United States: An Obviousness Determination May Be Overturned When The Evidence Includes Merely Conclusory Statements About Motivation To Combine Prior Art

In InTouch Technologies, Inc. v. VGo Communications, Inc., No. 13-1201 (Fed. Cir. May 9, 2014), the Federal Circuit affirmed the district court's finding of noninfringement of three asserted patents, affirmed the district court's claim construction, reversed verdicts that two of the asserted patents were invalid for obviousness, and remanded with instructions to vacate the invalidity judgments.  

InTouch Technologies, Inc. ("InTouch") owns U.S. Patent Nos. 6,346,962 ("the '962 patent"); 6,925,357 ("the '357 patent"); and 7,593,030 ("the '030 patent") (collectively "the asserted patents").  The asserted patents are directed to telepresence robots for use in the healthcare industry.  InTouch's system uses a video display, two-way audio, and a camera to permit a user to operate the robot from a remote location via a computer or tablet.  The '357 and '030 patents recite an arbitrator to control access to the robots, and the '357 patent also recites a call back mechanism to inform users who were previously denied access that the robot is available.  In 2012, InTouch filed suit against VGo Communications, Inc. ("VGo"), a company that produces a robot system that a user can control remotely to interact with others in a separate location, alleging infringement of the '357, '030, and '962 patents.  VGo counterclaimed for DJ of noninfringement and invalidity. 

After a five-day jury trial, the jury returned a verdict in favor of VGo, finding noninfringement for all of the asserted patents.  The jury also found independent claim 79 of the '357 patent and claim 1 of the '030 patent invalid for obviousness.  InTouch filed a motion for JMOL or a new trial on the issues of invalidity and noninfringement, which was denied by the district court.  The district court found that there was substantial evidence to support the jury's finding that the VGo system did not perform the "arbitrating" limitation because VGo's system did not include a mechanism for determining which remote station had exclusive control of the robot and did not perform the "call back mechanism" limitation because the VGo system did not send a message to specific users who previously were denied access to a particular robot.  The district court also upheld the jury's obviousness findings, stating that there was substantial evidence in the record to support the verdict, including the testimony of VGo's expert. InTouch appealed.

"Dr. Yanco's testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.  While she opined that the references were like separate pieces of a simple jigsaw puzzle, she did not explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together." Slip op. at 34-35.

On appeal, the Federal Circuit first addressed and upheld the claim construction rulings for the terms "arbitrating" and "call back mechanism."  For the "arbitrating" term, the Court found that the "claim language itself requires that the arbitrator control access to the robot by remote terminals."  Slip op. at 18.  The Court also observed that the "written description explains that the arbitrator needs to 'resolve access requests from various users,'" instead of merely allowing access.  Id. (citation omitted).  For these reasons, the Court held that the district court did not err in construing the "arbitrator" and "arbitrating" terms "to require a determination of which user among multiple users has exclusive control of the robot."  Id. at 19. 

The Court used similar reasoning to uphold the district court's construction of the term "call back mechanism."  The Court again pointed to the plain language of the claim, noting that claim 79 of the '357 patent recites "a call back mechanism that informs a user that was denied access to said mobile robot that said mobile robot can be accessed."  Id. at 20.  According to the Court, the prosecution history also made clear "that the call back mechanism sends a message to call back only those specific users that previously requested access and were denied that access."  Id. at 21-22.  For these reasons, the Court concluded that "the proper construction of the term 'call back mechanism' requires 'a device that sends a message to a specific user or users who previously were denied access to a particular mobile robot that the same mobile robot can now be accessed.'"  Id. at 22. 

The Court next reviewed the jury's noninfringement verdicts and upheld the district court's findings that all three verdicts were supported by substantial evidence.  In upholding the jury's verdicts, the Court pointed to VGo's testimony that its system did not contain an arbitrator.  The Court observed that VGo's system did not decide which user could connect to and control the robot because VGo's system simply gave exclusive control to the first user who requested access to the robot.  The Court also found there was substantial evidence to support a jury's verdict that VGo's system did include a call back mechanism.  The Court noted that VGo submitted testimony that, although its robot included a status indicator to inform users when a previously occupied robot is free, it did not include the ability to distinguish which users had previously been denied access to the robot or which users wanted access to an already-in-use robot.  The Court also examined the evidence to support noninfringement of a third claim limitation, "actuating the camera."  In finding substantial evidence to support the jury's verdict, the Court highlighted VGo's testimony that the camera movement in the VGo system depended on the position of a computer cursor on a computer program, which differed from InTouch's claims that required "mov[ing] the camera in the direction indicated by the pointing device movement."  Id. at 30.  Because the Court's role was to determine whether there was substantial evidence upon which the jury could predicate its noninfringement finding, the Court upheld the district court's affirmance of the jury's noninfringement verdicts. 

The Court next reviewed the jury's invalidity verdicts for claim 79 of the '357 patent and claim 1 of the '030 patent.  Because the jury found the claims invalid, the Court stated that it would uphold the invalidity finding if there was sufficient evidence to support any of the alternative theories of invalidity.  The Court first examined the evidence from VGo's expert, Dr. Yanco, regarding invalidity of the '357 and the '030 patents, and determined that the evidence on which VGo relied was not substantial enough to support an obviousness finding.  According to the Court, Dr. Yanco's testimony was insufficient to support the jury's verdict because Dr. Yanco (1) failed to identify sufficient reasons or motivations to combine the various asserted prior art references; (2) failed to focus on the relevant time frame of 2001, as opposed to the time at which the case was occurring; and (3) failed to consider any objective evidence of nonobviousness.  The Court noted that Dr. Yanco merely testified that the elements of the claims disparately existed in the prior art and could have been combined, but she never provided any rationale why one of ordinary skill would have combined such references.  The Court stated that Dr. Yanco's conclusory references about why a skilled artisan could have combined the references, as opposed to why a skilled artisan would have combined the references, were insufficient to support the jury's obviousness verdict.  For these reasons, the Court held that Dr. Yanco's analysis was "incomplete" and failed to establish obviousness by clear and convincing evidence.  Id. at 41-42.

Lastly, the Court examined whether the district court erred by admitting testimony related to legal opinions from VGo's outside counsel.  Although the Court agreed that the testimony was improper, it held that InTouch failed to establish that the infringement verdict was affected by this error.

For the above reasons, the Court affirmed the judgment of noninfringement for all three asserted patents, affirmed the district court's claim constructions, reversed the findings of invalidity regarding the '357 and the '030 patents, and remanded the case to the district court with instructions to vacate the invalidity judgments.

Judges:  Rader, Lourie, O'Malley (author)

[Appealed from C.D. Cal., Judge Anderson]

This article previously appeared in Last Month at the Federal Circuit, June, 2014.

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