## United States Court of Appeals for the Federal Circuit

06-1088

DYSTAR TEXTILFARBEN GMBH & CO DEUTSCHLAND KG, Plaintiff-Appellee,

v.
C.H. PATRICK CO., and BANN QUIMICA LTDA, Defendants-Appellants.

William T. Enos , Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria, Virginia, argued for plaintiff-appellee. Wi th him on the brief were Richard D. Kelly and Andrew K. Beverina

. Neil C. Jones , Nelson Mullins Riley & Scarbor ough, L.L.P., of Greenville, South Carolina, argued for de fendants-appellants.
Appealed from: United States District C ourt for the District of South Carolina Magistrate Judge William M. Catoe, Jr.

## United States Court of Appeals for the Federal Circuit

06-1088 DYSTAR TEXTILFARBEN GMBH & CO DEUTSCHLAND KG, Plaintiff-Appellee,

v. C.H. PATRICK CO., and BANN QUIMICA LTDA, Defendants-Appellants.

________________________

DECIDED: October 3, 2006

_________________________ Before MICHEL, Chief Judge , RADER and SCHALL, Circuit Judges . Opinion for the court filed by Chief Judge MICHEL. Concurring opinion filed by Circuit Judge SCHALL. MICHEL, Chief Judge

. DyStar Textilfarben GmbH & Co. Deutschland KG ("DyStar") sued defendants C.H. Patrick Co. and Bann Quimica Ltda. (c ollectively, "Bann") in the United States District Court for the District of South Carolina, alleging di rect, contributory, and induced infringement of U.S. Patent No. 5,586,992 ("the '992 patent"), 1 which discloses a process for dyeing textile materials with catalytically hydrogenated leuco indigo. DyStar and Bann Quimica Ltda. are large chemical manufacturers that, inter alia, sell prereduced indigo for use in dyeing processes; C.H. Pa trick Co. purchased prereduced

1 BASF was the assignee of the ' 992 patent. BASF divested its dyestuff business, including the '992 patent, to DyStar in 2000.indigo solution from Bann Quim ica Ltda. in 2002 and used it to dye yarn in a process alleged to infringe. The parties agreed to a jury trial before a m agistrate judge. Prior to charging the jury and in open court, the magistrate judge gr anted Dy Star's motion for judgment as a matter of law ("JMOL") that it had not engaged in inequit able c onduct befor e the United States Patent and Trademark Office ("PTO"). The ju ry rendered a verdict that "Bann Quimica and/or C.H. Patri ck" had infringed each of claims 1-4, assessed damages at $90,000, and dec lined to hold t he '992 patent claims invalid for lack of enablement, anticipation or obvious ness. DyStar Textilfar ben GmbH & Co Deutschland KG v. C.H. Patrick Co. , Civ. No. 6:02-2946-WMC (D.S.C. Sept. 16, 2005). Following briefing, the magistrate j udge denied Bann's motions for JMOL or, alternatively, a new trial on t he question of invalidity of the '992 patent for anticipation, obvious nes s, and lack of enablement. Dy Star Textilf arben GmbH & Co Deutschla n d KG v. C.H. Patrick Co. , Civ. No. 6:02-2946-WMC (D.S.C . Nov. 1, 2005). The magistrate judge did not issue an opinion. His order stated: The jury diligently considered the ev idence presented and found for the plaintiff. T h is court concludes that the jury's verdict was reasonable and was supported by evidence in the record . Therefore, as this court has great respect for trial by jury and the right of the parties to request a jury trial, this court will no t substitute its finding s for those of the jury as the jury's decision was clearly s upport ed by the trial record and was reasonable. Id. Bann appeals from the denials of its motions on anticipation and obvious nes s, and the grant of JMOL to D y Star regarding inequitable conduct.

06-1088 2For the reasons explained below, we rev e rs e the district court's denial of Bann' s motion for JMOL of invalidity of claims 1-4 for obvious ness. I Indigo has been used in dyeing t e xtile materi als for thousands of years. Because indigo pigment is insoluble in water, it must be de-oxidiz ed, or "reduced," to a water-soluble white f o rm known as "leuc o in digo" before it can be us e d in dy eing. Leuco indigo is unstable; it oxidizes and re turns to its blue pigm ent form when exposed to oxygen. Thus, leuc o indigo s o lution need s to be kept in an oxy gen-free environment, or otherwise stabilize d , if it is not being use d immediately for dyeing. For many years, dy ehouses c o mmonly r educed indigo in-ho u se through a process known as hydrosulfite reduction. Dyers created a "stoc k vat," in which in digo is reduced in water with sodium hydrosulfite and solubilized with an alkali, e.g., sodium hydroxide. The resulting leuc o indigo solut i on is then trans ferred into a feed tank and fed into the dyebath. After the dyebath is prepared, the textile material is dyed through a process known as "dipping" and "skying." In "dipping," the textile ma terial is contacted with leuco indigo in th e dyebath; in "skying," the dyed t e xtil e material is introduced to the air, causing the indigo to conver t back to its blue pigment form. A second common method of indigo reduc tion, catalytic hy drogenatio n, was patented by Andre Br ochet in 1917. See U.S. Patent No. 1,247, 927 ("Broc het"). The superficial difference between hydrosulfite r eduction and catalytic hydrogenation is that the latter uses gaseous hydroge n, rather than sodium hydros ulfite, as a reducing agent. Catalytic hydrogenation allowed "economical product i on of concentrated solutions of leuco deriv atives free from im purities and mineral salts"; when left to settle, the solution

06-1088 3naturally s eparates from nicke l or another catalytic metal and can be "drawn off and is ready for use". Brochet, ll.88-90, 109-110. Most important to the dyehouses, however, was the fac t that Brochet's l euc o indigo solut i on could be stabi lized in so lid form, usually powder or paste, and coated with molasses or gl ue to protect the reduced indigo fro m air and prevent premature oxidat ion. This allowed the indi go reduction process to shift out of the dyehouses and into chemical manufacturers, whic h began to produce and sell prereduced indigo to dyehouses in the early 1900s. Rather than create a stock vat, dyers needed only to dissolv e t he prereduc ed indigo into a preparation tank, add caustic soda (i.e., sodium hy droxide) and sodium hydros ulfite to remove oxyg en from the water, and transfer the resulting s o lut i on from the preparation tank to the dyebath. This signific antly reduced the time necessa ry to prepare a dyebath, the dyehouses ' expenditures on s odium hydrosulfite and caustic soda, and the lev e l of pollution in dyehouse waste water and on dyehouse floors. The process of dyeing textile material s with cataly tically hydr ogenated leuco indigo traditionally has involv ed six steps: (1) reducing i ndigo to its leuc o form in solution; (2) stabilizin g the leuc o indigo s o lution, us ually in pa ste or powder form; (3) creating a preparation tank in which the dr ied leuco indigo is re-converted to solution form; (4) adding the solution to the dy ebath; (5) dipping; and (6) skying. Claim 1 of the '992 patent, the only i ndependent claim at issue, recites: A process f o r dyeing c e llulose-containin g textile material with indigo which comprises a) introducing into a dyebath an aqueous s o lution of leuco indigo solution prepared by catalytic hydrogenat ion; b) contacting the textile material with the dyebath; and, after the leuco indigo has gone onto the textile m a terial, c) converting said leuco indigo back into the pigment form in a conventional manner by air oxidation.

06-1088 4'992 patent, col.6, l.66–col.7, l.6. The '992 patent thus im proved upon the prior art by elimin ating steps two and three of the traditi ona l pro c ess: stabiliz ing the leuco in dig o solution into a paste or powder form, and then reconstituting the solution in a preparation tank. Instead, it allowed a dyer to pour prereduced indigo solution directly into a dyebath and commence dyeing immediately.
II Bann appeals from the denia ls of its motions on an ticipation of claim 1 and obvious nes s of claims 1-4, and t he grant of DyStar's J M OL of no inequitable cond uct. We review decisions on motions for JMOL and motions for a new trial under the law of the regional circuit. MicroStrate g y, Inc. v. Bus. Obje cts, S.A. , 429 F.3d 1344, 1348 (Fed. Cir. 2005) (JMOL); EMI Group N. Am., Inc. v. Cypress Semiconductor Corp. , 268 F.3d 1342, 1348 (Fed. Cir. 2001) (new trial). In the Fourth Circu it, the grant or denial of JMOL is reviewed de novo, whic h requires us to step into the shoes of the trial judge and reapply the JMOL standard. Johnson v. MBNA Am. Bank, NA , 357 F.3d 426, 431 (4th Cir. 2004). "The question is whether a ju ry, viewing the evidence in the light most favorable to [DyStar], could hav e properly r eached the conclus i on reached by this jury. We must reverse if a reasonable jury could on ly rule in favor of [Bann]; if reasonable minds could differ, we must affirm." Id. (internal c i tation and qu otation marks omitted). The denial of a motion for a new trial is re viewed in the Fourth Circuit for abuse of discretion. United States v. Perry , 335 F.3d 316, 320 (4th Cir. 2003). Bann asser t s that claim 1 of the '992 patent is invalid because it is anticipated b y Brochet. B ann further argues that claims 1-4 are invalid as obvious in light of Brochet and certain other prior art, including two pre- 1917 BASF patents—Unit ed States Patent

06-1088 5Nos. 820,900 ("Wimmer") and 885,978 ("Chaumat"), a post-Worl d War II report of the British Intelligence Objectives Sub- Committee ("BIOS report"), and the 1936 Manual for the Dyeing of Cotton and Other Vegtable Fibres (" Manual "), published by General Dyestuff Corporation. We address the broader argument, relating to obviousness, first.
A A determination that a claimed invention would have been obv ious, and thus the patent issued thereon invalid, is a legal conclusion that we review de novo. RichardsonVicks, Inc. v. The Upjohn Co. , 122 F.3d 1476, 1479 (Fed. Cir. 1997). We mus t determine "if the differences between the s ubject matter sought to be patented and the prior art are such that the subject matter as a whole would hav e been obvious at t he time the invention wa s made to a person havi ng ordin a ry skill in the art to which sa id subject matter pertains." 35 U.S

. C. § 103(a). We thus consider whether a person of ordinary skill in the art would ha ve been motiva ted to combine the prior art to achiev e the claimed invention and whether there w ould have been a reasonable expectation of success in doing so. Brown & W illiamson T obacco Co rp. v. Philip Morris, Inc

. , 229 F.3d 1120, 1124 (Fed. Cir. 2000). Underpinning this legal inquiry are four groups of factual findings , which, in a jury trial, we review for substantial evidenc e. Richardson-Vicks , 122 F.3d at 1479. Following t he 1952 enactment of § 103, the Supreme Court ex plained that obviousnes s depends on (1) the scope and c ontent of the pr ior art; (2) the differences between the claimed inv ention and the prior art; (3) the le vel of ordinary skill in the art; and (4) any relevant secondary considerations, including commercial success, long felt but unsolve d needs, and failure of others. Graham v. John Deere Co. , 383 U.S. 1, 17 (1966).

06-1088 6This court has articulated a subsidiary requirement for the first Graham factor, the scope and content of the prior art. SIBIA Neurosciences, Inc. v. Cadus Pharma. Corp. , 225 F.3d 1349, 1356 (Fed. Cir. 2000). Where, as here, all claim limitations ar e found in a number of prior art references, the factfinder must determine "[w]hat the prior art teaches, whether it teaches away from the claimed inv enti on, and whether it motivates a combinat ion of teac hings from different references". In re Fulton , 391 F.3d 1195, 1199-1200 (Fed. Cir. 2004) . It is important in this inquiry to distinguish between the references sought to be combined and " t he pr ior art", as the latter category is much broader. For example, textbooks or treatises may include basic principles unlikely to be restated in cited references. As we rec ently explained in Alza Corp. v. Mylan Labs., Inc. , No. 06-1019, 2006 U.S. App. LEXIS 22616 (Fed. Cir. Sep t. 6, 2006), the suggestion test—as our motivation-to-combine inquiry has come to be known—"prevent[s] stat utorily proscribed hinds ight reasoning when determining t he obviousness of an invention." Id. a t * 7

. T h i s test "informs the Graham analysis", id. at *8 (quoting In re Kahn , 441 F.3d 977, 987 (Fed. Cir. 2006)), by implement ing the Supreme Court's re cognition of "the i m portance of guarding against hinds ight, as is evident in its discussion of the role of secondary considerations as 's erv[ing] to guard against slipping into us e of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue.'" Id. at *6 (quoting Graham , 383 U.S. at 36). In contrast to the char acterization of some c o mmentators, the suggestion tes t is not a rigid categorical rule. T he motivati on need not be found in t he references sought to be com b ined, but may be f ound in any number of sources, including common

06-1088 7knowledge, the prior art as a whole, or the natur e of the problem it self. In re Dembiczak , 175 F.3d 994, 999 ( F ed. Cir. 1999) . As we explained in Motorola, Inc. v. Interdigital Tech. Corp. , 121 F.3d 1461, 1472 (Fed. Cir. 1997) , "there is no r equirement that the prior art contain an express sugges tion to com b ine known elements t o achieve the claimed invention. Rather, the suggest i on to combine may come from the prior art, as filtered through the knowl edge of one skilled in the art." For one to conclude that the inventi on of the '992 patent would have been obvious, then, the prior art, common knowl edge, or the nature of the problem, viewed through the eyes of an ordinary artisan, must have suggeste d the following steps : (1) creating leuco indigo solution through ca talytic h y drogenation; (2) stabilizing the
l euco i n di go in solution form ; (3) adding the leuco indigo solution directly into a dy ebath; (4) dipping; and (5) skying. Because the jury di d not make explic it factual findings in th e form of answers to written inte rrogatories or special ver d icts, we m u st discern the jury's implied factual findings by interpreting the evidenc e consistently with the verdict and drawing all reasonable inferences in DyStar's favor. Konkel v. Bob Evans Farms Inc. , 165 F.3d 275, 279 (4th Cir. 1999).
B Bann's obv iousness argument rests primar ily on three U.S. patents: Brochet, Wimmer, and Chaum at. Brochet is directed to "the M anufacture of Leuco Derivatives of Vat Dyestuffs" generally, of which indigo is one. Brochet, ll.6-7. By its plain language, Brochet discloses the proce ss of preparing an aque ous solution of leuco indigo by catalytic hydrogenation. There can be no seri ous dispute that the ultimate use of a "dyestuff" is dyeing textile materials; inde ed, the '992 patent invent or, Georg Schnitzer,

06-1088 8testified that leuco indigo solutions were known to be used in 1917 for dyeing, and
Dr. Richard Blackburn, one of DyStar's tec hnical ex perts, tes t ified that BASF began reducing indigo with catalytic hydrogenat i on, and selling the reduced indigo to dyehouses, in 1926. Moreover, both parties agree that dipping and skying were well known in the art. As explained supra , when indigo is reduced in- house in a stock vat, the resulting leuc o indigo solution is in troduced directly into the dyebath without firs t being stabilized through drying. Thus, the critical issue in our obviousness analys is is whether stabilizing catalyti cally reduced leuco indigo in solutio n form , rather than in powder form coated with molasses, for ex ample, renders the claimed process nonobv ious to one of ordinary skill in the art. 1. Level o f Ord i nar y Skill in the Art Because the parties disagree over the re levance of the cited prior art, which, fundamentally, is a dis agreement over the leve l of ordinary skill in the art, we address this third Graham factor first. DyStar asserts t hat we must disregard Brochet, Wimmer, and Cha u m at, because a perso n of ordina ry skill in th e art would not be aware of these references. In short, DyStar argues that no knowledge of chemistry is required in the relevant technical field. DyStar points to testimony fr om Dr. Blackb urn that "[a] person of ordinary s k ill in the art is a dyer", someone wit h " a high school degree" who is "able to read and write", but whose knowledge is limited to "flipping the switches" on the machine. Dr. Blackburn also testified, howev er, that a person of ordinary sk ill in the ar t was "running the dye processes", which required, inter alia, "doing the calc u l ations". When conf ronted with the inconsistency between his testimony regar ding the applic a b le leve l of skill durin g

06-1088 9cross-examination, Dr. Blackbur n stated that "it's dif f icult to say" which of the two skill levels should be applied to the obviousness inqui ry. Dr. Blackburn explained that "those people may do both jobs", but conc luded by stating, "I think the former [i.e., the person 'flipping the switches']" is the ordinary artisan. Thus, the jury had evidence before it of two potential lev e ls of ordinary s k ill: (1) that of a dyer and (2) that of a person creating the dye processes, who we will refe r to as a dyeing process designer. DyStar presented ev idence that The Application of Vat Dyes , a book by the American Association of Textile Chemists a nd Colorists, teaches people how to dye and is a text that a dyer would hav e had at the ti me of the '992 patent in vention. Dr. Nolan Etters, Bann's expert witness, ag reed that "a per son of ordinary skill in the art" would be a member of the American Asso ciation of T e xtile Chemists and Colorists and conceded that none of the prior art cit ed by Bann is referenced in The Applic ation of Vat Dyes

. We agree with Dy Star that we are required to assume the jury accepted its argument that a person of or dinary skill in the art is a dyer with no kn owle dge of chemistry. Because the jury heard testimony that the prior art cited by Bann was directed toward chemists, not dyers, the jury must have found the prior art cited by Bann neither in the relevant ar t nor analogous arts and then, consistent with the limited evidenc e of prior art deemed relevant, concl uded that the process claimed in the ' 9 92 patent would not have been obvious. Howev e r, substantial evidence does not suppor t the jury's finding t h at a person of ordinary skill is a dyer with no knowle dge of chem istry. Indeed, that factual finding is incons istent with the '992 patent's very pur pose. The technical prob lem that the process of the '992 patent and the prior art cited by Bann sought to solve is precisely

06-1088 10the same: an improv ed process for dyeing te xtile materials with i ndigo. This process includes s e veral dis c rete subcomponent s—e.g., indigo reduction and dyebath preparation—and an ordinary artisan would be c o ncerned with all of them. To beneficially practice the dyeing pr ocess claim ed in the '992 patent, the ordinary artisan must have a higher-level perspec tive, as he must first decide whe t her it is more efficien t to reduce indigo in-house or purc hase prer educed indigo and, if pr ereduced, must then decide whether solid or solution form is preferable. Designing an optimal dyeing pr ocess re quires knowledge of chemistry and systems engineering, for example, and by no means can be under taken by a person of only high s c hool educ ation whos e skill set is lim ited to "flipping t he sw itches". This is especially t r ue when one cons ider s that only in the last c entury have improvements in indigo reduction chemistry enabled outsourcing of t he in digo reduction step from dyehouses to chemical manufacturers; pri o r to that simplificati on, there would hav e been no question that a dyer w ould also require knowledge of indigo reduction. Because, f o r this pat ent, the only finding s upported by substantial ev idenc e is that an ordinary ar tisan is not a dyer but a person designing an optimal dyeing pr ocess, the jury's implicit finding of a me re dyer cannot withstand scrut iny on JMOL. According l y, the jury's apparent decision to disregard Brochet, Wimmer, and Chaumat, and perhaps other prior art references, as ne ither in the dye process art nor even in analogous arts is unsupported by substantial evidence. 2. Scope and Content of Prior Art Where, as here, claim lim itations are found in a combination of prior art references, the factfinder must determine "[w]hat the prior art teaches, whether it

06-1088 11teaches away from the claimed invention, and whether it moti vates a combination of teachings from differe nt references". Fulton , 391 F.3d at 1199-1200 (Fed. Cir. 2004). To support its argument that an ordina ry artisan—i.e., a dyeing proces s designer—would hav e known to attempt to stabilize the Brochet solution in
oxygen-exc l uding conditions fo r addition directly into a dyebath, Bann points to two pre-Brochet BASF pat ents. Wi mmer, issued in 19 06, disclos es a leuco indigo solution that "can be filtered and the filt rate (which contains a high percentage of indigo white) can be placed on the market wi thout any further treatment", in cont rast to reduction using zinc, which required the solution "to be separated before the solution can be used for dyeing. " Wimmer, ll.34-40. Chaumat, issued in 1908, dis c loses a leuco indigo solution that "may be drawn off protected from the air and preser ved indefinitely in receptacles which are either soldered or closed in any other hermetic manner." Chaumat, ll.84-87. Alt hough W i mmer and Chaumat dis c lose different reducin g methods than Brochet—Wimmer suggests t he use of iron, rather than zinc, as a reducing agent, and Chaumat disclos es an elect r olytic proc e ss for indigo reduction—Bann argues that once the indigo has been conv erted to its leuco form, the dist inction is ir relevant for dyeing pur poses. Ac cordingly, Bann argues that this prio r art would teach an ordinary artisan in the field of indigo dy eing proce ss design to attempt to stabilize any leuco indigo solut i on, howev er reduced, for addi tion directly into the dyebath. a. What does the prior art teach? DyStar argues that because Wimmer and C haumat inv o lve differe nt methods of reducing indigo, they are nonan alogous art and properly disr egarded by the jury. In support of this assertion, Mr. Sc hnitzer testified that, up until the time of the invention,

06-1088 12BASF 's "p eople from productio n " believe d that leu c o ind i go created from catalytic hydrogenat ion was too unstable to be added dire ctly to the dyebath, and might "stain the yarn with indigo pigment" or "block[ ] pipe s". DyStar offered evidence that, prior to the '992 p a t ent, BASF had limite d its sales of catalytically hy drog enated le u c o ind i go t o that stabilized in paste or solid form. Thus, argues DyStar, the language in Wimmer and Cha u m at suggesting that the solutio n could be s t abiliz ed a nd sold in solution form does not apply to catalytically hydrogenated leuco indigo solution. We disagr ee. As explained s upra , the proper focus is on the indigo dyeing process as a whole, whic h requires the or dinary artisan to consider ( a nd cho o s e between) the various indigo reduction methods . The '992 patent is directed toward a
process of dyeing with indigo and, although a s pecific method of r eduction is required by claim 1, the first step in the process requires indigo in prereduced f o r m

. I t i s undisputed that reduced in digo by any reduction method, not just catalytic hydrogenat ion, has been used in the indigo dy eing process. The prior art involvin g indigo reduction by ot her methods is t hus not merely analogous art, it is the same art. Accordingly, all limitations recited by claim 1 of the '992 patent—inc luding the immediate use of leuco indigo solution for dy eing—are c ontained in the prior art. 2 b. Does the prior art teach aw ay from the claimed invention? We reject DyStar's assertion that contemporaneous articles by Wimmer and Brochet teach away from the combination of Brochet and Chaumat, and thus the claimed process. Dy Star acknowledges that no spec ific language in these references

2 Because the only difference between the claimed invention and the cited prior art is the method of indi go reduction, which we have held is irrelevant to an indigo dyeing process employing prereduced indigo, we do not separately discuss this second Graham factor.

06-1088 13teaches away from the invent ion of the '992 patent. Rat her, because these references do not disc uss the stabilization of leuco indi go solution (in solution form) for immediate addition to a dyebath, DyStar somehow c onc ludes that these references teach that leuco indigo solution "cannot be used to dy e but is instead us eful only as an intermediate." Although Wimmer's contemporaneous article only describes the use of indigo solution as an intermediate product, he does not retract his patent language indicating that "the solution can be filtered and the filt rate (which contains a high percentage of indigo white) can be placed on the market without any furt her treatment". Wimmer, ll.33-37. Likewise, the Brochet patent, direct ed toward all vat dyes tuffs, broadly teache s that the process "produce[s] mother-liquors which can be diluted immediately before use, or be treated by evapor ation under reduced pressure or by any other means t o obtain concentrated products for sale." Broc het, ll.66-70. This la nguage implies that al l vat dyestuffs, including indigo, may eith er be us ed immediately for dyeing or concentrated prior to sale. In his contemporaneous articl e, Brochet stated that his catalytically hydrogenated solution could be used "economically to obtain concentrated indigo whit e [i.e., leuco indigo] solutions that are free of impurities and alkaline salts , that can be concentrated in vacuum in order to obtain white indigo as a paste". This mere failure to discuss immediate use of his leuco indigo solution for dyeing is not the same thing as Brochet stating in his arti cle that, though most dyestuffs may be use d immediately or stored in oxyg en-excluding containers, hi s leuco indigo solution ma y only be co ncentrated in paste form. We will not read into a reference a tea c hing a w ay from a process where no such language exist s

.

06-1088 14c. Is there a motivation to combine? DyStar argues that this court's " s uggesti on test" for obvious nes s requires the cited references themselves to c ontain a su ggestion, teaching, or mo tivation to combine them, and that it must be exp lic itly stated. DyStar t hen points out, correctly, that Brochet does not suggest combining his inv ention with those of Chaumat or Wimmer to stabiliz e his leuco in digo solution in oxy g en-ex c l ud in g containe rs until either using it directly in t he dyebath or placing it on the ma rket for sale, respecti vely. Absent such a teaching, urges DyStar, the in vention of claim 1 of the '992 patent cannot be obvious. DyStar's argument misreads this court's cases and misdescribes our sugge s tion test, echoing notions put forth recently by v a rious com m entators and acc epted in major reports. A 2003 report by the Federal Trade Commission, for example, quoted testimony of certain witnesses t hat this court requires "specif ic and definitive [prior] a r t references with clear motivation of how to combine those references" and requires the PTO to find "the glue expressly leading you all the way [to obviousness]" and "connect the dots .

. . very, very clearly." Fed. Trade Comm'n, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy c h . 4, at 11 (2003). Similarly, a 2004 report by the N a tional Aca demy of S c iences summarized views of a few commentators that "standa rds of pat entability—espec ially the non-obviousness standard—have become too lax as a result of court decisions" by the Fede ral Circuit, leading to the deterioration of patent quality. Nat'l Research Cou n cil, A Patent System for the 21st Century 3 (Stephen A. Merrill et al. eds., 2004). But see Am. Intellectual Prop. Law Ass'n, AIPLA Response to the National Ac ad emies Report entitled "A Patent System for the 21st Century" 10 (2004) ("AIPLA believ e s t hat the courts, inc l uding the

06-1088 15Federal Circuit, have applied the standard of non-obviousness with both the needed rigor and the appropriate vigor, and they have done so with a c o mmendable consistenc y over the past two decades. If a di fficulty exists with appl ication of the nonobvious nes s standard today, it does not lie in t he patent statute or in s u bstantive law of non-obviousness as applied in the courts.") Seeking to support their assertions about Federal Circuit cas e law, thes e few commentators have quoted is ol ated statements from thr ee of our precedents in particular, including Dembiczak , 175 F.3d at 1000, wherein we st ated that the analysis by the Board of Patent Appeals and Interfer ences ("Board") "fails to demonstrate how the [two cit ed] references teach or suggest their combinat ion" (em phasis added), and In re Lee , 277 F.3d 1338, 1341, 1344 (Fed. Cir. 2002 ), where we characterized the Board's statement that "[ t]he conclusion of obviousne ss may be made from common knowledge and com m on sens e of a person of ordinary skill in t he art without an y specific hint or suggestion in a particular refe rence" as "[o]mission of a relevant factor required by precedent"

. They hav e als o c i te d our repeated use of t h e word "references" in the follo wing list fro m Ruiz v. A.B. Chanc e Co. , 234 F.3d 654 ( F ed. Cir. 2000), wher e we suggest ed a motivation to combine may be found: 1) in the prior art references themselves; 2) in the knowled ge of those of ordinary skill in the art that certain references, or disclosures in t hose references , are of specia l interest or i m portance in the field; or 3) from the nature of the pr oblem to be solved, leading inventors to look to references relating to possible solu tions to that problem. Id. at 665 (emphasis added) (inter nal quotation marks omitted). Despite containing ar guably imprecise la nguage in these statements, quoted out of context, each of the above-cited cases co rrectly applies the s uggestion t e st and by

06-1088 16no means requires an explicit teaching to c o mbine to be f ound in a particular prior art reference. Dembiczak involved the combination of a re ference in the plastic trash bag art with children's arts and craf ts books t hat included, among i nnumerable fanciful drawings, jack-o-lanterns. Contrary to some interpretations, we stated explic itly that evidenc e of a motivation to com b ine need not be found in the prior art references themselves, but rather may be found in "the k nowledge of one of ordinar y skill in the art, or, in some cases, from the nature of t he problem to be solved ." 175 F. 3d at 999 (citation omitted). When not from the prior ar t references, the "evidence" of motive will likely cons ist of an explanation of the well-k nown pr inciple or problem-solving strategy to be applied. Our analysis in Dembiczak focused on an explicit teaching in the prior art not becaus e our cas e law requires it, but be cause the Board had stated that "the [two cited] references would have suggested the application of .

. . facial indic i a t o the prior art plastic trash bags." Id. at 1000 (emphasis added). We held t h e Board' s obvious nes s determination legally insufficient because, in addition to failing to make Graham findings, the Board's analysis was "limit ed to a discussion of the ways that the multiple prior art references can be combin ed to read on the claimed invent ion", "rather than pointing to specific information in [the two references] that suggest the combination". Id. On appeal to this court, t he Commissioner of Patents and Trademarks attempted to defend the Boar d decis ion by laying o u t, using the Graham factors, a clear—and likely a ffirmable—rationale establishing the level of ordinary skill and explaining the m o tivation to combine. Id. at 1001. We declined to consider these arguments, newly rais ed on appeal, stating that they did "little more than highlight the shortcomings of the decision below." Id.

06-1088 17In Ruiz , as in Demb ic zak , we vacated a co nclusion of obvious ness becaus e the factfinder failed to make Graham factor findings. 234 F.3d at 660. Far from requiring evidenc e of an explicit motivati on to combine, we suggested in Ruiz that there may have exist ed an implicit motivation to combine, based on testimony that the invention was an im provement over the prior art because it is "easy to install" and "low cost". Id. at 666. We explained that such "[e]videnc e whic h suggests that the combination of two references would suggest the resulting improvement is one way in which to determine a reason, suggestion, or motivati on to combi ne" and instructed the distri ct court to consider the evidence on remand. Id. Likewise, a close reading of In re Lee reveals that our objection was not to the Board's statement that "[ t]he conclusion of obviousne ss may be made from common knowledge and com m on sens e of a person of ordinary skill in t he art without an y specific hint or suggestion in a particular refe rence", but its utter fa ilure to explain the "common knowledge and common sens e" on which it relied. See 277 F.3 d at 1341, 1344. Lee involved a patent combining a prio r art vi deo game instruction handbook describing a "demonstration m ode" with a prior art television set having a menu displa y allowing video and audio adjus tments. The Board, wit hout comment, adopted the Examiner's Answer, which merely stated that the combination of the two cited references "'would have been obvious to one of ordinary skill in the art since the demonstration mode is just a programmable feature whic h can be us ed in many different devices for providing automatic introduction by adding the proper programming software' and that 'another motivation woul d be that the automatic demonstration mode is user friendly and it functions as a tutorial.'" Id. at 1341. We explained that

06-1088 18"[c]onclusory statements such as thos e here provided do n o t fulfill th e agency' s obligation" to explain all material fact s relating to a motivation to combine. Id

. at 1344. In other wo rds, we ins t ru cted the Board to explain why "common sense" of an ordin a ry artisan seeking to s o lve the problem at hand would have led hi m to combine t h e references. We noted that our predecessor cour t held more than thirty years earlier that "common knowledge and common sense" were suffi cient to establis h a motivation to combine, In re Bozek , 416 F.2d 1385 (C.C.P.A. 1969), and distinguished that case because, in Bozek , t he examiner first "establis hed that this knowledge was in the art". Id. at 1390. We instructed that a ssumptions about com m on sense cannot substitute for evidenc e thereof, as the Board attempted to do in Lee . 277 F.3d at 1345; see also In re Zurko , 258 F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (reversing as unsupported by substantial evidence a finding of motivation to combine cited references, where the Board adopted Examiner's unsu pported assertion that claim limitation missing from cited references was "basic knowledge" a nd it "would have been nothing more than good common sense" to combine the references , and ex plaining that "[t]his assessment of basic knowledge and common sense was not based on any evidence in the record") ; In re Rouffet , 149 F.3d 1350, 1357 (Fed. Cir. 1998) (a ffirming finding of high level of ordinary skill and the Board's exp l anation as to why cited reference implicitly wou l d suggest missing claim limitation t o ordinary ar tisan, but reversing its reliance on high level of ordinary skill as basis of motivation to combine, and statin g, "The Board did not, however, explain what specif ic understanding or technolog ical principle within the knowledge of one of ordinary s k ill in the art would have su ggested the combination. Instead, the Board merely invok ed the high level of skill in the field of art. If such a rote

06-1088 19invocation could suffice to supply a motiva tion to combine, the more sophisticated scientific fields would rare ly, if ever, experience a pat entable technical adv ance."). It is difficult to see how our suggestion te st could be s een as ri gid and categorical given the myriad cas e s over several dec ades in whic h panels of this court have applied the suggestion test flexibly. Obviousne ss is a complic ated subjec t requiring sophisticat ed analysis , and no single cas e lays out all facets of the legal test. DyStar's argument and the above-cited co mmentary highlight the danger inherent in focusing on isolated dicta rather than gleaning the law of a particular area from careful reading of the full text of a group of re lated precedents for all they say that i s dispositiv e and for what they hold. When parties like Dystar do not engage in s u ch careful, candid, an d complete legal analys i s, much confusion ab out the law arises and, through time, can be compounded. 3 Our suggestion test is in actuality qui te flexible and not only permit s , but requires , consideration of common k nowledge and c o mmon sense. See, e.g. , In re Kotzab , 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("A critical step in analyzing the patentability of claims pursuant to section 103(a) is ca sting the mind back to t he time of invention, to consider the thinkin g of one of ordinary skill in the art, guided on ly by the prior art references an d

3 Indeed, the United States S upreme Court recently granted certi o rari in a case involv ing this court's app lic ation of the suggestion test. KSR Int'l Co. v. Teleflex , Inc. , 2006 U.S. LEXIS 4912 (June 26, 2006) . In KSR , we vacated a district court's grant of summary judgment of invalidity for obviousne ss. The district court found a motivation to combine not in the references but "largel y on the nature of the pr oblem to be solved", which we did not deem erroneous. Teleflex , Inc. v. KSR Int'l Co. , 119 Fed. App' x 282, 287 (Fed. Cir. 2005) (unpublished) . Rather, we vacated because the court did not explain sufficiently it s rationale, and failed to make "findings as to the spec ific understanding or princi ple within the knowl edge of a skilled artisa n that would h a ve motivated one with no knowledge of [the] in vention to make the combinat ion in the manner claimed." Id. at 288 (citation omitted).

06-1088 20the then-accepted wis dom in the field."); Motorola , 121 F.3d at 1472 ("[T]he suggestion to combine may come from the prior art, as filtered through the knowle dge of one skilled in the art.") ; Bozek , 416 F.2d at 1390 ("Ha v i ng establis hed that th is kno wle dge was in the art, the examiner could then properly rely, as put fo rth by the solicitor, on a conclus i on of obvious ness 'from common k nowledge and common sense of the person of ordinary skill in the art without any spec ific hint or suggestion in a particular reference.'"). Indeed, we have repeatedly held t hat an implic it motivation to combine exist s not only when a suggestion may be gleaned from the prior art as a whole, but when the "improvement" is technology-ind ependent and the c o mbination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire t o enhance c o mmercial opportunities by impr oving a product or proce ss is universal—and

even com m on-sensic al—we hav e held that there exists in thes e situations a motivation to combine prior art references even absent any hint of sugges t ion in the references themselves. In such situations, the pr oper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining the prior art references.
In Pro-Mold & Tool Co., Inc. v. Great Lakes Plastics, Inc. , 75 F.3d 1568 (Fed. Cir. 1996), for example, we analyz ed asserted obv iousness of a claimed inv ention of a sports trading card holder only slightly larger than the trading c a rd. We stated that "[w]e start from the self-evi dent proposition that mankind, in pa rticula r , inventors, strive to improve that which already exists". Id. at 1573. We requir ed no documentary evidenc e

06-1088 21of motive. We explained that the motivati on to combine "a reference descr ibing an elegant card holder and cove r arrangement with a reference descr ibing a card holder no larger than necessary to enclos e the card .

. . was thus evident from the very size of the card itself." 4 Id. at 1573. Because an ornamental card holder just large enough to enclose the card would be more effici ent, there existed an implicit, indee d common-sensical, motivation to combine the two references. Similarly, in Sandt Tech., Ltd. v. Resco Metal & Plastics Corp. , 264 F.3d 1344, 1355 (Fed. Cir. 2001) , we held invalid for obv ious nes s a patent claim for a stainless steel cover for pay telephones. The only relevant difference between the claimed invention and the prior art co vers was that the former attached the steel c o ver to the telephone via studs and the latte r attached it with welds. Id. We noted that the difference between at taching wit h welds and st uds was merely a "slight variation that produced c onvenience". Id. We found a clear motive to alter the prior art welded cover simply bec ause "[u]sing studs was a cheaper , faster, and more convenie n t method of attachment", id. , absent even a hint of suggestion to combine.
In Mazzari v. Rogan , 323 F.3d 1000 (Fed. Cir. 2003), we affirmed a district court grant of summary judgment of invalidity for obvious nes s of a patent claiming the use of underwater acoustic waves to kill zebra musse ls. The Board had upheld the rejection of an applic ation based on two prio r art patents: an acoust i c wav e generator that enabled altering wave intens ity and focusing ac ous tic energy along a particular angle, and a method of using wate r-borne acoustic wav e s to kill z e bra mussels. The Bo ard held th at

4 We vacated the district court's grant of summary judgment of invalidity for other reasons, finding genuine disputes of ma terial fact on the issue of commercial success. Id. at 1573.

06-1088 22a motivation to combine the two references existed because an ordinary artisan would have been aware of both references and t hat combination of the two was "mor e efficient". Id. at 1002-03. The inventor then brought a civil s u it against the Director of the PTO pursuant to 35 U.S.C. § 145, and the district c ourt granted summary judgment in favor of the Director. We deemed sufficient the Board's explanati on of a motivation to combine and affirmed "because the references illu strate that it is well k n own in the art t o use acoustic energy to kill and repel zebra mussels." Id. at 1006; see also Ruiz , 234 F.3d at 666 (remanding for dete rmination of whether t e stimony that claimed inv e ntion was "easy to install" and "low cos t " established motivation to combine). In situations where a motivation to co mbine is based on these principles, the invention c annot be s a id to be nonobvious. Our precedent on t h is point, moreover, is consistent with the Supr eme Court's holdings in Graham and three other obviousness decisions pre-dating the est ablishment of thi s court. See Sakraid a v. AG Pro, Inc. , 425 U.S. 273, 282 (1976); Anderson' s-Black Rock, Inc. v. Pavement Salvage Co. 396 U.S. 57 (1969); United States v. Adams , 383 U.S. 39 (1966).
In Anderson's-Black Rock , the Supreme Court held invalid for obviousness a patent covering (1) a radiant burner for heati ng asphalt (2) attached to the front of a standard asphalt-paving machine. Both elem ents were well-known in the prior art indiv i dually , with the difference being that pr eviously , radiant-heat burners were not used in paving, but merely fo r patching limited areas of as phalt. 396 U.S. at 58-59. Because asphalt is usually laid sequentially in para llel strips, the adjoining strip cools before the next strip is laid, l eading to what is known as a "cold joint"—an area of poor bonding into which water and dirt enter, causing deterioration. Id. at 57-58. By

06-1088 23reheating the adjoining edge of t he earlier-laid strip as a new stri p is laid, the invention sought to eliminate the cold joint. No ex plic it suggestion to combine the prior art references would have been necessary because the invention merely improved the efficiency of the already-known process of layin g pav ement through the already-known method of merging two sections of asphalt through re-heating the earlier laid section— both of which would have been c o mmon knowle dge to ordinary artisans in the field of laying asphalt. See also Graham , 383 U.S. at 24-25 (holding invalid for obvious nes s Graham's patent disc losing a spring clamp on a plow shank, where claimed invention merely improved mechanical weakness in prior Graham patent, because ordinar y artisan would have had mechanical sk ills s u ffi cient to "immediately see that the thing to do was what Graham did"); id. at 36-37 (holding inva lid for obvious ness Cook Chemical's patent dis c losing a plastic finger sprayer with a "hold-down" lid s e rving as a built-in dis penser for bottles of liquid produc ts, where differences from prior art were "exceedingly small and quite nontechnical" and device was "old in the art"). Likewise, in Sakra i da , the Supreme Court held inva lid for obviousness a patent for a barn having "a paved, sl oped barn floor with downhill drai ns", "elevated" cow stalls, and a "dam" behind which water may be stored and abruptly released in order to "send a sheet of water cascading thr ough the dai ry sweeping the manure to the downhill drains." Ag Pro, Inc. v. Sakraida , 474 F. 2d 167, 168 (5th Cir . 1973) (quoting U.S. Patent No. 3,223,070), rev'd by 425 U.S. 273. Because the cleaning action from an uphill release of water was super ior to that from a hose, the claimed invent ion reduce d the quantity of water necessary to clean the barn floor and obviated additional hand labor, e.g., brooms or shovel s, shortening the cleaning pr ocess from a few hours to a

06-1088 24few minutes. Id. The Supreme Court nonethele ss negated patent protection, characterizing the inv ention as "the work of the skillful mechanic, not that of the inventor." Sakraida , 425 U.S. at 279 (inter nal quotation marks om itted). The Court aptly noted that "[ e]xploitation of the pr inciple of gravity adds nothing to the sum of useful knowledge". Id. Under this court's case law, there would have been no need for "evidenc e" of a motivation to combine a pr ior art reference with a universally-known physical principle to achieve more power ful and simultaneous sweep of water.
In Adams , a companion case to Graham , the Supreme Court uph eld the validity of a patent for a non-rechargeable water-a ctivated battery having magnesium and cuprous chloride elect r odes. Ad ams , 383 U.S. at 51. The C our t recognized that "eac h of the elem ents of the Adams battery was well known in the prior art", but rejected the United Stat es' obvious ness ar gument because the prior art taught away fro m the Adams patent's combination. As the Court succinctly stated: To combine [the references] as did Adams required that a person reasonably skille d in the prior art must ignore that (1) batteries whic h continued to operate on an open circuit and whic h heated in nor mal us e were not practical; and (2) water-acti vated batteries were successful only when combined with electrolytes detri mental to the use of magnesium. Id. at 51-52. The Court instructed that such "known disadvantages in old devices . . . may be ta ken into account in determining obvious ness", id. at 52, and we have incorporated this notion into our case law. See, e.g. , Fulton , 391 F.3d at 1199-120 0 (instructing the factfinder to determine "[w]hat the prior art teaches, whether it teaches away from the claimed invent ion, and whether it motivates a combination of teaching s from different references").

06-1088 25Although this court c u stomar ily discusses a motivation to combine as part of the first Graham factor, the scope and cont ent of the pri o r art, see SIBIA Ne uroscience s , 225 F.3d at 1356, motivation to combine is al so inextricably linked to the level of ordinary skill. If, as is usually the case, no prior art reference contains an express suggestion to combine references, then the le vel of ordinary skill will often predetermine whether an implicit suggestion exists. Pers ons of varying de grees of skill not only
possess v a rying bas e s of knowledge, they al so poss e ss varying lev e ls of imagination and ingen u i ty in the relevant field, particula rl y with res pect to pro b lem-solvin g ab ilities. If the level of skill is low, for example that of a mere dyer, as DyStar has suggested , then it may be rational to assume that su ch an artisan would not think to combine references absent explicit dire ction in a prior art refer ence. If, however, as we have held as a matter of law, the le v e l of skill is that of a dy eing process designer, then one can assume comfortably that such an artisan will draw ideas from chemistry and systems en gineering— without being told to do so. A dyeing process des igner would have been aware t hat r educing leuco in digo in-house was time-consuming as well as expe nsive a nd that it c r eated much pollutio n on the dyehouse floor and in public sewers. He would have known that purchasing solid prereduced indigo would s a ve time, s pace, and money: dyers would no longer spend time creating stock vats, and the dyehous e would require far less hydrosulfit e and caustic soda. A dyeing proc ess designer reading Chaumat would have learned that leuco indigo solution " m ay be drawn off protec ted from the air and preserved indefinite l y in receptacles whic h are either soldered or closed in any other hermeti c manner." Chaumat, ll.84-87. From his c h emistry backg round, he would hav e known how to close

06-1088 26off a receptacle hermetically. He would have known that, if he could thus stabiliz e leuc o indigo solution, he would sav e even more time, space, and money: dyers would no longer need stock vats or preparation ta nks because they could s i mply pour the prereduced solution directly into the dyebat h itself, and they would no longer need to purchase any hydrosulfite or caustic soda. A dyeing process designer reading Brochet would hav e realized that catalytic hydr ogenation provided adv antages over other methods of indigo reduction in that the leuco indigo wa s "free from impurities and mineral salts". Brochet, l.90. Naturally, then, an ordinary artis an with knowledge of Chaumat, reading Brochet, would h a ve r ealiz ed that, by stabiliz ing cataly tic hydrogenat ed leuco indigo solution in oxy g en-ex c l uding containers, he could devis e a "cheaper, faster, and more conveni ent" indigo dyeing process. See Sandt , 264 F.3d at 1355. Although the '992 patent cl aimed a new, mo re efficient, way of performing a known func tion, dyeing indigo—t he asserted in novation, storing leuco indigo solution in airtight containers for immedi ate use in dyebaths, is mere ly "exploitat ion" of the well-known principle of vacuum packaging. See Sakraida , 425 U.S. at 279. In sum, it is the work of a skilled c hemist, not of an inventor. 3. Secondar y Co nsiderations of Nonobviousness The presence of certain secondary considerations of nonobviousness are insufficient as a matter of law to ov ercome our conclusion that the evidence only supports a legal conc lusion that claim 1 would have been obv ious. To be s u re, the jury heard testimony that DyStar has enjoyed considerable commercial succes s from the introduction of its product, and all parties agree that eighty years elaps e d between Brochet's invention and another inventor's thought to vac uum-seal the Brochet solution

06-1088 27and add it directly to the dyebath. Howeve r, Mr. Schnitzer's testimony that BASF's "people from production"—who we her e assume arguendo were dyeing process designers—believed that leuco indigo soluti on added directly to the dyebath might "stain the yarn with indigo pigment" or "block[ ] pi pes" was a bare assertion that is not only undocumented and non-specific, but als o uns upported by even a brief explanation of the chemistry underlying this ass u mption. As such, it does not constitute substantial evidenc e of a secondary consideration favoring nonobv iousness. Moreover, another secondary considerat ion cited by DyStar—i.e., failed attempts—actually detracts fr om its argument, and heavily so. DyStar points out that another chemical company, Buffalo Colo r, abandoned a 1979 effort to market a prereduced indigo solution made by hy dros ulfite reduction. The record shows, however, that Buffalo was only mildly c onc erned with instability pr oblems—it noted only that the ins t ability of le uco in dig o "would req u ire spec ial (and costly) shipp i ng condition s to protect it from oxidati on". Rather, Buffalo dec ided against s e lling a leuc o indigo solution because it would invo lv e increas ed shippi ng costs, might require customers to invest in additional st orage faci lities, and would cost more to produce, lik ely forcing it to increase prices to customers. Buffalo's decision was thus not a failed attempt, but a calculated business judgment to abando n a potential new product line. C Our inquiry does not end here, however, bec ause we must evaluat e obviousness on a claim-by-claim basis. Day c o Prods., Inc. v. Total Containment, Inc. , 329 F.3d 1358, 1370 (Fed. Cir. 2003) ("[D]ependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.").

06-1088 28Claims 2-4 depend from proce ss claim 1. Claim 2 r equi res that the resulting solution contain from 10% to 35% by weight of leuco indigo; claim 3 requires that the solution contain from 2% to 10% by weight of alkali; and claim 4 requires that the solution contain from 2% to 10% by weight of sodium hydroxide. Dr. Black burn, DyStar's own expert witness, confirmed that the plain l anguage of Wimmer sets forth a "30 percent aqueous s o lution of leuco indigo", which falls within t he range prescribed by claim 2. Dr. Blackburn also testified t hat the solution disclos ed by Wimmer contains "5.1 percent" by weight of alkali—the claim language says "at least six and a half percent", both of whic h fall between 2% and 10%, as require d by claim 3. Likewise, Wimmer indicates that his ex am ple solution uses "NaOH", sodium hydroxide, and Mr. Schnitzer agreed with Bann's co unsel's assertion that the term "caustic" is " c hemically the same thing as sodium hydroxide", whic h meets the requirement of claim 4. DyStar does not dispute these concessions on appeal . Thus, given DyStar's testimony and the plain language of Wimmer, claims 2-4 do not recite a nonobvious invention beyond that recited in claim 1. Accordingly, c l aims 2- 4 must also be held inv a lid for obv iousness as a matter of law.
III In sum, because an ordinary artisan is a person designing an optimal textile dyeing process with s o me experti se in chemistry, the jury's implicit finding t hat the lev e l of ordinary skill in the art is a dyer is unsupported by substantial evidence; its corresponding decis ion to disregard the pr i m ary cited prior art as nonanalogous was also erron eous. Und e r the correct level of ordinary s k ill, it would have be en obvious from Chaumat and Brochet, in view of Wi mmer and other references, to stabilize

06-1088 29catalytically hydrogenated leuc o indigo so lution through vacuum conditions and to introduce the solution dire ctly into the dyebath. Because all claims are hel d invalid for obviousness, we need not address alleged anticipation of claim 1 or la ck of enablement as to claims 1-4. Likewise, whether the '992 patent is unenforceable due to inequit able conduc t need not be decided. Finally, we do not address the request f o r a new trial as all as serted claims are held inv a lid as a matter of law for obv iousness. Accordingly, t he trial court's denial of JMOL that claims 1-4 of the '992 patent are invali d for obvious ness is reversed.
R E VER SED

.

06-1088 30

## United States Court of Appeals for the Federal Circuit

06-1088 DYSTAR TEXTILFARBEN GMBH & CO DEUTSCHLAND KG, Plaintiff-Appellee,

v.
C.H. PATRICK CO., and BANN QUIMICA LTDA, Defendants-Appellants.

SCHALL, Circuit Judge , concurring. I concur in the judgment of reversal. See Alza Corp. v. Mylan Labs., Inc. , No. 06- 1088, 2006 U.S. App. LE XIS 22616, at 4-7 (Fed. Cir. Sept. 6, 2006); In re Kahn , 441 F.3d 977, 987-88 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc. , 424 F.3d 1293, 1322 (Fed. Cir. 2005).