Citations
- 705 F. Supp. 2d 1115
Full opinion text
ORDER
MARY H. MURGUIA, District Judge.
Currently before the Court is Defendant Stinger Systems, Inc.’s (“Stinger”) Motion for Summary Judgment of Patent Invalidity or Noninfringement, (Dkt. # 160), and Plaintiff TASER International, Inc.’s (“TASER”) Motion for Partial Summary Judgment of Literal Infringement. (Dkt. # 184). Having considered all the evidence and heard oral argument on March 23, 2010, the Court issues the following Order:
I. Background
A. Procedural History
On January 5, 2007, TASER filed an action against Stinger alleging infringement of U.S. Patent 7,145,762 (filed Feb. II, 2003) (“the '762 patent”) under 35 U.S.C. § 271, false advertising under 15 U.S.C. § 1051 et seq., and false marketing under 35 U.S.C. § 292. (Dkt. # 1). TASER amended its complaint on July 9, 2007 to add infringement claims for two additional patents, U.S. Patent 6,999,295 (filed Feb. 5, 2005) (“the '295 patent”) and U.S. Patent 7,102,870 (filed May 29, 2003) (“the '870 patent”). (Dkt. # 32). Thereafter, on October 10, 2007, TASER filed a second amended complaint in which TASER dropped all claims related to the '762 patent and added claims pertaining to a fourth patent, U.S. Patent 7,234,262 (Dec. 2, 2005) (“the '262 patent”).
On November 6, 2007, Stinger filed an Answer to TASER’s second amended complaint and counterclaim for false advertising under 15 U.S.C. § 1125(a) to TASER’s second amended complaint. (Dkt. # 54). Stinger asserts a number of affirmative defenses, including statute of limitations, laches, waiver, estoppel, unclean hands, patent misuse, and inequitable conduct. (Dkt. # 54, pp. 4-5).
On May 7, 2008, the Court held a hearing in accordance with Markman v. West-view Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), to construe disputed claims of the '262, '295, and '870 patents. This Court issued its Mark-man Order construing the disputed claims on February 2, 2009, 2009 WL 1087040. (Dkt. # 146). In that Order, the Court construed disputed claim language as follows: for the '295 patent (1) “to ionize the air within the air gap” refers to the formation of ions within the air gap as a result of the high voltage, short duration output across the first and second electrodes during the first mode/time period; and (2) “to maintain the current flow” is self-explanatory, and refers to the maintenance of the current flow that is driven across the air gap by the low voltage output in the second mode/time period and is not limited to a continuous or uninterrupted current flow to the extent that the current flow is able to maintain a state of low impedance throughout the second mode/time period; for the 870 patent a “grounded user of the weapon” refers to a user coupled to a common reference conductor in the weapon; and for the '262 patent (1) “track date and time” means the tracking of date and time, in a program, in a microprocessor, through whatever means available to a person of skill in the art at the time of the invention; (2) “period of time” means the predefined period recited in Claim 9. (Id.).
On, May 18, 2009, Stinger filed a Motion for Summary judgment of Patent Invalidity or Noninfringement. (Dkt. # 160). On August 14, 2009 TASER filed its Motion for Partial Summary Judgment of Literal Infringement. (Dkt. # 184). The Court held oral argument on these motions on March 23, 2010.
B. General Description of the Technology
TASER and Stinger develop, manufacture, and sell electronic control devices (“ECD”), commonly known as “stun guns,” which are used to temporarily incapacitate a single person from a distance. While ECDs are intended to be non-lethal, they are somewhat similar to pistols: handheld devices that are activated by a trigger mechanism. Once activated, two dart electrodes, each of which are tethered to a wire connected to the internal circuitry of the weapon, are ejected out of the end of the weapon. The darts are intended to establish contact points with a living target, enabling a power supply circuit in the weapon to deliver current through the electrodes and the target in order to cause involuntary muscle contractions and temporarily immobilize the target.
At issue in this case are three of TA-SE R’s patents that relate to technology for reducing the size and weight of ECDs while increasing their efficiency, effectiveness, and traceability in deployment. TASER’s '295 patent is entitled “Dual Operating Mode Electronic Disabling Device for Generating a Time-Sequenced, Shaped Voltage Output Waveform.” As the title suggests, the '295 patent claims a dual operating mode designed to addresses the challenge of establishing electrical contact with a target and efficiently deliver electric current flow to temporarily immobilize the target. In addition, the '870 patent is entitled “Systems and Methods for Managing Battery Power in an Electronic Disabling Device.” Likewise, as the title suggests, the '870 patent claims systems and methods for managing battery power. The two patents share a common specification.
Apparently, an ECD’s darts may often lodge in a target’s clothing, which results in an air gap between the electrodes and the target, preventing the electrodes from establishing direct contact with the target’s skin. The air gap impedes the flow of electricity due to the high impedance of air, which is generally defined as the absence of charged particles, or the ratio of the voltage of the electrical potential between two points and the current passing there. High impedance exists when there is a large voltage potential and only a small amount of current; low impedance is the opposite. The application of voltage across an air gap, which can be administered by the functioning of ECD capacitors and transformers, accelerates the available electrons in the air and causes them to pick up speed and crash into each other, thus freeing additional electrons and creating ions. This process is known as ionization, which breaks down high impedance and enables a smaller voltage application over a larger current flow. Once voltage is removed, the air gradually returns to its original state and high impedance returns. In addition, during the process of ionization, electrons can recombine with ions to recreate stable molecules, and in doing so they release energy by emitting photons, the particles responsible for light energy. In some instances, the recombination process results in the creation of visible electrical arcs.
Importantly, the common specification of the '295 and '870 patents reveal that although conventional ECDs were designed to have the capability of causing voltage breakdown across a very high impedance air gap by administering a fifty to sixty thousand volt output, once the air gap has been ionized and the impedance reduced to a low level, the stun guns continued to operate in the same mode, resulting in a high power, high voltage stun gun circuit operating relatively inefficiently and yielding low electro-muscular efficiency with high battery power requirements. To overcome this inefficiency, the '295 patent provides for the operation of an ECD in a second mode. Once the air gap is ionized and the air impedance is reduced to a low level, current is able to flow across the air gap at a lower voltage level. At that point, a second lower voltage, longer duration output is generated to maintain an immobilizing current flow through the target. In addition, the '870 patent makes additional claims for, among other things, safety enhancements with respect to the operation of ECDs.
Finally, the '262 patent is entitled “Electrical Weapon Having Controller for Timed Current Through Target and Date/ Time Recording.” As the title suggests, the patent claims an apparatus that includes a microprocessor programmed to track date and time, to initiate and maintain an electrical current for a period, and to record tracked date and time for each initiation of the current.
C. The Claims at Issue
The independent claims currently at issue are as follows :
1. The '295 Patent.
Claim 2:
A dual operating mode electronic disabling device for immobilizing a target comprising:
a. first and second electrodes positionable to establish first and second spaced apart contact points on the target wherein a high impedance air gap may exist between at least one of the electrodes and the target; and
b. a power supply for operating in a first mode to generate a first high voltage, short duration output across the first and second electrodes during a first time interval to ionize the air within the air gap to thereby reduce the high impedance across the air gap to a lower impedance to enable current flow across the air gap at a lower voltage level and for subsequently operating in a second mode to generate a second lower voltage output across the first and second electrodes during a second time interval to maintain the current flow across the first and second electrodes and between the first and second contact points on the target to enable the current flow through the target to cause involuntary muscle contractions to thereby immobilize the target.
Claim 40
A method for immobilizing the muscles of a target, comprising the steps of:
a. providing first and second electrodes positionable to establish first and second spaced apart contact points on the target wherein a high impedance air gap may exist between at least one of the electrodes and the target;
b. applying a first high voltage, short duration output across the first and second electrodes during a first time interval to ionize the air within the air gap to thereby reduce the high impedance across the air gap to a lower impedance to enable current to flow across the air gap at a lower voltage level; and
c. subsequently applying a second lower voltage output across the first and second electrodes during a second time interval to maintain the current flow across the first and second electrodes and between the first and second contact points on the target to enable the current flow through the target to cause involuntary muscle contractions to thereby immobilize the target.
2. The '870 Patent
Claim 1
An electronic disabling device for immobilizing a target comprising:
a. first and second electrodes positionable to establish first and second spaced apart contact points on the target;
b. high voltage power supply for generating an output voltage delivered in a series of electrical pulses to the target;
c. a battery system including: (I) a battery; (ii) a digital memory device for storing battery capacity data indicating the amount of battery capacity consumed or remaining; (iii) a data interface for communicating between the battery system and the memory device to adjust the battery capacity data stored in the memory device; and
d. a display for indicating to a user the battery capacity.
Claim 2
An electronic disabling device for immobilizing a target comprising:
a. first and second electrodes positionable to establish first and second spaced apart contact points on the target;
b. a high voltage power supply for generating an output voltage delivered in a pre-timed series of electrical pulses to the target; and
c. a display for indicating to the user the amount of time remaining in each pulse sequence.
Claim 3
An electronic disabling device for immobilizing a target comprising:
a. first and second electrodes positionable to establish first and second spaced apart contact points on the target;
b. a high voltage of power supply for generating an output voltage delivered in a pre-timed series of electrical pulses to the target;
c. a trigger mechanism to initiate the pre-timed series of electrical pulse; and
d. a mechanism for allowing the user to extend the duration of the pre-timed series of electrical pulses.
Claim 4
An electronic disabling device for immobilizing target comprising:
a. first and second electrodes positionable to establish first and second spaced apart contact points on the target; and
b. a high voltage power supply for generating an output voltage delivered across the first and second contact points on the target to generate a positive voltage potential at one electrode and a negative voltage potential at the other electrode, thereby increasing the total voltage drop across a target while deceasing the maximum voltage potential between either electrode and a grounded user of the weapon.
3. The '262 Patent
Claim 1
A dart weapon for interfering with locomotion by a human being or animal target, the weapon for use with each of a plurality of replaceable cartridges, each cartridge having at least one wire-tethered dart and a propellant that propels the dart, the weapon comprising:
a receiver that receives a particular cartridge of the plurality of cartridges; a power supply coupled to the receiver for conducting a high voltage pulsed current from the power supply through the wire-tethered dart of the particular cartridge;
a microprocessor programmed
(1) to track date and time,
(2) to activate via the power supply the propellant of the particular cartridge,
(3) to maintain for a period the current from the power supply, and
(4) to record tracked date and time in accordance with activation of the propellant of the particular cartridge and in accordance with respective activation of each other cartridge of the plurality received by the receiver, wherein the current through the target interferes with use by the target of the skeletal muscles of the target during the period
Claim 6
A dart weapon for interfering with use by a human being or animal target of skeletal muscles of the target, the weapon operative with a provided cartridge, the device comprising:
a trigger that provides a first signal responsive to operation of the trigger; and a circuit, comprising a memory, that
(1) keeps track of current time of day,
(2) keeps track of current date,
(3) receives the first signal to determine a first time, and
(4) responds to the first signal by recording current date and current time of day in the memory by applying power to a signal generator, by keeping track of a period of time from the first time, and by disabling the signal generator upon lapse of the period, wherein; the signal generator activates the cartridge to propel a wire-tethered dart of the cartridge toward the target: and
a current from the signal generator via the wire-tethered dart and through the target interferes with use by the target of the skeletal muscles of the target during the period.
Claim 9
A dart weapon for interfering with locomotion by a human being or animal target, the apparatus comprising:
means for providing a high voltage pulsed current through the target via a provided wire-tethered dart launched from the weapon;
means for recording date and time of day for each occasion that the weapon was operated to provide the current; and
means for discontinuing provision of the current in accordance with lapse of a predefined period.
Claim 13
An apparatus for causing involuntary contractions of skeletal muscles of a human or animal target, the apparatus comprising:
a circuit having a microprocessor that is
(1) programmed to track date and time,
(2) programmed to initiate a high voltage pulsed current from the circuit, and
(3) programmed to record tracked date and time in accordance with each initiation of the current, wherein the current launches a provided wire-tethered dart toward the target to conduct the current through the target and when passing through the target, causes involuntary contractions of skeletal muscles of the target.
II. Standard of Review
A motion for summary judgment may be granted only if the evidence shows “that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). To defeat the motion, the non-moving party must show that there are genuine factual issues “that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The party opposing summary judgment “may not rest upon the mere allegations or denials of [the party’s] pleadings, but ... must set forth specific facts showing that there is a genuine issue for trial.” Rule 56(e). See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The evidence must be viewed in the light most favorable to the nonmoving party. Devereaux v. Abbey, 263 F.3d 1070, 1074 (9th Cir.2001) (en banc).
III. STINGER’S Motion for Summary Judgment
In its summary judgment motion, Stinger has set forth numerous grounds upon which relief should be granted. It argues that the various claims of the '295, '262, and '870 patents are invalid, either as anticipated, obvious, or both. Stinger also alleges inequitable conduct as to the '762, '295, and '870 patents. Finally, as to almost all of the patent claims at issues, Stinger denies that the S-200 infringes. The Court will consider Stinger’s invalidity arguments before moving onto the question of infringement.
1. Anticipation
A. Legal Standard
A party seeking to establish that patent claims are invalid must overcome statutory presumption of validity set forth in 35 U.S.C. § 282 by clear and convincing evidence. Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed.Cir.2008). This presumption of validity exists at every stage of the litigation. Canon Comp. Sys., Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed.Cir.1998), and “is never annihilated, destroyed or even weakened regardless of what facts are of record.” ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1574-75 (Fed.Cir.1984). Where the Patent and Trademark Office (“PTO”) considered the prior art that is the basis of the validity challenge during patent prosecution, a defendant’s burden concerning proof of invalidity is particularly heavy. Id.; Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed.Cir.2004) (“This burden is ‘especially difficult’ when, as is the present case, the infringer attempts to rely on prior art that was before the patent examiner during prosecution.”).
“A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed.Cir.2003). “[A] prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Id. Additionally, such disclosure must be “enabling.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed.Cir.2005). In other words, it must allow a person of ordinary skill in the art to practice or make the invention without resort to undue experimentation. Impax Labs., 545 F.3d at 1314. The enabling component of the anticipation test “presents a question of law based upon underlying factual findings.” Id. at 1315. On the whole, however, anticipation is a question of fact. SmithKline, 403 F.3d at 1343. Where there are no “genuine factual disputes underlying the anticipation inquiry, the issue is ripe for judgment as a matter of law.” Id.
B. The '295 Patent
i. Claims 2 & 40
For the purposes of its motion, Stinger groups claims 2 and 40 of the '295 patent together, making two arguments: (1) two prior art ECDs — the U34000 Air Taser (“U34000”) and the Taser Public Defender (“TPD”) embody every element of claims 2 and 40; and (2) TASER’s X26 ECD anticipates claims 2 and 40 because the PTO wrongly granted the '295 patent a priority date of 2003.
a. The U34000 and TPD
The U34000 and TPD are prior art ECDs. The Parties do not dispute that the U34000 and TPD were sold in the United States before 1995 and 1976 respectively, well before the 2003 priority date of the '295 patent. (Defendant’s Statement of Facts (“DSOF”) ¶ 1) In its papers, Stinger argues, that when operated, these two pri- or art ECDs embody every element of claims 2 and 40, an assertion that TASER denies. The Parties disagreement, however, is narrow, focusing only on one element of claims 2 and 40; the so-called dual operating mode, which teaches a power supply for operating in a first mode to generate a high voltage output, then in a second mode to generate a second lower voltage output.
In support of its argument, Stinger relies primarily on the conclusions of its expert, Mr. Tachner. Having analyzed the wave forms of the U34000 and TPD with an oscilloscope, Mr. Tachner found they each demonstrated a damped sinusoid wave form, then concluded that such a wave form demonstrates the utilization of a dual operating mode. (Id. ¶ 2). TASER contests Mr. Tachner’s conclusions, citing this Court to the Rebuttal Report of its expert, Dr. Rodriguez, who found that a damped sinusoid wave is not indicative of a dual operating mode, as ECDs known to operate in only one mode also produce damped sinusoid waves. (Plaintiffs Statement of Facts (“PSOF”) ¶ 2). For instance, TASER cites to evidence showing that the prior art TASER M26 ECD, which operates in only one mode, outputs a damped sinusoid wave. (Id. ¶ 109). Additionally, TASER has cited to evidence showing that the M34000 utilizes the same single mode blunt-pulse approach as the M26, and points out that the M26 is not alleged to have anticipated claims 2 and 40. Given the dispute over the significance of a damped sinusoid wave form, whether or not the U34000 and TPD operate in two modes is a material fact about which there is clearly a dispute, precluding a finding of anticipation.
b. The priority date argument
Next, Stinger argues that claims 2 and 40 are anticipated by TASER’s X26 ECG (“X26”) because TASER is not entitled to the 2003 priority date currently enjoyed by its '295 patent. Pursuant to 35 U.S.C. § 120, an application for a patent based on a previously disclosed invention “shall have the same effect, as to such invention, as though filed on the date of the prior application” when certain conditions are met. These conditions are as follows:
(1) the invention claimed in the application must have been properly disclosed in a prior-filed application; (2) the application must have been filed by inventors) named on the prior-filed application; (3) the application must have been “filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application”; and (4) the application must contain or be amended to contain a specific reference to the prior-filed application.
Tafas v. Doll, 559 F.3d 1345, 1361 (Fed.Cir.2009) (quoting 35 U.S.C. § 120).
As a preliminary matter, it is undisputed that TASER began selling the X26 in or about May, 2003, and that the '295 patent is a continuation of an application U.S. Patent 10/447,447 (filed May 29, 2003) (PSOF ¶ 112). Accordingly, absent a showing by Stinger that the '295 patent is not a continuation of the '447 patent, the X26 cannot have anticipated the '295 patent. 35 U.S.C. § 102(b) (stating that a person shall be entitled to a patent unless the invention was described, in use, or on sale “one year prior to the date of the application for patent in the United States.”).
The Court must determine, then, whether Stinger has proven that the '295 patent application did not satisfy the four-part test set forth in Tafas. The answer to that question is clearly, no. TASER has introduced evidence showing that the '295 patent satisfies all four elements of that test, including the written description requirement, which only requires that the disclosure statement convey “with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366 (Fed.Cir.2009); (PSOF ¶ 114-17). Stinger, on the other hand, does not explain how the '295 Patent fails to satisfy the Tafas test' — i.e. meet the requirements of 35 U.S.C. § 120 — let alone explain how it does not satisfy the written description element. Instead, Stinger argues that the prosecution of the '762 patent somehow deems the '295 patent unworthy of continuation. Although it is somewhat unclear, Stinger appears to contend that the '762 patent disclosed the invention taught in the '295 patent and, as a result, the '295 patent cannot be a continuation of the '447 patent. Stinger, however, has cited no authority for its proposition that the file history of a different patent application can cancel an otherwise valid continuation application. This Court, as a result, will not grant summary judgment.
c. The Rhoads Patent
In its reply brief, Stinger’s anticipation argument relies heavily on the prior art patent, Rhoads, U.S. Patent No. 4,120,-305 (filed Sept. 10, 1976) (“Rhoads”). In its initial motion, however, Stinger’s only mentions Rhoads twice. One reference to Rhoads is found in the section of its brief arguing that claims 2 and 40 of the '295 patent a law of nature. The other reference is located under the heading “Stinger Practices the Prior Art.” Both citations make reference to Figure 3A of Rhoads, but neither explains its meaning or content. Additionally, neither reference is supported by citation to Stinger’s statement of facts. In fact, Rhoads is not cited in the statement of facts at all. By failing to adequately explain its reliance on Rhoads or cite to it in its statement of facts, Stinger has denied TASER an opportunity to properly respond to the more specific anticipation arguments made in its reply brief. See Eberle v. City of Anaheim, 901 F.2d 814, 818 (9th Cir.1990) (noting that legal arguments raised for the first time in the reply brief are deemed waived). While Stinger’s behavior may fall short of waiver, the Court finds it would be inequitable to rely on Rhoads to invalidate TASER’s '295 patent, as doing so would entail relying on arguments to which TASER did not have a proper opportunity to respond. See United States v. Romm, 455 F.3d 990, 997 (9th Cir.2006) (noting that even if the argument has merit, this Court cannot appropriately consider it, since Plaintiffs did not have the opportunity to respond.).
C. The '870 Patent
i. Claim 1
Stinger’s anticipation argument concerning claim 1 of the '870 patent is predicated on the prior art patent Kaufman, U.S. Patent No. 5,193,048 (filed April 27, 1990) (“Kaufman”). Kaufman patents an “electronic [stun-gun] device designed to incapacitate a person by means of a non-lethal electric shock.” Stinger contends that Kauffman discloses every limitation of claim 1 of the '870 patent. Claim 1 teaches (1) two separate electrodes that allow for two contact points on the target; (2) a high voltage power supply capable of delivering a series of electrical pulses to the target, a battery system including a battery; (3) a digital memory device for storing battery capacity data indicating the amount of battery capacity consumed or remaining, and a data interface that allows the battery system and the digital memory device to communicate; (4) and a display for indicating to the battery capacity. TASER does not appear to dispute that Kaufman embodies the first, second, and fourth elements of claim 1. Instead, TASER’s responds to Stinger’s accusation of anticipation by arguing that the third element of claim 1 — the digital memory and data interface — is not found in Kaufman. (PSOF ¶ 144).
As an initial matter, the PTO considered Kaufman when making its determination concerning TASER’s '870 patent applieation. Accordingly, Stinger bares a even heavier burden than would otherwise apply in an anticipation challenge. Impax Labs., 545 F.3d at 1314. In support of its position that the Kaufman patent satisfies claim l’s “digital memory” and “data” limitation, Stinger points to Kaufman’s utilization of a “14 stage ripple carry counter.” In explaining the significance of the 14 stage ripple carry counter, however, Stinger merely quotes Kaufman, which states that “anytime the power switch SW1 [of the weapon taught in Kaufman] is held closed, the 14 state ripple carry counter U2 continues to increment its count stored therein.” TASER counters by noting that its expert concluded that the 14 stage ripple carry counter is not, in fact, a digital memory device. TASER also argues that the 14 stage ripple carry counter does not track battery capacity (PSOF ¶ 144). Instead, it functions as more of a timer, keeping track of how long a battery has been in use and triggering a low battery light indicator after the battery has been used for a certain amount of time. {Id. ¶ 146). When a new battery is inserted, the 14 stage ripple carry counter is “unaware of the quality of the replacement battery” and will begin counting time again from zero, regardless of how much charge is in the replacement battery. {Id.). Accordingly, TASER argues, that the invention taught in Kauffman only monitors the time a battery has been used, not its capacity
In light of the Parties disagreement concerning the function of the 14 stage ripple carry counter, summary judgment is inappropriate. There is very clearly a disputed issue of fact concerning whether Kaufman teaches “a digital memory device for storing battery capacity data indicating the amount of battery capacity consumed or remaining, and a data interface that allows the battery system and the digital memory device to communicate.” The Court finds, therefore, that Stinger has not met its heavy burden and its motion is denied,
ii. Claim 2
As with claim 1 of the '870 patent, the Parties only disagree about one element of the patent claim at issue; the element of claim 2 that teaches “a display for indicating to the user the amount of time remaining in each pulse sequence.” Stinger’s argument is predicated on a pri- or art device, the U34000, but only indirectly, and can only be understood by reference to TASER’s allegation of infringement against Stinger. TASER alleges that the S-200 infringes claim 2 of the '870 patent because it utilizes a display consisting of four light emitting diodes (“LEDs”), which light or energize sequentially as 25% increments of the pulse charge are consumed. TASER asserts that because each of the S-200’s LEDs activate at approximately one second intervals, users are able to measure the time remaining in each pulse sequence. Stinger argues that if the S-200 infringes claim 2, which it denies, then the U34000 must also infringe because it’s battery indicator display can be similarly used to calculate the time remaining in a given pulse sequence. And, if the U34000 infringes, then TASER’s patent is anticipated because the U34000 was in public use prior to 1995, well before the 2003 date of the '870 patent.
Whatever the merit of Stinger’s argument concerning the U34000, this Court cannot accept it to invalidate TASER’s patent. Essentially, Stinger argues that TASER’s patent should be invalidated because the U34000 and the S-200 each allow a user to employ the same method to deduce the time remaining in a given pulse sequence; counting light pulses. To prevail on its argument, then, Stinger must necessarily introduce evidence of how the U34000’s battery light indicator operates when the U34000 is fired. Only then can the Court determine if a user can deduce the time remaining in the pulse sequence when operating the U34000. Stinger has provided this Court evidence of the U3400’s operation in the form of a declaration of a single witness, Stinger’s CEO, Robert Gruder. (DSOF ¶ 22-23). This uncorroborated interested-witness testimony is insufficient to invalidate a patent. Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed.Cir.1999) (“[Corroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.”). Accordingly, Stinger’s motion concerning anticipation as to claim 2 of the 870' patent is denied.
iii. Claim 4
In support of its anticipation argument concerning claim 4 of the '870 patent, Stinger draws this Court’s attention to the Darrell, U.S. Patent No. 4,370,696(filed May 26,1981) (“Darrell”). Once again, the Parties arguments center around the existence or non-existence of a single claim element in the prior art. In this instance, the Parties disagreement focus on whether claim 4’s element of “a high voltage power supply for generating an output voltage delivered across the first and second contact points on the target to generate a positive voltage potential at one electrode and a negative voltage potential at the other electrode,” is taught in Darrell. Stinger, pointing to the Supplemental Statement of its expert, Mr. Tachner, argues that the circuit disclosed in Darrell will produce a positive potential at one electrode and a negative potential at the other, every other half cycle. (DSOF ¶ 27).
The PTO considered Darrell when making its determination concerning TASER’s '870 patent application. (PSOF ¶ 159). Accordingly, Stinger bares a even heavier burden than would otherwise apply in an anticipation challenge. Impax Labs., 545 F.3d at 1314. It has not met that burden. In opposition to Stinger’s motion, TASER also relies on Stinger’s expert, Mr. Tachner, pointing to deposition testimony in which Mr. Tachner admitted Darrell’s transistor switch, which connects the transformer center tap to the positive battery terminal, may be open during the half cycle relied upon by Stinger, preventing a positive voltage from appearing at one electrode and a negative voltage at the other, with respect to the ground. (PSOF ¶ 160). In light of the contradictory nature of Mr. Tachner’s testimony and the heavy presumption in favor of validity, summary judgment cannot be granted. The Court finds there is a genuine issue of material of fact concerning whether or not the contested element of claim 4 is present in Darrell.
D. The '262 Patent
As with the '295 patent, Stinger asserts that TASER’s '262 patent is not entitled to its 1999 priority date and, therefore, is anticipated by TASER’s own X26 ECD. (See DSOF ¶ 39). Specifically, Stinger claims that the invention claimed in the '262 patent was not disclosed until a December 12, 2005 amendment to the September 17, 1999, application. (DSOF ¶ 37). As TASER rightly points out, Stinger’s argument, then, is that the amendments made to the 1999 application by the 2005 amendment constitute previously undisclosed “new matter.” See, e.g., Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 1362 (Fed.Cir.2008) (noting that as a general rule “new matter is not entitled to the priority date of the original application.”). “Whether particular technological information is ‘new matter’ depends on the facts of the case: the nature of the disclosure, the state of the art, and the nature of the added matter.” Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1575 (Fed.Cir.1992). Additionally, “in the context of a validity challenge based on new matter, the fact that the [PTO] has allowed an amendment without objection is entitled to an especially weighty presumption of correctness in a subsequent validity challenge based on the alleged introduction of new matter.” Commonwealth Scientific and Indus. Research Org. v. Buffalo Tech. (USA), Inc., 542 F.3d 1363, 1380 (Fed.Cir.2008).
The 262 patent appears to warrant a heavy presumption of validity. TASER has cited this Court to the Notice of Allowability, dated March 7, 2006, in which the patent examiner concluded the 2005 application was entitled to a September 1999 priority date. (PSOF ¶ 169). In attempting to satisfy its very heavy burden, Stinger argues that the 2005 amendment is new matter because it includes, for the first time, references to a “circuit,” “signal generator,” “disabling the signal generator,” apparatus that “keeps track of current time of day, keeps track of current date,” or “keeping track of a period of time.” (See DSOF ¶ 39). TASER concedes that the 1999 application does not contain these exact phrases, but argues instead that Stinger cannot invalidate its patent merely by pointing out that certain terms and phrases do not appear verbatim in the 1999 application. TASER’s position is accurate, “as the prior application need not describe the claimed subject matter in exactly the same terms as used in the claims; it must simply indicate to persons skilled in the art that as of the earlier date the applicant had invented what is now claimed.” Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed.Cir.1995). Accordingly, the Court must consider what was disclosed in the 1999 patent application.
It appears that the 1999 application discloses an ECD controlled by a microprocessor that, among other things, “retains a record of the date and time the weapon was fired.” TASER argues that '262 merely claims a method to accomplish this task. Stinger makes much of the fact that the '262 patent does not detail the specific operation of the microprocessor, such as how the microprocessor is programmed to keep track of date and time. Stinger has not put forth evidence, however, explaining how this lack of information does not disclose to a person reasonably skilled in the art what TASER had invented. On the contrary, in another part of its brief, Stinger cites to the Declaration of Rodriguez, in which Dr. Rodriguez stated that “[o]ne of ordinary skill in the art would know there are many ways to track date and time” and explained many viable methods to accomplish that task (DSOF ¶ 40). Accordingly, the Court finds that Stinger has not overcome the presumption of validity to which the '262 patent is entitled, and a material issue of fact exists concerning whether the disclosures made in the 2005 application are new matter and not, therefore, entitled to the 1999 priority date.
2. Obviousness
A. Legal Standard
As this Court has already explained, a party seeking to establish that patent claims are invalid must overcome statutory presumption of validity set forth in 35 U.S.C. § 282 by clear and convincing evidence. Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed.Cir.2008). This presumption of validity exists at every stage of the litigation. Canon Computer Sys., Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed.Cir.1998), and “is never annihilated, destroyed or even weakened regardless of what facts are of record.” ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1574-75 (Fed.Cir.1984). Where the Patent and Trademark Office (“PTO”) considered the prior art that is the basis of the validity challenge during patent prosecution, defendant’s burden to prove invalidity is particularly heavy. Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed.Cir.2004) (“This burden is ‘especially difficult’ when, as is the present case, the infringer attempts to rely on prior art that was before the patent examiner during prosecution.”).
A patent claim is invalid for obviousness if the invention recited in the claim would have been obvious to a person of ordinary skill in the field of the invention at the time it was made. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.Cir.2004). In this case, the Parties have agreed that a person of ordinary skill in the art is a university educated electronics engineer with a bachelor’s degree in electronic engineering. To determine obviousness, the Court must examine: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) the objective evidence of nonobviousness. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1320 (Fed.Cir.2004) (citing Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)). Obviousness is a question of law predicated on underlying facts. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1349 (Fed.Cir.2001). And, as with anticipation, a defendant must show invalidity due to obviousness by clear and convincing evidence. Id. Ultimately, where “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.” KSR International. Co. v. Teleflex Inc., 550 U.S. 398, 427, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007)
In its papers, Stinger argues that the Supreme Court’s decision in KSR radically-altered the obviousness standard. This Court, however, disagrees. Contrary to Stinger’s assertions, the KSR Court did not overturn the Federal Circuit’s teaching, suggestion, or motivation (“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.” Id. at 407, 127 S.Ct. 1727. To the contrary, the Court specifically noted that “[t]here is no necessary inconsistency between the [TSM] test and the Graham analysis.” Id. at 419, 127 S.Ct. 1727. Instead, it merely held that the TSM test should not be rigidly applied; instead courts should utilize a more “expansive and flexible approach.” Id. at 415, 127 S.Ct. 1727. Accordingly, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.” Id. at 419, 127 S.Ct. 1727. Additionally, KSR, did not, however, alter courts’ duty to consider secondary factors which mitigate against a finding of obviousness. These include: (1) the commercial success of a product due to the merits of the claimed invention; (2) a long felt need for the solution provided by the claimed invention; (3) unsuccessful attempts by others to find the solution provided by the claimed invention; (4) copying of the claimed invention by others; (5) unexpected and superior results from the claimed invention; (6) acceptance by others of the claimed invention as shown by praise from others in the field or from the licensing of the claimed invention; (7) other evidence tending to show nonobviousness; (8) independent invention of the claimed invention by others before or at about the same time as the named inventor thought of it; and (9) other evidence tending to show obviousness. Id. at 406, 127 S.Ct. 1727 (citing Graham, 383 U.S. at 17-18, 86 S.Ct. 684).
Predicated on its beliefs concerning the transformative nature of KSR, Stinger argues this Court should not apply the presumption of validity to TASER’s patents, as the PTO awarded TASER’s patents under the pre-KSR standard for obviousness. This argument, however, is not supported by KSR. As part of its analysis the Supreme Court specifically noted that it did not doubt the Federal Circuit, in many case, had conducted the obviousness inquiry pursuant to the standard it articulated in KSR Id. at 419, 127 S.Ct. 1727 (“In the years since the Court of Customs and Patent Appeals set forth the essence of the TSM test, the Court of Appeals no doubt has applied the test in accord with these principles in many cases.”). Likewise, this Court does not doubt that patent examiners have likewise conducted many of their patent examinations in accord with KSR. Accordingly, it does not accept Stinger’s position, that in light of KSR, this Court must not give TASER’s patents the statutory presumption of validity to which they are otherwise entitled. In so doing, this Court notes that its holding comports with the majority of other district courts that have addressed this question. See, e.g., Church & Dwight Co., Inc. v. Abbott Labs., 2008 WL 2566193, at *6 (D.N.J., June 24, 2008) (“KSR does not appear to have altered the statutory presumption of validity.”); Power Integrations, Inc. v. Fairchild Semiconductor Int’l, 2007 WL 2893391, at *1 (D.Del. Sept. 20, 2007) (concluding that KSR “does not alter the statutory presumption of validity”).
B. The 295' Patent
i. Claims 2 & 40
Stinger makes three arguments concerning the obviousness of claims 2 and 40 of TASER’s '295 patent: (1) claims 2 and 40 impermissibly patent a law of nature; (2) claims 2 and 40 are obvious in light of the prior art patent Gowan, U.S. Patent No. 5,471,362 (filed February 26, 1993) (“Gowan”); and (3) the prior art Taser Public Defender ECD uses a two capacitor,
a. TASER has not patented a law of nature.
Stinger argues that claims 2 and 40 of the '295 patent should be invalidated because they patent a law of nature. The Court agrees with Stinger that patent protection does not extend to “laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). Stinger, however, presents an incomplete picture of the law, failing to recognize that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. at 187, 101 S.Ct. 1048 (emphasis in original). The question this Court must answer is whether Claims 2 and 40 impermissibly patent a law of nature, as opposed to permissibly patenting a process that applies a law of nature. Stinger argues the former, TASER the latter.
In support of its argument, Stinger points out that TASER’s expert admitted that in prior art ECDs — i.e. ECD’s employing a single operating mode — ionization of the air gap will naturally cause the voltage output to decrease, while, at the same time, causing an increase in the output of current, and that this phenomenon is a law of nature. (DSOF ¶ 3). According to Stinger, this testimony proves that TASER has patented a law of nature, arguing that the natural drop in voltage and commensurate increase in current flow after ionization of the air gap is, in essence, the second operating mode found in claims 2 and 40. TASER, on the other hand, denies that claims 2 and 40 patent a law of nature, explaining that the '295 patent acknowledges how single mode ECD’s operate, and that claims 2 and 40 teach a process — the dual-operating mode — that utilizes this law of nature.
TASER’s description of the dual operating mode comports with its description of claims 2 and 40 as having patented a process, not a law of nature. The alleged novelty of the dual-operating mode patented by claims 2 and 40 is that it allows production of an ECD that uses far less battery power than is used in single-operating mode ECDs. As TASER explained in the '295 patent application, after ionization of the air gap, a single-mode ECD must “continue operating in the same mode while delivering current flow or charge across the skin of a now very low impedance target. The resulting high power, high voltage stun gun circuit operates relatively inefficiently yielding low electromuscular efficiency and with high battery power requirements.” U.S. Patent 6,999,-295 (filed Feb. 5, 2005). To address this problem, claims 2 and 40 teach the use of a power supply which operates in a second mode to generate a more efficient low voltage, high current output. {See PSOF ¶ 89-91). Because the second-mode’s voltage output is not merely the result of the law of nature described by Dr. Rodriguez, TASER denies it has patented a law of nature. Instead, TASER argues it has patented a process that takes advantage of that law of nature to send high amounts of current over the ionized air-gap using very little voltage.
In determining whether the moving party has met its burden, the Court views the evidence in the light most favorable to the nonmovant. Allen v. City of Los Angeles, 66 F.3d 1052, 1056 (9th Cir.1995). If the ECD patented by claims 2 and 40 operates as TASER has described, than a reasonable juror could conclude that TASER has patented a process, not a law of nature. Accordingly, summary judgement on this issue is denied.
b. Gowan does not render claims 2 and 40 obvious
Stinger argues that the dual operating mode taught by claims 2 and 40 apply well understood electrical principles and, as a result, are obvious in light of the Gowan, U.S. Patent No. 5,471,362 (filed February 26, 1993) (“Gowan”). TASER, on the other hand, maintains that the dual-operating mode was not obvious in light of Gowan. At the outset, the Court notes that the patent examiner considered Gowan when evaluating TASER’s application for the '295 patent. As this Court has already explained, KSR did not alter the presumption of validity or burden that a party challenging a patent must carry. Accordingly, Stinger bares a particularly heavy burden to demonstrate claims 2 and 40’s invalidity. Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed.Cir.2004). In its motion, Stinger has not attacked the substance of the patent examiner’s reasons for allowance, other than to suggest it is wrong in light of KSR. Because Stinger does not argue that the examiner’s decision was incorrect under the pre-KSR standard, this Court need only determine whether Stinger has proven by clear and convincing evidence that KSR dictates a different conclusion than the one reached by the patent examiner.
In considering TASER’s patent application, “Gowan ... teaches an arc generating circuit that has a first transformer 1 to create an arc and a second transformer 21 with a different output voltage to flow current across the arc.” (DSOF, ¶ 4). In deciding that claims 2 and 40 were not obvious, the patent examiner distinguished Gowan, stating:
The teachings of Gowan differ from the claims by not using the current flow across the arc to disable a subject (person or other living being). The arc in the Gowan teaching is used to fire a spark plug in an automotive internal combustion engine. The prior art record in this application (which includes Gowan) fails to teach or fairly suggest the use of a stun gun type device that uses a second transformer with a lower output voltage to flow current across an arc to disable a subject.
(Id.). Because the patent examiner distinguished Gowan from claims 2 and 40 by noting the dissimilarity between the arts, Stinger’s argument for obviousness based on KSR is presumably grounded in KSR’s teaching that “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.” 550 U.S. at 417,127 S.Ct. 1727.
TASER does not appear to dispute that claims 2 and 40 use the same or, at least, a similar technique to the one utilized in Gowan. KSR suggests, however, that the mere fact a technique exists in the prior art does not render any subsequent use of that technique obvious. Instead, KSR teaches that the prior art device that employed the technique and the device currently utilizing the technique must be “similar devices.” Id. In awarding claims 2 and 40 of the '295 patent, the examiner noted that “an arc ... used to fire a spark plug for an automotive engine ... is highly unrelated to the stun gun art.” (emphasis added). Additionally, TASER’s expert, Dr. Rodriguez, has testified to other major differences in design, operation, and purpose between Gowan. (See PSOF ¶ 131-32). Because Stinger has relied solely on KSR as a reason to contravene the patent examiner’s findings concerning Gowan with respect to claims 2 and 40, and KSR does not appear to mandate a finding of obviousness in this situation, the Court cannot conclude that Stinger has met its very heavy burden. Whether there is sufficient similarity between the Gowan device and the ECD claimed in the '295 patent will be for a jury to decide,
c. Police Model Taser does not render claims 2 and 40 obvious
Stinger also contends that an ECD called the Police Model Taser (“PMT”), which was manufactured by Tasertron, Inc. prior to its purchase by TASER in 2003, renders the '295 patent obvious. According to Stinger, the PMT employed two capacitors in parallel to discharge an arching shock, with one capacitor discharging after the other, the later of the two at a lower energy level and voltage than the first. (DSOF ¶ 5). Stinger appears, then, to argue the PMT’s two capacitor system makes obvious the dual-mode operating system taught in the '295 patent.
As an initial matter, Stinger’s claims concerning the workings of the PMT are supported by the uncorroborated declaration of Stinger’s lawyer, Mr. McNulty. (See Id.). Uncorroborated testimony is insufficient to invalidate a patent. Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed.Cir.1999) (“[Cjorroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.”). Additionally, TASER has produced evidence contradicting Stinger’s characterization of the prior art PMT’s operation. TASER cites to the deposition of Stinger’s expert, Mr. Tachner, who testified that when two capacitors are connected in parallel, they do not operate separately, but work in tandem as a single larger capacitor, discharging simultaneously. (PSOF ¶ 136). In his deposition, Mr. Tachner also admitted that a circuit using two parallel capacitors could be identical to the prior art circuit shown in Figure 1 of the '295 patent. (Id.). In light of the lack of corroboration, the presumption of validity, and the dispute concerning the workings of a parallel circuit — i.e. the scope of the prior art PMT- — ■ this Court finds that Stinger has not demonstrated obviousness by clear and convincing evidence.
C. The '870 Patent
i. Claim 1
Claim 1 of the '870 patent teaches (1) two separate electrodes that allow for two contact points on the target; (2) a high voltage power supply capable of delivering a series of electrical pulses to the target, a battery system including a battery; (3) a digital memory device for storing battery capacity data indicating the amount of battery capacity consumed or remaining, and a data interface that allows the battery system and the digital memory device to communicate; (4) and a display for indicating the battery capacity. In arguing that Claim 1 is obvious, Stinger cites this Court to four prior art patents (Kaufman; Poole, U.S. Patent No. 6,237,461 (filed May 28, 1999); Harthcock, U.S. Patent No. 5,303,-495 (filed Dec. 9, 1992); and Horne, 5,005,-307 (filed Dec. 29, 1989)) and two prior art devices (the M26 and the U34000). (DSOF ¶ 15). Stinger asserts that all elements of claim 1 are present in the prior art devices, except the digital memory device and data interface. As for the fourth element of claim 1 — a display for indicating battery capacity — Stinger notes that it accepted TASER’s construction that “a display with any indication of battery capacity is sufficient,” then directs the Court to Kaufman and Poole, each of which teach a low-battery indicator light. (Id.). Finally, Stinger cites to Harthcock and Horne, as teaching the use of a microprocessor to control a firearm, which, presumably, covers claim l’s digital memory device and data interface limitation.
Stinger has set forth prior-art patents and devices that are relevant to an obviousness inquiry. What it has not done, however, is explain to this Court why this prior art render’s claim 1 obvious. In the section of its brief pertaining to the alleged obviousness of claim 1 — which weighs in at a mere seven sentences— Stinger makes only one argumentative statement: “The use of the microprocessor’s memory instead of a separate circuit to monitor the battery is obvious.” Given that it must overcome the presumption of validity and prove obviousness by clear and convincing evidence, Stinger’s lack of application of facts to law is puzzling. As the Supreme Court has explained, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418, 127 S.Ct. 1727. Rather, the question is really whether “a person of ordinary skill can implement a predictable variation.” Id. at 417, 127 S.Ct. 1727. Stinger clearly believes a college educated engineer could have implemented claim 1, but does not bother to explain why, let alone support its claim with expert testimony or other evidence. In essence, Stinger merely asserts that its obviousness claim is obvious. In so doing, Stinger has not met its burden, and this Court will not invalidate claim 1.
ii. Claim 3
Stinger’s obviousness argument as to claim 3 of the '870 patent focuses on a single limitation of that claim; “a mechanism for allowing the user to extend the duration of the pre-timed series of electrical pulses.” The parties do no dispute that the “mechanism” is a trigger. Stinger contends that the use of a trigger in this manner is obvious, citing the deposition admission by claim 3’s inventor, Mr. Nerheim, that both prior art automatic weapons and the prior art M26 ECD will continue to fire if their trigger is held down. (DSOF ¶ 26). Similarly, Stinger cites to Kaufman and Dunning, U.S. Patent No. 4,872,084 (filed Sept. 6, 1988). Kaufman teaches an activator switch used for firing an ECD that when “pressed continually for 15 seconds ... automatically disable [the ECD] for a predetermined time,” while Dunning teaches an ECD that fires as long as its trigger switch is operated. (DSOF ¶ 26).
In response, TASER notes that both Kaufman and Dunning were before the patent examiner. TASER also argues that Kaufman teaches away from the concept of using a trigger to extend a devices’ output, as the ECD taught in Kaufman stops firing after 15 seconds, no matter how long its activator switch is held. See McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed.Cir.2001) (“[Rjeferenees that teach away cannot serve to create a prima facie case of obviousness.”). TASER, however, primarily combats Stinger’s allegation of obviousness by distinguishing the prior art devices and weapons relied upon by Stinger, arguing that their firing output continues as long as the trigger is held down, not for a pre-defined period of time. In other words, TASER argues that no one had ever before used a trigger to extend a pre-timed series of electrical pulses. This fact, however, is not determinative under KSR.
As this Court has already explained, “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. There is no question that an ECD that fires a pre-timed series of pulses is similar art to an ECD that fires non-pretimed pulses. Additionally, TASER does not dispute that the M26 and the device taught in Dunning both use triggers to extend their firing duration. Accordingly, Stinger’s evidence shows that a trigger is a well known option for extending the firing duration of ECDs. The question, then becomes, would a reasonably skilled engineer have recognized that a trigger could be used to extend a pre-timed series of electrical pulses? Without relying on Kaufman, which teaches away from using extending a pre-timed series of electrical pulses with a trigger, this Court answers this question in the affirmative.
“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.” Id. at 421, 127 S.Ct. 1727. The use of a trigger to extend the firing duration of an ECD was clearly a known option at the time of claim 3’s invention. Given this fact, the Court finds that applying the same technique to an ECD using pre-timed electrical pulses a