Osram Sylvania, Inc. v. American Induction Technologies, Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

OSRAM SYLVANIA, INC.,
Plaintiff-Appellant,
v.
AMERICAN INDUCTION TECHNOLOGIES, INC.,
Defendant-Cross Appellant.
__________________________

2012-1091, -1135
__________________________

Appeals from the United States District Court for the
Central District of California in case no. 09-CV-8748,
Judge Manuel L. Real.
_________________________

Decided: December 13, 2012
_________________________

GREGG F. LOCASCIO, Kirkland & Ellis, LLP, of Wash-
ington, DC, argued for plaintiff-appellant. With him on
the brief were NATHAN S. MAMMEN and LESLIE M.
SCHMIDT. Of counsel on the brief was STEVEN M. COYLE,
Cantor Colburn LLP, of Hartford, Connecticut.

GLENN W. TROST, Connolly Bove Lodge & Hutz, LLP,
of Los Angeles, California, argued for defendant-cross
appellant.
__________________________
OSRAM SYL INC v. AMER INDUCT TECH 2

Before O’MALLEY, PLAGER, and REYNA, Circuit Judges.
O’MALLEY, Circuit Judge.
OSRAM SYLVANIA, Inc., (“OSRAM”) appeals the dis-
trict court’s grant of summary judgment of invalidity of
claims 1, 17, 25, 27, and 32 of U.S. Patent No. 5,834,905
(the “’905 patent”), issued to Valery A. Godyak et al., and
assigned to OSRAM. Because we find genuine issues of
material fact that preclude a finding of anticipation and
obviousness on summary judgment, and because we find
that the district court erred in failing to consider objective
indicia of nonobviousness, we reverse and remand for
proceedings in accordance with this ruling.
BACKGROUND
I. Technology at Issue
OSRAM is the assignee of the ’905 patent, which
claims a closed-loop tubular electrodeless lamp, having
certain and specific discharge current and pressure pa-
rameters. Claim 1, which is representative, recites:
An electric lamp assembly comprising:
an electrodeless lamp including a closed-
loop, tubular lamp envelope enclosing
mercury vapor and a buffer gas at a pres-
sure less than 0.5 torr;
a transformer core disposed so as to sur-
round a portion of said closed-loop lamp
envelope;
an input winding disposed on said transformer
core; and
a radio frequency power source coupled to
said input winding for supplying sufficient
radio frequency energy to said mercury
vapor and said buffer gas to produce in
3 OSRAM SYL INC v. AMER INDUCT TECH

said lamp envelope a discharge having a
discharge current equal to or greater than
about 2 amperes.
’905 patent col. 8 ll. 7–19.
This invention generally relates to “a low pressure,
high intensity fluorescent light source that can produce
considerably more light per unit length than conventional
electroded fluorescent lamps.” Electrodeless fluorescent
lamps were first disclosed in several patents issued to and
articles authored by John Anderson of G.E. in the 1960s
and 1970s. For example, as described in the ’905 patent’s
“Background of the Invention,” Anderson claimed in U.S.
Patent No. 3,987,334 (the “Anderson ’334 patent”) a lamp
having a torodial discharge tube that forms a continuous
closed electrical path that passes through a torodial
ferrite core. Applying a voltage to the wire wrapped
around the ferrite core creates a magnetic flux that in
turn induces a discharge voltage along the tube. In effect,
the wire around the ferrite core operates as the primary of
a transformer with the lamp tube operating as the secon-
dary of the transformer. Thus, “[t]he inner surface of the
discharge tube is coated with a phosphor which emits
visible light when irradiated by photons emitted by the
excited mercury gas atoms.” ’905 patent col. 2 ll. 14–16.
The lamps described in the Anderson ’334 patent operated
with a buffer gas pressure of “approximately 1 torr or
less.” The ’905 patent specification describes Anderson’s
lamp as inefficient and impractical, however.
The ’905 patent also describes “a closed-loop, tubular
lamp envelope enclosing mercury vapor . . . a transformer
core disposed around the lamp envelope, an input winding
disposed on the transformer core and a radio frequency
power source coupled to the input winding” but it specifies
a buffer gas pressure of “less than about 0.5 torr.” ’905
OSRAM SYL INC v. AMER INDUCT TECH 4

patent col. 2 ll. 31–37. “The radio frequency source sup-
plies sufficient radio frequency energy to the mercury
vapor and the buffer gas to produce in the lamp envelope
a discharge having a discharge current equal to or greater
than about 2 amperes.” Id. col. 2 ll. 36–41. Operating a
lamp at the parameters specified in the ’905 patent—
namely a buffer gas pressure of less than 0.5 torr and a
discharge current equal to or greater than 2 amperes—
allegedly results in a lamp with high output, high effi-
ciency, and long operating life as compared to conven-
tional electroded fluorescent lamps. In its preferred
embodiment, the lamp specified by the ’905 patent oper-
ates with a buffer gas pressure equal to or less than about
0.2 torr, and a discharge current equal to or greater than
about 5.0 amperes. The specification of the ’905 patent
makes clear that it is this novel relationship—high dis-
charge current combined with low buffer gas pressure—
that results in the increased efficiency and small power
loss in the ferrite core.
II. Procedural History
On November 30, 2009, OSRAM filed a complaint al-
leging that American Induction Technologies, Inc.’s,
(“AITI”) 120-watt induction lamp infringes OSRAM’s ’905
patent. AITI responded with counterclaims seeking
declarations of non-infringement, invalidity, and unen-
forceability. OSRAM moved for summary judgment that
the ’905 patent was infringed and not invalid and AITI
cross-moved for summary judgment of invalidity due to
anticipation and obviousness based on the Anderson ’334
patent. On February 14, 2011, the district court denied
OSRAM’s motions and granted AITI’s motion with respect
to claim 32. The district court ruled, from the bench, in
relevant part:
5 OSRAM SYL INC v. AMER INDUCT TECH

Claim 32 of the ’905 patent is anticipated by
Anderson’s Patent No. 3,987,334. All of the limi-
tations of Claim 32 are disclosed either expressly
or inherently in Anderson’s 334 patent. Because
the buffer gas pressure disclosed in the Anderson
334 patent completely encompasses that disclosed
in the ’905 patent within a relatively narrow
range, it discloses a pressure of less than .5 torr
and renders Claim 32 invalid. Atofina versus
Great Lakes Chemical Corporation, 441 F.3d 991
(Fed. Cir. 2006).
A4200–01. With respect to the remaining claims, the
district court characterized the parties’ positions as a
“battle of the experts” and found that genuine issues of
material fact precluded summary judgment in favor of
either party.
After the court’s finding that the Anderson ’334 pat-
ent anticipated claim 32 of the ’905 patent, AITI sought
reconsideration of its motion for invalidity of the remain-
ing independent claims—claims 1, 17, 25, and 27. AITI
argued that these other claims differed from claim 32 only
with respect to a specified discharge current of greater
than 2 amperes and, therefore, were obvious combinations
of lamps disclosed in the Anderson ’334 patent and those
described in an article by D.O. Wharmby, Ph.D., entitled
“Electrodeless Lamps for Lighting: A Review,” Vol. 140
IEEE Proceedings-A no. 6, November 1993 (“Wharmby”).
Notably, AITI relied on no other references or prior art to
support its renewed motion for summary judgment. In
opposition, OSRAM contended that AITI failed to raise
this specific combination of prior art in its original motion
for summary judgment and that, regardless, OSRAM’s
expert presented testimony that the different shapes of
the lamps disclosed in the Anderson ’334 patent and
Wharmby precluded applying the teachings of one to the
OSRAM SYL INC v. AMER INDUCT TECH 6

other. OSRAM, in particular, argued that Anderson ’334
patent does not disclose all the shape limitations of claim
17—requiring two parallel tubes joined by two lateral
tubes at each end. OSRAM also noted that, in denying
OSRAM’s motion for summary judgment, the district
court ruled that material issues of fact existed with re-
spect to the teachings of Wharmby. AITI acknowledged
OSRAM’s arguments regarding the shape of the prior art
lamps and removed claim 17 from its motion for reconsid-
eration in reply “to avoid additional distraction from the
discharge current teachings of the prior art.” J.A. 4142.
The District Court granted AITI’s motion and declared
the remaining independent claims, including claim 17,
invalid as a matter of law. The court’s ruling was again
read from the bench and states, in relevant part:
Defendant has demonstrated that this Court, in-
undated with complicated technical matters relat-
ing to the history and operation of electrodeless
induction lamps, failed to consider and appreciate
the affect of certain prior art references on the ob-
viousness of certain independent claims of the
‘905 patent.
***
Given the virtually interchangeability between
different topologies and the fact that the conse-
quences of increasing radio frequency discharge
was well known in a prior art and specifically dis-
closed in the D.O. Wharmby article, the improve-
ments reflected in independent Claims 1, 17, 25
and 27 of increasing radio frequency discharge 2
or more amperes was merely the predicable use of
prior art elements according to their established
functions; and a person of ordinary skill in the art
would recognize that increasing radio frequency
7 OSRAM SYL INC v. AMER INDUCT TECH

discharge to 2 or more amperes would improve
tubular lamps in the same way that globular
lamps and lamps of other topologies.
The increased radio frequency discharge was the
only improvement presented in claims 1, 17, 25
and 27. It was not found in claim 32, which this
Court has already ruled invalid for reasons of an-
ticipation. Pursuant to KRS International Com-
pany versus Teleflex, Incorporated, these claims
are obvious in light of the prior art and invalid.
J.A. 4286–86 [sic throughout]. OSRAM requested clarifi-
cation regarding the inclusion of claim 17 in the order and
the court responded that “shape is irrelevant” and claim
17 was, therefore, invalid as obvious. The district court
ordered AITI to submit proposed findings of fact and
conclusions of law relating to the independent claims but
AITI did not comply with that order and the district court
failed to issue its own.
After the independent claims were invalidated,
OSRAM granted AITI a covenant not to sue as to the
dependent claims, and the district court dismissed AITI’s
counterclaims concerning the validity of the ’905 patent’s
dependent claims. The parties then proceeded with a
three-day bench trial, from September 20-22, 2011, on
AITI’s counterclaims of inequitable conduct, after which
the district court found that no inequitable conduct was
committed during the prosecution of the ’905 patent. The
district court entered final judgment on November 28,
2011. OSRAM timely appealed and we have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, OSRAM argues that the district court
erred in granting summary judgment that claim 32 of the
OSRAM SYL INC v. AMER INDUCT TECH 8

’905 patent is anticipated by the Anderson ’334 patent
and that claims 1, 17, 25, and 27 of the ’905 patent are
obvious in view of Wharmby in combination with the
Anderson ’334 patent. According to OSRAM, the district
court resolved a disputed issue of material fact in its
anticipation finding, namely that the Anderson ’334
patent disclosed the operating condition of less than 0.5
torr through its reference to a lamp with “a pressure of
approximately 1 torr or less,” and resolved numerous
disputed issues of fact in its obviousness finding relating
the interchangeability of lamp shapes. Additionally,
OSRAM asserts that the district court’s failure to address
evidence of secondary considerations of nonobviousness
alone warrants reversal. AITI counters that the earlier
disclosed genus—1 torr or less—necessarily anticipates
the later species—less than 0.5 torr—and that the claims
are otherwise obvious in light of various combinations of
prior art.1 AITI also contends that OSRAM failed to
present evidence of a nexus between the claimed inven-
tion and the alleged secondary considerations and we,

1 With respect to both anticipation and obviousness,
AITI, apparently relying on the principle that this court
“reviews judgments, not opinions,” presents extensive
argument on appeal relating to prior art that was not the
subject of AITI’s motions for summary judgment. That
OSRAM discussed these references in OSRAM’s motion
for summary judgment of no invalidity—a motion that
was denied because it raised disputed material issues of
fact—does not permit AITI to rely on these references on
appeal. AITI’s motions for summary judgment were
predicated on only two references; the trial court’s judg-
ment was predicated on only those same two references;
this appeal must follow suit. Because we have not consid-
ered the teachings of the references AITI raised for the
first time on appeal, we express no opinion as to their
relevance or impact on the issue of invalidity.
9 OSRAM SYL INC v. AMER INDUCT TECH

therefore, may overlook the district court’s failure to
address them below.
I.
This court reviews a district court’s grant of summary
judgment without deference. Dynacore Holdings Corp. v.
U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004).
Summary judgment is appropriate if no genuine issues of
material fact exist such that the moving party is entitled
to judgment as a matter of law. FED. R. CIV. P. 56(c); see
also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.,
149 F.3d 1309, 1315 (Fed. Cir. 1998). This court reviews
the evidence in the light most favorable to the non-moving
party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
(1986).
Anticipation, though a question of fact, may be re-
solved on summary judgment if no genuine issue of mate-
rial fact exists. Ormco Corp. v. Align Tech., Inc., 498 F.3d
1307, 1319 (Fed. Cir. 2007). We review de novo the
determination of whether the evidence in the record
raises a genuine issue of material fact. Id. “Summary
judgment is proper if no reasonable jury could find that
the patent is not anticipated.” Zenith Elecs. Corp. v. PDI
Commun. Sys., 522 F.3d 1348, 1357 (Fed. Cir. 2008).
Similarly, “a district court can properly grant, as a
matter of law, a motion for summary judgment on patent
invalidity when the factual inquiries into obviousness
present no genuine issue of material facts.” Ryko Mfg. Co.
v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991).
“When the facts underlying an obviousness determination
are not in dispute, we review whether summary judgment
of invalidity is correct by applying the law to the undis-
puted facts.” Tokai Corp. v. Easton Enters. 632 F.3d 1358,
1366 (Fed. Cir. 2011).
OSRAM SYL INC v. AMER INDUCT TECH 10

II.
We begin by addressing the district court’s finding
that the Anderson ’334 patent anticipates claim 32 of the
’905 patent. A patent claim is anticipated if each and
every limitation is found in a single prior art reference.
35 U.S.C. § 102. Patents are presumed to be valid and
invalidity must be proven by clear and convincing evi-
dence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238,
2242, 180 L. Ed. 2d 131 (2011). OSRAM argues that AITI
faced an enhanced burden in establishing anticipation
because the examiner considered the Anderson ’334
patent during the prosecution of the ’905 patent. While
prior consideration of a reference during prosecution may
carry some weight, the burden to prove invalidity does not
change; at all times, it remains a showing “by clear and
convincing evidence.” Id.; see also Tokai, 632 F.3d at
1367.
The parties’ dispute centers on whether the Anderson
’334 patent discloses a buffer gas pressure of less than 0.5
torr. AITI primarily relies on the legal argument that
“the disclosure of a small genus may anticipate the spe-
cies of that genus even if the species are not themselves
recited.” Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001). Referencing
our decisions in Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991 (Fed. Cir. 2006) and ClearValue, Inc. v.
Pearl River Polymers, Inc., 668 F.3d 1340 (Fed. Cir. 2012),
AITI asserts that the range in the Anderson ’334 patent,
which completely encompasses the range in the ’905
patent, is sufficient to disclose the claimed buffer gas
pressure in the ’905 patent.2

2 AITI also claims, citing to the axiom “that which
would literally infringe if later anticipates if earlier,"
Bristol-Myers Squibb, 246 F.3d at 1378, that a lamp
11 OSRAM SYL INC v. AMER INDUCT TECH

We disagree. While it is true that an earlier disclosed
genus may, in certain circumstances, anticipate a later
species, this inquiry necessarily includes a factual compo-
nent. See, e.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008) (“[W]hether a generic disclo-
sure necessarily anticipates everything within the genus .
. . depends on the factual aspects of the specific disclosure
and the particular products at issue.”); Atofina, 441 F.3d
at 999; In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994). For
example, in Atofina we analyzed a patent claiming a
method of synthesizing difluoromethane at a temperature
between 330-450 degrees Celsius. Atofina, 441 F.3d at
993. The prior art, in contrast, disclosed a broad tem-
perature range of 100-500 degrees Celsius. Id. at 999. In
Atofina, we reversed the district court’s finding of antici-
pation following a bench trial and we explained that our
holding was premised on the “considerable difference
between the claimed [temperature] range and the range
in the prior art.” Id. Our decision in Atofina clarified
that the prior art’s teaching of a broad genus does not
necessarily disclose every species within that genus. Id.
Under the circumstances presented in Atofina, “no rea-
sonable fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to
anticipate this limitation of the claim.” Id.
Contrary to AITI’s assertions, our decision in Clear-
Value does nothing to alter the unequivocal statements in
Atofina. There, we analyzed a patent relating to clarify-
ing low alkalinity water and found that the jury lacked
substantial evidence to find that certain prior art—

practicing the Anderson ’334 patent would anticipate the
claims of the ’905 patent. But this argument ignores the
fact that the Anderson ’334 patent could be practiced—
with a buffer gas pressure of 0.5 torr or above—without
infringing.
OSRAM SYL INC v. AMER INDUCT TECH 12

disclosing a chemical process with a range of 150 ppm or
less—did not anticipate the asserted patent or disclose
the claimed limitation of 50 ppm. ClearValue, 668 F.3d
1340, 1344–45. In ClearValue, we explained that, in
contrast to the patentee in Atofina, ClearValue did not
argue that the 50 ppm limitation was critical, or that the
claimed method worked differently at different points
within the prior art range of 150 ppm or less. Id. And,
ClearValue did not allege that one of ordinary skill would
not have recognized 50 ppm as an acceptable value for the
range provided in the prior art. Id. at 1345.
A correct application of Atofina and ClearValue to the
evidence presented here reveals clear disputed material
issues of fact and mandates reversal of the district court’s
finding of anticipation. OSRAM contends—and presented
expert testimony and evidence to support its contention—
that the limitation of less than 0.5 torr is central to the
invention claimed in the ’905 patent and that a lamp
would operate differently at various points within the
range disclosed in the Anderson ’334 patent. Specifically,
the patent itself claims that prior lamps, including those
disclosed in the Anderson ’334 patent, are inefficient and
impractical as compared to the ’905 lamp precisely be-
cause they use pressure well above that claimed in the
’905 patent.
A trial may reveal a minimal difference between the
Anderson ’334 patent prior range of “approximately 1 torr
or less” and the less than 0.5 torr claimed in the ’905
patent, or that one of ordinary skill would interpret
“approximately 1 torr or less” as clearly disclosing less
than 0.5 torr as an acceptable choice within that range,
but those questions cannot be resolved as a matter of law
on this record. Indeed, AITI made no effort to rebut the
testimony of OSRAM’s expert regarding the importance of
the claimed pressure to the invention or regarding what
13 OSRAM SYL INC v. AMER INDUCT TECH

one of ordinary skill would have understood from the
disclosures in the Anderson ’334 patent. AITI relies,
instead, on the conclusory claim that less than 0.5 torr
necessarily falls within “approximately 1 torr or less” as a
matter of fact. While true, the inquiry does not end there.
How one of ordinary skill in the art would understand the
scope of the disclosure or, stated differently, how one of
ordinary skill in the art would understand the relative
size of a genus or species in a particular technology is of
critical importance. And the district court’s failure to
explain or support its statement that “the buffer gas
pressure disclosed in the Anderson ’334 patent completely
encompasses that disclosed in the ’905 patent within a
relatively narrow range,” or to justify its complete rejec-
tion of OSRAM’s expert testimony, complicates our re-
view. We have no choice but to reverse the district court’s
finding of anticipation on this record.
III.
The district court’s obviousness rulings also fail be-
cause they depend on resolution of disputed issues of fact.
A patent may not issue “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). Obviousness is a
question of law based on underlying factual findings: (1)
the scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of
ordinary skill in the art; and (4) objective considerations
of nonobviousness. Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966). Generally, a party seeking to invalidate a
patent as obvious must demonstrate “by clear and con-
vincing evidence that a skilled artisan would have been
motivated to combine the teaching of the prior art refer-
OSRAM SYL INC v. AMER INDUCT TECH 14

ences to achieve the claimed invention, and that the
skilled artisan would have had a reasonable expectation
of success in doing so.” Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1361 (Fed. Cir. 2007); see also Amgen, Inc. v. F.
Hoffmann-La Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir.
2009) (“An obviousness determination requires that a
skilled artisan would have perceived a reasonable expec-
tation of success in making the invention in light of the
prior art.” (citations omitted)). The Supreme Court has
warned, however, that, while an analysis of any teaching,
suggestion, or motivation to combine known elements is
useful to an obviousness analysis, the overall obviousness
inquiry must be expansive and flexible. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 415, 419 (2007).
A.
The district court did no more than recite the test of
KSR and draw general conclusions based thereon in its
ruling on obviousness. The court did not make any spe-
cific findings of fact and gave no basis—other than an
admission that it previously failed to consider submis-
sions by the parties—for reversing its prior statement
that disputed issues of fact existed. OSRAM recognizes—
correctly—that Rule 52(a)(3) states that a “court is not
required to state findings or conclusions when ruling on a
motion under Rule . . . 56.” But, as OSRAM correctly
notes, both this Circuit and the Ninth Circuit repeatedly
have made clear that a trial court must at least provide
its analysis and grounds for entering judgment some-
where in the record. AITI counters that the district
court’s findings are ascertainable from the parties’ own
arguments and again contends that, because we review
judgments not opinions, we are free to affirm on any
ground supported by the record.
15 OSRAM SYL INC v. AMER INDUCT TECH

It is not our role to scour the record and search for
something to justify a lower court’s conclusions, particu-
larly at the summary judgment stage. Whether dealing
with an issue of law like claim construction or an issue of
fact such as infringement, this court must be furnished
“sufficient findings and reasoning to permit meaningful
appellate scrutiny.” Nazomi Communs., Inc. v. Arm
Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005)
(quoting Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed.
Cir. 1997)). Where, as here, the record is devoid of mean-
ingful analysis, we will not conduct such an analysis in
the first instance. Id; see also Research Corp. Techs. v.
Microsoft Corp., 536 F.3d 1247, 1254 (Fed. Cir. 2008)
(“Microsoft’s motions for summary judgment were granted
without a proper analysis regarding inequitable conduct.
This court therefore lacks findings and conclusions for
adequate review.”). We previously have had occasion to
remind this very district court of these important princi-
ples; we do so once more here.
In TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1343
(Fed. Cir. 2010), we reversed this district court’s obvious-
ness ruling for failing to address, among other things,
what the asserted prior art teaches:
Both the record in this case and the order grant-
ing Stryker’s motion for summary judgment are
devoid of such reasoning. Instead of supporting
its obviousness analysis with cogent reasoning,
the order merely states that “[a] common sense
[sic] solution to this problem [i.e., pin migration]
involves stabilizing the pin against . . . displace-
ment . . . [and] the logical solution would be to se-
lect a prior art plate that had holes with an
appropriate diameter . . . .” Order Granting
Stryker’s Mot. For Summ. J. of Invalidity 14. Nei-
ther the record before us nor the order of the dis-
OSRAM SYL INC v. AMER INDUCT TECH 16

trict court explains why one of ordinary skill in
the art at the time of the invention would have
found replacing a cast normally used to stabilize a
pin with a subcutaneous metal plate to be a logi-
cal, commonsense solution to this problem.
Merely saying that an invention is a logical, com-
monsense solution to a known problem does not
make it so.
Id. AITI tries to limit TriMed to scenarios where the
district court explicitly references only “common sense” as
the basis for its obviousness findings. There is no justifi-
cation for limiting TriMed in that fashion, however. The
point made there, as here, is that the trial court must
explain how it reached the conclusions it does, particu-
larly where there is evidence in the record supporting the
non-movant’s position. AITI’s request that we forgive the
lower court’s failure to explain its ruling—and insistence
that we should review the record in the first instance to
ascertain what the lower court might have been think-
ing—rings particularly hollow given AITI’s failure to
respond to the trial court’s order to submit findings of fact
and conclusions of law.
B.
With respect to the substance of the district court’s
ruling on obviousness, OSRAM primarily takes issue with
the district court’s pronouncement that “shape is irrele-
vant” and that “a person of ordinary skill in the art would
recognize that increasing radio frequency discharge to 2
or more amperes would improve tubular lamps in the
same way that [sic] globular lamps and lamps of other
topologies.” J.A. 4286. AITI responds that claims 1, 25,
27, and 32 of the ’905 patent are prima facie obvious
based on Wharmby. According to AITI, Wharmby dis-
closes a lamp meeting the physical configurations of the
17 OSRAM SYL INC v. AMER INDUCT TECH

’905 patent lamp by way of reference to an earlier Ander-
son article regarding operating conditions within the
scope of those claimed by the ’905 patent.
Substantial factual disputes exist, however, as to
whether one of ordinary skill would consider the lamp
shape to be irrelevant or, more specifically, whether one of
ordinary skill would have been motivated to combine the
Anderson lamp with Wharmby or operate the Anderson
lamp at the conditions disclosed in Wharmby. OSRAM’s
expert, Dr. Lawler, testified that Wharmby “teaches away
from the closed-loop tubular design of the ’905 patent”
and AITI’s expert, Mr. Edward Hammer, acknowledged
that Wharmby disparages the very external ferrite core,
closed-loop tubular design of the Anderson patent that
AITI argued would be obvious to combine with Wharmby.
J.A. 4101; A4106–07. OSRAM also references Dr.
Lawler’s opinion that “discharge plasmas are inherently
unpredictable and may behave differently in different
lamp topologies . . . . One could not predict results or
success simply by taking known discharge plasma behav-
ioral characteristics from globular-style lamps and trying
to apply them to a closed-loop tubular lamp with external
ferrite cores.” J.A. 4108–09.
Additionally, at the inequitable conduct trial, AITI fo-
cused on the purported failure of the ’905 patent’s inven-
tors to disclose certain prior art references about globular
lamps, including two articles written by the inventors and
Wharmby. The district court, after hearing live testi-
mony, reached the conclusion that the inventors of the
’905 patent credibly believed that Wharmby was not
material to the ’905 patent. While the question of intent
and credibility as it relates to inequitable conduct is
certainly different than the scope of a prior art reference,
this finding highlights the inconsistent and unsupportable
nature of the district court’s ruling on obviousness and
OSRAM SYL INC v. AMER INDUCT TECH 18

lays bare a disputed issue of fact with respect to the
teachings of Wharmby. For at least this reason we re-
verse the grant of summary judgment and remand.
C.
Separately, and in addition, nothing in the record in-
dicates that the court considered OSRAM’s evidence of
secondary considerations of nonobviousness. At summary
judgment, OSRAM submitted evidence of long felt need,
failure of others, and industry praise, evidence which
AITI did not rebut below. AITI makes no effort to argue
that the district court considered this evidence, or even to
claim that it did rebut OSRAM’s proffered evidence.
Instead, AITI asks that we reject OSRAM’s evidence of
secondary considerations by finding in the first instance
that OSRAM’s evidence is not tied adequately to the full
scope of the asserted claims. AITI’s arguments are with-
out merit. Despite AITI’s contentions, we have emphati-
cally rejected any formal burden-shifting framework in
evaluating the four Graham factors and the district
court’s failure to consider the evidence requires reversal.
See Wm. Wrigley Jr. Co., 683 F.3d at 1365 n.5, In re
Cyclobenzaprine, 676 F.3d at 1076, Ruiz v. A.B. Chance
Co., 234 F.3d 654, 667 (Fed. Cir. 2000); see also Trans-
ocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling
United States, Inc., 2012 U.S. App. LEXIS 23486 at *13
(Fed. Cir. Nov. 15, 2012) (emphasizing the importance of
objective indicia of nonobviousness to the ultimate conclu-
sion of obviousness and making clear that “to determine
obviousness, the decisionmaker must be able to consider
all four Graham factors.”); TriMed, 608 F.3d at 1343 (“We
have repeatedly held that evidence of secondary consid-
erations must be considered if present . . . . There is no
indication in the record that, as required by our prece-
dent, the court considered at all the evidence of secondary
considerations offered by TriMed.”). On remand, the
19 OSRAM SYL INC v. AMER INDUCT TECH

district court must, in the first instance, consider secon-
dary considerations before finding a claim obvious.
D.
The parties disagree as to the propriety of the district
court’s decision to include claim 17 in its ruling on obvi-
ousness after AITI expressly removed that claim from its
initial summary judgment motion. While a trial court
may invalidate a claim sua sponte, where no motion
regarding that claim is before it, it may not do so without
prior notice to the non-movant and an opportunity for the
non-movant to address such an unanticipated action. See
Portland Retail Druggists Ass'n v. Kaiser Found. Health
Plan, 662 F.2d 641, 645 (9th Cir. 1981). Because we
reverse the court’s determination of obviousness on other
grounds, we need not and do not reach this issue.
CONCLUSION
For all of the reasons discussed above, we reverse the
judgment of invalidity and remand this matter for trial.
While the scope and content of the prior art, the motiva-
tion to combine certain references, and the impact of
OSRAM’s evidence of secondary considerations, all may
be resolved in AITI’s favor at trial, the district court’s
treatment of the record on summary judgment was both
inadequate and improper. We will not undertake an
analysis of anticipation and obviousness that should have
been performed by the district court—but was not—in the
first instance.
REVERSED AND REMANDED
COSTS
Each party shall bear its own costs.