Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.

United States Court of Appeals for the Federal Circuit

04-1493

PRINCETON BIOCHEMICALS, INC.,

Plaintiff-Appellant,

v.

BECKMAN COULTER, INC.,

Defendant-Appellee.

William G. Todd, Greenberg Traurig, LLP, of New York, New York, argued for
plaintiff-appellant. With him on the brief was Scott J. Bornstein.

Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, of Irvine, California, argued
for defendant-appellee. With him on the brief were Darrell L. Olson, Douglas G.
Muehlhauser, and Christy G. Lea.

Appealed from: United States District Court for the District of New Jersey

Judge Mary L. Cooper
United States Court of Appeals for the Federal Circuit
04-1493

PRINCETON BIOCHEMICALS, INC.,

Plaintiff-Appellant,

v.

BECKMAN COULTER, INC.,

Defendant-Appellee.

___________________________

DECIDED: June 9, 2005
___________________________

Before RADER, SCHALL, and GAJARSA, Circuit Judges.

RADER, Circuit Judge.

In the United States District Court for the District of New Jersey, a jury

found in favor of Plaintiff-Appellant Princeton Biochemicals, Inc. (Princeton),

rejecting the claims of Defendant-Appellee Beckman Coulter, Inc. (Beckman) that

Princeton’s U.S. Patent No. 5,045,172 (the ‘172 patent) is invalid by reason of

obviousness and prior invention, and finding that Beckman infringed the ‘172

patent. On all three questions, however, the district court found the jury’s verdict

unsupported by substantial evidence and granted judgment as a matter of law

(JMOL) in favor of Beckman. Princeton Biochemicals, Inc. v. Beckman Coulter,

Inc., No. 96-5541 (MLC), 2004 WL 1398227 (D.N.J. June 17, 2004). Because

the district court properly concluded that substantial evidence did not support the

jury’s verdict of nonobviousness, this court affirms.
 I.

Dr. Norberto Guzman is the inventor of the ‘172 patent, which he assigned

to Princeton. The ‘172 patent claims a capillary electrophoresis device.

Electrophoresis is one method available for the investigation of biological

materials, and is an efficient procedure for the separation and detection of

proteins and other matter. ‘172 patent, col. 1, ll. 16-20. Electrophoretic

separation, one species of electrophoresis, relies on the differential speeds of the

migration of differently charged particles in an electric field. Id. at col. 1, ll. 21-23.

Capillary electrophoresis is one type of electrophoretic separation. Id. at col. 1, ll.

17-20. As the ‘172 patent describes,

[I]t is generally known that a material, containing mixtures of
substances to be analyzed, can be passed along a capillary tube
and through a detector under the influence of an applied voltage.
The applied voltage charges the substances and the charges on
the substances determine their spacing and their speed of passage
along the capillary tube.

Id. at col. 2, ll. 32-38. Capillary tubes, generally made of quartz, range in lengths

of roughly 10 to 100 centimeters and 25-200 microns in diameter. Id. at col. 1, ll.

50-58. Due to the dimensions of a tube, capillary electrophoresis requires only a

minute sample size to efficiently separate and identify the components of a

solution.

Claim 32 of the ‘172 patent claims a specific capillary electrophoresis

device:

Capillary electrophoresis apparatus comprising a capillary tube of
the type which can be electrically charged, said capillary tube
having first and second ends,

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 first means at said first end of said capillary tube providing a source
of buffer solution and a source of a sample substance to be
analyzed,

second means coupled to said apparatus for applying electrical
potential across said capillary tube whereby a sample flows through
said capillary tube and past said detector,

said first means includes a rotatable table carrying a plurality of
sample cups and a holder for holding an end of said capillary tube
in operative relation with one of the said cups, said cups containing
either buffer solution or a sample to be analyzed, and

said capillary tube is in the form of a coil of glass tubing [secured to
a support member].∗

Id. at col. 23, ll. 30-47 (emphases added). The parties stipulated that claim 32

contains eight elements, as follows:

Capillary electrophoresis apparatus comprising:
(1) a capillary tube of the type which can be electrically
charged,
(2) said capillary tube having first and second ends,
(3) first means at said first end of said capillary tube
providing a source of buffer solution and a source of
sample substance to be analyzed,
(4) second means coupled to said apparatus for applying
electrical potential across said capillary tube whereby
a sample flows through said capillary tube and past
said detector,
(5) said first means includes a rotatable table carrying a
plurality of sample cups and
(6) a holder for holding an end of said capillary tube in
operative relation with one of the said cups, said cups
containing either buffer solution or a sample to be
analyzed, and
(7) said capillary tube is in the form of a coil of glass
tubing
(8) secured to a support member.
Id.
∗
The words “secured to a support member” are not present in the
final, published version of the ‘172 patent. The parties stipulated at trial that this
was a printing error only. Those words appear in claim 32 as issued.

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 Beckman manufactures and sells the P/ACE 2000 and 5000 Series

capillary electrophoresis devices (“the accused devices” or “the P/ACE devices”).

Beckman contends a prototype device, named OTEP II, contained all the

elements recited in claim 32. Princeton does not contest that Beckman made

OTEP II by February 1, 1987. That date, therefore, is the relevant reduction-to-

practice date for the P/ACE devices. Beckman began selling P/ACE devices as

early as 1993.

Guzman filed the application for the ‘172 patent on November 14, 1988.

Thus, the critical date for evaluating 35 U.S.C. § 102(b) prior art references is

November 14, 1987. Several references, published before November 14, 1987,

discussed the electrophoretic concepts embodied in claim 32 of the ‘172 patent.

Two particular references stand out. The first, an article by Honda dated

September 1987, describes ways to introduce automatically different samples

into a capillary electrophoresis device. Susumu Honda, et. al., “Evaluation of an

Automatic Siphonic Sampler for Capillary Zone Electrophoresis,” Int’l J. on

Chromatography, Electrophoresis and Related Methods. The second, a Ph.D.

thesis by Lukacs, was published in 1983 by a graduate student of Dr. James W.

Jorgenson, an expert who testified on behalf of Beckman. The Lukacs thesis

discloses the coiling of capillary tubes during electrophoretic work. Coiling a

capillary tube lengthens the tubing without increasing the size of the

electrophoretic device. A longer tube provides better separation and

identification of analytes.

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 On November 21, 1996, Princeton filed suit, alleging that the P/ACE

devices infringed claim 32 of the ‘172 patent. Beckman denied infringement and

sought a declaration of invalidity on grounds of obviousness and prior invention.

Following a grant of summary judgment of noninfringement, Princeton appealed.

In an unpublished opinion, this court reversed, holding that the district court had

improperly construed the sixth element in claim 32. Princeton Biochemicals, Inc.

v. Beckman Instruments, Inc., 1999 WL 641233, at *6 (Fed. Cir. 1999) (“The

proper interpretation of the holder limitation is that ‘in operative relation’

encompasses both vertical movement of the holder as well as vertical movement

of the sample cups and the table.”).

On remand, the district court conducted a nine-day trial followed by

motions for JMOL from both parties. The district court reserved judgment until

after the jury verdict. The jury decided in favor of Princeton on all issues.

Specifically, the jury found that Princeton proved by a preponderance of the

evidence that Beckman’s devices infringed claim 32 of the ‘172 patent; that

Beckman did not prove by clear and convincing evidence that claim 32 of the

patent was invalid for obviousness; and finally, that Beckman did not prove “by

clear and convincing evidence that claim 32 is invalid because the invention

described in that claim was made by Beckman before it was made by Princeton.”

Beckman timely renewed its JMOL motion and moved alternatively for a new

trial.

In due course, the district court issued a carefully composed, 194-page

opinion that set aside the jury’s verdict and found all counts in favor of Beckman.

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Princeton Biochemicals, Inc., 2004 WL 1398227. The district court also granted

Beckman’s motion for a new trial. Id. at *91. Princeton timely appealed to this

court. This court has jurisdiction under 28 U.S.C. § 1295(a)(1).

II.

"The grant or denial of a motion for judgment as a matter of law is a

procedural issue not unique to patent law, reviewed under the law of the regional

circuit in which the appeal from the district court would usually lie." Summit

Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. Cir. 2004). Under the law of

the Third Circuit, review of a district court's ruling on JMOL is plenary.

Shellenberger v. Summit Bancorp, Inc., 318 F.3d 183, 186 (3rd Cir. 2003). The

party requesting the JMOL must show that substantial evidence did not support

the jury’s findings, where substantial evidence is “such relevant evidence from

the record taken as a whole as might be accepted by a reasonable mind as

adequate to support the finding under review.” Tex. Instruments Inc. v. Cypress

Semiconductor Corp., 90 F.3d 1558, 1563 (Fed. Cir. 1996). This court must

also consider all the evidence before the jury and draw all reasonable inferences

in favor of the prevailing party on that issue, i.e., the non-movant. Richardson-

Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997). Regarding the

obviousness issue in this case, this court must determine whether the jury had

substantial evidence upon which to conclude that Beckman met its burden of

showing invalidity by clear and convincing evidence.

This court also reviews the legal standards that the jury applied in

reaching its verdict to determine whether they were correct as a matter of law.

04-1493 6
Markman v. Westview Instruments, Inc., 52 F.3d 967, 975 (Fed. Cir. 1995) (en

banc), aff’d, 517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996). When

reviewing a jury’s verdict on obviousness the court reviews the “conclusions on

obviousness, a question of law, without deference, and the underlying findings of

fact, whether explicit or implicit within the verdict, for substantial evidence.” LNP

Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1353 (Fed. Cir.

2001). Specifically, the jury is presumed to have “resolved the underlying factual

disputes in favor of the verdict winner and [this court leaves] those presumed

findings undisturbed if they are supported by substantial evidence”. Jurgens v.

McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991).

III.

Section 103 of title 35 of the United States Code states:

A patent may not be obtained . . . 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) (2000). The legal conclusion, that a claim is obvious within

§ 103(a), depends on at least four underlying factual issues: (1) the scope and

content of the prior art; (2) differences between the prior art and the claims at

issue; (3) the level of ordinary skill in the pertinent art; and (4) evaluation of any

relevant secondary considerations. See Graham v. John Deere Co. of Kansas

City, 383 U.S. 1, 17 (1966). Analyzing the record support for those factors for

Beckman’s Rule 50(b) motion, the trial court concluded that claim 32 was

obvious. Thus, the court granted Beckman’s motion for JMOL, set aside the jury

04-1493 7
verdict rejecting the obviousness challenge, and entered judgment invalidating

claim 32.

There is no dispute that the references introduced at trial disclosed every

element in claim 32. Guzman admitted this in his testimony at trial. Thus, aside

from the relevance of the asserted references, the only disputed issue at trial,

and asserted on appeal, was whether there was motivation to combine the

elements already present in the prior art. As this court outlined in Ruiz v. A.B.

Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004), in making the assessment of

differences between the prior art and the claimed subject matter, section 103

specifically requires consideration of the claimed invention “as a whole.”

Inventions typically are new combinations of existing principles or features.

Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 698 (Fed. Cir. 1983) (noting

that “virtually all [inventions] are combinations of old elements”). The “as a

whole” instruction in title 35 prevents evaluation of the invention part by part.

Ruiz, 357 F.3d at 1275. Without this important requirement, an obviousness

assessment might successfully break an invention into its component parts, then

find a prior art reference corresponding to each component. Id. This line of

reasoning would import hindsight into the obviousness determination by using

the invention as a roadmap to find its prior art components. Further, this

improper method would discount the value of combining various existing features

or principles in a new way to achieve a new result - often the essence of

invention. Id.

04-1493 8
 Contrary to this reasoning, section 103 requires assessment of the

invention as a whole. Id. This “as a whole” assessment of the invention requires

a showing that an artisan of ordinary skill in the art at the time of invention,

confronted by the same problems as the inventor and with no knowledge of the

claimed invention, would have selected the various elements from the prior art

and combined them in the claimed manner. Id. In other words, section 103

requires some suggestion or motivation, before the invention itself, to make the

new combination. See In re Rouffet, 149 F.3d 1350, 1355-56 (Fed. Cir. 1998).

In setting aside the jury’s verdict and holding claim 32 obvious, the district

court systematically and vigilantly considered the relevant prior art references

and testimony of both parties. The Honda article relates to claim 32’s first six

elements and describes an automated capillary electrophoresis device with a

rotatable table carrying a plurality of sample cups. Princeton does not contest

that the Honda article discloses elements one through six. Therefore, at the time

of Princeton’s claim 32 invention, the prior art had disclosed elements one

through six.

With respect to the seventh element, the district court found that the

Lukacs thesis disclosed the construction and use of a coiled glass capillary in a

capillary electrophoresis apparatus. Princeton Biochemicals, Inc., 2004 WL

1398227, at *40. Additionally, Dr. Jorgenson testified about Ms. Lukacs’s work

with coiled capillaries based on his own observations in the laboratory with Ms.

Lukacs. He noted that they coiled glass capillaries that were two to three meters

and longer. Id. at *24. In light of the Lukacs thesis, Dr. Guzman conceded at

04-1493 9
trial that he was not the first to coil a capillary in an electrophoresis device. Id. at

*40. Therefore, at the time of Princeton’s claim 32 invention, element 7 was also

known in the prior art.

Element 8 of claim 32 recites the requirement that the capillary tube of

claim 32, in the form of glass tubing, must be “secured to a support member.” At

trial, Dr. Guzman testified that he did not invent “securing capillary tubes or any

portion thereof to support members” and did not deny that this element was “old”

or that it did not “add” anything new to the claim. From this, the district court

correctly concluded that element 8 was known in the prior art. Id. at *40.

Furthermore, in its brief to this court, Princeton conceded that elements one

through eight were separately known in the prior art.

As discussed, simply identifying all of the elements in a claim in the prior

art does not render a claim obvious. Ruiz, 357 F.3d at 1275. Instead section

103 requires some suggestion or motivation in the prior art to make the new

combination. Rouffet, 149 F.3d at 1355-56. A suggestion or motivation to modify

prior art teachings may appear in the content of the public prior art, in the nature

of the problem addressed by the invention, or even in the knowledge of one of

ordinary skill in the art. SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225

F.3d 1349, 1356 (Fed. Cir. 2000).

Dr. Jorgenson testified that the motivation to combine these references

was found in the knowledge of those skilled in the art at the time of Guzman’s

invention. See SIBIA Neurosciences, Inc., 225 F.3d at 1356 (stating that

04-1493 10
motivation, suggestion or reason to combine items of prior art may come from the

knowledge of one of ordinary skill in the art). As Jorgenson explained:

[T]he combination is obvious. Every one of the individual ideas is
obvious. And the combination is absolutely obvious. Everybody in
all of the related fields in all of the related technologies is doing
those kinds of things . . . . The entire package taken together is
obvious.

Id. Princeton offered no evidence to rebut Dr. Jorgenson’s testimony.

Dr. Jorgenson’s testimony on motivation to combine is unrebutted.

Moreover, it is consistent with the prior art introduced at trial. The only additions

to the Honda prior art in this invention were coiling the capillaries (Lukacs prior

art) and supporting the coils (concededly prior art). Both of those simple

additions appear in other prior art references. Thus, Dr. Jorgenson testified,

without any rebutting evidence in the record, that the suggestion to coil and

secure the capillaries in the Honda device was within the knowledge of one of

skill in the art. In In re Lee, this court expressed skepticism about invoking the

knowledge of a skilled artisan to supply the motivation to combine on a scanty

record. 277 F.3d 1338, 1343-44 (Fed. Cir. 2002) (“This factual question of

motivation . . . could not be resolved on subjective belief and unknown

authority.”). Dr. Jorgenson supplied detailed analysis of the prior art and the

reasons that one of ordinary skill would possess knowledge and motivation to

combine these simple elements.

In addition, the nature of the problem supplies a motivation to combine

these prior art references. The district court provided a detailed analysis of the

nature of the problem solved by the invention. Princeton Biochemicals, Inc.,

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2004 WL 1398227, at *37-40. The problem was lengthening and securing the

capillaries on the Honda automatic device to produce better separation. Id. at

*38. The prior art Lukacs thesis stated that lengthening was precisely the reason

for coiling. Id. at *39. With regard to securing, Dr. Osborne, a Beckman witness,

testified about the problem of a capillary electrophoresis device whose capillary

swayed during use and affected the separation result. Id. Dr. Osborne

observed: “[W]e did not want the capillary to move during the separation.” Id. In

other words, the nature of the problem called for exactly the solutions in the prior

art. Moreover the nature of the problem, as noted again in Dr. Jorgenson’s

testimony, called for the combination. Dr. Jorgenson observed that the problem

called for coiled electrophoresis tubes, including capillary tubes, secured in place

in a variety of ways. Id. He also testified that one of ordinary skill in the art at the

time of the invention would know to coil a capillary to save space. Id. Regarding

the securing of a capillary tube to a support member, Dr. Jorgenson also testified

that it would be obvious to one of ordinary skill in the art to do so, as “you don’t

want a coil floating around without some kind of support.” Id. Thus, the nature of

the problem also supplies a motivation to make this combination of closely

related prior art elements.

The district court also properly found that the references for this

obviousness analysis were proper prior art. A reference is appropriate prior art if

within the field of the inventor’s endeavor. Bausch & Lomb, Inc. v. Barnes-

Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986). Alternatively, a

reference qualifies as prior art if “reasonably pertinent to the particular problem

04-1493 12
with which the inventor was involved.” Id. “A reference is reasonably pertinent if,

even though it may be in a different field of endeavor, it is one which, because of

the matter with which it deals, logically would have commended itself to an

inventor’s attention in considering his problem.” In re GPAC Inc., 57 F.3d 1573,

1578 (Fed. Cir. 1995) (quotations and citations omitted). If a reference’s

disclosure relates to the same problem as the claimed invention, “that fact

supports use of that reference in an obviousness rejection.” In re Clay, 966 F.2d

656, 659 (Fed. Cir. 1992).

In this case, all the references for obviousness constitute analogous art,

even though some of the references fall within the related field of liquid

chromatography. Throughout the prosecution history of the ‘172 patent, the

examiner consistently rejected elements one through six of claim 32 as obvious,

citing references ranging from capillary electrophoresis to liquid chromatography

- a related means of separating analytes. The examiner stated on the record:

“[L]iquid chromatography and capillary electrophoresis are closely related

techniques.” The district court also itemized other references in the chemical

separations field, describing the relation to electrophoretic separation or

chromatography or both. Princeton Biochemicals, Inc., 2004 WL 1398227, at

*36-37. The district court further established that capillary electrophoresis is

closely related to the types of electrophoreses described in some of the

references. Id. at *37. Finally, Dr. Jorgenson offered expert testimony that one

of ordinary skill in the art would look to these related fields to solve problems in

the field of capillary electrophoresis. Id. at *37.

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 The district court also examined whether the prior art references were

reasonably pertinent to the particular problems with which the invention of claim

32 was involved. Id. at *37-39. In defining such problems, the district court

looked to Dr. Guzman’s own testimony that the electrophoretic device needed to

be compact and immobile. Id. at *38. As already noted, the district court

properly assessed that the prior art references addressed those same problems

in the same way. Id. at *39. In sum, the district court used proper prior art

references in its correct obviousness analysis.

Viewing the evidence as a whole and in a light most favorable to

Princeton, this court agrees with the district court that there was not substantial

evidence to support the jury verdict. Because claim 32 is invalid for obviousness,

this court need not reach the issues of prior invention and infringement.

COSTS

Each party shall bear its own costs.

AFFIRMED

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