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Olson v. Nieman's Ltd.5/28/1998
se from a patent infringement action where a challenged device conflicts with a patent and thereby causes damages to the patent holder. Here, patentability is inextricably intertwined with the damages issue because Olson is claiming that Nieman destroyed his ability to obtain a patent. By destroying Olson's ability to obtain a patent, Nieman necessarily destroyed Olson's ability to make a formalized claim.
Because Olson could not make a formalized claim against which the prior art could be evaluated, Olson contends Harms did the next best thing. Harms developed what he thought, as a patent expert, was the best definition of Olson's idea and what, to laypersons, would seem a reasonable embodiment of what the claim would have been if not destroyed-the idea and the schematic drawing.
Harms then evaluated each of the patents found in Nieman's three patent searches against his description of Olson's idea: a breakaway switch that sensed the separation of a trailer from a towing vehicle and in response to the separation energized a flasher that caused trailer lights to flash. Harms further testified that none of the patents in evidence affected the patentability of Olson's idea. Harms ultimately testified that Olson's device was patentable.
Olson's damages expert based his opinions on the patentability of Olson's device. Expert testimony on patentability was therefore essential. If Harms' testimony was reliable, it would certainly aid the jury on the patentability issue.
The district court made a judgment call that Harms' testimony was reliable and therefore an aid to the jury on the patentability issue. We think Harms' methodology in reaching his opinion on patentability was reasonable and therefore reliable. We see nothing in Harms' testimony requiring us to disturb the district court's decision. See DeBurkarte v. Louvar, 393 N.W.2d 131, 138 (Iowa 1986) (holding that admission of expert testimony rests in discretion of district court and appellate court will not reverse absent abuse of discretion).
1. Nonobviousness. 35 U.S.C. ยง 103 provides:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Nieman correctly points out that under this statute nonobviousness is one of the three criteria for patentability. Graham v. John Deere Co., 383 U.S. 1, 12- 14, 86 S. Ct. 684, 691-92, 15 L. Ed. 2d 545, 553-54 (1966). The question boils down to whether the invention as a whole would not have been obvious to one of ordinary skill in the art at the time the device was made. Id. at 14, 86 S. Ct. at 692, 15 L. Ed. 2d at 554.
Whether a device is nonobvious is a conclusion of law based upon fact determinations. Id. at 17-18, 86 S. Ct. at 694, 15 L. Ed. 2d at 556; Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 692, 695 (Fed. Cir. 1983). The fact determinations are (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the pertinent art, and (4) additional evidence that may serve as indicia of nonobviousness. Environmental Designs, 713 F.2d at 695. There are also secondary considerations that are relevant on the question of nonobviousness: commercial success, long felt but unresolved needs, and failure of o
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