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. With him on the brief were Richard D. 

Kelly and Andrew K. Beverina. 

Neil C. Jones, Nelson Mullins Riley & Scarborough, L.L.P., of Greenville, South 

Carolina, argued for defendants-appellants. 

Appealed from: United States District Court 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. (collectively, "Bann") in the United States 

District Court for the District of South Carolina, alleging direct, 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. Patrick 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 Quimica Ltda. in 2002 and used it to dye yarn in a process

alleged to infringe. 

The parties agreed to a jury trial before a magistrate judge. Prior to charging the 

jury and in open court, the magistrate judge granted DyStar's motion for judgment as a 

matter of law ("JMOL") that it had not engaged in inequitable conduct before the United 

States Patent and Trademark Office ("PTO"). The jury rendered a verdict that "Bann 

Quimica and/or C.H. Patrick" had infringed each of claims 1-4, assessed damages at 

$90,000, and declined to hold the '992 patent claims invalid for lack of enablement, 

anticipation or obviousness. DyStar Textilfarben 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 judge denied Bann's motions for JMOL or, 

alternatively, a new trial on the question of invalidity of the '992 patent for anticipation,

obviousness, and lack of enablement. DyStar Textilfarben GmbH & Co Deutschland

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 evidence presented and found for the 

plaintiff. This 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 not substitute its findings for those of the jury as the

jury's decision was clearly supported by the trial record and was

reasonable. 

Id. 

Bann appeals from the denials of its motions on anticipation and 

obviousness, and the grant of JMOL to DyStar regarding inequitable conduct. 

06-1088 2
For the reasons explained below, we reverse the district court's denial of Bann's

motion for JMOL of invalidity of claims 1-4 for obviousness. 

I 

Indigo has been used in dyeing textile materials for thousands of years. Because 

indigo pigment is insoluble in water, it must be de-oxidized, or "reduced," to a 

water-soluble white form known as "leuco indigo" before it can be used in dyeing. 

Leuco indigo is unstable; it oxidizes and returns to its blue pigment form when exposed 

to oxygen. Thus, leuco indigo solution needs to be kept in an oxygen-free environment,

or otherwise stabilized, if it is not being used immediately for dyeing. 

For many years, dyehouses commonly reduced indigo in-house through a 

process known as hydrosulfite reduction. Dyers created a "stock vat," in which indigo is

reduced in water with sodium hydrosulfite and solubilized with an alkali, e.g., sodium

hydroxide. The resulting leuco indigo solution is then transferred 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 material is contacted 

with leuco indigo in the dyebath; in "skying," the dyed textile material is introduced to the

air, causing the indigo to convert back to its blue pigment form. 

A second common method of indigo reduction, catalytic hydrogenation, was

patented by Andre Brochet in 1917. See U.S. Patent No. 1,247,927 ("Brochet"). The 

superficial difference between hydrosulfite reduction and catalytic hydrogenation is that 

the latter uses gaseous hydrogen, rather than sodium hydrosulfite, as a reducing agent. 

Catalytic hydrogenation allowed "economical production of concentrated solutions of 

leuco derivatives free from impurities and mineral salts"; when left to settle, the solution 

06-1088 3
naturally separates from nickel 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 fact that Brochet's leuco indigo solution could be stabilized in solid form, usually

powder or paste, and coated with molasses or glue to protect the reduced indigo from

air and prevent premature oxidation. This allowed the indigo reduction process to shift 

out of the dyehouses and into chemical manufacturers, which began to produce and sell 

prereduced indigo to dyehouses in the early 1900s. Rather than create a stock vat,

dyers needed only to dissolve the prereduced indigo into a preparation tank, add caustic 

soda (i.e., sodium hydroxide) and sodium hydrosulfite to remove oxygen from the water, 

and transfer the resulting solution from the preparation tank to the dyebath. This

significantly reduced the time necessary to prepare a dyebath, the dyehouses'

expenditures on sodium hydrosulfite and caustic soda, and the level of pollution in

dyehouse waste water and on dyehouse floors. 

The process of dyeing textile materials with catalytically hydrogenated leuco 

indigo traditionally has involved six steps: (1) reducing indigo to its leuco form in 

solution; (2) stabilizing the leuco indigo solution, usually in paste or powder form; 

(3) creating a preparation tank in which the dried leuco indigo is re-converted to solution 

form; (4) adding the solution to the dyebath; (5) dipping; and (6) skying. 

Claim 1 of the '992 patent, the only independent claim at issue, recites: 

A process for dyeing cellulose-containing textile material with indigo which 

comprises 

a) introducing into a dyebath an aqueous solution of leuco indigo solution 

prepared by catalytic hydrogenation; 

b) contacting the textile material with the dyebath; and, after the leuco 

indigo has gone onto the textile material, 

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 improved upon the prior art by

eliminating steps two and three of the traditional process: stabilizing the leuco indigo

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 denials of its motions on anticipation of claim 1 and 

obviousness of claims 1-4, and the grant of DyStar's JMOL of no inequitable conduct. 

We review decisions on motions for JMOL and motions for a new trial under the law of

the regional circuit. MicroStrategy, Inc. v. Bus. Objects, 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 Circuit, the grant or denial of

JMOL is reviewed de novo, which 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 jury, viewing the evidence in the light most

favorable to [DyStar], could have properly reached the conclusion reached by this jury. 

We must reverse if a reasonable jury could only rule in favor of [Bann]; if reasonable 

minds could differ, we must affirm." Id. (internal citation and quotation marks omitted). 

The denial of a motion for a new trial is reviewed in the Fourth Circuit for abuse of

discretion. United States v. Perry, 335 F.3d 316, 320 (4th Cir. 2003). 

Bann asserts that claim 1 of the '992 patent is invalid because it is anticipated by

Brochet. Bann 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—United States Patent

06-1088 5
Nos. 820,900 ("Wimmer") and 885,978 ("Chaumat"), a post-World 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 obvious, 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 must

determine "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). We thus consider whether a person of

ordinary skill in the art would have been motivated to combine the prior art to achieve

the claimed invention and whether there would have been a reasonable expectation of 

success in doing so. Brown & Williamson Tobacco Corp. 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 evidence. Richardson-Vicks, 122 F.3d at 1479.

Following the 1952 enactment of § 103, the Supreme Court explained that obviousness

depends on (1) the scope and content of the prior art; (2) the differences between the 

claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) any

relevant secondary considerations, including commercial success, long felt but unsolved 

needs, and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). 

06-1088 6
This 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 are 

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 invention, and whether it 

motivates a combination of teachings 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 "the prior 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 recently explained in Alza Corp. v. Mylan Labs., Inc., No. 06-1019, 2006 

U.S. App. LEXIS 22616 (Fed. Cir. Sept. 6, 2006), the suggestion test—as our

motivation-to-combine inquiry has come to be known—"prevent[s] statutorily proscribed 

hindsight reasoning when determining the obviousness of an invention." Id. at *7. This

test "informs the Graham analysis", id. at *8 (quoting In re Kahn, 441 F.3d 977, 987 

(Fed. Cir. 2006)), by implementing the Supreme Court's recognition of "the importance 

of guarding against hindsight, as is evident in its discussion of the role of secondary 

considerations as 'serv[ing] to guard against slipping into use 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 characterization of some commentators, the suggestion test is

not a rigid categorical rule. The motivation need not be found in the references sought

to be combined, but may be found in any number of sources, including common 

06-1088 7
knowledge, the prior art as a whole, or the nature of the problem itself. In re 

Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). As we explained in Motorola, Inc. v. 

Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997), "there is no requirement

that the prior art contain an express suggestion to combine known elements to achieve 

the claimed invention. Rather, the suggestion to combine may come from the prior art, 

as filtered through the knowledge of one skilled in the art." 

For one to conclude that the invention of the '992 patent would have been 

obvious, then, the prior art, common knowledge, or the nature of the problem, viewed 

through the eyes of an ordinary artisan, must have suggested the following steps:

(1) creating leuco indigo solution through catalytic hydrogenation; (2) stabilizing the

leuco indigo in solution form; (3) adding the leuco indigo solution directly into a dyebath;

(4) dipping; and (5) skying. Because the jury did not make explicit factual findings in the 

form of answers to written interrogatories or special verdicts, we must discern the jury's 

implied factual findings by interpreting the evidence 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 obviousness argument rests primarily on three U.S. patents: Brochet, 

Wimmer, and Chaumat. Brochet is directed to "the Manufacture of Leuco Derivatives of 

Vat Dyestuffs" generally, of which indigo is one. Brochet, ll.6-7. By its plain language,

Brochet discloses the process of preparing an aqueous solution of leuco indigo by

catalytic hydrogenation. There can be no serious dispute that the ultimate use of a 

"dyestuff" is dyeing textile materials; indeed, the '992 patent inventor, Georg Schnitzer, 

06-1088 8
testified that leuco indigo solutions were known to be used in 1917 for dyeing, and 

Dr. Richard Blackburn, one of DyStar's technical experts, testified that BASF began 

reducing indigo with catalytic hydrogenation, 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 leuco indigo solution is introduced directly into the dyebath without first 

being stabilized through drying. Thus, the critical issue in our obviousness analysis is

whether stabilizing catalytically reduced leuco indigo in solution form, rather than in 

powder form coated with molasses, for example, renders the claimed process

nonobvious to one of ordinary skill in the art. 

1. Level of Ordinary Skill in the Art 

Because the parties disagree over the relevance of the cited prior art, which, 

fundamentally, is a disagreement over the level of ordinary skill in the art, we address

this third Graham factor first. DyStar asserts that we must disregard Brochet, Wimmer, 

and Chaumat, because a person of ordinary skill in the 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 from Dr. Blackburn that "[a] person of ordinary skill in

the art is a dyer", someone with "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, however, that a person of ordinary skill in the art was "running the dye 

processes", which required, inter alia, "doing the calculations". When confronted with 

the inconsistency between his testimony regarding the applicable level of skill during

06-1088 9
cross-examination, Dr. Blackburn stated that "it's difficult to say" which of the two skill 

levels should be applied to the obviousness inquiry. Dr. Blackburn explained that "those 

people may do both jobs", but concluded 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 levels of ordinary skill: (1) that of a dyer and (2) that of a person creating

the dye processes, who we will refer to as a dyeing process designer. 

DyStar presented evidence that The Application of Vat Dyes, a book by the 

American Association of Textile Chemists and Colorists, teaches people how to dye and 

is a text that a dyer would have had at the time of the '992 patent invention. Dr. Nolan 

Etters, Bann's expert witness, agreed that "a person of ordinary skill in the art" would be

a member of the American Association of Textile Chemists and Colorists and conceded 

that none of the prior art cited by Bann is referenced in The Application of Vat Dyes. 

We agree with DyStar that we are required to assume the jury accepted its 

argument that a person of ordinary skill in the art is a dyer with no knowledge 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 art nor analogous arts and then, consistent with the limited 

evidence of prior art deemed relevant, concluded that the process claimed in the '992 

patent would not have been obvious. 

However, substantial evidence does not support the jury's finding that a person of 

ordinary skill is a dyer with no knowledge of chemistry. Indeed, that factual finding is

inconsistent with the '992 patent's very purpose. The technical problem that the 

process of the '992 patent and the prior art cited by Bann sought to solve is precisely 

06-1088 10
the same: an improved process for dyeing textile materials with indigo. This process

includes several discrete subcomponents—e.g., indigo reduction and dyebath 

preparation—and an ordinary artisan would be concerned with all of them. To 

beneficially practice the dyeing process claimed in the '992 patent, the ordinary artisan 

must have a higher-level perspective, as he must first decide whether it is more efficient

to reduce indigo in-house or purchase prereduced indigo and, if prereduced, must then 

decide whether solid or solution form is preferable. 

Designing an optimal dyeing process requires knowledge of chemistry and 

systems engineering, for example, and by no means can be undertaken by a person of 

only high school education whose skill set is limited to "flipping the switches". This is

especially true when one considers that only in the last century have improvements in 

indigo reduction chemistry enabled outsourcing of the indigo reduction step from 

dyehouses to chemical manufacturers; prior to that simplification, there would have 

been no question that a dyer would also require knowledge of indigo reduction. 

Because, for this patent, the only finding supported by substantial evidence is that an 

ordinary artisan is not a dyer but a person designing an optimal dyeing process, the 

jury's implicit finding of a mere dyer cannot withstand scrutiny on JMOL. Accordingly, 

the jury's apparent decision to disregard Brochet, Wimmer, and Chaumat, and perhaps

other prior art references, as neither 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 limitations are found in a combination of prior art 

references, the factfinder must determine "[w]hat the prior art teaches, whether it

06-1088 11
teaches away from the claimed invention, and whether it motivates a combination of

teachings from different references". Fulton, 391 F.3d at 1199-1200 (Fed. Cir. 2004). 

To support its argument that an ordinary artisan—i.e., a dyeing process

designer—would have known to attempt to stabilize the Brochet solution in 

oxygen-excluding conditions for addition directly into a dyebath, Bann points to two 

pre-Brochet BASF patents. Wimmer, issued in 1906, discloses a leuco indigo solution

that "can be filtered and the filtrate (which contains a high percentage of indigo white)

can be placed on the market without any further treatment", in contrast 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, discloses a leuco indigo 

solution that "may be drawn off protected from the air and preserved indefinitely in 

receptacles which are either soldered or closed in any other hermetic manner." 

Chaumat, ll.84-87. Although Wimmer and Chaumat disclose different reducing methods

than Brochet—Wimmer suggests the use of iron, rather than zinc, as a reducing agent, 

and Chaumat discloses an electrolytic process for indigo reduction—Bann argues that 

once the indigo has been converted to its leuco form, the distinction is irrelevant for 

dyeing purposes. Accordingly, Bann argues that this prior art would teach an ordinary

artisan in the field of indigo dyeing process design to attempt to stabilize any leuco

indigo solution, however reduced, for addition directly into the dyebath. 

a. What does the prior art teach? 

DyStar argues that because Wimmer and Chaumat involve different methods of 

reducing indigo, they are nonanalogous art and properly disregarded by the jury. In 

support of this assertion, Mr. Schnitzer testified that, up until the time of the invention, 

06-1088 12
BASF's "people from production" believed that leuco indigo created from catalytic 

hydrogenation was too unstable to be added directly to the dyebath, and might "stain 

the yarn with indigo pigment" or "block[ ] pipes". DyStar offered evidence that, prior to 

the '992 patent, BASF had limited its sales of catalytically hydrogenated leuco indigo to

that stabilized in paste or solid form. Thus, argues DyStar, the language in Wimmer 

and Chaumat suggesting that the solution could be stabilized and sold in solution form 

does not apply to catalytically hydrogenated leuco indigo solution. 

We disagree. As explained supra, the proper focus is on the indigo dyeing 

process as a whole, which requires the ordinary artisan to consider (and choose

between) the various indigo reduction methods. The '992 patent is directed toward a 

process of dyeing with indigo and, although a specific method of reduction is required 

by claim 1, the first step in the process requires indigo in prereduced form. It is

undisputed that reduced indigo by any reduction method, not just catalytic 

hydrogenation, has been used in the indigo dyeing process. The prior art involving 

indigo reduction by other methods is thus not merely analogous art, it is the same art. 

Accordingly, all limitations recited by claim 1 of the '992 patent—including the immediate

use of leuco indigo solution for dyeing—are contained in the prior art.2

 

b. Does the prior art teach away 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. DyStar acknowledges that no specific language in these references

 2 Because the only difference between the claimed invention and the cited 

prior art is the method of indigo 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 13
teaches away from the invention of the '992 patent. Rather, because these references 

do not discuss the stabilization of leuco indigo solution (in solution form) for immediate

addition to a dyebath, DyStar somehow concludes that these references teach that 

leuco indigo solution "cannot be used to dye but is instead useful 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 filtrate (which contains a high percentage of 

indigo white) can be placed on the market without any further treatment". Wimmer, 

ll.33-37. Likewise, the Brochet patent, directed toward all vat dyestuffs, broadly teaches

that the process "produce[s] mother-liquors which can be diluted immediately before 

use, or be treated by evaporation under reduced pressure or by any other means to

obtain concentrated products for sale." Brochet, ll.66-70. This language implies that all 

vat dyestuffs, including indigo, may either be used immediately for dyeing or

concentrated prior to sale. In his contemporaneous article, Brochet stated that his

catalytically hydrogenated solution could be used "economically to obtain concentrated 

indigo white [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 article that, though most dyestuffs may be used

immediately or stored in oxygen-excluding containers, his leuco indigo solution may

only be concentrated in paste form. We will not read into a reference a teaching away

from a process where no such language exists. 

06-1088 14
c. Is there a motivation to combine? 

DyStar argues that this court's "suggestion test" for obviousness requires the 

cited references themselves to contain a suggestion, teaching, or motivation to combine 

them, and that it must be explicitly stated. DyStar then points out, correctly, that 

Brochet does not suggest combining his invention with those of Chaumat or Wimmer to 

stabilize his leuco indigo solution in oxygen-excluding containers until either using it 

directly in the dyebath or placing it on the market for sale, respectively. Absent such a 

teaching, urges DyStar, the invention of claim 1 of the '992 patent cannot be obvious. 

DyStar's argument misreads this court's cases and misdescribes our suggestion 

test, echoing notions put forth recently by various commentators and accepted in major 

reports. A 2003 report by the Federal Trade Commission, for example, quoted 

testimony of certain witnesses that this court requires "specific and definitive [prior] art 

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 ch. 4, at 11 (2003).

Similarly, a 2004 report by the National Academy of Sciences summarized views of a 

few commentators that "standards of patentability—especially the non-obviousness

standard—have become too lax as a result of court decisions" by the Federal Circuit, 

leading to the deterioration of patent quality. Nat'l Research Council, 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 Academies Report entitled "A Patent

System for the 21st Century" 10 (2004) ("AIPLA believes that the courts, including the 

06-1088 15
Federal Circuit, have applied the standard of non-obviousness with both the needed

rigor and the appropriate vigor, and they have done so with a commendable 

consistency over the past two decades. If a difficulty exists with application of the nonobviousness standard today, it does not lie in the patent statute or in substantive law of 

non-obviousness as applied in the courts.") 

Seeking to support their assertions about Federal Circuit caselaw, these few 

commentators have quoted isolated statements from three of our precedents in 

particular, including Dembiczak, 175 F.3d at 1000, wherein we stated that the analysis

by the Board of Patent Appeals and Interferences ("Board") "fails to demonstrate how

the [two cited] references teach or suggest their combination" (emphasis 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 obviousness may be made from common 

knowledge and common sense of a person of ordinary skill in the art without any

specific hint or suggestion in a particular reference" as "[o]mission of a relevant factor 

required by precedent". They have also cited our repeated use of the word "references" 

in the following list from Ruiz v. A.B. Chance Co., 234 F.3d 654 (Fed. Cir. 2000), where 

we suggested a motivation to combine may be found: 

 1) in the prior art references themselves; 

 2) in the knowledge of those of ordinary skill in the art that certain 

references, or disclosures in those references, are of special 

interest or importance in the field; or 

 3) from the nature of the problem to be solved, leading inventors to 

look to references relating to possible solutions to that problem. 

Id. at 665 (emphasis added) (internal quotation marks omitted). 

Despite containing arguably imprecise language in these statements, quoted out 

of context, each of the above-cited cases correctly applies the suggestion test and by 

06-1088 16
no means requires an explicit teaching to combine to be found in a particular prior art 

reference. Dembiczak involved the combination of a reference in the plastic trash bag 

art with children's arts and crafts books that included, among innumerable fanciful 

drawings, jack-o-lanterns. Contrary to some interpretations, we stated explicitly that

evidence of a motivation to combine need not be found in the prior art references 

themselves, but rather may be found in "the knowledge of one of ordinary skill in the art, 

or, in some cases, from the nature of the problem to be solved." 175 F.3d at 999 

(citation omitted). When not from the prior art references, the "evidence" of motive will

likely consist of an explanation of the well-known principle or problem-solving strategy to 

be applied. Our analysis in Dembiczak focused on an explicit teaching in the prior art

not because our case law requires it, but because the Board had stated that "the [two 

cited] references would have suggested the application of . . . facial indicia to the prior

art plastic trash bags." Id. at 1000 (emphasis added). We held the Board's

obviousness determination legally insufficient because, in addition to failing to make 

Graham findings, the Board's analysis was "limited to a discussion of the ways that the 

multiple prior art references can be combined to read on the claimed invention", "rather 

than pointing to specific information in [the two references] that suggest the 

combination". Id. On appeal to this court, the Commissioner of Patents and 

Trademarks attempted to defend the Board decision by laying out, using the Graham

factors, a clear—and likely affirmable—rationale establishing the level of ordinary skill 

and explaining the motivation to combine. Id. at 1001. We declined to consider these 

arguments, newly raised on appeal, stating that they did "little more than highlight the 

shortcomings of the decision below." Id.

06-1088 17
In Ruiz, as in Dembiczak, we vacated a conclusion of obviousness because the 

factfinder failed to make Graham factor findings. 234 F.3d at 660. Far from requiring 

evidence of an explicit motivation to combine, we suggested in Ruiz that there may 

have existed an implicit motivation to combine, based on testimony that the invention 

was an improvement over the prior art because it is "easy to install" and "low cost". Id.

at 666. We explained that such "[e]vidence which suggests that the combination of two 

references would suggest the resulting improvement is one way in which to determine a 

reason, suggestion, or motivation to combine" and instructed the district 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 obviousness may be made from common 

knowledge and common sense of a person of ordinary skill in the art without any

specific hint or suggestion in a particular reference", but its utter failure to explain the 

"common knowledge and common sense" on which it relied. See 277 F.3d at 1341,

1344. Lee involved a patent combining a prior art video game instruction handbook

describing a "demonstration mode" with a prior art television set having a menu display

allowing video and audio adjustments. The Board, without 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 which can be used in many 

different devices for providing automatic introduction by adding the proper programming 

software' and that 'another motivation would 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 those here provided do not fulfill the agency's 

obligation" to explain all material facts relating to a motivation to combine. Id. at 1344.

In other words, we instructed the Board to explain why "common sense" of an ordinary

artisan seeking to solve the problem at hand would have led him to combine the 

references. We noted that our predecessor court held more than thirty years earlier that

"common knowledge and common sense" were sufficient to establish a motivation to 

combine, In re Bozek, 416 F.2d 1385 (C.C.P.A. 1969), and distinguished that case 

because, in Bozek, the examiner first "established that this knowledge was in the art". 

Id. at 1390. We instructed that assumptions about common sense cannot substitute for 

evidence 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 unsupported assertion that claim limitation missing from

cited references was "basic knowledge" and it "would have been nothing more than 

good common sense" to combine the references, and explaining 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) (affirming finding of high level of

ordinary skill and the Board's explanation as to why cited reference implicitly would

suggest missing claim limitation to ordinary artisan, but reversing its reliance on high 

level of ordinary skill as basis of motivation to combine, and stating, "The Board did not, 

however, explain what specific understanding or technological principle within the 

knowledge of one of ordinary skill in the art would have suggested the combination.

Instead, the Board merely invoked the high level of skill in the field of art. If such a rote 

06-1088 19
invocation could suffice to supply a motivation to combine, the more sophisticated 

scientific fields would rarely, if ever, experience a patentable technical advance."). 

It is difficult to see how our suggestion test could be seen as rigid and categorical 

given the myriad cases over several decades in which panels of this court have applied 

the suggestion test flexibly. Obviousness is a complicated subject requiring

sophisticated analysis, and no single case lays out all facets of the legal test. DyStar's

argument and the above-cited commentary 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 related precedents for all they say that is dispositive and for 

what they hold. When parties like Dystar do not engage in such careful, candid, and 

complete legal analysis, much confusion about the law arises and, through time, can be 

compounded.3

 

Our suggestion test is in actuality quite flexible and not only permits, but requires, 

consideration of common knowledge and common 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 casting the mind back to the time of invention, to consider

the thinking of one of ordinary skill in the art, guided only by the prior art references and

 3 Indeed, the United States Supreme Court recently granted certiorari in a 

case involving this court's application 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 obviousness. The district court found a motivation 

to combine not in the references but "largely on the nature of the problem 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 its rationale, and failed to make "findings as to the specific 

understanding or principle within the knowledge of a skilled artisan that would have 

motivated one with no knowledge of [the] invention to make the combination in the 

manner claimed." Id. at 288 (citation omitted). 

06-1088 20
the then-accepted wisdom in the field."); Motorola, 121 F.3d at 1472 ("[T]he suggestion 

to combine may come from the prior art, as filtered through the knowledge of one skilled

in the art."); Bozek, 416 F.2d at 1390 ("Having established that this knowledge was in 

the art, the examiner could then properly rely, as put forth by the solicitor, on a 

conclusion of obviousness 'from common knowledge and common sense of the person 

of ordinary skill in the art without any specific hint or suggestion in a particular

reference.'"). 

Indeed, we have repeatedly held that an implicit motivation to combine exists not 

only when a suggestion may be gleaned from the prior art as a whole, but when the 

"improvement" is technology-independent and the combination 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 to

enhance commercial opportunities by improving a product or process is universal—and 

even common-sensical—we have held that there exists in these situations a motivation 

to combine prior art references even absent any hint of suggestion in the references 

themselves. In such situations, the proper 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 analyzed asserted obviousness of a claimed invention of a 

sports trading card holder only slightly larger than the trading card. We stated that "[w]e 

start from the self-evident proposition that mankind, in particular, inventors, strive to 

improve that which already exists". Id. at 1573. We required no documentary evidence 

06-1088 21
of motive. We explained that the motivation to combine "a reference describing an 

elegant card holder and cover arrangement with a reference describing a card holder no

larger than necessary to enclose 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 efficient, there existed an implicit, indeed 

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 obviousness a patent claim for a stainless

steel cover for pay telephones. The only relevant difference between the claimed 

invention and the prior art covers was that the former attached the steel cover to the 

telephone via studs and the latter attached it with welds. Id. We noted that the 

difference between attaching with welds and studs was merely a "slight variation that

produced convenience". Id. We found a clear motive to alter the prior art welded cover

simply because "[u]sing studs was a cheaper, faster, and more convenient 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 obviousness of a patent claiming the use of 

underwater acoustic waves to kill zebra mussels. The Board had upheld the rejection of 

an application based on two prior art patents: an acoustic wave generator that enabled 

altering wave intensity and focusing acoustic energy along a particular angle, and a 

method of using water-borne acoustic waves to kill zebra mussels. The Board held that 

 4 We vacated the district court's grant of summary judgment of invalidity for 

other reasons, finding genuine disputes of material fact on the issue of commercial

success. Id. at 1573. 

06-1088 22
a motivation to combine the two references existed because an ordinary artisan would 

have been aware of both references and that combination of the two was "more 

efficient". Id. at 1002-03. The inventor then brought a civil suit against the Director of 

the PTO pursuant to 35 U.S.C. § 145, and the district court granted summary judgment 

in favor of the Director. We deemed sufficient the Board's explanation of a motivation to 

combine and affirmed "because the references illustrate that it is well known in the art to

use acoustic energy to kill and repel zebra mussels." Id. at 1006; see also Ruiz, 234 

F.3d at 666 (remanding for determination of whether testimony that claimed invention

was "easy to install" and "low cost" established motivation to combine). 

In situations where a motivation to combine is based on these principles, the 

invention cannot be said to be nonobvious. Our precedent on this point, moreover, is 

consistent with the Supreme Court's holdings in Graham and three other obviousness

decisions pre-dating the establishment of this court. See Sakraida 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 heating asphalt (2) attached to the front of a 

standard asphalt-paving machine. Both elements were well-known in the prior art 

individually, with the difference being that previously, radiant-heat burners were not 

used in paving, but merely for patching limited areas of asphalt. 396 U.S. at 58-59.

Because asphalt is usually laid sequentially in parallel strips, the adjoining strip cools

before the next strip is laid, leading 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 23
reheating the adjoining edge of the earlier-laid strip as a new strip is laid, the invention

sought to eliminate the cold joint. No explicit suggestion to combine the prior art 

references would have been necessary because the invention merely improved the 

efficiency of the already-known process of laying pavement through the already-known 

method of merging two sections of asphalt through re-heating the earlier laid section—

both of which would have been common knowledge to ordinary artisans in the field of

laying asphalt. See also Graham, 383 U.S. at 24-25 (holding invalid for obviousness 

Graham's patent disclosing a spring clamp on a plow shank, where claimed invention 

merely improved mechanical weakness in prior Graham patent, because ordinary

artisan would have had mechanical skills sufficient to "immediately see that the thing to

do was what Graham did"); id. at 36-37 (holding invalid for obviousness Cook

Chemical's patent disclosing a plastic finger sprayer with a "hold-down" lid serving as a

built-in dispenser for bottles of liquid products, where differences from prior art were 

"exceedingly small and quite nontechnical" and device was "old in the art"). 

Likewise, in Sakraida, the Supreme Court held invalid for obviousness a patent 

for a barn having "a paved, sloped barn floor with downhill drains", "elevated" cow stalls, 

and a "dam" behind which water may be stored and abruptly released in order to "send 

a sheet of water cascading through the dairy 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 superior to that from a hose, the claimed invention reduced 

the quantity of water necessary to clean the barn floor and obviated additional hand 

labor, e.g., brooms or shovels, shortening the cleaning process from a few hours to a 

06-1088 24
few minutes. Id. The Supreme Court nonetheless negated patent protection, 

characterizing the invention as "the work of the skillful mechanic, not that of the

inventor." Sakraida, 425 U.S. at 279 (internal quotation marks omitted). The Court

aptly noted that "[e]xploitation of the principle of gravity adds nothing to the sum of 

useful knowledge". Id. Under this court's case law, there would have been no need for 

"evidence" of a motivation to combine a prior art reference with a universally-known 

physical principle to achieve more powerful and simultaneous sweep of water. 

In Adams, a companion case to Graham, the Supreme Court upheld the validity

of a patent for a non-rechargeable water-activated battery having magnesium and

cuprous chloride electrodes. Adams, 383 U.S. at 51. The Court recognized that "each 

of the elements of the Adams battery was well known in the prior art", but rejected the 

United States' obviousness argument because the prior art taught away from the Adams 

patent's combination. As the Court succinctly stated: 

To combine [the references] as did Adams required that a person 

reasonably skilled in the prior art must ignore that (1) batteries which

continued to operate on an open circuit and which heated in normal use 

were not practical; and (2) water-activated batteries were successful only 

when combined with electrolytes detrimental to the use of magnesium. 

Id. at 51-52. The Court instructed that such "known disadvantages in old devices . . . 

may be taken into account in determining obviousness", id. at 52, and we have 

incorporated this notion into our case law. See, e.g., Fulton, 391 F.3d at 1199-1200

(instructing the factfinder to determine "[w]hat the prior art teaches, whether it teaches

away from the claimed invention, and whether it motivates a combination of teachings

from different references"). 

06-1088 25
Although this court customarily discusses a motivation to combine as part of the 

first Graham factor, the scope and content of the prior art, see SIBIA Neurosciences, 

225 F.3d at 1356, motivation to combine is also 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 level of ordinary skill will often predetermine 

whether an implicit suggestion exists. Persons of varying degrees of skill not only

possess varying bases of knowledge, they also possess varying levels of imagination 

and ingenuity in the relevant field, particularly with respect to problem-solving abilities.

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 such an artisan would not think to combine 

references absent explicit direction in a prior art reference. If, however, as we have 

held as a matter of law, the level of skill is that of a dyeing process designer, then one 

can assume comfortably that such an artisan will draw ideas from chemistry and 

systems engineering—without being told to do so. 

A dyeing process designer would have been aware that reducing leuco indigo 

in-house was time-consuming as well as expensive and that it created much pollution

on the dyehouse floor and in public sewers. He would have known that purchasing 

solid prereduced indigo would save time, space, and money: dyers would no longer

spend time creating stock vats, and the dyehouse would require far less hydrosulfite

and caustic soda. A dyeing process designer reading Chaumat would have learned that

leuco indigo solution "may be drawn off protected from the air and preserved indefinitely

in receptacles which are either soldered or closed in any other hermetic manner." 

Chaumat, ll.84-87. From his chemistry background, he would have known how to close 

06-1088 26
off a receptacle hermetically. He would have known that, if he could thus stabilize leuco

indigo solution, he would save even more time, space, and money: dyers would no 

longer need stock vats or preparation tanks because they could simply pour the 

prereduced solution directly into the dyebath itself, and they would no longer need to 

purchase any hydrosulfite or caustic soda. A dyeing process designer reading Brochet

would have realized that catalytic hydrogenation provided advantages over other 

methods of indigo reduction in that the leuco indigo was "free from impurities and 

mineral salts". Brochet, l.90. Naturally, then, an ordinary artisan with knowledge of

Chaumat, reading Brochet, would have realized that, by stabilizing catalytic

hydrogenated leuco indigo solution in oxygen-excluding containers, he could devise a 

"cheaper, faster, and more convenient" indigo dyeing process. See Sandt, 264 F.3d at 

1355. Although the '992 patent claimed a new, more efficient, way of performing a 

known function, dyeing indigo—the asserted innovation, storing leuco indigo solution in 

airtight containers for immediate use in dyebaths, is merely "exploitation" of the 

well-known principle of vacuum packaging. See Sakraida, 425 U.S. at 279. In sum, it is

the work of a skilled chemist, not of an inventor. 

3. Secondary Considerations of Nonobviousness 

The presence of certain secondary considerations of nonobviousness are 

insufficient as a matter of law to overcome our conclusion that the evidence only

supports a legal conclusion that claim 1 would have been obvious. To be sure, the jury

heard testimony that DyStar has enjoyed considerable commercial success from the 

introduction of its product, and all parties agree that eighty years elapsed between

Brochet's invention and another inventor's thought to vacuum-seal the Brochet solution 

06-1088 27
and add it directly to the dyebath. However, Mr. Schnitzer's testimony that BASF's

"people from production"—who we here assume arguendo were dyeing process

designers—believed that leuco indigo solution added directly to the dyebath might "stain 

the yarn with indigo pigment" or "block[ ] pipes" was a bare assertion that is not only

undocumented and non-specific, but also unsupported by even a brief explanation of

the chemistry underlying this assumption. As such, it does not constitute substantial 

evidence of a secondary consideration favoring nonobviousness. 

Moreover, another secondary consideration cited by DyStar—i.e., failed 

attempts—actually detracts from its argument, and heavily so. DyStar points out that

another chemical company, Buffalo Color, abandoned a 1979 effort to market a 

prereduced indigo solution made by hydrosulfite reduction. The record shows, 

however, that Buffalo was only mildly concerned with instability problems—it noted only

that the instability of leuco indigo "would require special (and costly) shipping conditions

to protect it from oxidation". Rather, Buffalo decided against selling a leuco indigo 

solution because it would involve increased shipping costs, might require customers to

invest in additional storage facilities, and would cost more to produce, likely forcing it to 

increase prices to customers. Buffalo's decision was thus not a failed attempt, but a 

calculated business judgment to abandon a potential new product line. 

C 

Our inquiry does not end here, however, because we must evaluate obviousness 

on a claim-by-claim basis. Dayco 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 28
Claims 2-4 depend from process claim 1. Claim 2 requires 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. Blackburn, 

DyStar's own expert witness, confirmed that the plain language of Wimmer sets forth a 

"30 percent aqueous solution of leuco indigo", which falls within the range prescribed by 

claim 2. Dr. Blackburn also testified that the solution disclosed by Wimmer contains

"5.1 percent" by weight of alkali—the claim language says "at least six and a half 

percent", both of which fall between 2% and 10%, as required by claim 3. Likewise,

Wimmer indicates that his example solution uses "NaOH", sodium hydroxide, and Mr. 

Schnitzer agreed with Bann's counsel's assertion that the term "caustic" is "chemically

the same thing as sodium hydroxide", which 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, claims 2-4 must also be held invalid for obviousness as 

a matter of law. 

III 

In sum, because an ordinary artisan is a person designing an optimal textile 

dyeing process with some expertise in chemistry, the jury's implicit finding that the level 

of ordinary skill in the art is a dyer is unsupported by substantial evidence; its 

corresponding decision to disregard the primary cited prior art as nonanalogous was

also erroneous. Under the correct level of ordinary skill, it would have been obvious

from Chaumat and Brochet, in view of Wimmer and other references, to stabilize

06-1088 29
catalytically hydrogenated leuco indigo solution through vacuum conditions and to 

introduce the solution directly into the dyebath. 

Because all claims are held invalid for obviousness, we need not address alleged 

anticipation of claim 1 or lack of enablement as to claims 1-4. Likewise, whether the 

'992 patent is unenforceable due to inequitable conduct need not be decided. Finally,

we do not address the request for a new trial as all asserted claims are held invalid as a 

matter of law for obviousness. Accordingly, the trial court's denial of JMOL that claims 

1-4 of the '992 patent are invalid for obviousness is reversed. 

REVERSED. 

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. LEXIS 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).