After 10 years of litigation and three appeals, the U.S. Court of Appeals for the Federal Circuit found Asyst's patent on a system for tracking semiconductor wafers in a manufacturing process invalid as obvious and found that Asyst's evidence on secondary considerations did not overcome a strong case of obviousness. Asyst Technologies, Inc. v. Emtrak, Inc., Case No. 07-1554 (Fed. Cir., Oct. 10, 2008) (Bryson, J.).
A jury found Asyst's patent valid and infringed. The district court, however, granted judgment as a matter of the law (JMOL) that the patent was invalid for being obvious in light of a prior art patent. The Federal Circuit affirmed. According to the Court, the only material difference between the Asyst patent and the prior art patent was that the prior art disclosed a bus for transmitting communications between processing stations and a central control unit, whereas the Asyst patent provided a multiplexer that selectively directed communications to the particular processing unit to which a communication was addressed. The Asyst patent was obvious because multiplexers and buses were the two common ways for connecting electronic system components and the choice between the two was a familiar one based on well-known considerations. Relying upon KSR, the Court found the Asyst patent invalid because the multiplexer was nothing more than"the simple substitution of one known element for another" and such substitution was not beyond the skills of a person having ordinary skill in the art.
The Federal Circuit further found that Asyst's objective indicia on non-obviousness—commercial success, long-felt need and industry praise—were not linked to the multiplexer, i.e., the feature of the invention missing in the prior art. The Court further noted that "evidence of secondary considerations does not always overcome a strong prima facie showing of obviousness." The Court then indicated that Asyst's evidence failed to overcome the strong case of obviousness presented by the prior art patent. Finally, the Federal Circuit found that the district court properly admitted new evidence on invalidity after the Federal Circuit changed the claim scope in a prior appeal dealing with claim construction issues.
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