The opinion of the court was delivered by: JAMES H. ALESIA
Plaintiff Remcor Products Co. sued defendants Scotsman Group, Inc. and Booth, Inc. for infringing United States Patents No. 4,300,359 (the '359 patent) and Re. 34,465 (the '465 patent). Each is entitled "Cold Plate System for Ice Dispenser". We refer to both collectively as the '359 patents. Presently before the court is defendants' Motion for Summary Judgment. Defendants' sole contention in support of the motion is that the '359 patents are invalid as obvious.
While the ultimate question of patent validity is one of law, the conclusion that an invention would not have been obvious is dependent upon several basic factual inquiries. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S. Ct. 684, 693, 15 L. Ed. 2d 545 (1966). Therefore, a district court can properly grant, as a matter of law, a motion for summary judgment on patent invalidity when the factual inquiries into obviousness present no genuine issue of material facts. FED. R. CIV. P. 56(c).
A patent is invalid as obvious
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.
35 U.S.C. § 103. In determining whether an invention would have been obvious at the time it was made, section 103 requires a court (1) to determine the scope and content of the prior art; (2) to ascertain the differences between the prior art and the claims at issue; and (3) to resolve the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17, 86 S. Ct. at 693. "Such secondary considerations as commercial success, long felt but unsolved needs, [and] failure of others" to invent are also relevant to the obviousness inquiry. Id. at 17-18, 86 S. Ct. at 693-94. Since the facts to support a conclusion of invalidity of an issued patent must be proved by clear and convincing evidence, this standard must be applied by the court in deciding whether requirements have been met for summary determination of obviousness. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S. Ct. 2505, 2512, 91 L. Ed. 2d 202 (1986).
I. FACTUAL DETERMINATIONS
A. Scope and Content of Prior Art
To determine the scope and content of the prior art, the court must first determine what constitutes the relevant art. One basis for determining whether art is analogous is to look at whether it deals with a problem similar to that being addressed by the inventor. Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1572 (Fed. Cir. 1984). To be considered in determining obviousness, the prior art must be "reasonably pertinent to the particular problem with which the inventor was involved." Union Carbide, 724 F.2d at 1572.
In support of their motion, defendants assert that three prior patents render the claims of the '359 patents obvious: (1) Patent No. 1,372,135 issued to C.K. Green entitled "Water Cooler" ("the Green patent"), (2) Patent No. 1,596,865 issued to G.L. Bennett entitled "Ice Box" ("the Bennett patent") and (3) Patent No. 3,217,509 issued to Albert G. Weil entitled "Ice Making and Vending Apparatus" ("the Weil patent"). The Green patent and the Bennett patent are cited in the '359 patents as related references. The Examiner did not cite the Weil patent as a reference. Defendants assert that the Weil patent is prior art which must be considered in the obviousness determination. Plaintiff does not disagree. See Pl.'s Mem. of Law in Opp. to Defs.' Mot. for Summ. J., at p. 6. The court agrees with the parties that the Weil patent is analogous prior art. The court, therefore, must determine the scope and content of the Weil patent, the Green patent and the Bennett patent.
The claims of these three patents disclose most or all of the elements of the '359 claims. The Green patent discloses the use of a cold plate in the bottom of an ice container. Water is flowed through the cold plate to provide cold drinking water. See Mem. in Supp. of Defs.' Mot. for Summ. J., at 3-4 and Ex. E (the Green patent). The Bennett patent claims an ice box comprising two chambers separated by a manually operated, slidable door through which ice can fall into the lower chamber. See Mem. in Supp. of Defs'. Mot. for Summ. J., at 4 and Ex. F (the Bennett patent). The Weil patent discloses a device comprising freezing plates for forming ice, a crusher assembly to crush the ice, a dispenser to dispense the crushed ice, a hopper for storing the ice, an extra storage compartment below the hopper, a dump valve to allow ice from the upper compartment to travel to the lower storage compartment, and an agitator to maintain the crushed ice in a free-flowing condition. See Weil Patent, Ex. H to Defs.' Mot. for Summ. J., cols. 12-14.
A review of the descriptions and objects of the references can also assist in determining the scope and content of the prior art. See In re Van Mater, 52 C.C.P.A. 1076, 341 F.2d 117, 120-21 (CCPA 1965) (reference discloses what it suggests to person of ordinary skill in the art); Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1576 (Fed. Cir. 1991) (must look to a teaching or suggestion in the references to support their use in the particular claimed invention). The Green Patent states that the object of the invention is to provide a sanitary water cooler wherein the drinking water will not come in contact with the ice. Green Patent, Ex. E in Supp. of Defs.' Mot. for Summ. J., at col. 1, lines 8 to 24. Bennett describes an ice box for refrigeration in which one chamber holds stored ice which has no effect on refrigeration and another chamber holds the ice actually used to refrigerate. Bennett Patent, Ex. F in Supp. of Defs.' Mot. for Summ. J., at col. 1, lines 1 to 11. Bennett further provides means for the two separate chambers to be in communication such that the user can easily take ice from storage chamber and put it into the refrigeration chamber. Id., lines 28 to 40. The object of the Weil patent was to provide an improved, compact, commercial ice-making and vending machine. See Bennett Patent, Ex. H. in Supp. of Defs.' Mot. for Summ. J., at col. 1, lines 25 to 32. The Weil patent contemplates that the claimed device can be used in conjunction with a drink vending machine. Id., col. 1, lines 30-32.
B. Differences Between the Prior Art and the Claims at Issue
The independent, and broadest, claims of the '359 patents disclose the following. Claim 1 of the '359 patents claims:
In combination with an ice dispenser of a type having
(a) a hopper for storage of a mass of small particles of ice and
(b) means for dispensing ice from said hopper,
(c) a container for holding a ...