Appeal from the United States District Court for the Southern District of Ohio in No. 2:04-cv-01223-GLF-MRA, Judge Gregory L. Frost.
John David Luken, Dinsmore & Shohl LLP, Cincinnati, OH, argued for plaintiff-appellant. Also represented by Joshua A. Lorentz, Brian S. Sullivan.
Ronald A. Christaldi, Shumaker, Loop & Kendrick LLP, Tampa, FL, argued for defendant-cross-appellant. Also represented by Mindi M. Richter, David Wayne Wicklund, Toledo, OH.
Before Dyk, Bryson, and Wallach, Circuit Judges.
Bryson, Circuit Judge.
This case marks the latest chapter in a long-running dispute between two manufacturers of prosthetic limb accessories. The appellant, The Ohio Willow Wood Company ("OWW"), owns a group of patents directed to cushioning devices that fit over the residual stumps of amputated limbs to make the use of prosthetics more comfortable. OWW has asserted its patents against defendant Alps South, LLC ("Alps") in several actions.
The cushioning devices at issue in this case consist of stretchable pieces of synthetic fabric that are coated with a gel on only the side touching the body. That design creates a gel side that reduces irritation to the skin and a dry side that allows free interaction with the prosthesis.
This case is back before us following an earlier decision remanding a portion of the case for trial. See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013). The facts and legal issues that we addressed then are similar to those presented in this appeal, so we offer an abbreviated version of the background facts, focusing mainly on the analysis of the district court's findings of fact and conclusions of law in the remand proceedings.
OWW filed the present action in 2004, charging Alps with infringement of U.S. Patent No. 5, 830, 237 ("the '237 patent"). After the district court issued a claim construction order, Alps challenged the validity of the '237 patent in two successive ex parte reexamination proceedings before the Patent and Trademark Office ("PTO"). The district court stayed the litigation pending the resolution of the reexamination proceedings.
The first reexamination, initiated in 2006, focused on advertisements for a prior art cushioning device called the Silosheath, which was made by Silipos, Inc., one of OWW's competitors. The Silosheath consisted of a sheath made of nylon fabric with gel material on the inner side. The examiner initially rejected all the challenged claims of the '237 patent based on the Silosheath prior art. OWW overcame the rejection by showing the examiner a Silosheath product in which the gel on the inner or skin side of the liner had bled through to the outer or prosthetic side. The examiner then allowed OWW to amend its claims to clarify that the gel coating was found only on the inner side of its claimed device and issued a reexamination certificate.
In 2008, shortly after the completion of the first reexamination, Alps initiated a second reexamination. The new request for reexamination was based on an advertisement in a trade magazine published on January 1, 1995, which depicted a gel liner identified as the Single Socket Gel Liner ("SSGL"), from Silipos's "Silosheath product line." Alps argued that the SSGL was invalidating prior art because it had gel on its inner surface, but not on its outer surface. The central issue in the second reexamination was whether the synthetic fabric used in the SSGL prevented the gel on the skin side of the liner from bleeding through to the prosthetic side.
In addition to the advertisement, Alps presented a declaration and deposition testimony from Jean-Paul Comtesse, who worked at Silipos when the Silosheath and the SSGL were developed. Mr. Comtesse stated that the SSGL did not have the same gel bleed-through problem as the Silosheath because it was manufactured from a fabric called "Coolmax" that was thicker and denser than the fabric used in the Silosheath. Alps argued that, in light of the prior art evidence and Mr. Comtesse's testimony, it was clear that the amended claims were invalid.
The examiner agreed with Alps and rejected the claims of the '237 patent for obviousness in light of the SSGL and other prior art. OWW appealed the rejection to the Board of Patent Appeals and Interferences ("the Board"). In its brief to the Board, OWW argued that Mr. Comtesse's testimony was unreliable because it was uncorroborated and because Mr. Comtesse was a highly interested witness. As to Mr. Comtesse's interest in the case, OWW argued that he was the inventor of the SSGL and that he continued to receive royalties on that product. As to the absence of corroboration, OWW argued that aside from Mr. Comtesse's testimony the only evidence relating to the SSGL was the 1995 advertisement, which contained no reference to Coolmax. According to OWW, there was "no other evidence of any sort in this regard, " and because "the Comtesse testimony is not corroborated as required it cannot be properly used to cure the very deficiencies in the [1995 advertisement] for which corroboration is lacking."
In oral argument before the Board, OWW pressed its contention that there was no evidence corroborating Mr. Comtesse's testimony about the SSGL. OWW also continued to argue that Mr. Comtesse was an interested witness, asserting that he was an inventor of the SSGL and was still receiving royalties from Silipos's sales of that product.
The Board reversed the examiner's rejection. The Board agreed with OWW that Mr. Comtesse's testimony was uncorroborated and that he was an interested third party. Based on those conclusions, the Board held that the examiner had erred in crediting Mr. Comtesse's testimony that the SSGL was made of Coolmax and had gel on only its inner side.
Following the second reexamination, the district court lifted the stay of the litigation. The court then granted Alps's motion for summary judgment of invalidity as to all the asserted claims of the '237 patent. The court invalidated some of the claims based on the collateral estoppel effect of a decision against OWW in a case from a different district court. It invalidated the remaining claims for obviousness based on the Silosheath, the SSGL, and other prior art references. The court also addressed Alps's inequitable conduct claim, which was predicated on OWW's conduct before the PTO during the two reexamination proceedings. As to that claim, the court granted summary judgment to OWW, holding that there was no triable issue of inequitable conduct on OWW's part.
Both sides appealed. This court affirmed the summary judgment of invalidity. With respect to inequitable conduct, however, we concluded that the case presented genuine issues of material fact. Accordingly, we reversed the summary judgment of no inequitable conduct and remanded the ...