United States Court of Appeals
for the Federal Circuit
__________________________
GEO M. MARTIN COMPANY
AND THE MARTIN FAMILY TRUST―1989,
Plaintiffs-Appellants,
v.
ALLIANCE MACHINE SYSTEMS INTERNATIONAL
LLC,
Defendant-Cross Appellant.
__________________________
2009-1132, -1151
__________________________
Appeals from the United States District Court for the
Northern District of California in case no. 07-CV-00692,
Judge William H. Alsup.
___________________________
Decided: August 20, 2010
___________________________
KENNETH E. KELLER, Krieg Keller Sloan Reilley &
Roman LLP, of San Francisco, California, argued for
plaintiffs-appellants. With him on the brief were
CHRISTOPHER T. HOLLAND and MICHAEL D. LISI.
J. THOMAS VITT, Dorsey & Whitney LLP, of Minneapo-
lis, Minnesota, argued for defendant-cross appellant.
With him on the brief were SRI K. SANKARAN, JOHN J.
BROGAN and BART B. TORVIK.
GEO M MARTIN v. ALLIANCE MACHINE 2
__________________________
Before RADER, * Chief Judge, ARCHER and PROST, Circuit
Judges.
RADER, Chief Judge.
Following a trial for patent infringement that resulted
in a hung jury, the United States District Court for the
Northern District of California ruled as a matter of law
that U.S. Patent No. 6,655,566 (the “’566 patent”) would
have been obvious at the time of invention. Geo. M.
Martin Co. v. Alliance Mach. Sys. Int’l, LLC, 634 F. Supp.
2d 1024 (2008) (JMOL Opinion). Because the record
supports the trial court’s judgment, this court affirms.
I
A “bundle breaker” is a machine used to separate
stacked sheets of corrugated board. The ’566 patent
claims an improvement over the traditional bundle
breaker by providing “compliance structures,” which allow
a bundle breaker to simultaneously break multiple stacks
of corrugated board (logs) of different heights.
The assembly line in corrugated board manufacturing
plants typically includes a number of machines that
prepare stacks of corrugated board, or bundles.
First, a rotary die cutter scores a single sheet of cor-
rugated board, creating a series of “weakened lines” so
that the board can be separated later into individual
boxes. Next, a stacker collects multiple sheets and stacks
them into a “log.” The stacker aligns the sheets’ weak-
ened lines so that each log contains a series of “weakened
* Randall R. Rader assumed the position of Chief
Judge on June 1, 2010.
3 GEO M MARTIN v. ALLIANCE MACHINE
planes.” The bundle breaker then separates a log into
individual bundles by “breaking” the log along the weak-
ened planes. Finally, a load former puts the bundles onto
pallets.
The ’566 patent, filed on August 28, 2002, and issued
on December 2, 2003, shows a bundle breaker separating
a log (4) into separate bundles (2 and 3):
A typical bundle breaker, as essentially shown in this
Figure 14, has an upstream conveyor belt (10) and a
downstream conveyor belt (13) separated by a gap. When
the weakened plane (9) of a log straddles the gap, or
“breaking line,” the conveyor belts are stopped, and
independent clamps (16 and 17) are lowered to hold the
log in position. The downstream portion of the bundle
breaker then pivots about an axis (103) to break off a
bundle. Unlike the bundle breaker shown above, a typical
bundle breaker might transfer the separated bundle off of
the downstream conveyor before advancing the remaining
portion of the log to continue the breaking process.
Bundle breakers of this sort were well known in the
art when the application for the ’566 patent was filed.
GEO M MARTIN v. ALLIANCE MACHINE 4
The ’566 patent specification describes one prior art
bundle breaker, the Pallmac machine, as one that would
feed two or more logs through its bundle breaker side by
side in order to speed production. As described in the ’566
patent, however, this multiple-log approach came with
problems. Specifically, if one or more of the side-by-side
logs were higher than the others, due perhaps to a mis-
count in the number of sheets, the rigid clamps used to
hold the logs in position while breaking would exert a
different amount of pressure on each log. The ’566 patent
describes the result of unequal pressure:
[M]ore pressure is exerted on the taller logs which
can damage compressible material like corrugated
cardboard. If the logs are not compressible, then
insufficient pressure is placed on the shorter logs
and shifting of the logs can occur when the bun-
dles are broken off from the log . . . . In the indus-
try, this problem is called a ‘lack of compliance’
problem; i.e., the force on all the side by side logs
is not substantially equal.
’566 patent, col.2 ll.16-31.
The inventors of the ’566 patent, Merrill Martin and
Daniel Talken, came up with an improved clamp struc-
ture to solve the lack of compliance problem, which they
called a “compliance structure.” An example of the inven-
tors’ compliance structure is shown most clearly in Figure
20 of the patent:
5 GEO M MARTIN v. ALLIANCE MACHINE
The compliance structure (20) includes a fluid-pressurized
structure (21) that is connected to a plurality of rigid
members (46-55)―which the parties call “platens”
―through a flexible member (22).
The ’566 patent describes two identical compliance
structures on both the upstream and downstream clamps.
When each clamp is lowered during operation, the platens
will contact the taller log (4’) first. The fluid-pressurized
structure will then deform the flexible member and allow
the clamp to continue to lower until the platens contact
the shorter log (4). The fluid pressurized structure allows
every platen that touches a log to exert an equal amount
of pressure on that log, regardless of its height.
Claim 1 of the ’566 patent, the only independent
claim, appears in Jepson form. In other words, the pre-
amble describes prior art bundle breakers and then
claims the compliance structure mounted on each upper
clamp as an improvement. See The Manual of Patent
Examining Procedure (“MPEP”) § 2129 ¶ III (8th ed.,
rev.8, July 2010) (explaining Jepson claims). Claim 1
recites (emphasis added):
An improvement in a bundle breaker for sepa-
rating bundles from a log having a generally pla-
nar top surface, said log including a plurality of
sheets each having a generally planar top surface
and each sheet is formed with at least one weak-
ened line, said weakened lines are vertically
aligned in said log forming a weakened plane in
said log, said bundle breaker including a first con-
veyor for conveying said log and having an up-
stream end for receiving said log and a
downstream end, and a second conveyor having
an upstream end positioned immediately adjacent
to said downstream end of said first conveyor pro-
GEO M MARTIN v. ALLIANCE MACHINE 6
viding a gap therebetween defining a bundle
breaking plane, said bundle breaker including
first clamp means mounted for vertical reciprocat-
ing movement above said first conveyor, and sec-
ond clamp means mounted above said second
conveyor for vertical reciprocating movement in
relation to said second conveyor and said second
conveyor and said second clamp means mounted
for conjoint pivotal movement in relation to said
bundle breaking plane for progressively breaking
a bundle from said log along said weakened plane
in said log, said improvement comprising:
a. a first compliance structure mounted
on said first clamp means including,
(1) a first fluid pressurized
structure having a first
flexible member present-
ing a first engagement
area for operative en-
gagement with an up-
stream portion of said
generally planar top sur-
face of said log and on the
upstream side of said
weakened plane in said
log; and
b. a second compliance structure
mounted on said second clamp means
including,
(1) a second fluid pressurized
structure having a second
flexible member present-
ing a second engagement
area for operative en-
7 GEO M MARTIN v. ALLIANCE MACHINE
gagement with a down-
stream portion of said
generally planar top sur-
face of said log and on the
downstream side of said
weakened plane in said
log.
The dependent claims add various limitations that are
in accordance with the description provided above. For
example, Claim 2 requires that each conveyor have “a
width sufficient to simultaneously transfer and support a
plurality of logs in side by side relation.” Claim 3 further
requires that the fluid pressurized structures engage the
plurality of logs where “at least one log [has] a height
greater than at least one other log.” Claim 4 requires the
flexible members to extend “substantially the width of
said logs” in the proximity of the weakened plane. Claim
7 requires each flexible member to have a plurality of
“closely spaced rigid members . . . for engaging said logs.”
Claim 13 claims an indexing capability, which means that
the downstream conveyor can “receive and hold at least
two bundles broken successively” before discharging them
from the conveyor. And claim 14 adds the same indexing
improvement to a bundle breaker capable of breaking two
or more logs simultaneously, meaning that the down-
stream conveyor is able “to receive and hold at least two
or more rows of bundles broken successively from a plu-
rality of logs in side by side relation.” Col.18 ll.33-38
(emphasis added).
II
Plaintiff The Martin Family Trust (the “Trust”) is the
assignee of the ’566 patent. Plaintiff George M. Martin
Co. (“Martin”) sells the Quik-Break Nicked Bundle Sepa-
rator (the “Quik-Break”), which incorporates the inven-
GEO M MARTIN v. ALLIANCE MACHINE 8
tion claimed in the ’566 patent. Martin began offering the
Quik-Break for sale in 2002 and has sold approximately
60 bundle breakers.
Martin has been in the stacker business for a great
deal longer than the bundle breaking business―since
1960―and has sold nearly 2,900 stackers in North Amer-
ica alone. In all, Martin has about 90 percent of the
stacker market.
Defendant Alliance Machine Systems International
LLC (“Alliance”) is Martin’s main competitor in the mar-
ket for bundle breakers that break multiple bundles
having uneven heights. Alliance typically sells between
10-15 bundle breakers per year.
The Trust and Martin sued Alliance in February of
2007, alleging that Alliance’s bundle breaker infringed
the ’566 patent. As a part of its defense, Alliance alleged
that Martin lacked standing to sue because Martin did
not have a sufficient license to the ’566 patent. Although
the Trust’s and Martin’s interests are aligned as to liabil-
ity, Alliance sought to dismiss Martin because Plaintiffs
only sought damages based on Martin’s lost profits (as
opposed to damages based on a reasonable royalty for the
’566 patent). The district court held a bench trial solely
on the issue of standing, ruling afterwards from the bench
that Martin had a “binding exclusive license [to the ’566
patent] implied from the course of dealing between the
Trust and . . . the company” and that therefore Martin
was “entitled to sue for lost profits in the case.”
The district court then held a two-week trial on inva-
lidity, infringement, and damages. Following four days of
deliberation, however, the jury announced that it could
not reach a unanimous verdict. In response, each side
filed renewed motions for Judgment as a Matter of Law
(JMOL) on all issues. The district court granted Alli-
9 GEO M MARTIN v. ALLIANCE MACHINE
ance’s JMOL motion on the issue of invalidity, ruling
that, under the Supreme Court’s decision in KSR Interna-
tional Co. v. Teleflex Inc., 550 U.S. 398 (2007), “[t]he
evidence on primary considerations and on secondary
considerations is so lop-sided in favor of obviousness that .
. . judgment [must] be entered as a matter of law in favor
of [Alliance].” JMOL Opinion, 634 F. Supp. 2d at 1040.
The court denied the remaining JMOL motions as moot.
Id.
The Trust and Martin filed a timely notice of appeal,
arguing to this court, among other things, that the district
court erred in its validity ruling. Alliance cross appeals
the district court’s determination that Martin has stand-
ing to sue for lost profit damages. This court has jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
III
This court reviews the grant of a JMOL motion with-
out deference, Ericsson, Inc. v. Harris Corp., 352 F.3d
1369, 1373 (Fed. Cir. 2003), applying the law of the re-
gional circuit, Riverwood Int’l Corp. v. R.A. Jones & Co.,
324 F.3d 1346, 1352 (Fed. Cir. 2003). “A jury’s inability to
reach a verdict does not necessarily preclude a judgment
as a matter of law.” Headwaters Forest Defense v. County
of Humboldt, 240 F.3d 1185, 1197 (9th Cir. 2000), vacated
on other grounds, 534 U.S. 801 (2001). The test in the
Ninth Circuit is “whether the evidence, construed in the
light most favorable to the nonmoving party, permits only
one reasonable conclusion . . . .” White v. Ford Motor Co.,
312 F.3d 998, 1010 (9th Cir. 2002) (internal quotation
marks omitted).
Under 35 U.S.C. § 103(a), a patent is invalid “if the
differences between the [claimed] subject matter . . . and
the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
GEO M MARTIN v. ALLIANCE MACHINE 10
made to a person having ordinary skill in the art to which
said subject matter pertains.” Whether a patent is invalid
as obvious is ultimately a determination of law based on
underlying determinations of fact. Monarch Knitting
Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881
(Fed. Cir. 1998). Those underlying determinations of fact
relate to “the scope and content of the prior art, the differ-
ences between the prior art and the claimed invention,
the level of ordinary skill in the art, and any relevant
secondary considerations, such as commercial success,
long-felt need, and the failure of others.” Lucent Techs.,
Inc. v. Gateway, Inc., 580 F.3d 1301, 1310 (Fed. Cir. 2009)
(internal quotation marks omitted). Thus, this court will
affirm a district court’s judgment on obviousness as a
matter of law if “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.” KSR, 550 U.S.
at 427.
A
Alliance asserts three bundle-breaking machines as
prior art: the Pallmac machine, the Visy machine, and the
Tecasa machine. This opinion will discuss the relevant
attributes of each machine in turn.
- The Pallmac Machine
A company called Pallmac began shipping its first
bundle breaker in the United States in 1995. Originally,
the Pallmac machine featured springs and closely spaced
wooden grippers, or slats, which would allow the machine
to clamp simultaneously several logs with different
heights. A series of narrow “conveyor ropes” positioned
below the logs would move the logs through the machine.
When the logs reached the breaking line, the conveyor
ropes would stop and “rigid members” would rise up from
11 GEO M MARTIN v. ALLIANCE MACHINE
in between the conveyor ropes in order to press the logs
against the spring-cushioned slats.
Pallmac redesigned its bundle breaker in 1998 by
eliminating the springs and slats, which required con-
stant maintenance, and replacing them with a fixed
wooden plate. In order to allow for variation in log height,
Pallmac modified the bottom clamp so that the rigid
members rested on an elongated air bag, or “fire hose,”
that extended the entire width of the machine. In the
modified Pallmac machine, the rigid members “float”
along the top of the airbag. This later version of the
Pallmac machine was first installed at a customer site in
late 1998.
The ’566 patent itself describes Pallmac’s air bag solu-
tion, but describes the following problem with the “lifting”
approach: “As the lifting members lower the log [after
breaking], a shifting of the individual sheets within the
log can occur which changes the position of the weakened
plane and can result in failure to break the [next] bundle
cleanly from the log or produce poorly formed bundles.”
Col.2 ll.50-55. The Trust highlights this lifting approach
as the primary difference between the Pallmac machine
and the claimed invention. In other words, while the
Pallmac machine clamped incoming logs with a compli-
ance structure from the bottom, the claimed invention
does so from the top.
- The Visy Machine
Visy Board (“Visy”) is an Australian corrugated board
manufacturer. In July 1995, Visy and a U.S. company,
Thermoguard Equipment Inc. (“TEI”), agreed that TEI
would provide Visy with a bundle breaker having a com-
pliance structure able “to accommodate up to a 1/2 [inch]
height difference between multiple bundles being broken
simultaneously.” As early as October of 1996, TEI sold a
GEO M MARTIN v. ALLIANCE MACHINE 12
number of bundle breakers to Visy with an “air bag
clamping” feature. That feature included steel U-shaped
grippers attached to the Visy machine’s upper clamping
mechanism with air bags located inside the grippers.
The Trust does not contest the district court’s descrip-
tion of how the Visy machine was supposed to work.
According to the district court,
Flexible air tubing connected all of the air bags so
as to allow the air pressure to equalize and to ap-
ply the same downward force across all grippers.
Logs of uneven height would then come onto the
conveyor belts, the grippers would lower, and as
the grippers engaged the logs, air would be
pushed in and out of the air bags in proportion to
the pressure on each so as to redistribute and
more equalize the pressure.
JMOL Opinion, 634 F. Supp. 2d at 1029. Described as
such, the Trust stipulated at trial that the Visy Machine
contains the “fluid-pressurized structure” and “flexible
member” limitations of independent claim 1.
Notwithstanding the theory behind the Visy machine,
however, the Trust argues that it would not have ren-
dered the asserted claims obvious because it did not
contain a working compliance structure. The Trust points
to testimony from the on-site project engineer at Visy, Mr.
Fankhauser, who stated that the Visy machine was never
able to consistently break multiple bundles having un-
even heights and even that “the machine was allergic to
breaking multiple logs.” Thus, Mr. Fankhauser testified
that Visy ultimately removed the air bag clamping fea-
ture because it did not work, i.e., it did not “commercially
produce products . . . at speeds that the factory was built
to achieve.”
13 GEO M MARTIN v. ALLIANCE MACHINE
The problems with the Visy machine were caused in
part by the spacing of the grippers in the Visy Machine.
According to Mr. Fankhauser, “pressure is just force
divided by area, so . . . in a straightforward way, . . . if you
reduce the area [covered by the grippers], you have to
increase the pressure to attain a force.” Because the
grippers in the Visy machine covered a relatively small
area on the surface of the logs, Mr. Fankhauser testified
that they needed to exert a large pressure in order to
create enough force to hold the logs in place during break-
ing. This pressure tended to “bruise or damage the prod-
uct” that the Visy machine was trying to break.
- The Tecasa Machine
Another competitor in the corrugated board industry
independently made a machine called the Tecasa bundle
breaker. At trial, the parties stipulated that the Tecasa
machine met every limitation of every asserted claim of
the ’566 patent and that it was first known in the United
States as of June 2002, almost three months before the
filing date of the ’566 patent. The Trust attempted to
swear behind the Tecasa machine at trial by arguing that
it reduced its invention to practice before June 2002.
Specifically, the Trust presented evidence that Messrs.
Martin and Talken conceived of their invention in 1999,
reduced it to practice in 2001, and offered it for sale in
early 2002. The district court assumed that the inventors
of the ’566 patent had reduced their claimed improvement
to practice in time to eliminate the Tecasa machine as
prior art. Nevertheless, the district court relied on the
Tecasa machine as “plainly show[ing] ‘simultaneous
invention’ as an indicia of obviousness.” JMOL Opinion,
634 F. Supp. 2d at 1036.
GEO M MARTIN v. ALLIANCE MACHINE 14
B
The district court correctly concluded as a matter of
law that the differences between the prior art and the
claimed improvement were minimal. For instance, the
record contains a statement by the Trust’s expert, Dr.
Albert Karvelis, that there were only a discrete number of
possible design options for choosing the location of the
compliance structure: the top clamp, the bottom clamp, or
both clamps. This record evidence discredits the Trust’s
argument that the difference between the bottom-up
approach in the Pallmac machine and the top-down
approach in the ’566 patent creates a genuine issue of
fact. Bottom versus top is exactly the type of “finite
number of identified, predictable solutions” that justifies
a legal conclusion that the result, when expected, is “the
product not of innovation but of ordinary skill and com-
mon sense.” KSR, 550 U.S. at 421.
The Trust relies on the testimony of Alliance’s own
Director of Research and Development that, “from an
engineering standpoint,” one cannot simply take the
Pallmac design and flip it from bottom to top. That
testimony, however, is irrelevant to the obviousness
analysis. With one exception, discussed below, the claims
themselves do not recite engineering details but merely
require that the compliance structures be mounted to
clamps that are “above” the conveyor belts. Indeed,
Alliance’s witness did testify that flipping the Pallmac
machine was simple “from [a] concept point of view.”
Moreover, to the extent that engineering obstacles did
stand in the way to constructing a machine that used a
top-down approach, the Visy machine demonstrated that
such obstacles could be overcome.
As noted, the Trust attacks the Visy machine as prior
art, alleging that the machine did not work for its in-
15 GEO M MARTIN v. ALLIANCE MACHINE
tended purpose. The district court appropriately rejected
that argument. Under an obviousness analysis, a refer-
ence need not work to qualify as prior art; “it qualifies as
prior art, regardless, for whatever is disclosed therein.”
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1357 (Fed. Cir. 2003). “Even if a reference discloses
an inoperative device, it is prior art for all that it
teaches.” Beckman Instruments, Inc. v. LKB Produkter
AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).
The Trust concedes that the Visy machine teaches the
“fluid pressurized structure” and “flexible member” limi-
tations; the main dispute on appeal that the court can
discern is whether Visy teaches a “compliance structure.”
The record, however, definitively warrants the trial
court’s conclusion that the Visy machine teaches a “com-
pliance structure.”
The district court’s construction of “compliance struc-
ture,” which is not at issue on appeal, is “a structure that
deforms to allow a more uniform distribution of force.”
Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l, LLC, No.
07-00692, 2007 WL 4105832, *4 (Nov. 16, 2007) (emphasis
added). Inventor Talken, Martin’s corporate representa-
tive at trial, ran tests on a Visy replica machine that
showed that the Visy machine provided a distribution of
force across logs of differing heights that was about 267%
more uniform than a Visy machine with immovable, flat
platens. Thus, the Trust’s own tests clearly and convinc-
ingly establish that the Visy machine contains a structure
that “deforms to allow a more uniform distribution of
force.” In sum, the Visy machine discloses a “compliance
structure.”
The Trust also appears to argue that, because the
claims are to an “improvement in a bundle breaker,” an
accused infringer must show that any prior art must
GEO M MARTIN v. ALLIANCE MACHINE 16
contain an improvement over and above the improvement
recited in the body of the claim. As applied to this case,
the Trust argues that the prior art must provide “‘reliable
breaking’ of multiple bundles of uneven heights while
avoiding the ‘lack of compliance’ problems found in the
prior art, namely damage to the boards caused by exces-
sive pressure and inconsistent breaking due to inadequate
pressure.”
This argument fails because it reads too much into
the word “improvement.” Although “the fact that the
patentee has chosen the Jepson form of the claim evi-
dences the intention to use the preamble to define, in
part, the structural elements of his claimed invention,”
Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d
1022, 1029 (Fed. Cir. 2002) (internal quotation marks
omitted), the extent of the claimed “improvement” is
defined only by the body of the claim. After all, the tran-
sition of the claim contains the phrase “said improvement
comprising.” “Comprising” is a term of art that indicates
that only what follows is essential. Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus, if
the patentee intended to claim an improvement that
included a structure for “reliable breaking” measured
against some kind of commercial production standard, it
should have explicitly done so or argued on appeal for a
construction of “compliance structure” that contains such
a standard. The record shows that the Trust did neither.
To be clear, prior art must teach a person of ordinary
skill to make an apparatus that works for its intended
purpose. Beckman Instruments, 892 F.2d at 1551. If the
Visy machine did not do so on its own, Alliance would
have needed to establish that a person of ordinary skill
would have nonetheless been able to make a working
apparatus. In this case, however, the record shows that
the Visy machine did work, insofar as it was able to do
17 GEO M MARTIN v. ALLIANCE MACHINE
what the preamble of claim 1 required, namely, “sepa-
rate[] bundles from a log.” Even Mr. Fankhauser testified
that the Visy machine was able to break bundles without
denting the top box of a stack if the bundles were “suffi-
ciently small.” The Visy machine simply did not work at
“production speed.” As discussed, however, the claims do
not require a threshold throughput or commercial speed.
The one design specification contained in the asserted
claims can be found in the dependent claim 7 requirement
that the platens be “closely spaced.” The district court
held that the “simple solution” of enlarging the surface
area of the platens would have been apparent to one
having ordinary skill in the art based on the “fundamen-
tal and basic principle of physics” that Force = Pressure ×
Area. JMOL Opinion, 634 F. Supp. 2d at 1037. This
court again agrees with the district court. The Trust
argues that if the solution were so simple, someone at
Visy or Alliance would have suggested it. The record only
shows that Visy and Alliance employees tried to trouble-
shoot or repair the Visy machine, not redesign it. Thus,
their failure to suggest a redesign does not create a rea-
sonable dispute. Indeed, Visy’s Mr. Fankhauser testified
that the relationship between pressure and area was
“straightforward.”
Finally, on appeal the Trust does not take issue with
the district court’s invalidity holding on dependent claims
13 and 14, both of which relate to “indexing.” Thus, this
court need not address those points.
C
Secondary considerations of non-obviousness must be
considered when present. Sud-Chemie, Inc. v. Multisorb
Techs., Inc., 554 F.3d 1001, 1008 (Fed. Cir. 2009). As the
Supreme Court recently reaffirmed, “‘[s]uch secondary
considerations as commercial success, long felt but un-
GEO M MARTIN v. ALLIANCE MACHINE 18
solved needs, failure of others, etc., might be utilized to
give light to the circumstances surrounding the origin of
the subject matter sought to be patented.’” KSR, 550 U.S.
at 406 (quoting Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966)). In some rare instances, the
secondary consideration of simultaneous invention might
also supply “indicia of ‘obviousness.’” Ecolochem, Inc. v.
S. Cal. Edison Co., 227 F.3d 1361, 1376, 79 (Fed. Cir.
2000) (quoting Graham, 383 U.S. at 17-18).
Here, the Trust argues that a number of secondary
considerations of non-obviousness preclude a conclusion
that the asserted claims are obvious as a matter of law.
The district court held that the Trust’s secondary consid-
erations could not overcome “the fact that nearly every
single person or entity who encountered the lack of com-
pliance problems in the industry came up with the same
general hydraulic design to manage it.” JMOL Opinion,
634 F. Supp. 2d at 1039. Upon review, this court agrees
that the record shows the evidence of secondary consid-
erations in this case do not create a reasonable dispute as
to obviousness.
The commercial success of a product is relevant to the
non-obviousness of a claim only insofar as the success of
the product is due to the claimed invention. Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006).
Here, Alliance conclusively established that much of
George Martin’s commercial success was due to Martin’s
pre-existing market share in the stacker market, which,
according to Martin’s president, gave it a “huge advan-
tage” in selling other products because it allowed Martin
to sell a “single-source system.” Thus, this factor carries
little weight.
Evidence of a long-felt but unsolved need provides an-
other secondary consideration of non-obviousness.
19 GEO M MARTIN v. ALLIANCE MACHINE
Ecolochem, 227 F.3d at 1376-77. Where the differences
between the prior art and the claimed invention are as
minimal as they are here, however, it cannot be said that
any long-felt need was unsolved. Martin presented evi-
dence that its Quik-Break worked better than any prior
art system because, for example, it could simultaneously
break three bundles or more. The record shows, however,
that this “need” had been met by prior art machines such
as the Pallmac and the Visy that could break more than
one bundle at a time.
The Trust’s evidence of failure of others is similarly
insufficient. While a jury might have credited the Trust’s
evidence that other machines, such as the Visy machine,
did not work as well as the Quik-Break, everything indi-
cates that the Quik-Break’s superiority was due to its
enhanced throughput over and above the claimed ability
to handle a “plurality of logs.”
Industry praise must also be linked to the patented
invention. Power-One, Inc. v. Artesyn Techs., Inc., 599
F.3d 1343, 1352 (Fed. Cir. 2010). The only evidence of
industry praise on which the Trust reasonably relies―as
opposed to self-serving statements by Martin’s president
that the patented feature offers “increased productivity
and increased profitability”―is an internal Alliance email
in which an Alliance employee reports a customer’s
statement that “the Martin breaker is the cat’s meow.”
But that same email notes that the customer also chose
the Martin Quik-Break because “[t]he interface between
the stacker and the breaker will be handled by a single
vendor.” As with the commercial success factor, this
reference to Martin’s market share in the stacker market
reduces the impact that this evidence could have in estab-
lishing industry praise.
GEO M MARTIN v. ALLIANCE MACHINE 20
Finally, the Trust points to evidence that Alliance cop-
ied the claimed invention, namely, Alliance’s internal
“Bundle Breaker Action Plan” wherein Alliance analyzed
the “Geo Martin concept,” notes that the design is pat-
ented, and then proposes adding its own “floating platens
capability” to its bundle breaker. This court has noted,
however, “that a showing of copying is only equivocal
evidence of non-obviousness in the absence of more com-
pelling objective indicia of other secondary considera-
tions.” Echolochem, 227 F.3d at 1380. The Trust’s
evidence is hardly compelling here, where the same
internal memorandum suggested that Alliance’s proposed
design was the “same [as the] Pallmac platen concept” but
“flipped.” Thus, this evidence does not provide much help
to the Trust.
Independently made, simultaneous inventions, made
“within a comparatively short space of time,” are persua-
sive evidence that the claimed apparatus “was the prod-
uct only of ordinary mechanical or engineering skill.”
Concrete Appliances Co. v. Gomery, 269 U.S. 177, 184
(1925). But see Lindemann Maschinenfabrik GMBH v.
Am. Hoist & Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir.
1984) (“Because the statute, 35 U.S.C. § 135, (establishing
and governing interference practice) recognizes the possi-
bility of near simultaneous invention by two or more
equally talented inventors working independently, that
occurrence may or may not be an indication of obvious-
ness when considered in light of all the circumstances.”).
The Trust takes issue with the district court’s reliance on
the invention of the Tecasa machine as a simultaneous
invention. According to the Trust, Martin and Talken
reduced their claimed invention to practice as early as
2001, whereas the parties stipulated that the Tecasa
machine was first known in the United States in June
2002. The Trust argues that this timing cannot constitute
21 GEO M MARTIN v. ALLIANCE MACHINE
“contemporaneous” invention as a matter of law. The
Trust’s argument would have more force if the Tecasa
machine provided the only evidence of simultaneous
invention. The existence of the Pallmac and Visy ma-
chines, however, shows that the Tecasa machine was
invented within a “comparatively short space of time.” As
discussed, the evidence reveals that the relevant Pallmac
machine was first installed in 1998, and the Visy machine
was first sold in 1996, approximately three and five years,
respectively, before the Trust alleges its invention was
reduced to practice. The district court was therefore
correct to conclude that the invention of the Tecasa ma-
chine, occurring only a year later than the earliest possi-
ble reduction-to-practice date of the claimed invention,
qualified as a simultaneous invention. As such, “‘though
not determinative of statutory obviousness, [it is] strong
evidence of what constitutes the level of ordinary skill in
the art.’” Ecolochem, 227 F.3d at 1379 (quoting The Int’l
Glass Co. v. United States, 408 F.2d 395, 405 (Ct. Cl.
1969)).
Balancing all of the secondary considerations, this
court agrees with the district court that, in light of the
strong evidence of obviousness based on the Pallmac and
Visy prior art coupled with the near-simultaneous inven-
tion of the Tecasa machine, the Trust’s objective evidence
of non-obviousness, even if fully credited by a jury, would
fail to make a difference in this case.
IV
The parties raise a number of other issues, including
Martin’s standing with respect to damages, the district
court’s denial of the Trust’s Rule 50(b) motion on in-
fringement, and the district court’s ruling as a matter of
law that the Trust failed to establish willful infringement.
Because the asserted claims of the ’566 patent are invalid,
GEO M MARTIN v. ALLIANCE MACHINE 22
those remaining issues are moot. The district court’s
judgment is affirmed.
AFFIRMED