Talk:Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)

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The key issue tried was the presence or absence of sufficient proof of a motivation to combine the four prior art references. The Board had found that one skilled in the art (1) “would have considered Johnson's dead-bolt-type locking device to be disadvantageous compared to the Moore and WuROC devices to the extent that Johnson requires a key for setting in position and adjusting the device,” and (2) “would have been motivated to make Johnson easier to use, albeit less secure, by replacing the dead-bolt mechanism” of Johnson with a suitable self-locking ratcheting mechanism. The district court found that these factual findings were “clearly erroneous” and found that adequate motivation to combine the references was not shown. See Winner, 11 F.Supp.2d at 23-24, 48 USPQ2d at 1143-44. The district court also found that Winner established commercial success resulting from the improvement claimed in the '047 patent, even though it held such a finding immaterial in light of Wang's failure to establish a prima facie case of obviousness. See id. Accordingly, the district court held that on this record the inventions of claims 2 and 4 of the '047 patent would not have been obvious and overturned the Board's decision as to those claims. See id. at 25, 48 USPQ2d at 1145.

The issue before us is whether the scope of the evidence admitted by the district court was sufficient to require a complete trial de novo, or whether the district court was instead required to give deference to some or all of the Board's findings of fact. Although our precedent makes clear that a de novo trial is appropriate in some circumstances in actions under both section 146 and the parallel provisions in 35 U.S.C. § 145, it does not make clear exactly what those circumstances are. The statutory provisions themselves offer little guidance-section 146 only refers to “further testimony” which may be offered in the district court, while section 145 is completely silent about evidence. See 35 U.S.C. § 146; 35 U.S.C. § 145. In Zurko, the Supreme Court, in passing, noted the settled law that in a section 145 action a disappointed applicant may present evidence*1346 that it did not present to the Board, and that the “presence of such new or different evidence makes a factfinder of the district judge.” 119 S.Ct. at 1824 (emphasis added). Interpreting both sections, we have referred to the ability to present “new testimony” or “proffered testimony” or “additional evidence.” Conservolite, 21 F.3d at 1102, 30 USPQ2d at 1629 (“new testimony”); Case, 730 F.2d at 752, 221 USPQ at 202 (finding that section 146 “authorizes the district court to accept all proffered testimony on issues raised by the parties during the proceedings below or by the board's decision.”); Gould, 822 F.2d at 1079, 3 USPQ2d at 1305 (“[A]dditional evidence is permitted in a civil action under section 145, allowing the district court to make de novo fact findings.”); Fregeau v. Mossinghoff, 776 F.2d 1034, 1038, 227 USPQ 848, 851 (Fed.Cir.1985) (using “additional evidence” and “new evidence” interchangeably); cf. Newman v. Quigg, 877 F.2d 1575, 1579, 11 USPQ2d 1340, 1343 (Fed.Cir.1989) (“A district court action under 35 U.S.C. § 145 is a de novo determination of patentability. It is not limited to the record before the PTO.”). It is not clear from these cases, however, when evidence is “new or different” or “additional” so that trial de novo is required.

The dispute here focuses on the combinability of the prior art. When an obviousness determination is based on multiple prior art references, there must be a showing of some “teaching, suggestion, or reason” to combine the references. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579, 42 USPQ2d 1378, 1383 (Fed.Cir.1997) (also noting that the “absence of such a suggestion to combine is dispositive in an obviousness determination”). Whether motivation to combine the references was shown we hold a question of fact. See In re Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed.Cir.1999) (“[P]articular factual findings regarding the suggestion, teaching, or motivation to combine serve a number of important purposes ....”) (emphasis added); Monarch Knitting, 139 F.3d at 881-83, 886, 45 USPQ2d at 1982, 1985 (treating motivation to combine issue as part of the scope and content of the prior art and holding that genuine issues of fact existed as to whether one of ordinary skill in the art would have been motivated to combine the references in question).

The district court did not clearly err in its findings of fact with respect to its obviousness analysis and did not err in concluding that the invention of the '047 patent would not have been obvious. In addition, the district court did not abuse its discretion in admitting testimony and documents or in refusing to transfer the *1353 case. Accordingly, the judgment of the district court is AFFIRMED.