U.S. Robotics, Inc., Plaintiff-appellee, v. Business Computer Corporation, Defendant-appellant,andmichael D. Eaton, Defendant.business Computer Corporation, Plaintiff-appellant, v. Prometheus Products, Inc., Defendant-appellee, 856 F.2d 202 (Fed. Cir. 1988)

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U.S. Court of Appeals for the Federal Circuit - 856 F.2d 202 (Fed. Cir. 1988) Aug. 17, 1988

Before MARKEY, Chief Judge, NIES and MICHEL, Circuit Judges.

MARKEY, Chief Judge.


Partial summary judgment by the U.S. District Court for the Northern District of California, No. C 84 6315 SC (Conti, J.) to Prometheus Products Incorporated and U.S. Robotics Incorporated (Prometheus), holding U.S. Patent No. B1 4,387,440 of Business Computer Corporation (BCC) invalid. The case is before us having been certified under Fed. R. Civ. P. 54(b). We affirm.


The district court correctly granted the motion for summary judgment. Summary judgment is appropriate because there is no genuine issue of fact, material to the conclusion as to whether the Eaton invention would have been obvious. Although validity of the patent is presumed under 35 U.S.C. § 282 (1982) and Prometheus had the burden of proof, BCC, to avoid summary judgment, must set forth specific facts showing the existence of a genuine issue of material fact for trial. Celotex Corp. v. Myrtle Nell Catrett, 477 U.S. 317, 322-23 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87 (1986). BCC has failed to set forth facts demonstrating genuine issues of material fact as to any of the inquiries involved in determining obviousness.

The district court correctly considered the obviousness of the Eaton invention under the criteria for determining obviousness under 35 U.S.C. § 103 (1982). Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). The White reference is prior art under 35 U.S.C. § 102(b) (1982) because White's device was "on sale in this country" more than one year prior to the filing of the patent application, i.e., in 1978 and early 1979.

The district court properly noted that none of the four alleged differences between the White system and the Eaton claims raises a genuine issue of material fact. The modem versus computer difference is an assertion of non-analogous art that fails because both are directed to the same problem. Shatterproof Glass Corp. v. Libby-Owens Ford Co., 758 F.2d 613, 620, 225 USPQ 634, 638 (Fed. Cir.), cert. dismissed, 474 U.S. 976 (1985); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535, 218 USPQ 871, 876 (Fed. Cir. 1983). The dedicated controller versus standard computer difference fails because Eaton's means-plus-function claim subsumes the standard computer. The differences relating to the escape signal and sequence were rejected during reexamination as not constituting patentable distinctions.

There is no genuine issue of material fact on the level of ordinary skill, which would clearly include an awareness of how to modify the White system.

The testimony of BCC's president regarding secondary considerations is insufficient to raise a genuine issue of material fact.

Whether White is no more relevant than Pugh does not raise a genuine issue of material fact. The issue is a legal one, i.e., whether the Eaton invention would have been obvious under 35 U.S.C. § 103 in view of White. The district court, in its analysis of the instant undisputed facts in accordance with the Graham obviousness inquiries, correctly determined that question in the affirmative.