Cimline, Inc. v. Crafco, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

CIMLINE, INC.,
Plaintiff-Appellant,

v.
CRAFCO, INC.,
Defendant-Appellee.
__________________________

2010-1348
__________________________

Appeal from the United States District Court for the
District of Minnesota in case no. 07-CV-3997, Judge
Richard H. Kyle.
__________________________

Decided: March 2, 2011
__________________________

PAUL R. SMITH, Foley & Mansfield, PLLP, of Minnea-
polis, Minnesota, argued for plaintiff-appellant. With him
on the brief was LAURIS A. HEYERDAHL.

CASEY A. KNISER, Patterson Thuente Christensen
Pedersen, P.A., of Minneapolis, Minnesota, argued for
defendant-appellee. With him on the brief was ERIC H.
CHADWICK.
CIMLINE v. CRAFCO 2

__________________________

Before RADER, Chief Judge, GAJARSA and PROST, Circuit
Judges.
PROST, Circuit Judge.

Plaintiff-Appellant Cimline, Inc. (“Cimline”) appeals
the district court’s dismissal of its complaint seeking,
inter alia, a declaration of invalidity or noninfringement
of U.S. Patent No. 5,967,375 (“’375 patent”) and the
court’s sua sponte entry of summary judgment in favor of
Defendant-Appellee Crafco, Inc. (“Crafco”) on its counter-
claim for infringement. Cimline, Inc. v. Crafco, Inc., 672
F. Supp. 2d 916 (D. Minn. 2009). Thereafter, the parties
stipulated to $25,000 in damages for infringement of the
’375 patent and the district court entered an injunction
against Cimline. We affirm-in-part, vacate-in-part and
reverse-in-part the district court’s judgment because the
’375 patent is invalid.

BACKGROUND

Cimline and Crafco are competitors in the market for
the manufacture and sale of sealant melters. Sealant
melters are heavy machinery equipment that are often
trailered and used to heat and melt blocks of sealant. The
melted sealant is poured into cracks in roadway surfaces
to seal them and prevent further deterioration of the
roadway. Early sealant melters did not include conveyor
belts. Thus, heavy sealant blocks were hoisted to the top
of the sealant melter box and dropped into a reservoir
tank, sometimes called the “kettle.” This manual task
posed some danger to the operator, since the sealant
blocks are heavy and can cause hot sealant to splash back
3 CIMLINE v. CRAFCO

onto the operator when dropped into the kettle. Hot
sealant can cause serious burns.

In the mid-1990s, employees of the Pennsylvania De-
partment of Transportation (“PennDOT”) sought a better
way to load sealant blocks into the melter. PennDOT
made modifications to sealant melters purchased from
Crafco. Specifically, PennDOT added a manual conveyor
belt attached to a splash box affixed at the top of the
kettle. Propelled by gravity, sealant blocks would travel
down the manual conveyor belt and drop through a
hinged door at the top of the splash box. The hinged door
would prevent hot sealant from splashing back when the
sealant block was dropped into the kettle. Because seal-
ant blocks traveled down the manual conveyor belt under
the force of gravity, only one block at a time could be
loaded onto the conveyor belt.

Crafco sent an employee to PennDOT to observe the
modifications to its machine. Thereafter, Crafco sent a
letter to PennDOT warning it that Crafco would not
honor the warranty on modified sealant melters and that
Crafco could not be held liable for injuries resulting from
use of the modified melters. Later, Crafco attended a
sales meeting with PennDOT and PennDOT requested
that Crafco make a sealant melter similar to the modified
melters, but having a powered conveyor belt that could
drop sealant blocks through a splash box. Crafco agreed
and assigned the redesign project to a new employee, Mr.
David Barnes. Ultimately, Mr. Barnes, the named inven-
tor, delivered a redesigned sealant melter satisfying
PennDOT’s requirements and Crafco filed a patent appli-
cation on this redesign, which matured into the ’375
patent.
CIMLINE v. CRAFCO 4

Though the extent of Mr. Barnes’s knowledge of the
scope of the prior art at the time of invention is in dis-
pute, the actual scope of the prior art is not. First, Crafco
sold sealant melters without conveyor belts or splash
boxes in the 1990s. Those sealant melters were modified
by PennDOT to add manual conveyor belts and splash
boxes. The record evidence shows, however, that Crafco
built and delivered sealant melters to the Texas Depart-
ment of Transportation in the 1980s. Those sealant
melters included both a manual conveyor belt and a
splash box. It is unclear why Crafco sold sealant melters
without a conveyor belt and a splash box to PennDOT in
the 1990s when it had previously sold sealant melters
with a conveyor belt and a splash box in the 1980s. It is
undisputed, however, that sealant melters using a man-
ual conveyor belt and a splash box were in the prior art
since at least the 1980s.

The ’375 patent issued on October 19, 1999, with
twenty-three claims. Crafco asserts three dependent
claims: claims 4, 5, and 23. Claims 4 and 5 depend from
claim 1, which requires:

A sealant melter, comprising:

(A) mobile frame;

(B) heated sealant tank mounted on said frame,
said sealant tank having a liquid sealant dis-
charge opening and an upper sealant block inlet
opening;

(C) a splash box disposed above said inlet opening
of said sealant tank, said splash box having an
upper splash box inlet and having a lower splash
5 CIMLINE v. CRAFCO

box outlet disposed above said inlet opening of
said sealant tank; and

(D) a sealant block conveyor which conveys seal-
ant blocks from a source to said splash box inlet,
said sealant block conveyor having 1) a discharge
end positioned adjacent said splash box inlet and
2) an inlet end; and wherein said inlet end of said
sealant block conveyor is vertically adjustable
relative to said frame.

Claim 4 adds the requirement that the “sealant block
conveyor is a powered conveyor” and claim 5 adds a
requirement to the sealant melter of claim 4, wherein the
device includes a control assembly mounted at the inlet
end of the sealant block conveyor. J.A. 73. Claim 23
depends from independent claim 21, which includes
additional limitations on the dimensions of the splash box
and a requirement that the splash guard close before the
sealant block enters the pool of melted sealant in the
kettle. Figure 1, shown below, includes a depiction of an
exemplary embodiment of a sealant melter being towed by
a vehicle.
CIMLINE v. CRAFCO 6

In 2000, Crafco offered to sell its patented device to
Cimline. Cimline did not respond. Several years later,
Cimline offered to rent its new sealant melters to Penn-
DOT. Crafco advised Cimline that the Cimline sealant
melters copied Crafco’s patented technology. Cimline
then built a sealant melter that it thought designed
around the ’375 patent. Crafco, however, continued to
assert that Cimline’s redesign infringed the ’375 patent.
Thus, Cimline filed suit against Crafco seeking, inter alia,
a declaration that the ’375 patent is invalid, or alterna-
tively—if the ’375 patent is valid—a declaration that
Cimline’s sealant melter does not infringe.

Upon Crafco’s motion for summary judgment on the
counts alleged in Cimline’s complaint, the district court
dismissed Cimline’s invalidity count noting that “Cimline
has not satisfied its burden of creating a genuine issue of
fact concerning invalidity” under 35 U.S.C. §§ 102(b) and
103(a). Cimline, 672 F. Supp. 2d at 927. The district
court sua sponte granted summary judgment to Crafco on
infringement of the ’375 patent under the doctrine of
equivalents by Cimline’s sealant melter. Id. at n.16. The
7 CIMLINE v. CRAFCO

district court dismissed all claims of the complaint with
prejudice and entered an injunction against Cimline.
Cimline appealed and we have jurisdiction under 28
U.S.C. § 1295(a)(1).

DISCUSSION

We review a district court’s grant of summary judg-
ment de novo. Revolution Eyewear, Inc. v. Aspex Eyewear,
Inc., 563 F.3d 1358, 1365 (Fed. Cir. 2009). Summary
judgment is appropriate where there is no genuine issue
of material fact and the moving party is entitled to judg-
ment as a matter of law. Fed. R. Civ. P. 56(c); AquaTex
Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1379
(Fed. Cir. 2005). Thus, summary judgment may be
granted when no “reasonable jury could return a verdict
for the nonmoving party.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986).

A court of appeals, in the absence of a formal counter-
claim or cross-motion requesting relief, may nonetheless
enter judgment in favor of the non-moving party when
there are no material issues of fact in dispute and the
parties have had the opportunity to argue all relevant
issues. See First Nat’l Bank v. Md. Cas. Co., 290 F.2d 246
(2d Cir. 1961), cert. denied, 368 U.S. 939 (1961); Procter &
Gamble Indep. Union v. Procter & Gamble Mfg. Co., 312
F.2d 181 (2d Cir. 1962), cert. denied, 374 U.S. 830 (1963);
see, e.g., UMC Elecs. Co. v. United States, 816 F.2d 647,
657 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 (1988)
(when facts are undisputed and issue is solely one of law,
appellate court need not remand but may resolve issue);
Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1368
(Fed. Cir. 1997) (invalidating patent for failure to meet
the enablement requirement when the parties’ arguments
had been fully vetted); see also Campaign for Family
CIMLINE v. CRAFCO 8

Farms v. Glickman, 200 F.3d 1180, 1186-87 (8th Cir.
2000); 28 U.S.C. § 2106 (“The Supreme Court or any other
court of appellate jurisdiction may affirm, modify, vacate,
set aside or reverse any judgment, decree, or order of a
court lawfully brought before it for review, and may
remand the cause and direct the entry of such appropriate
judgment, decree, or order, or require such further pro-
ceedings to be had as may be just under the circum-
stances.”); 10A Charles Alan Wright, Arthur R. Miller &
Mary Kay Kane, Federal Practice and Procedure §§ 2716,
2720 (3d ed. 1998).

‘‘Obviousness is a question of law based on underlying
findings of fact.’’ In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). A patent is invalid for obviousness “if the
differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.” 35
U.S.C. § 103(a). The underlying factual inquiries are (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 art, and (4) any relevant secondary
considerations, such as commercial success, long felt but
unsolved needs, and the failure of others. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (citing Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966)).

I

The district court determined that Cimline failed to
offer sufficient evidence of obviousness necessary to
satisfy its burden of demonstrating a genuine issue of
material fact to survive summary judgment. In particu-
lar, the district court noted that Cimline did “little more
9 CIMLINE v. CRAFCO

than point to the products Crafco sold in the 1980s and
PennDOT’s modifications and then assert, in a conclusory
fashion, that the ’375 patent must have been obvious in
light of those products.” Cimline, 672 F. Supp. 2d at 925.
Though the issue of obviousness was scantly briefed to the
district court, the parties’ oral argument to this court
focused primarily on the obviousness issue, with the
parties agreeing that there are no material issues regard-
ing the underlying factual inquiries on the legal determi-
nation of obviousness. See, e.g., Oral Argument at 4:27-
48, available at
http://oralarguments.cafc.uscourts.gov/Audiomp3/2010-
1348.MP3. We agree that there are no genuine issues of
fact regarding the underlying factual inquiries of the
obviousness analysis and address each factor in turn.

The scope and content of the prior art and the differ-
ences between the prior art and the claims at issue are
not in dispute. The prior art includes sealant melters
built by Crafco in the 1980s and sold to the Texas De-
partment of Transportation. Those sealant melters
included splash boxes and manual conveyor belts. Like-
wise, the sealant melters modified by PennDOT in the
mid-1990s included splash boxes and manual conveyor
belts. The prior art also includes powered conveyor belts
like those used in the mining industry. Mr. Barnes, the
named inventor of the ’375 patent, testified that powered
conveyor belts existed for perhaps as many as seventy-
five years. When compared to the prior art, the asserted
claims of the ’375 patent differ in only one way: the use of
a powered conveyor controlled by a switch. Though
Crafco asserts that the splash box limitations of claim 23
also differentiate its invention from the prior art, the
testimony of inventor Barnes indicates that the splash
box of the PennDOT sealant melter was the same as the
splash box of the ’375 patent.
CIMLINE v. CRAFCO 10

There is no dispute regarding the level of ordinary
skill in the art. Further, the parties do not dispute any
evidence regarding secondary considerations. For in-
stance, at oral argument, Cimline was questioned regard-
ing the existence of factors such as long felt need and the
delay in combining powered conveyor belts with sealant
melters. Oral Argument at 5:28-7:00. Crafco, however,
offered no response to Cimline’s answers. Thus, no issue
of fact exists regarding the underlying factual inquiries of
the obviousness analysis.

Cimline argues that the ’375 patent is obvious be-
cause it discloses an invention that is merely the combi-
nation of prior art sealant melters—having manual
conveyor belts and splash guards—with powered conveyor
belts. Citing the report of its expert, Cimline argues that
powered conveyor belts were in the prior art since at least
the 1980s and for at least seventy-five years, according to
the inventor of the ’375 patent. Cimline contends that
Crafco’s combination of prior art sealant melters with a
powered conveyor belt yielded nothing “more than the
predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417. Also,
Cimline argues that the district court incorrectly sug-
gested that “the focus instead must be on whether there
exists ‘a reason that would have prompted a person of
ordinary skill in the relevant field to combine’ a powered
conveyor with a sealant melter.” Id. at 418; Appellant Br.
at 38. Cimline further asserts that the district court
erred in failing to apply common sense to determine that
the combination of prior art sealant melters with powered
conveyor belts is obvious.

Crafco responds that the district court correctly de-
termined that Cimline offered “almost no evidence to
support its allegations of obviousness.” Appellee Br. at 8.
11 CIMLINE v. CRAFCO

Crafco asserts that the conclusory opinions of Cimline’s
expert failed to create any genuine issue of fact regarding
obviousness and the district court was correct to discredit
this evidence. See Innogenetics N.V. v. Abbott Labs., 512
F.3d 1363, 1373-74 (Fed. Cir. 2008). Specifically, Crafco
asserts that although powered conveyors were in the prior
art, the prior use of these conveyors did not address the
safety aspects addressed by the ’375 patent. According to
Crafco, the use of the powered conveyor belt in the ’375
patent improves the safety of the sealant melter by allow-
ing sealant blocks to be lined up end-to-end while the
operator drops them one-by-one into the melter, thereby
avoiding harmful burns from hot sealant splashing back
on the operator.

II

As a preliminary matter, we find fault with the dis-
trict court’s reliance on pre-KSR decisions and its focus on
whether there existed explicit teachings as to “a reason
that would have prompted a person of ordinary skill in
the relevant field to combine” a powered conveyor with a
sealant melter. Cimline, 672 F. Supp. 2d at 926. The
Supreme Court set forth a flexible inquiry in KSR, which
allows for a court “to take account of ‘the inferences and
creative steps,’ or even routine steps, that an inventor
would employ.” Ball Aerosol & Spec. Container v. Ltd.
Brands, 555 F.3d 984, 993 (Fed. Cir. 2009). When taking
these inferences and creative or routine steps into ac-
count, it may be proper to conclude that the result of a
“combination [of prior art] would have been entirely
predictable and grounded in common sense” under the
proper set of facts. Id.

Our cases which have relied on “common sense” con-
sistently teach that “factfinders may use common sense in
CIMLINE v. CRAFCO 12

addition to record evidence” to determine the legal issue
of obviousness. Perfect Web Tech., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009); see also Wyers v.
Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010);
Ball Aerosol, 555 F.3d at 993. In bridging the gap be-
tween prior art references and a conclusion of obvious-
ness, the factfinder may rely on the prior art references
themselves, the knowledge of those of ordinary skill in the
art, the nature of the problem to be solved, market forces,
design incentives, the “interrelated teachings of multiple
patents,” “any need or problem known in the field of
endeavor at the time of invention and addressed by the
patent,” or the background knowledge, creativity, and
common sense of the person of ordinary skill. KSR, 550
U.S. at 418–21; see also Ruiz v. A.B. Chance Co., 234 F.3d
654, 665 (Fed. Cir. 2000). While we note that the district
court was without the benefit of our opinions in Perfect
Web and Wyers at the time of its opinion, 1 these cases on
“common sense” derive from the Supreme Court’s direc-
tion in KSR and we apply the law as it stands today.

The ’375 patent discloses a sealant melter having a
powered conveyor and a splash guard box. As compared
to the prior art, the ’375 patent differs only in that the
prior art used a manual, gravity-propelled conveyor belt.
The improvement achieved by the modification disclosed
in the ’375 patent in using a powered conveyor belt,
rather than a manual conveyor belt, is that multiple
blocks of sealant could be placed end-to-end on a conveyor
belt. The operator could then cause single blocks of
sealant to drop into the melter one-by-one by toggling a

1 Our opinion in Perfect Web issued on the same day
that Judge Kyle issued his opinion, Cimline, 672 F. Supp.
2d at 916. Our opinion in Wyers followed later.
13 CIMLINE v. CRAFCO

remote switch, as needed, to complete a roadway mainte-
nance project.

The combination of prior art sealant melters having a
manual conveyor belt with a powered conveyor belt re-
quires nothing more than common sense to appreciate the
resultant advantage. The claimed invention of the ’375
patent represents no more than “the predictable use of
prior art elements according to their established func-
tions.” KSR, 550 U.S. at 417. Further, it is clear that a
person of ordinary skill would have perceived a reason-
able expectation of success in the combination of these
two elements of the prior art. See In re O’Farrell, 853
F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under §
103, all that is required is a reasonable expectation of
success.”). None of Crafco’s arguments to the contrary are
convincing. The teachings of “common sense” in this case
derive not only from the nature of the problem to be
solved, but also from market forces themselves. As to the
nature of the problem to be solved, the record evidence
shows that it is common sense that an object, such as
coal, can travel along a powered conveyor and will stop
when the power to the conveyor is turned off. J.A. 384-86.
As to market forces, these are clearly evidenced by the
sales meeting and production request that PennDOT
made of Crafco after Crafco witnessed PennDOT’s modifi-
cations to early Crafco sealant melters.

Crafco’s argument that the district court correctly
found a lack of evidence as to obviousness and properly
discounted the evidentiary value of Cimline’s expert
report is likewise unavailing. The obviousness analysis
may “include recourse [by the factfinder] to logic, judg-
ment, and common sense available to the person of ordi-
nary skill that do[es] not necessarily require explication
in any reference or expert opinion.” Perfect Web, 587 F.3d
CIMLINE v. CRAFCO 14

at 1329. By extension, expert reports—even credible
experts reports—are not required when the underlying
factual considerations are resolved by resort to common
sense. Here, the technology is easily understandable,
even without the assistance of expert opinion. Centricut,
LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir.
2004). Thus, the district court erred in concluding that a
lack of evidence existed as to the underlying factual
considerations of the obviousness analysis. Cimline, 672
F. Supp. 2d at 926-27. The court further erred in apply-
ing the heightened burden placed on expert reports opin-
ing as to obviousness by Innogenetics. 512 F.3d at 1363
(requiring a heightened burden of explanation in an
expert report regarding motivation to combine references
for a technology involving the detection and classification
of hepatitis C genotypes in a biological sample). Our
cases distinguish the need for and breadth of required
expert disclosure when the underlying technology is
“easily understandable.” Compare Perfect Web, 587 F.3d
at 1329-30 with Innogenetics, 512 F.3d at 1363.

While unnecessary in an obviousness analysis where
the factual inquiries are resolved by application of com-
mon sense, Perfect Web, 587 F.3d at 1329, we note that
Cimline’s submitted expert report in this case acknowl-
edges that conveyors are nothing new in the industry and
powering a conveyor is something that has been done in
the past and is not technically difficult to accomplish. We
agree. The automation of mechanical equipment once
operated manually is commonplace and reasonably obvi-
ous to one of ordinary skill. See, e.g., Leapfrog Enters. v.
Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(“Accommodating a prior art mechanical device . . . to
modern electronics would have been reasonably obvious to
one of ordinary skill . . . .” and “has been commonplace in
15 CIMLINE v. CRAFCO

recent years.”). This evidence fully supports our conclu-
sion that the ’375 patent is invalid for obviousness.

CONCLUSION

This case presents the rare procedural occurrence in
which the Appellant, Cimline, failed to file a cross-motion
for summary judgment in response to Crafco’s motion for
summary judgment. The parties have had an opportunity
to be fully heard, however, and there are no disputed
issues of material fact regarding obviousness. Thus, the
legal determination of obviousness is amenable to com-
plete adjudication upon appellate review and we exercise
our authority and discretion to decide this case in the
interest of judicial economy. See Brown v. J.B. Hunt
Transp. Servs., Inc., 586 F.3d 1079, 1088 n.6 (8th Cir.
2009) (disposing of appellant’s claims on appellate review
despite appellant’s failure to file a cross-motion for sum-
mary judgment, where the facts were undisputed); 28
U.S.C. § 2106.

We conclude that it is a matter of common sense to
combine a prior art sealant melter with a powered con-
veyor to create the sealant melter claimed in the ’375
patent. The intended results achieved by this combina-
tion would be perceived as having a reasonable expecta-
tion of success to a person of ordinary skill. Therefore,
the district court’s dismissal with prejudice of Cimline’s
invalidity and noninfringement counts in its Amended
Complaint is vacated. The district court’s entry of stipu-
lated damages and an injunction against Cimline is also
vacated. The court’s grant of summary judgment in favor
of Crafco on validity and infringement is reversed. We
affirm-in-part the district court’s summary determination
as to Cimline’s antitrust and unfair competition claims.
Judgment is entered in favor of Cimline on its invalidity
CIMLINE v. CRAFCO 16

and noninfringement counts because we hold that the ’375
patent is invalid.

AFFIRMED-IN-PART, VACATED-IN-PART,
REVERSED-IN-PART