Findings of Fact and Conclusions of Law; Order Entering Judgment for Plaintiff, Asetek Danmark A/S v. CMI USA, Inc., Case No. 13-cv-00457-JST (Judge Jon S. Tigar)
Questions of obviousness can present some of the most difficult and fact-intensive issues in patent litigation, turning on factors that include the scope and content of the prior art, the differences between the prior art and the patented invention, the knowledge of one of ordinary skill, and the so-called secondary considerations of non-obviousness. The latter—which include evidence drawn from a variety of factors such as commercial success, long-felt but unsolved need, and failure of others—can be highly probative of validity at trial, since they provide the jury context as to the value of a patented invention. In addition, secondary considerations of non-obviousness can bolster a patentee's claim of non-obviousness against asserted prior art that was not considered by the examiner during the original prosecution of a patent. How a court or jury evaluates these critical fact findings can, in turn, depend heavily on the credibility of the parties' expert witnesses.
Asetek, a Denmark-based corporation that sells computer liquid cooling systems, recently obtained a jury verdict of patent infringement against CMI, overcoming CMI's contention that Asetek's patents were obvious. The jury concluded that the patents at issue were infringed and not anticipated, and further made predicate factual findings relevant to the question of whether the patents also were obvious. Relying upon these findings to resolve the legal question in Asetek's favor whether the relevant claims were obvious, Judge Jon Tigar's subsequent Findings of Fact and Conclusions of Law highlight the importance of the secondary considerations of non-obviousness to Asetek's victory, as well as the important role of Asetek's expert, Dr. Tilton. The patents-in-suit claim a dual-chambered reservoir bounded by a cold plate. The jury credited Dr. Tilton's testimony that the prior art asserted by CMI disclosed only multiple, separate reservoirs each with its own chamber, rather than a single reservoir composed of two chambers. The jury then made the following fact findings regarding secondary considerations:
- Commercial success: Asetek's commercial liquid cooling products are successful in the marketplace, and this success is tied to the patented features. To establish such nexus, Dr. Tilton disassembled and analyzed Asetek's products to establish that Asetek's products practiced the patents-in-suit, and explained that in his opinion that the products are commercially successful because of the claimed invention rather than for other reasons.
- Long-felt but unresolved need:
Asetek's products addressed a growing need for liquid cooling
systems that would overcome limitations of prior art air-cooling
and liquid-cooling systems.
Unsuccessful attempts by others: Many others in the industry had tried and failed to develop the patented systems. In particular, Corsair had tried to sell similar systems before teaming up with Asetek. Dr. Tilton's company had also tried to design such systems, but was unable to make one that met cost and performance requirements. - Copying: Other entities in the industry, such as Cooler Master and Zalman, copied Asetek's liquid cooling products.
- Unexpected and superior results: Asetek's patented dual-chamber design has many unexpected and superior results over prior art single-chamber designs.
- Acceptance by others of the claimed invention: Asetek's liquid cooling products received recognition and numerous awards from the computer industry and government agencies. Several companies have licensed the patents-in-suit.
Based on these findings of fact, Judge Tigar concluded as a matter of law that neither of the patents-in-suit is obvious.
The outcome of this obviousness battle depended heavily on the relative credibility of the experts. Dr. Tilton wrote his Ph.D. thesis on liquid cooling, has over 20 years of experience developing liquid cooling products for companies such as Intel, HP, Sun, and Cray, and has extensive knowledge of products that existed prior to Asetek's entry into the market. Dr. Tilton's first-hand experience in trying and failing to develop the patented products was also an important factor in the outcome. In contrast, CMI's expert had only a general engineering and material science background and has never worked on computer liquid cooling systems. Accordingly, the Court found Dr. Tilton's testimony to be more credible and gave it greater weight.
In sum, setting forth detailed fact findings regarding secondary considerations are of paramount important in defending an obviousness case, and retaining an expert with the right experience in the relevant industry is key to this effort.
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