Sabasta v. Buckaroos, Inc. (683 F. Supp. 2d 937, 2010)

ORDER

ROBERT W. PRATT, Chief Judge.

Plaintiffs, Steven W. Sabasta and Sioux Falls Insulation Supply, Inc. (referenced collectively hereinafter as “Plaintiff’ or “Sabasta”), filed the present action for patent infringement on April 17, 2006. Clerk’s No. 1. Plaintiffs Complaint alleges that Sabasta is the original inventor of a roll-bending die used to make saddles for pipe insulation. Compl. ¶ 2. Sabasta was granted United States Patent No. 6,751,-995 (“the '995 Patent”) on June 22, 2004. Id. According to the Complaint, Defendant, Buckaroos, Inc. (“Buckaroos” or “Defendant”), has commercially exploited Sabasta’s invention since March 2005 “by manufacturing and selling certain pipe insulation saddles that were made with a process that infringes upon the '995 Patent.” Id. ¶ 7.

Before the Court are two motions filed by Defendant: Buckaroos’ Motion for Summary Judgment of Invalidity of Claims 1-6 and 14-15 (Clerk’s No. 118) and Buckaroos’ Motion for Summary Judgment of Inequitable Conduct (Clerk’s No. 128). In its Motion for Summary Judgment of Invalidity of Claims 1-6 and 14-15, Buckaroos asserts that Claims 1-6 and 14-15 of the '995 Patent are invalid as obvious under 35 U.S.C. § 103. Clerk’s No. 118 at 1-2. In its Motion for Summary Judgment of Inequitable Conduct, Buckaroos contends that Sabasta violated the duty of candor by failing to inform the United States Patent and Trademark Office (“USPTO” or “PTO”) of certain material prior art. Clerk’s No. 128 at 2. Sabasta filed resistances to both motions (Clerk’s Nos. 161, 167), and Buckaroos filed replies (Clerk’s Nos. 187, 214). The matters are fully submitted.

I. FACTUAL BACKGROUND

Sabasta first started making and selling pipe insulation saddles in approximately May 2000. Pl.’s Material Facts in Support of Resistance to Mot. for Summ. J of Invalidity (hereinafter “Pl.’s Material Facts 1”) ¶ 1. These pipe saddles were made with a three roll-bending machine and did not have flared ends or ribs pressed into them. Id. ¶¶ 2-3. In mid-2000, Sabasta constructed a prototype ribbed and flared sad-die. Id. ¶ 4. Sabasta, however, could not mass produce the prototype ribbed and flared saddle with the three-roll-bending equipment, but after researching the matter, determined that specially-fabricated dies used in conjunction with a two roll-bending machine could efficiently produce the ribbed and flared pipe saddles. Id. ¶¶ 5-6. Sabasta purchased a two roll-bending machine, the Acrotech Model 1618, in June 2001, and worked with Acrotech to fabricate specially designed dies. Id. ¶ 7; Def.’s Material Facts in Support of Mot. for Summ. J. of Inequitable Conduct (hereinafter “Def.’s Material Facts 2”) ¶ 2, 7.

Acrotech is a company that makes roll-bending machinery. Acrotech has been promoting and selling the Acrotech Model 1618, a two roll-bending machine that uses an upper roll tube assembly, or “die,” in conjunction with a lower pliable roller, since 1986. Def.’s Material Facts in Support of Mot. for Summ. J. of Invalidity (hereinafter “Def.’s Material Facts 1”) ¶¶ 1, 5. The machine was sold with a manual and Acrotech has marketed and promoted materials in relation to the Acrotech 1618 machine for years. Id. ¶¶2-4. To use the Acrotech machine to make smaller diameter pieces, the standard roll tube assembly is replaced with a mounting block referred to as a “Small OD” attachment that uses a die arrangement such as a 1" or 2" shaft assembly. Id. ¶ 4. When the Acrotech machine is configured with the Small OD attachment, the die of each shaft assembly includes mounting portions at each end, where each die end engages two cam rollers on the Small OD attachment to align the die. Id. ¶ 5. The cam roller arrangement is standard equipment on the Acrotech machine with the Small OD configuration, and Sabasta was aware of this fact. Id. ¶¶ 6-7. Standard shaft assemblies in the Acrotech machine with the Small OD attachment include a threaded shaft at one end that is bolted to the machine. Def.’s Material Facts 1 ¶ 6. Sabasta received a manual for the Acrotech machine he purchased in 2001 and read it several times. Def.’s Material Facts 2 ¶¶ 8-9.

Sabasta first produced ribbed and flared saddles using the specially designed dies in September 2001, and first sold pipe saddles manufactured using the subject matter of the '995 Patent in October 2001. Id. ¶¶ 8-9. In July 2002, Sabasta contacted patent counsel to see about filing a patent on the subject matter of the '995 Patent. Pl.’s Material Facts in Support of Resistance to Mot. for Summ. J. of Inequitable Conduct (hereinafter “Pl.’s Material Facts 2”) ¶ 2. Sabasta relied on his patent attorney to advise him regarding the patentability of his invention, and to submit appropriate documents, information, and argument to the USPTO. Id. ¶ 3. Sabasta provided numerous documents to his patent attorney, including photographs of ribbed and flared dies, and photographs of and documents relating to the Acrotech 1618 Machine. Id. ¶ 4.

Sabasta, via his attorneys, filed Patent Application No. 10/215,614 (the '614 Application) on August 9, 2002, and submitted certain prior art with his filing. Def.’s Material Facts 2 ¶¶ 10, 16; PL’s Material Facts 2 ¶ 6. Though Sabasta did submit an Information Disclosure Statement to the USPTO, he did not submit any information regarding the Acrotech Model 1618 machine or its manual in his disclosure. Def.’s Material Facts 1 ¶¶ 24-25. During the patent application process, Sabasta signed an oath acknowledging his duty of candor to the USPTO. Def.’s Material Facts 2 ¶ 12. The USPTO mailed an “Office Action” on October 8, 2003, rejecting claims 1-5, 10, 15, and 20 of the '614 Application under 35 U.S.C. § 103(a) in view of Howell (3,150,707). Id. ¶ 18; Def.’s Material Facts 1 ¶ 21. The Office Action also rejected claims 1 and 2 of the '614 Application under the same statutory-authority over Okude in view of Hanson. Def.’s Material Facts 2 ¶ 18. On December 23, 2003, Sabasta submitted an Amendment to the '614 Application, amending as-filed independent claims 1 and 15 to incorporate as-filed dependent claims 6 and 16. Id. ¶ 19. The '995 Patent issued on June 22, 2004.

II. STANDARD FOR SUMMARY JUDGMENT

Summary judgment “shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). An issue is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact is material if the dispute over it might affect the outcome of the suit under the governing law. Id. The moving party has the burden of demonstrating the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Anderson, 477 U.S. at 248, 106 S.Ct. 2505. In meeting its burden, the moving party may support his or her motion with affidavits, depositions, answers to interrogatories, and admissions. See Celotex, 477 U.S. at 323, 106 S.Ct. 2548. Once the moving party has carried its burden, the nonmoving party must go beyond the pleadings and, by affidavits, depositions, answers to interrogatories, or admissions on file, designate the specific facts showing that there is a genuine issue for trial. See Fed.R.Civ.P. 56(e); Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548; Anderson, 477 U.S. at 257, 106 S.Ct. 2505. In order to survive a motion for summary judgment, the nonmoving party must present sufficient evidence for a reasonable trier of fact to return a verdict in his or her favor. Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548. On a motion for summary judgment, a court is required to “view the evidence in the light most favorable to the nonmoving party and give that party the benefit of all reasonable inferences.” See United States v. City of Columbia, 914 F.2d 151, 153 (8th Cir.1990) (citing Woodsmith Pub. Co. v. Meredith Corp., 904 F.2d 1244, 1247 (8th Cir.1990)). A court does not weigh the evidence or make credibility determinations. See Anderson, 477 U.S. at 252, 106 S.Ct. 2505. A court only determines whether there are any disputed issues and, if so, whether those issues are both genuine and material. Id.

A court must keep in mind that summary judgment is not a paper trial. Accordingly, a “district court’s role in deciding the motion is not to sift through the evidence, pondering the nuances and inconsistencies, and decide whom to believe.” Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 920 (7th Cir.1994). In a motion for summary judgment, this Court has but one task, to decide, based on the evidence of record as identified in the parties’ moving and resistance papers, whether there is any material dispute of fact that requires a trial. See id. (citing Anderson, 477 U.S. at 249, 106 S.Ct. 2505 and 10A Charles A. Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 2712 (3d ed. 1998)). The parties then share the burden of identifying the evidence that will facilitate this assessment. Waldridge, 24 F.3d at 921. Nevertheless, “[s]ummary judgments in favor of parties who have the burden of proof are rare, and rightly so.” Turner v. Ferguson, 149 F.3d 821, 824 (8th Cir.1998).

III. LAW AND ANALYSIS

A. Are Claims 1-6 and 14-15 Invalid as Obvious?

An issued patent is presumed valid. See 35 U.S.C. § 282; Cardinal Chem. Co. v. Morton Int’l, 508 U.S. 83, 93 n. 15, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993). To overcome this presumption of validity, an objecting party must demonstrate facts establishing a patent’s invalidity by clear and convincing evidence. See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed.Cir.2003) (citing 35 U.S.C. § 282). One ground for invalidating a patent is obviousness. Title 35, United States Code § 103(a) provides:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.

In Graham v. John Deere Co. of Kansas City, the United States Supreme Court laid out a framework for determining obviousness under § 103, noting that while “the ultimate question of patent validity is one of law, the § 103 condition ... lends itself to several basic factual inquiries.” 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Such inquiries require the Court to examine: 1) the scope and content of the prior art; 2) the level of ordinary skill in the art; and 3) the differences between the claimed invention and the prior art. Id. “Against this background the obviousness or nonobviousness of the subject matter is determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (citing Graham, 383 U.S. at 17-18, 86 S.Ct. 684). If Defendant successfully establishes a prima facie case of obviousness, the burden of production then shifts to Plaintiff to present evidence that would support a contrary conclusion. See In re Sullivan, 498 F.3d 1345, 1351 (Fed.Cir.2007). “Evidence rebutting a prima facie case of obviousness can include: evidence of unexpected results, evidence that the prior art teaches away from the claimed invention in any material respect, and evidence of secondary considerations.” Id. (internal quotations and citations omitted). Secondary considerations include such items as “ ‘commercial success, long felt but unsolved needs, failure of others, etc., [which] might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.’” KSR, 550 U.S. at 399, 127 S.Ct. 1727 (quoting Graham, 383 U.S. at 17-18, 86 S.Ct. 684).

1. Prima facie considerations.

a. The scope and content of the prior art.

The scope of the prior art is defined as encompassing that which is “reasonably pertinent to the particular problem with which the inventor was involved.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed.Cir.1983). Prior art “encompasses not only the field of the inventor’s endeavor but also any analogous arts.” In re GPAC Inc., 57 F.3d 1573, 1577-78 (Fed.Cir.1995). “To ascertain the scope of the prior art, a court examines the field of the inventor’s endeavor, and the problem with which the inventor was involved, at the time the invention was made.” Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed.Cir.1998) (internal quotation and citation omitted); see also Bausch & Lomb v. Barnes-Hind/Hydrocurve, 796 F.2d 443, 449 (Fed.Cir.1986) (“To determine whether a reference is within the scope and content of the prior art, first determine if the reference is within the field of the inventor’s endeavor. If it is not, then consider whether the reference is reasonably pertinent to the particular problem with which the inventor was involved.”).

Defendant asserts that relevant prior art references for purposes of this case are the patents identified in the patent examiner’s Office Action, namely Howell (U.S. Patent No. 3,150,707), Okude (JP 0156025), Hanson (U.S. Patent No. 3,040,799), and Valentine (U.S. Patent No. 3,610,011). According to Defendant, each of these prior art references teaches some underlying component of producing ribbed and flared dies in a two roll-bending machine. See Def.’s Invalidity Br. at 6-7. The Patent Examiner found the following with regard to the prior art of Howell, Okude, and Hanson:

Howell illustrates in Figures 1, 2 and 9 a roll-bending die comprised of a body member 35 having a ridge portion in the form of dimples or protuberances 55 (see Figure 10) extending about the circumference of the body member (see Figure 6) in cooperation with a pliable roller 36. As the sheet material 21 is fed through the rollers 35, 36, the material 21 is formed into an arc by the action of the dimples and the pliable material on the roller 36.

Okude illustrates the basic claimed bending die where bending rolls 5a, 5b, 25 selectively produce longitudinal ribs P4 in the sheet material PI by at least one ridge portion (unlabeled) and form the sheet material into an arc. Okude shows that the opposed rolls are fixed during the rib forming operation and the rolls are not pliable. However, it is common in the art as taught by Hanson to use a ridge forming roll 5 in conjunction with a pliable roll 20 for the purpose of forming ridges 17 in sheet material without effecting previously formed patterns on the workpiece.

Def.’s Invalidity App. at 178-79.

Additionally, Defendant points to the Acrotech Model 1618 Machine as prior art. Def.’s Invalidity Br. at 5. Defendant specifically points out that the Acrotech Model 1618 machine contains as standard equipment the “Small OD” attachment which uses 1" or 2" shaft assemblies that have mounting portions at each end that engage cam rollers on the Small OD attachment to align the die. Id. Plaintiff does not contest Defendant’s identification of the prior art references or their scope for purposes of the present motion. The Court, accordingly, finds the relevant prior art to be that identified in Defendant’s Brief, i.e., Howell, Okude, Hanson, Valentine, and the Acrotech 1618 machine. See id. at 4.

b. The level of ordinary skill in the art.

“[A] person having ordinary skill in the art,” for purposes of § 103, refers to a “hypothetical person who is presumed to be aware of all the pertinent prior art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed.Cir.1986). A “person of ordinary skill in the art” is “presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which.” Std. Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed.Cir.1985). In making a determination of the appropriate level of ordinary skill in the art, a court may consider multiple factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 667-67 (Fed.Cir.2000) (internal quotations and citation omitted).

Defendant asserts that the requisite level of skill in the art in the field of the '995 Patent would be someone with a mechanical engineering degree or fifteen to twenty years experience in the field. Def.’s Invalidity Br. at 11. Defendant does not offer any independent support for the proffered skill level, but rather garners the standard from the testimony of Plaintiffs proposed expert, Dr. Abhijit Chandra, stating that “Buckaroos accepts [Dr. Chandra’s] contention for purposes of this motion.” Id. at 11; see also Def.’s Invalidity Reply Br. at 5 (“Buckaroos accepted Sabasta’s expert’s contentions regarding the level of skill in the roll-bending field for purposes of this motion.”).

Plaintiff asserts that Defendant has overstated Dr. Chandra’s testimony by “tak[ing] one snippet of testimony from [his] deposition.” Pl.’s Invalidity Resistance Br. at 12. Dr. Chandra testified on this topic as follows:

Q. What would be your understanding of a person of ordinary skill in the context of this patent? And by that, I mean, the patent in suit.

A. Mechanical engineer. You know, say, a bachelor’s degree.

Q. Do you consider yourself a person of ordinary skill in the art relevant to this patent?

A. Yes, I think I have, you know, the ordinary skills.

Q. And you defined — you said a person of ordinary skill would include a bachelor’s degree or at least a bachelor’s degree. Could they be a person of ordinary skill without a bachelor’s degree in engineering?

A. Possible. Possible.

Q. What would you consider sufficient?

A. It has to be on an individual-by-individual basis. It’s very difficult to say — make a blanket statement who has the skill and who doesn’t.

Q. Well, what would you consider....

A. Somebody who probably has an associate’s degree but has, you know, 15, 20 years experience, that person can have the skill.

Q. In your opinion, would someone need a bachelor’s degree in engineering or the equivalent in order to understand this patent?

A. Not necessarily.

Q. Okay.

A. But having the degree would help.

Q. Would a person with, say, a high school degree be able to understand this patent?

A. If the person has a technical background, yes, that person may have a skill. But, otherwise, you know, you are asking me- — you know, like, this is too much of a generalization. I cannot do that.

Q. Would a person who has a science degree from undergrad, not an engineering degree, but a different science degree — let’s just say in mechanical arts — be able to understand this patent?

A. Possibly.

Q. Would a person with manufacturing experience — and I believe you said 15 years a minute ago — 15 years of manufacturing experience in the roll forming industry be able to understand the patent?

A. Yeah, I would guess so.

Q. Would a person with ten years of experience in the roll forming industry be able to understand the patent?

A. Maybe. Again, it depends on the individual. It’s very difficult to say, you know, what Person A would do and what Person B would do.

Pl.’s Invalidity App. at 50-51.

Since neither party points to any testimony or evidence other than that of Dr. Chandra in support of a proposed determination of the ordinary level of skill in the pertinent art, the Court accepts that the ordinary level of skill is that defined by Dr. Chandra. Specifically, the Court determines that a person of ordinary skill in the art is a hypothetical individual with either a bachelor’s degree in mechanical engineering, or a lesser level of education combined with approximately fifteen years of technical or equivalent experience in the field of roll-bending.

c. The differences between the claimed invention and the prior art.

According to Defendant, “the only difference between Sabasta’s machine and the standard Acrotech machine are the ribs and flares on the dies.” Def.’s Invalidity Br. at 7 (emphasis omitted). Plaintiff does not specifically contest Defendant’s contention in this regard, but rather moves straight to an assertion that the combination of established prior art elements was innovative and nonobvious. Nonetheless, as part of its analysis, the Court must make a comparison of the objected-to claims and the prior art.

Broadly, Claim 1 of the '995 Patent encompasses a “roll-bending die for being used with a roll-bending machine for producing rib reinforced material.” See Clerk’s No. 1-2 at 11. The die is designed to be attached to a roll-bending machine such that it will selectively engage a pliable roller to permit material fed through the pliable roller and die to be formed into an arcuate shape. Id. The die has “at least one ridge portion” that will permit a ridge or rib to be pressed into the material as part of the arc forming process. Id. Additionally, the die will have a pair of mounting portions “adapted for being engaged by a plurality of cam rollers” on the roll-bending machine to maintain the die’s alignment on the roll-bending machine. Id. Dependent Claim 2 further clarifies that the ridge portion of the die will “extend around the circumference” of the die to create a circumferential ridge in the rolled material. Id. Dependent Claim 3 provides that the die will comprise “at least one flared ridge,” such that the rolled material will have a “flared portion.” Id. Dependent Claim 4 further clarifies that the flared ridge “annularly extends around” the die so that it will create a “circumferential flared portion” in the rolled material. Id. Dependent Claim 5 provides that the flared ridge of the die will be “positioned adjacent one of a pair of opposing ends of said body member such that said flared ridge is adapted for forming the circumferential flared portion adjacent one of a pair of free ends” of the rolled material. Id. Dependent Claim 6 provides that the die will “compris[e] a threaded shaft” that is adapted for extending through the mounting block of the roll-bending machine. Id. Claim 14 is identical to Claim 1, except that it discusses “a plurality of ridge portions” and incorporates the language of Dependent Claims 2 (adapted to reflect ridge portions, rather than a ridge portion), 3 (adapted to reflect a “pair of flared ridges” rather than “at least one flared ridge”), 4 (adapted to reflect the plural form of the flared ridges), and 5 (adapted to reflect the plural form of the flared ridges). Dependent Claim 15 is identical to Dependent Claim 6, save for its reference to Claim 14 rather than Claim 1.

The Court concurs with the Patent Examiner that Howell clearly illustrates a roll-bending die with ridges or protuberances extending about the circumference of the body member for use with a pliable roller. See Def.’s Invalidity App. Ex. H at 178. The Court also concurs that Okude and Hanson clearly teach the use of a ribbed die for producing rib-reinforced rolls by a roll-bending process. See id. Exs. I, J. The Acrotech 1618 Manual, concededly known to Plaintiff, demonstrates a two roll-bending machine. See id. Ex. C. The Acrotech machine also comes standard with a “Small OD Attachment,” for use when diameters need to be smaller than would be permitted using the standard top roll on the two roll-bending machine. Id. at 42. The manual states:

The Small OD Attachment ... is a universal bridge support that is designed to accept a wide variety of small mandrels and Slip-On Tubes for accurately curving different pieceparts of small diameters and short lengths. The Attachment replaces the upper steel shaft, and essentially consists of a beam to which are attached shaft assemblies ... of different lengths and diameters. Slip-On Tubes can be used over these shafts or mandrels for special size combinations. The complete assembly is engineered so that whichever mandrel and/or tube is used, it will always bear against the urethane roll to curve a perfect part.

Id. at 45. Plaintiff concedes that when the Acrotech machine is configured with the standard Small OD Attachment, the standard die shaft assemblies included therewith include mounting portions at each end which engage two cam rollers on the Small OD Attachment to align the die. See Def.’s Material Facts 1 ¶ 11. Therefore, the use of mounting portions on a die to engage cam rollers on a two roll-bending machine, as articulated in Claims 1 and 14, is taught by the prior art of the Acrotech machine.

The Court concludes that all of the components of the identified claims, i.e., the use of a two-roll-bending machine for producing arcuate metal, the use of ribbed or flared dies for creating ribs and/or flares in the metal, and the use of mounting portions to engage cam rollers for purposes of aligning the die, are apparent individually or in varying combinations in the prior art. Notably, Defendant does not point the Court directly to a prior art reference that employs flares, as identified in claims 3-5 and 14, but contends it need not do so since the Patent Examiner explicitly rejected claims to a “ribbed die with ribs and flares in conjunction with a two roll-bending machine.” Def.’s Br. at 15. This contention will be addressed infra in the Court’s analysis of the legal question of obviousness. Regardless, the Court notes that Valentine, an identified prior art reference, teaches a two roll design with the top roll being “generally cylindrical in shape except for two annular protuberances 28 near the ends which are rounded,” a functional equivalent of flares. Def.’s Invalidity App. Ex. K.

2. Legal analysis of obviousness.

In support of its contention that Claims 1-6 and 14-15 are obvious, Defendant argues that the file history in this case must be read as supporting the conclusion that Plaintiff has conceded that a combination of a ribbed and flared die *with a two roll-bending machine is not patentable in view of the prior art. Def.’s Invalidity Reply Br. at 4. Indeed, Defendant claims the Patent Examiner specifically found that it was obvious to combine and/or modify any one of several prior art devices to include ribs and/or flares for use on a two-roll-bending machine. Id. To avoid the Patent Examiner’s conclusion in this regard, Plaintiff cancelled Dependent Claim 6 as that claim was originally submitted and incorporated its limitations into the rejected Claim 1. Likewise, Plaintiff cancelled Dependent Claim 16 and incorporated its limitations into the rejected Claim 15 (ultimately issued as Claim 14). Since the only difference between the rejected claims and the issued claims is the addition of the limitation formerly found in Dependent Claims 6 and 16 (the limitation is identical in each), the sole basis for the issuance of the patent is the inclusion of the limitation that the die include “a pair of mounting portions” that “engag[e] a plurality of cam rollers of the roll-bending machine” to maintain the die’s alignment with the machine. Defendant claims that the standard Small OD Attachment of the Acrotech 1618 machine contains precisely the features that Plaintiff relied on in overcoming the Patent Examiner’s rejection, and contends that if Plaintiff had disclosed the Acrotech machine to the Patent Examiner as a prior art reference, the patent application clearly would have been determined to be obvious in light of the prior art:

In other words, the obviousness conclusion here is nothing more than retracing (with one change) the exact obviousness analysis that the Patent Office did and to which Sabasta conceded. The one change is to use the Acrotech 1618 machine as the principal prior art reference, instead of using the Okud[e] patent. The patent examiner concluded that it was obvious to combine Okud[e] [which “illustrates the basic claimed bending die where bending rolls ... selectively produce longitudinal ribs in the sheet metal by at least one ridge portion and form the sheet material into an arc”] with Hanson [which teaches using “a ridge forming roll in conjunction with a pliable roll for the purpose of forming ridges in sheet material without effecting previously formed patterns on the workpiece”]. Here, by using the Acrotech 1618 machine instead of Okud[e] in the analysis, one can for the same reasons conclude that the combination of Acrotech 1618 with Hanson would have been obvious. However, unlike the result in the Patent Office, Acrotech 1618 does have [a component that uses dies with mounting portions that engage a plurality of cam rollers on the roll-bending machine] whereas Okud[e] does not.

Id.

To highlight the similarities between the patent claims and the Acrotech machine as prior art, Defendant has prepared the following chart comparing Claim 1 of the '995 patent to the Standard Acrotech 1618 machine:

Def.’s Invalidity Br. at 8. In short, Defendant contends: 1) Plaintiff applied for a patent on broad subject matter (Part A + B) that was rejected by the Patent Examiner on the basis of the prior art; 2) Plaintiff incorporated dependent claims into the independent claims of his patent submission, amounting to an admission that the original claims were not patentable (Plaintiff added Part C after the rejection); 3) the only distinction between the admittedly unpatentable claims (Part A plus Part B) and the patented claims is the addition of the mounting portion/camroller recitation (Part C); 4) the mounting portions/cam rollers are standard equipment on the Acrotech machine, but the Acrotech machine was not disclosed to the Patent Examiner as prior art; and 5) had the Patent Examiner seen the Acrotech manual, it would have rejected Plaintiffs amended claims as obvious in light of the prior art of the Acrotech machine.

a. Prosecution history estoppel.

The Court first addresses Defendant’s argument that Plaintiffs incorporation of a dependent claim into the rejected independent claim amounts to an admission that the original claims, i.e., the claims without the “cam rollers,” were not patentable and are, therefore, obvious. Id. at 9. Defendant cites Festo Corp v. Shoketsu Kinzoku Kogyo Kabushiki Co., in support of its proposition:

A patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter, whether the amendment was made to avoid the prior art or to comply with § 112. We must regard the patentee as having conceded an inability to claim the broader subject matter or at least as having abandoned his right to appeal a rejection. In either case, estoppel may apply.

535 U.S. 722, 737, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002). Plaintiff counters that Defendant is improperly attempting to argue that the principles of prosecution history estoppel should apply to an invalidity analysis. Pl.’s Invalidity Resistance at 15. According to Plaintiff, Defendant’s argument in this regard:

is based upon a flawed assumption that has no support in the Patent Act or the case law interpreting it. Instead, “[t]he action of a patent applicant in voluntarily narrowing his claim to conform to the opinion of the patent examiner furnishes no basis in fact or reason for inferring that he has admitted the invalidity of the patent as issued, in whole or in part.”

Id. (quoting Mesinger v. W. Auto Supply Co., 375 F.Supp. 1143, 1146 (S.D.Fla.1974)). Plaintiff also cites TorPharm, Inc. v. Ranbaxy Phaomaceuticals, Inc., 336 F.3d 1322, 1330 (Fed.Cir.2003), in support of the contention that prosecution history estoppel does not apply in determinations of invalidity. Id.

The doctrine of prosecution history estoppel is “one tool that prevents the doctrine of equivalents from vitiating the notice function of claims,” in that it “ ‘precludes a patentee from obtaining under the doctrine of equivalents coverage of subject matter that has been relinquished during the prosecution of its patent application.’” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed.Cir.2000) (quoting Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373, 1376-77 (Fed.Cir.1999)), overruled on other grounds by 535 U.S. 722, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002); see also Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 952 (Fed.Cir.1993) (“The essence of prosecution history estoppel is that a patentee should not be able to obtain, through the doctrine of equivalents, coverage of subject matter that was relinquished during prosecution to procure issuance of the patent.”) The Supreme Court reaffirmed the purpose of the doctrine in Festo:

Prosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process. Estoppel is a “rule of patent construction” that ensures that claims are interpreted by reference to those “that have been cancelled or rejected.” Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-21, 61 S.Ct. 235, 85 L.Ed. 132 (1940). The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent. On the contrary, “[b]y the amendment [the patentee] recognized and emphasized the difference between the two phrases[,] ... and [t]he difference which [the patentee] thus disclaimed must be regarded as material.” Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37, 62 S.Ct. 513, 86 L.Ed. 736 (1942).

A rejection indicates that the patent- examiner does not believe the original claim could be patented. While the patentee has the right to appeal, his decision to forgo an appeal and submit an amended claim is taken as a concession that the invention as patented does not reach as far as the original claim. Were it otherwise, the inventor might avoid the PTO’s gatekeeping role and seek to recapture in an infringement action the very subject matter surrendered as a condition of receiving the patent.

Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its underlying purpose. Where the original application once embraced the proposed equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot assert that he lacked the words to describe the subject matter in question. The doctrine of equivalents is premised on language’s inability to capture the essence of innovation, but a prior application describing the precise element at issue undercuts that premise. In that instance the prosecution history has established that the inventor turns his attention to the subject matter in question, knew the words for both the broader and narrower claim, and affirmatively chose the latter.

Festo, 535 U.S. at 736, 122 S.Ct. 1831.

The Court is unaware of, and Defendant has not provided citation to, any case that affirmatively stands for the argument that Defendant here advances, namely that prosecution history estoppel can be used to establish an admission or disavowal of rejected subject matter for purposes of invalidating a patent as obvious. In TorPharm, the most factually similar case available, TorPharm owned a patent providing for a crystalline form of ranitidine, an antihistamine drug that inhibits acid secretion in the stomach. 336 F.3d at 1324. As originally filed, the patent application did not include “bulk and tap density limitations”; rather, those limitations were added by amendment to overcome obviousness rejections by the USPTO. Id. TorPharm sued Ranbaxy for infringement of its patent as issued, and Ranbaxy moved for summary judgment of invalidity arguing, amongst other things, that the patent was invalid on the basis of prosecution history estoppel. Id. at 1325. In essence, Ranbaxy made the same argument advanced by Defendant in the present case: 1) TorPharm overcame an obviousness rejection only by adding limitations to the rejected claims; 2) the added limitations were in the prior art; 3) by amending its claims to incorporate the limitation, TorPharm acquiesced to the examiner’s determination that the patent as originally submitted was obvious; and 4) TorPharm was, therefore, estopped from denying that the patent, as issued, was obvious over the prior art. See id. at 1330 (“Ranbaxy nonetheless maintains that the non-obviousness inquiry is here foreclosed, due to TorPharm’s ‘acquiescence’ in the examiner’s section 103 rejection during prosecution. The examiner rejected the pending claims as obvious [over prior art] but agreed that amending the claims to recite the bulk and tap densities ... would overcome this rejection. According to Ranbaxy, having agreed to amend the pending claims rather than argue that the process was patentable without any density limitations, TorPharm is precluded from contesting the obviousness of the process claims now that material with the recited densities is known from the prior art.”).

In concluding that nothing in the prosecution history of TorPharm’s patent “overcomes the statutory mandate to assess the nonobviousness of an issued patent claim against the prior art, the Federal Circuit found that Ranbaxy’s argument “blur[red] the distinction between claims and limitations

[Patentability is assessed from the former, not the latter. That a particular limitation recited by a claim may be found in the prior art is surely relevant to the patentability of the claim, but it is hardly dispositive. Here, by amending its claim to recite the bulk and tap densities ... TorPharm “acquiesced,” if at all, only to the proposition that a process claim lacking the density limitations would not be distinguished from the pri- or art.

Id. at 1330. Considering TorPharm in conjunction with the purposes of the doctrine of prosecution history estoppel, the Court concludes that the correct result lies, as it often does, somewhere between the respective positions of Defendant and Plaintiff. Defendant is correct in its proposition to the extent that, given the prosecution history in this case, Plaintiff cannot now advance the position that a roll-bending die without the mounting portion/cam roller limitation in Part C would be patentable. Plaintiff, on the other hand is correct in its assertion that the “decision to submit different claims in response to the referenced office action may limit the scope of the '995 Patent for infringement purposes, but does not constitute an admission regarding invalidity.” Pl.’s Invalidity Resistance Br. at 18; see Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1346 (Fed.Cir.2005) (“TorPharm held that the applicant’s ‘acquiescence’ in the obviousness rejection by amending its claims did not preclude the patentee from contesting obviousness in litigation.”).

Even were the Court to accept the proposition that Plaintiff has conceded the obviousness of A+B (from Defendant’s chart), it is clear that such a concession is not determinative of the obviousness of A+B + C. Defendant argues that evidence of Plaintiffs “concession” is merely the “starting point for [its] motion, namely [to demonstrate] that it was obvious to combine and/or modify any one of several of the prior art devices to include the claimed ribs and/or flares on two roll-bending machines as claimed (A+B).” Def.’s Invalidity Br. at 5. According to Defendant, the next logical step is to conclude that since combining A+B is obvious, “it follows that it was obvious to combine B with A+C (the Acrotech 1618 machine). Hence, A+B + C is obvious.” Id. Defendant’s proposition in this regard is based on flawed logic, and “blurs the distinction between claims and limitations,” as was the case in TorPharm. TorPharm, 336 F.3d at 1330. The mere fact that A+B is not patentable in view of the prior art does not give rise to an automatic conclusion that A+B + C is unpatentable as obvious merely on the basis that the limitation in C, standing alone, may be obvious in light of the prior art. This is because in assessing the validity of the claims at issue in the present motion for summary judgment, as contrasted with the duty of the Patent Examiner to determine patentability in the first instance, the Court must “assess independently the validity of the claim against the prior art ... tak[ing] into account the statutory presumption of patent validity.” TorPharm, 336 F.3d at 1329-30. In evaluating a claim’s validity, the “determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed.Cir.2008); 35 U.S.C. § 103 (“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.” (emphasis added)). Given the different standard of review applicable in the present proceedings, the Court concludes that a prosecution history estoppel theory does not provide an adequate or appropriate premise for Defendant’s claim of an entitlement to summary judgment.

b. The impoH of the Patent Examiner’s rejections.

While the Court concludes that the doctrine of prosecution history estoppel is inapplicable to the present case, at least as Defendant seeks to employ it with regard to the present motion, this conclusion does not mean that the Court must totally disregard the fact that the Patent Examiner initially rejected Plaintiffs claims. Accordingly, some further discussion of the import of the Patent Examiner’s determinations in the patent issuance process is warranted.

As an ordinary matter, a court will presume that a qualified government agency, such as the USPTO, has properly done its job. See Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359-60 (Fed.Cir.1984) (“When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty is to issue only valid patents.”). Nonetheless, the Federal Circuit has made clear that “the invalidity of a patent under 35 U.S.C. § 103 must be decided on the basis of prior art adduced in the proceeding before the court.” Greenwood v. Hattori Seiko Co., Ltd., 900 F.2d 238, 241 (Fed.Cir.1990) (emphasis added).

In Greenwood, the owner of a patent entitled “Heart Rate Counter with Digital Storage and Numerical Readout” (the “’140 Patent”) filed an infringement action against watchmaker Seiko, alleging that two Seiko models containing pulse-monitoring features infringed on the '140 Patent. Id. at 239. Prior to the lawsuit, Seiko requested a reexamination of the '140 Patent, citing certain prior art that Seiko contended raised a substantial new question as to the patentability of the subject matter of the '140 Patent. Id. During the reexamination proceeding, the Patent Examiner rejected each claim of the '140 Patent as obvious. Id. The patent owner responded to the rejection by filing an affidavit demonstrating conception prior to the date of Seiko’s asserted prior art publications. Id. at 239-40. The Patent Examiner accepted the affidavit and issued a Reexamination Certificate, validating the '140 Patent. Id. In seeking to invalidate the '140 Patent as obvious in the subsequent infringement action, Seiko argued that the Patent Examiner had erred in reinstating the '140 Patent on the basis of the patent owner’s affidavit. Id. The district court agreed with Seiko that the affidavit was inadequate and “apparently felt constrained to reinstate the examiner’s rejection,” holding that “if the affidavits are insufficient, the PTO’s original finding in favor of Seiko [i.e., its rejection of the '140 Patent claims] should be restored.” Id. (citation omitted). The Federal Circuit reversed the judgment of the district court, finding that the district court had “treated the reexamination as if it were part of Greenwood’s suit against Seiko” and further finding that this “misperception[ ] caused [the district court] to disregard the presumption that all patents are valid.” Id.

Once issued by the PTO, a patent is presumed valid and the burden of proving otherwise rests solely with the challenger. Here, the court’s error was likely caused by Seiko, with possible assistance from Greenwood. In its brief on appeal, and presumably in the district court, Seiko’s principal argument for invalidating the '140 patent was that the reexamination certificate should not have issued because Greenwood’s Rule 131 affidavit was insufficient to antedate the three magazine publications cited in the reexamination. Greenwood’s brief is similarly directed in large part to the adequacy of his affidavit. After establishing to the satisfaction of the district court that its position on the affidavit was correct, Seiko then apparently persuaded the court that it could reinstate the examiner’s initial rejection for obviousness, which had been grounded in part on the three publications. The district court followed this approach and held the patent invalid under 35 U.S.C. § 103 based on the initial action of the examiner. As a result, the court did not analyze the publications, in conjunction with the other prior art references relied on by Seiko, in the manner required by the Supreme Court, and decisions of this court, to determine whether they would have rendered the invention obvious under section 103.

Id. at 240-41.

Interestingly, the Greenwood Court also stated: “[T]he fact that the examiner initially rejected Greenwood’s claims under 35 U.S.C. § 103 is not proof of obviousness in the infringement action before the district court.” 900 F.2d at 241. Read in isolation, this statement would clearly support a conclusion that the Court owes no deference to obviousness determinations of the patent examiner made prior to ultimate issuance of the patent. The import of the statement is muddied, though, by the court’s next statement: “Before issuing the reexamination certificate, the examiner clearly withdrew his initial rejection.” Id. The addition of this statement makes it unclear whether the Greenwood Court intended the statements, in conjunction, to mean: 1) a patent examiner’s rejection of claims is never proof of obviousness, and in the Greenwood case, this is especially true because the patent examiner withdrew the rejection; or 2) a patent examiner’s rejection of claims is not proof of obviousness in an infringement action in a situation where the examiner’s initial rejection was withdrawn. The following statement by the Federal Circuit in Quad Environmental Technologies Corp. v. Union Sanitary District, however, supports a conclusion that the former interpretation is appropriate: “The courts are the final arbiter of patent validity and, although courts may take cognizance of, and benefit from, the proceedings before the patent examiner, the question is ultimately for the courts to decide, without deference to the rulings of the patent examiner.” 946 F.2d 870, 876 (Fed.Cir.1991).

Given the Court’s obligation to undertake an independent validity analysis, the fact that the patent examiner rejected Plaintiffs claims as initially submitted, does not, as the Court determined in its prosecution history estoppel analysis, bind the Court’s invalidity analysis. Rather, the Court takes “cognizance of’ the Patent Examiner’s rejections and findings, and will consider them along with any and all evidence in the case to reach a conclusion on the question of whether the '995 Patent is invalid as obvious in light of the prior art. See Quad Environmental, 946 F.2d at 876.

c. Are the claims obvious in light of the prior art ?

Since there is no real dispute that all individual elements of the contested claims are present in the prior art, the Court must evaluate whether the combination of those prior elements would have been obvious to a person of ordinary skill in the art at the time of the invention. Plaintiff argues that Defendant has failed to point to any evidence of a teaching, suggestion, or motivation that would support a finding of obviousness. See Pl.’s Invalidity Br. at 19 (arguing that Defendant must “show specifically why it was ‘apparent’ to use a ribbed die with ribs and flares in conjunction with a two-roll-bending machine, such as an Acrotech 1618”). Defendant counters that it need not demonstrate a particular teaching, suggestion, or motivation in light of the Supreme Court’s 2007 decision in KSR, 550 U.S. at 398,127 S.Ct. 1727.

Allegations that a patent is obvious because it is nothing more than a combination of preexisting elements readily apparent in the prior art have long been subjected by the Federal Circuit to the “teaching/suggestion/motivation” (“TSM”) test:

Most if not all inventions arise from a combination of old elements. Thus, every element of a claimed invention may often be found in the prior art. However, identification in the prior art of each individual part claimed is insufficient to defeat patentability of the whole claimed invention. Rather, to establish obviousness based on a combination of elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.

In re Kotzab, 217 F.3d 1365, 1369-70 (Fed.Cir.2000). Indeed, in Velander v. Garner, the Federal Circuit expressly stated that, when “all the elements of an invention are found in a combination of prior art references”:

“[A] proper analysis under § 103 requires, inter alia, consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success.”

348 F.3d 1359, 1363 (Fed.Cir.2003) (quoting In re Vaeck, 947 F.2d 488, 493 (Fed.Cir.1991)); see also KSR, 550 U.S. at 407, 127 S.Ct. 1727 (“[T]he Federal Circuit has employed [the TSM test], under which a patent claim is only proved obvious if the prior art, the problem’s nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.”); PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1360 (Fed.Cir.2007) (stating that obviousness may be shown by proof that a “person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry out the claimed process, and would have had a reasonable expectation of success in doing so”); Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1372 (Fed.Cir.2000) (“Therefore, Svhen determining the patentability of a claimed invention which combines two known elements, the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination.’”) (quoting In re Beattie, 974 F.2d 1309, 1311-12 (Fed.Cir.1992) (some internal quotations and citations omitted)); Princeton Biochemicals v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (2005) (finding that § 103’s “as a whole” provision “requires a showing that an artisan of ordinary skill in the art at the time of invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention, would have selected the various elements from the prior art and combined them in the claimed manner. In other words, § 103 requires some new suggestion or motivation, before the invention itself, to make the new combination.”). According to the Federal Circuit, courts “‘cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.’” Ecolochem, 227 F.3d at 1371 (quoting In re Fine, 837 F.2d 1071, 1075 (Fed.Cir.1988)). “ ‘Combining prior art references without evidence of such a suggestion, teaching, or motivation simply takes the inventor’s disclosure as a blueprint for piecing together the prior art to defeat patentability—the essence of hindsight.’ ” Id. at 1371-72 (quoting In re Dembiczak, 175 F.3d 994, 999 (Fed.Cir.1999)). Thus, according to the Federal Circuit, the TSM test is necessary because “case law makes clear that [rigorous application of the TSM test] is the best defense against [a] hindsight-based obviousness analysis.” Id. at 1371 (citing In re Dembiczak, 175 F.3d at 999). Despite occasional language by the Federal Circuit indicating the contrary, however, the TSM test should not be applied rigidly. In KSR, the Supreme Court reversed a ruling by the Federal Circuit that held summary judgment inappropriate where the district court had not made specific findings to show a teaching, suggestion, or motivation to combine prior art elements. KSR, 550 U.S. at 419, 127 S.Ct. 1727 (“There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.”). In KSR, the District Court granted summary judgment in favor of KSR, concluding that a patent on adjustable throttle pedals for automobiles was obvious in light of the prior art. Id. at 412-13, 127 S.Ct. 1727. The Federal Circuit reversed, holding that the District Court had failed to make “ ‘findingfs] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention’” to combine the elements as they were combined in the patent at issue. Id. at 413-14, 127 S.Ct. 1727 (quoting Teleflex, Inc. v. KSR Int’l Co., 119 Fed.Appx. 282, 288 (Fed.Cir.2005)). The Circuit stated that “unless the prior art references addressed the precise problem that the patent was trying to solve, the problem would not motivate an inventor to look at those references.” Id. at 414, 127 S.Ct. 1727 (citations omitted). While conceding that it may have been obvious to a skilled artisan to try to combine the elements at issue, the Circuit nonetheless found this fact irrelevant because “ ‘obvious to try has long been held not to constitute obviousness.’ ” Id. (quoting Teleflex, 119 Fed.Appx. at 289).

The Supreme Court reversed the Federal Circuit, finding that its “rigid and mandatory” application of the TSM test was inconsistent with the “expansive and flexible approach” to the obviousness inquiry emphasized in prior case law. Id. at 415, 127 S.Ct. 1727. The Court specifically found four flaws with the Federal Circuit’s analysis: 1) it adhered to a “formalistic conception” of the TSM test with an “overemphasis on the importance of published articles and the explicit content of the issued patents”; 2) it narrowly assumed that a person of ordinary skill in the art would consider only prior art references designed to solve the same problem as the patent at issue; 3) it incorrectly concluded that a “patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try’ ”; and 4) it applied “[r]igid preventative rules that deny factfinders recourse to common sense.” Id. at 419-21, 127 S.Ct. 1727. In so holding, the Supreme Court provided substantial guidance to be employed in making any obviousness assessment:

Neither the enactment of § 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over half a century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results....

The principles underlying [past] cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. 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, suing the technique is obvious unless its actual application is beyond his or her skill ... a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

Following these principles may be more difficult in other cases than it is here because the claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement. Often, it will be necessary for a court 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 in issue. To facilitate review, this analysis should be made explicit. As our precedents make clear, however, the analysis need not seek out precise teaching 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.

550 U.S. at 415-17,127 S.Ct. 1727

KSR did not overrule or prohibit the use of the TSM test; rather it merely cautioned courts not to rigidly apply the test. Indeed, the KSR Court specifically noted that, since the time of its underlying ruling, the Federal Circuit has “elaborated a broader conception of the TSM test than was applied in the instant matter.” Id. at 421, 127 S.Ct. 1727. The fact that the Court of Appeals had since “describe[d] an analysis more consistent with our earlier precedents,” however, could not prevent a holding that the test had been inappropriately applied in the case under consideration. Id.; see also id. at 418-19, 421, 127 S.Ct. 1727 (“W