IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

PBI PERFORMANCE PRODUCTS, INC. : CIVIL ACTION

 :

v. :

 :

NORFAB CORPORATION : NO. 05-4836

MEMORANDUM

Bartle, C.J. August 29, 2007

Plaintiff PBI Performance Products, Inc. ("PBI"), a

developer of flame and thermal resistant fibers, has sued

defendant NorFab Corporation ("NorFab") for: (1) infringement of

its Patent No. 6,624,096 ("the '096 patent), in violation of 35

U.S.C. § 271, et seq. in Count I; (2) unfair competition and

false designation of origin and false and misleading

representation in connection with use of a trademark and trade

dress under 15 U.S.C. § 1125(a) in Count II; and (3) trademark

and trade dress dilution in violation of 15 U.S.C. § 1125(c) in

Count III. We previously granted summary judgment in favor of

NorFab on Counts II and III of the complaint. PBI Performance

Prods. Inc. v. NorFab Corp., 2007 U.S. Dist. LEXIS 58689 (E.D.

Pa. 2007). Now before the court are the motion of NorFab for

summary judgment in which it asserts that PBI's '096 patent is

invalid and the cross-motion of PBI for partial summary judgment

on the ground that its patent is valid. Each party contends that

there are no genuine issues of material fact and that it is

entitled to judgment as a matter of law under Rule 56 of the

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 1 of 21
-2-

Federal Rules of Civil Procedure. Celotex Corp. v. Catrett, 477

U.S. 317, 323 (1986). 

I.

The undisputed facts with respect to the '096 patent

are as follows.

PBI is engaged in the research and development of flame

and thermal resistant textile fabrics. It has developed a fabric

which it believes to be particularly suitable for firefighters'

turnout gear and has marketed that fabric to the fire service,

garment manufacturers and mills. This fabric became known as PBI

MATRIX. In August, 2001, PBI's predecessor in interest, CNA

Holdings, Inc., filed a patent application for the PBI MATRIX

fabric. On September 23, 2003, the United States Patent and

Trademark Office ("USPTO") granted the application and issued the

'096 patent for the invention titled "Textile Fabric for the

Outer Shell of a Firefighter's Garment." 

The '096 patent claims a textile fabric consisting of

woven material from spun yarns and multi-filament yarns. The

spun yarns are a blend of two staple fibers, the first of which

is selected from the group PBI, PBO or melamine formaldehyde, and

the second of which is an aramid polymer. The multi-filament

yarn includes an aramid filament. The USPTO Examiner's May 20,

2003 Notice of Allowance and Notice of Allowability of the '096

patent stated that the novel features of the claimed invention

were the weight ratio and the insert ratio of multi-filament

yarns to spun yarns. The two independent claims of the patent

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 2 of 21
1. We assume, because PBI has not suggested otherwise, that the

weight of the spun yarns and the multi-filament yarns used is the

same. 

-3-

recite that the yarns are to be inserted into each other at a

weight ratio of 85:15 to 92:8 spun yarn to multi-filament yarn

(Claim 1), or an insertion ratio of 1:5 to 1:20 multi-filament

yarn to spun yarn, approximately nine spun yarns for every one

multi-filament yarn (Claim 8). Claims 2-7 depend from Claim 1 1

and Claims 9-15 depend from Claim 8.

The specification of the '096 patent describes some of

the advances in the field of fabric for firefighters' garments

that had already been made and patented. The fabric of the '096

patent included features that were disclosed in this "admitted

prior art." Specifically, "inherently flame resistant spun yarn

outer shell fabrics (in plain, twill, and rip-stop weaves) were

known and also outer shell fabrics made with a combination of

inherently flame resistant spun yarns and aramid filament yarns

were known." Pl.'s Summ. J. Mem. at 20. Among these preexisting fabrics, the '096 patent specification references at

least one outer shell fabric woven from the combination of multifilament yarns and inherently flame resistant spun yarns, and a

number of fabrics containing aramid multi-filament yarns and

fabrics containing inherently flame resistant spun yarns made

from a mixture of PBI and aramid fibers. 

Against that background of admitted prior art, the '096

patent describes the problem that was before its inventors. 

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 3 of 21
-4-

Those inventors were seeking to design a fabric for the outer

shell of a firefighter's garment which was light weight but had

better tear and abrasion resistance than the products that

already existed. The inventors believed, and the USPTO Examiner

agreed, that the use of multi-filament yarns and spun yarns in

the ratios provided by the '096 patent would result in a fabric

with less tear and abrasion resistance. 

In 2003, at NorFab's initiative, NorFab and PBI

discussed the possibility of forming a joint venture to make the

PBI MATRIX fabric. These discussions never bore fruit. Sometime

thereafter, NorFab began to sell a fabric similarly suitable for

firefighter's turnout gear called OMNI-Elite®. PBI contends that

OMNI-Elite® infringes the '096 patent.

PBI filed the instant complaint on September 9, 2005. 

On June 2, 2006, NorFab filed a request in the USPTO for ex parte

reexamination of the '096 patent. On July 31, 2006, the

undersigned placed this action in suspense and stayed further

proceedings pending a decision by the USPTO whether to reexamine

plaintiff's patent. The USPTO granted the request for

reexamination on September 28, 2006 on the ground that there was

a substantial new question of patentability going to each of the

patent's 15 claims. By order dated January 5, 2007, we granted

PBI's motion to reopen all proceedings in this court. On

March 19, 2007, the USPTO mailed a non-final action in the

reexamination proceeding recommending that the patent be

rescinded. 

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 4 of 21
-5-

II.

Once a patent has issued, each of its claims is

presumed valid. 35 U.S.C. § 282. When, as here, a party moves

to invalidate a patent at summary judgment, that party must

submit such clear and convincing evidence of the patent's

invalidity that no reasonable jury could find otherwise. U.S.

Gypsum Co. v. Nat'l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir.

1996). The validity of a patent may be challenged by showing

that the patent does not meet one of the original criteria for

granting a patent. 35 U.S.C. § 282. NorFab argues that the '096

patent is invalid because it does not meet the conditions for

patentability that the invention be novel and that its subject

matter be non-obvious. In support of this contention, NorFab

identifies prior art which the original patent examiner did not

consider but which in its view renders the '096 patent invalid. 

In particular, NorFab references the following as

previously unconsidered prior art: (1) U.S. Patent Nos.

5,447,787 and 5,482,763 to Shaffer ("Shaffer '787" and "Shaffer

'763," or collectively, "Shaffer patents"); (2) U.S. Patent No.

6,562,741 to Lilani ("Lilani '741"); (3) U.S. Patent No.

4,985,485 to Montgomery ("Montgomery '485"); and (4) the

"Wellington Sears Handbook of Industrial Textiles ("the

Wellington Sears treatise"). We will describe each of these in

turn.

Shaffer patents '787 and '763 each describe a lightweight, tear-resistant fabric where the background yarns are spun

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 5 of 21
-6-

yarns, and the reinforcing yarns are preferably a meta-aramid

reinforcing yarn. The fabric is woven in a rip-stop

configuration whereby the reinforcing yarn is inserted into the

background fabric in both the vertical and horizontal directions. 

The meta-aramid reinforcing yarns make up from 3 to 15% of the

spun yarns in the background fiber. The illustrations in the

Shaffer patents show the ratio of reinforcing yarns to background

yarns as 1:9. The specifications of the Shaffer patents each

provide that the fabric described "can be used for many purposes

including, but not exclusively, tents, tarps, awnings, canopies,

marine coverings and banners." 

Lilani '741 is cited by NorFab as an example of one of

the many prior art woven fabrics which is made of thermal and

heat resistant fibers. The fabric is particularly useful in

firefighter outer shell garments. The patent teaches a method of

dyeing such fabrics in a way that does not damage the fabrics'

strength and tear characteristics or affect its thermal

performance. 

Montgomery '485 is directed to a "Corespun Yarn for

Fire Resistant Safety Apparel." The patent characterizes the

yarn as particularly useful in the production of fire resistant

safety apparel. The yarn has three components: a core of high

temperature resistant fibers; a core wrapper of low temperature

resistant fibers surrounding and covering the core; and an outer

sheath of low temperature resistant fibers surrounding and

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 6 of 21
-7-

covering the core wrapper. The high temperature resistant fibers

are aramid fibers or PBI fibers. 

Finally, NorFab cites to the Wellington Sears Treatise

to demonstrate that reinforced filament rip-stop weaves have long

been known in the prior art as a means of improving tear

resistance in fabrics. This is also acknowledged in the prior

art admitted in the '096 patent.

III.

We begin by addressing NorFab's contention that the

'096 patent is invalid because its claims were obvious under 35

U.S.C. § 103. Section 103 states that: 

A patent may not be obtained ... 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(a). The determination of whether a patent claim

would have been obvious in light of prior art is a legal

conclusion based upon four factual inquiries: 

1) the scope and content of the prior art; 2)

the level of ordinary skill in the art; 3)

the differences between the claimed invention

and the prior art; and 4) secondary

considerations of nonobviousness, which in

case law is often said to include commercial

success, long-felt but unresolved need,

failure of others, copying, and unexpected

results. 

Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 2000),

citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). When,

as here, the party claiming obviousness relies on a combination

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 7 of 21
-8-

of prior art references, it is not sufficient for that party to

merely demonstrate that each individual claim of the patent at

issue can be found somewhere in the prior art. KSR Int'l Co. v.

Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Instead, 

Although common sense directs one to look

with care at a patent application that claims

as innovation the combination of two known

devices according to their established

functions, it can be important to identify a

reason that would have prompted a person of

ordinary skill in the relevant field to

combine the elements in the way the claimed

new invention does. 

Id.

NorFab maintains that the claims of the '096 patent are

obvious under either Shaffer '787 or Shaffer '763 in view of: 

(1) the admitted prior art in the '096 patent specification; (2)

Lilani '741; (3) Montgomery '485; and (4) the Wellington Sears

treatise. It also asserts that motivation to combine the

elements known in the prior art is expressly provided for by each

of the Shaffer patents. Id.

Before considering the question of obviousness, we must

address PBI's threshold objection to our consideration of the

Shaffer patents. PBI argues that because the Shaffer patents are

not directed to the outer shell of firefighter's turnout gear,

they are inappropriate for this court to consider. When a prior

art reference is alleged to make the claimed invention obvious,

the prior art must be analogous to the claimed invention to which

it is being compared. In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.

1979). Analogous art is essentially that which a person having

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 8 of 21
2. The court notes that the '096 patent does not itself refer to

NFPA Standard 1971 as such, although it does display the results

of the Standards' tear strength test as performed on the PBI

MATRIX fabric.

-9-

ordinary skill in the art would reasonably have consulted in

solving the problem addressed by the claimed invention. Id. 

Here, PBI argues that a person having ordinary skill in the art

would not have consulted the Shaffer patents because those

patents do not relate to any of the following: outer shell

fabric for firefighters' turnout gear, abrasion resistance,

inherently flame resistant spun yarns or the National Fire

Protection Association ("NFPA") Standard 1971, which sets

guidelines for firefighters' protective gear, including a

requirement for tear strength. PBI maintains that a person

having ordinary skill in the art would have disregarded any prior

art that did not specifically refer to each of these concepts.2

The parties substantially agree as to the description

of a person having ordinary skill in the art for the purposes of

this patent. NorFab suggests that it is any individual who has a 

basic understanding of weaving and fabric

design, for example, an individual who has at

least one (1) year experience in working with

textile fabrics and fabric selections, who

has earned an associate's degree in textile

sciences (or equivalent), or a technician

with approximately one (1) year of work

experience in the textile industry.

Def.'s Summ. J. Mem. at 27. PBI agrees, although it would

specify that this person's experience would be with the fabric

used in the outer shell of firefighters' turn out gear rather

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 9 of 21
-10-

than with textile fabric more generally. For present purposes,

we will accept PBI's narrower formulation without deciding the

question.

In addressing what pieces of prior art such a person

having ordinary skill would have looked at in this case, we

follow the framework set out by the Federal Circuit:

The determination that a reference is from a

nonanalogous art is [] two-fold. First, we

decide if the reference is within the field

of the inventor's endeavor. If it is not, we

proceed to determine whether the reference is

reasonably pertinent to the particular

problem with which the inventor was involved.

In re Wood, 599 F.2d at 1036. 

We begin by looking at whether the subject of the

Shaffer patents is in the same field of endeavor as the PBI

MATRIX fabric. PBI argues that the '096 patent claims a textile

fabric for the outer shell of a firefighter's garments and that

only patents claiming such a fabric are in the same field of

endeavor. NorFab disagrees. It maintains that the claims of the

'096 patent are not limited to fabric used for firefighters'

garments and submits that a patent directed to any "textile

fabric" may properly be considered as prior art. The

construction of patent claims is a question of law to be decided

by the court. Markman v. Westview Instruments, 517 U.S. 370, 384

(1996).

The '096 patent claims reference a "textile fabric." 

They do not contain any express limitations of that term and do

not limit the use of the fabric to the outer shell of

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 10 of 21
-11-

firefighters' garments. When a claim term is disputed, courts

are first to give that term the "ordinary and customary meaning"

that a person having ordinary skill in the art would have. 

Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)

(en banc). Here, it is clear that no person with ordinary skill

in the art of any textile fabric would ever understand the

generic term "textile fabric" to mean "fabric for the outer shell

of firefighter's turnout gear." Indeed, PBI does not contend

that "textile fabric" actually refers to something other than its

widely accepted meaning. 

Nonetheless, PBI urges the court to read such a

limitation into the patent's claim based on the information

provided in the patent's specification. We decline to do so. 

The Federal Circuit has recognized a "distinction between using

the specification to interpret the meaning of a claim and

importing limitations from the specification into the claim." 

Phillips, 415 F.3d at 1323. When, as here, the meaning of a

claim is clear, we do not need the guidance of the specification

to interpret it. Id., see also Liebel-Flarsheim Co. v. Medrad,

Inc., 358 F.3d 898 (Fed. Cir. 2004). This is not a situation

where the specification explicitly defines the inventor's

idiosyncratic usage of the disputed term, or where the

specification contains an express disclaimer, or disavowal, of

claim scope by the inventor. Phillips, 415 F.3d at 1316. 

Instead, the specification of the '096 patent concludes by

saying: "The present invention made [sic] be embodied in other

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 11 of 21
3. Moreover, we are instructed to consider prior art outside the

field of endeavor if it addresses the same problem as the claimed

invention. In re Wood, 599 F.2d at 1036. As noted above, the

specific problem addressed in the '096 patent was to design a

textile fabric for firefighter's turnout gear that was

lightweight and had improved tear and abrasion resistance over

existing fabrics. The Shaffer patents clearly address the same

problem. They also concern a lightweight fabric that was tear

and abrasion resistant. They would be considered analogous prior

art even if we were to conclude that the Shaffer patents were not

in the same field of endeavor as the '096 patent.

-12-

forms without departing from the spirit and the central

attributes thereof and, accordingly, reference should be made to

the appended claims, rather than to the foregoing specification,

as indicated [by] the scope of the invention." 

To summarize, the '096 patent claims a "textile fabric"

without limitation. The Shaffer patents for "Reinforced Fabric"

and "Light Weight Tear Resistant Fabric," are within the same

field of endeavor as the '096 patent. We note in this regard 3

that the Shaffer patents, like the patent at issue here, describe

fabrics to be used outdoors and under potentially harsh and

intense conditions. Thus, a person having ordinary skill in the

art would reasonably have consulted the Shaffer patents as being

analogous prior art within the same field of endeavor, and we

will consider them in our analysis of obviousness under 35 U.S.C.

§ 103.

Having disposed of PBI's threshold objection to our

consideration of the Shaffer patents, we turn to NorFab's

arguments that the claims of the '096 patent are obvious under

either Shaffer '787 or Shaffer '763 in view of: (1) the admitted

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 12 of 21
-13-

prior art in the '096 patent specification; (2) Lilani '741; (3)

Montgomery '485; and (4) the Wellington Sears treatise. We are

to consider: 1) the scope and content of the prior art; 2) the

level of ordinary skill in the art; 3) the differences between

the claimed invention and the prior art; and 4) secondary

considerations of nonobviousness. Ruiz, 234 F.3d at 662-63.

We begin by considering the combination of the Shaffer

patents and the prior art admitted in the '096 patent. As we

have previously noted, the admitted prior art discloses fabrics

for the outer shell for firefighters' turnout gear which were

woven from inherently flame resistant spun yarns in plain, twill

or rip-stop weaves. This includes at least one outer shell

fabric woven from the combination of multi-filament yarns and

inherently flame resistant spun yarns. Also disclosed by the

admitted prior art in the '096 patent are fabrics containing

aramid multi-filament yarns and fabrics containing inherently

flame resistant spun yarns made from a mixture of PBI and aramid

fibers. The Shaffer patents, described in more detail above, are

each directed to a light-weight, tear-resistant fabric for

outdoor use achieved by using a woven background of spun yarns

and inserting multi-filament aramid yarns at a lower percentage. 

The insertion of the multi-filament aramid yarns is at every

tenth end and pick, falling into a 1:9 ratio of multi-filament to

spun yarns. 

Next, we turn to the differences between the claimed

invention and the prior art as just described. PBI's intention

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 13 of 21
-14-

in creating the fabric of the '096 patent was to improve the

tear- and abrasion-resistance of the existing fabrics used for

firefighters' turnout gear. PBI claims to have done this by

creating a fabric for the outer shell of firefighters' turnout

gear that included a woven fabric of: (1) inherently flame

resistant spun yarns having a PBI, PBO or melamine formaldehyde

polymer and an aramid polymer; and (2) aramid multi-filament

yarns; (3) inserted at either a weight ratio of 85:15 to 92:8

spun yarn to multi-filament yarn, or an insertion ratio of 1:5 to

1:20 multi-filament yarn to spun yarn, with the preferred ratios

being 90:10 and 1:9, respectively. The prior art admitted in the

'096 patent teaches a woven textile fabric containing both the

spun and multi-filament yarns used by PBI in the '096 patent. 

Indeed, the patent examiner recognized that the only feature of

the '096 patent which was not found in the prior art was the

claimed weight ratio and insert ratio of the multi-filament to

the spun yarns. Both Shaffer '787 and Shaffer '763 teach a woven

textile fabric where a background fabric is inserted with multifilament aramid fibers in a ratio of 1:9 multi-filament aramid

yarns to spun yarns. This ratio falls squarely within that

claimed in the '096 patent, and indeed, is the exact embodiment

of the preferred ratio as stated in the '096 patent's

specification. In an attached appendix, we provide claim charts

created by NorFab, which provide a detailed side-by-side

comparison of the claims of the '096 patent and the prior art. 

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 14 of 21
-15-

These charts confirm that each claim of the '096 patent can be

found in either the Shaffer patents or the admitted prior art.

As explained recently by the Supreme Court, "when a

patent simply arranges old elements with each performing the same

function it had been known to perform and yields no more than one

would expect from such an arrangement, the combination is

obvious." KSR, 127 S. Ct. at 1740, citing Sakraida v. Ag Pro,

Inc., 425 U.S. 273 (1976) (internal quotations omitted). It is

plain that a combination of the prior art admitted in the '096

patent and either of the two Shaffer patents would make the

fabric taught in the '096 patent obvious. Essentially, the

fabric of the '096 patent uses the weave construction described

in the Shaffer patents but substitutes inherently flame resistant

fibers which were well known in the firefighters' garment

industry as the background fibers of the fabric. 

Having concluded that each claim of the '096 patent is

found elsewhere in the prior art, we also consider the level of

ordinary skill in the art. Ruiz, 234 F.3d at 662-63. As noted

above, we have adopted PBI's definition for the purposes of

present analysis. According to PBI, a person having ordinary

skill in the art is one having a basic understanding of weaving

and fabric design with at least one year's experience working

with the fabric used in the outer shell of firefighters' turn out

gear. In the court's view, it is undisputed that it would be

within the skill of such a person to apply the technology of the

Shaffer patents to the prior art admitted in the '096 patent. We

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 15 of 21
4. We do not reach, nor do we need to, NorFab's arguments

regarding the combination of the Shaffer patents with Lilani

'741, Montgomery '485, or the Wellington Sears treatise. 

-16-

hold that the combination of the Shaffer patents with the

admitted prior art renders the claims of the '096 patent obvious

under 35 U.S.C. § 103.4

PBI focuses its objection to our consideration of the

Shaffer patents on the ground that there is no motivation to

combine the Shaffer patents with the admitted prior art. When,

as here, the party claiming obviousness relies on a combination

of prior art references, that party should "identify a reason

that would have prompted a person of ordinary skill in the

relevant field to combine the elements in the way the claimed new

invention does." KSR, 127 S. Ct. 1741. PBI points out that the

Shaffer patents do not mention outer shell fabrics for

firefighter's turnout gear, and the fabric claimed in the Shaffer

patents is not inherently suitable for firefighters' gear. For

these reasons, PBI asserts that there would be no reason for the

inventors of the '096 patent to consider the Shaffer patents'

teachings. We disagree and think that PBI looks too narrowly at

the question of motivation to combine. 

In KSR, the Supreme Court addressed at length the

requirement of a "teaching, suggestion or motivation" to combine

existing prior art ("TSM test"). Id. The Supreme Court rejected

the Federal Circuit's rigid application of the TSM test in favor

of an expansive and flexible approach based on common sense. Id.

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 16 of 21
-17-

at 1739. In performing its review, a court is not limited to

considering "published articles and the explicit content of

issued patents." Id. at 1741. Instead, "a court can take

account of the inferences and creative steps that a person of

ordinary skill in the art would employ" in determining whether

such a person would have a motivation to combine teachings of

prior art. Id.

The Supreme Court explained in KSR that: 

if a technique has been used to improve one

device, and a person of ordinary skill in the

art would recognize that it would improve

similar devices in the same way, using the

technique is obvious unless its actual

application is beyond his or her skill ...

[A] court must ask whether the improvement is

more than the predictable use of prior art

elements according to their established

functions.

Id. at 1740. Further, "any need or problem known in the field of

endeavor at the time of invention and addressed by the patent can

provide a reason for combining the elements in the manner

claimed." Id. at 1742. This includes, but is not limited to,

the particular problem the inventors of the patent in question

were attempting to solve. Id. 

We hold that there was clear motivation to combine the 

Shaffer patents with the admitted prior art of the '096 patent. 

First, by incorporating the fabric design described in the

Shaffer patents into the pre-existing technology used for

firefighters' turnout gear, the inventors of the '096 patent were

merely incorporating a predictable use of prior art elements

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 17 of 21
-18-

according to their established functions. Very simply, the

techniques of the Shaffer patents were incorporated into the preexisting fabrics used in firefighters' outerwear in the same

manner as they were used in the Shaffer patents, and with the

same benefits. Neither the admitted prior art nor the tear- and

abrasion-reduction techniques of the Shaffer patents functioned

any differently when combined in the '096 patent than they had

functioned in their previously documented uses in durable outdoor

products such as tents and marine coverings. 

Second, motivation to combine the admitted prior art

with the Shaffer patents arises from the fact that each of the

Shaffer patents sought to solve the same problem as the inventors

of the fabric in the '096 patent; namely, each sought to create a

light-weight, tear-resistant fabric. The Shaffer patents, like

the patent at issue, were concerned with the durability of fabric

to be used outdoors and sometimes under severe conditions. The

Shaffer patents' solution to the durability problem was the use

of a woven background of spun yarns with multi-filament aramid

yarns inserted at a lower percentage. Although PBI complains

that the Shaffer patents did not use a background material with

inherently fire-resistant threads, it is clear that the Shaffer

patents explicitly motivate others to apply their basic advances

in other types of fabric. Shaffer '787 provides that "the

background fabric can be of any weave appropriate and practical

for the contemplated use." Similarly, Shaffer '763 states that

"the background fabric can be of any construction appropriate and

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 18 of 21
-19-

practical for the contemplated use including fabrics that are

knitted as well as woven." 

Moreover, the improvements resulting from a combination

of the Shaffer patents with the admitted prior art would have

been easily recognizable to a person of ordinary skill in the

art. As the Supreme Court said in KSR, 

When there is a design need or market

pressure to solve a problem and there are a

finite number of identified, predictable

solutions, a person of ordinary skill has

good reason to pursue the known options

within his or her technical grasp. If this

leads to the anticipated success, it is

likely the product not of innovation but of

ordinary skill and common sense.

KSR at 1742. The problem the inventors of the '096 patent were

investigating had already been identified and solved by the

techniques described in the Shaffer patents. The '096 patent 

incorporated the multi-filament rip-stop yarns of Shaffer '787 or

Shaffer '763 exactly as they were described in Shaffer. Like the

adjustable pedal assembly at issue in KSR, this case involves

only "the simple substitution of one known element for another or

the mere application of a known technique to a piece of prior art

ready for the improvement."

IV.

NorFab also contends that the '096 patent is invalid

because it was anticipated pursuant to 35 U.S.C. § 102(b). That

statute provides: 

A person shall be entitled to a patent unless

... the invention was patented or described

in a printed publication in this or a foreign

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 19 of 21
-20-

country or in public use or on sale in this

country, more than one year prior to the date

of the application for patent in the United

States[.]

35 U.S.C. § 102. NorFab maintains that Claims 1-8 and 12-15 of

the '096 patent were anticipated under either Shaffer '787 or

Shaffer '763. Because we hold that the prior art renders each of

the claims of the '096 invalid, we do not reach NorFab's

arguments regarding anticipation.

V.

In sum, we hold that the combination of the Shaffer

patents with the admitted prior art renders the claims of the

'096 patent obvious under 35 U.S.C. § 103, and that there existed

a teaching, suggestion or motivation to combine those two

elements by a person having ordinary skill in the art. The '096

patent is thus invalid.

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 20 of 21
IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

PBI PERFORMANCE PRODUCTS, INC. : CIVIL ACTION

 :

v. :

 :

NORFAB CORPORATION : NO. 05-4836

ORDER

AND NOW, this 29th day of August, 2007, for the reasons

set forth in the accompanying Memorandum, it is hereby ORDERED

that:

(1) the motion of defendant NorFab Corporation for

summary judgment invalidating U.S. Patent No. 6,624,096 (Docket

No. 61) is GRANTED;

(2) the motion of plaintiff PBI Performance Products,

Inc. for partial summary judgment upholding the validity of the

'096 patent is (Docket No. 81) is DENIED; and

(3) judgment is entered in favor of defendant NorFab

Corporation and against plaintiff PBI Performance Products, Inc.

with respect to Count I of plaintiff's complaint.

BY THE COURT:

/s/ Harvey Bartle III 

 C.J.

Case 2:05-cv-04836-HB Document 91 Filed 08/29/07 Page 21 of 21