Based on the evidence presented, the court cannot determine whether or not the Examiner reviewed the Weil patent. First, the court considers the Weil patent more relevant than the cited art. Weil teaches the combination of an ice maker, ice dispenser, multiple ice storage bins, means for conveying ice between bins, and an agitator. The combination of these elements seems as or more pertinent to Remcor's goal than the "Ice Box" of Bennett or the "Water Cooler" of Green. Furthermore, as expressly contemplated in the Weil patent, it may be used in conjunction with a drink vending machine. See Weil Patent, Ex. H in Supp. of Defs.' Mot. for Summ. J., at col. 1, lines 25-32. On the other hand, the Weil patent was cited by number in the '359 application. The plaintiffs submitted an affidavit of the Examiner stating it was his general practice to review patents cited by number in the application (but without actually stating that he did review the Weil patent). See Ex. Z to Pl.'s Mem. of Law in Opp. to Defs.' Mot. for Summ. J., at 2. Furthermore, defendants' patent law expert, a former Commissioner of Patents, testified in a deposition that examiners are trained to look up patents that are cited by number in applications. Ex. Y, Id., at 22-23. The court, therefore, cannot determine whether or not, or to what extent, the Examiner reviewed the Weil patent. In any case, absent any specific documentation in the prosecution history regarding the Weil patent, the court does not find this fact particularly significant. See Lindemann, 730 F.2d at 1460 n.5 (court not bound by examiner's evaluation of prior art).
Remcor next argues that defendants misstate the differences between the claims at issue and the prior art. This argument is similarly not dispositive. The court has viewed the scope of the claims at issue and the prior art based on all arguments made and materials submitted by both parties, as stated above.
Furthermore, Remcor is not estopped from denying that the claims were obvious. In support of this proposition, defendants cite Graham, 383 U.S. at 33, 86 S. Ct. at 702. Graham does not support this proposition. The doctrine of prosecution history estoppel, as stated in Graham, bars "a patentee from enforcing its claims against otherwise legally equivalent structures if those structures were excluded by claim limitations added in order to avoid prior art." Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1284, 230 U.S.P.Q. 45, 48 (Fed. Cir. 1986). As such, Graham limits the scope of the interpretation given to the claims based on what the patentee did to limit those claims during prosecution. Graham does not estop a patentee from asserting that what was ultimately allowed as a patent was not obvious. Therefore, Remcor may assert that its allowed claims are not obvious.
Next, defendants' averment that the sole issue of obviousness is limited to whether or not the prior art taught the use of an agitator in a structure similar to the combination of Bennett and Green, is not accurate. When making the obviousness determination, the trier must view all the relevant prior art in view of the claims as a whole. 35 U.S.C. § 103. When a party claims that a combination of references renders a patented invention obvious, the prior art must provide a suggestion or motivation to combine the references. See Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods., Inc. 21 F.3d 1068, 1072, 30 U.S.P.Q. 2d 1377, 1379 (Fed. Cir. 1994); Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 934 (Fed. Cir. 1990). Absent this suggestion or motivation, the mere existence of the individual elements at the time of invention does not render a patented combination of these elements obvious as a matter of law. Defendants ignore this requirement and assume that the combination of Green and Bennett is inherent. From this assumption, the defendants conclude that Weil teaches the use of an agitator in a similar structure and therefore the '359 claims are obvious. Defendants never assert a motivation or suggestion in the prior art to combine all three references. Under defendants' theory, any new combination of existing elements would be obvious. This is not an accurate analysis.
Remcor has offered evidence that nothing in the prior art suggested combining these prior art references. According to Remcor, the Green patent actually taught away from the '359 claims because Green specifically states that the ice used to cool the dispensed beverage is not to come in contact with the dispensed beverage. Green Patent, Ex. E in Supp. of Defs.' Mot. for Summ. J., at col. 1, lines 18 to 23. Remcor also asserts that nothing suggests the use of a cold plate in the Weil device because Weil is specifically intended for under-the-counter installations. See Pl.'s Mem. of Law in Opp. of Defs.' Mot. for Summ. J., at 6-8 and n.7. Whether or not this is entirely accurate (see Weil Patent, Ex. H in Supp. of Defs.' Mot. for Summ. J., at col. 1, lines 25 to 32 ("The object of the . . . invention is . . . an . . . ice making and vending machine . . . that may be constructed to facilitate a wide variety of installations, e.g., on top of or inside a drink vending machine")), Remcor has raised a genuine issue of material fact as to whether or not the prior art offered a suggestion or motivation to combine prior art references to achieve the combination of elements of the claims of the '359 patents.
As determined above, the secondary considerations support this conclusion. As noted supra, Remcor has offered deposition testimony for the facts that it has enjoyed commercial success from its patented claims; that others, including defendants, have attempted to copy its claims; that the industry felt a need for such a device; and that others, including defendants, failed to develop such a workable device. These assertions tend to support the proposition that nothing in the prior art suggested the combination of elements in plaintiff's patented claims. See Heidelberger, 21 F.3d at 1072 (obviousness argument diminished when party asserting it "tried and failed to solve the same problem, and then . . . adopted the solution that they are . . . denigrating"). As such, a genuine issue of material fact exists as to whether or not anything suggested the combination of elements in the '359 claims.
For the reasons stated above, the defendants' Motion for Summary Judgment is denied.
Date: AUG 09 1994
JAMES H. ALESIA
United States District Judge