in that the common tailpipe is divided by a partitioning wall or walls extending at least part-way along the tailpipe from its inlet end into two or more channels with which the outlet ends of the individual primary exhaust tubes or channels are connected separately or in pairs.
Piatti '274 col. 2, Ins. 22-32. For purposes of the obviousness analysis, the multiple “exhaust ports” formed by the partitioning walls 14, 15 at the inlet end of the exhaust system correspond to the multiple drain ports in the bottom wall of the WMOB disclosed in Figure 3 by the '850 Patent. The tailpipe 13 in Piatti '274 corresponds to the common tailpiece in the '850 Patent in that the multiple steams of effluent (exhaust or waste water) flowing through the separate ports (exhaust or drain) are combined there. Piatti '274, moreover, discloses a dividing wall within the tailpiece.
c. Analysis
Based on the comparison of the prior ar