## United States Court of Appeals for the Federal Circuit

04-1493

PRINCETON BIOCHEMICALS, INC., Plaintiff-Appellant,

v.
BECKMAN COULTER, INC., Defendant-Appellee.

William G. Todd , Greenberg Traurig, LLP, of New York, New York, argued for plaintiff-appellant. With him on the brief was Scott J. Bornstein

. Joseph R. Re , Knobbe, Martens, Olson & Bear, LLP , of Irvine, California, argued for defendant-appellee. With him on the brief were Darrell L. Olson , Douglas G. Muehlhauser , and Christy G. Lea

. Appealed from: United States District Court for the District of New Jersey Judge Mary L. Cooper

## United States Court of Appeals for the Federal Circuit
04-1493 PRINCETON BIOCHEMICALS, INC., Plaintiff-Appellant,

v. BECKMAN COULTER, INC., Defendant-Appellee.

__________________ _________ DECIDED: June 9, 2005

__________________ _________ Before RADER, SCHALL, and GAJARSA, Circuit Judges

. RADER, Circuit Judge

. In the United States District Court fo r the District of New Jersey, a jury found in favor of Plaintiff-Appellant Prin ceton Biochemicals, Inc. (Princeton), rejecting the claims of Defendant-Appellee Beckman Coulter, Inc. (Beckman) that Princeton’s U.S. Patent No. 5,045,172 (t he ‘172 patent) is invalid by reason of obviousness and prior invention, and findi ng that Beckman infringed the ‘172 patent. On all three questions, however, the district court found the jury’s verdict unsupported by substantial evidence and gr anted judgment as a matter of law (JMOL) in favor of Beckman. Princeton Biochemicals, Inc. v. Beckman Coulter, Inc. , No. 96-5541 (MLC), 2004 WL 1398227 (D.N .J. June 17, 2004). Because the district court properly concluded that substantial evidence did not support the jury’s verdict of nonobvious ness, this court affirms.I. Dr. Norberto Guzman is the inventor of the ‘172 patent, which he assigned to Princeton. The ‘172 patent claims a capilla ry electrophoresis device. Electrophor esis is one method available fo r the investigation of biological materials, and is an efficient procedur e for the separation a nd detection of proteins and other matter. ‘ 172 patent, col. 1, ll. 16-20. Electrophor etic separation, one species of electrophoresis, relies on the differenti a l speeds of the migration of differently charged parti cles in an electric field. Id. at col. 1, ll. 21-23. Capillary electrophoresis is one type of electrophoretic separation. Id. at col. 1, ll. 17-20. As the ‘172 pat ent describes, [I]t is generally known that a material, containing mixtures of substances to be analyzed, can be passed along a c apillary tube and through a detector under the in fluenc e of an applied voltage. The applied voltage char ges the substanc es and the charges on the substances determine their spac ing and their speed of passage along the capillary tube. Id. at col. 2, ll. 32-38. Capillary tubes, generally made of quartz, range in lengths of roughly 10 to 100 cent imeters and 25-200 microns in diameter. Id. at col. 1, ll. 50-58. Due to the di mensi ons of a tube, capillary el ectrophoresis requires only a minute sample size to efficiently separate and ident ify the components of a solution. Claim 32 of the ‘172 patent cl aims a specific capillary electrophoresis device: Capillary electrophoresis apparat us comprising a capillary tube of the type which can be electrically charged, said capillary tube having first and second ends,

04-1493 2first means at said first end of said capillary tube providing a sourc e of buffer solution and a sour ce of a sample substance to be analyzed, second means coupled to said apparatus for applying electric al potential across said capillary tube whereby a sample flows through said capillary tube and past said detector, said first means includes a rotat able table carrying a plurality of sample cups and a holder for holdi ng an end of said capillary tube in operative relation with one of the said cups , said cups containing either buffer solution or a sample to be analyzed, and said capillary tube is i n the form of a coil of glass tubing [secured to a support member]

. ∗

Id. at col. 23, ll. 30-47 (e mphases added). The parties stipulat ed that claim 32 contains eight elements, as follows: Capillary elec trophoresis a pparatus comprising: (1) a capillary tube of the type which can be electrically charged, (2) said capillary tube having first and second ends, (3) first means at said firs t end of said capillary tube providing a source of buffer solution and a source of sample substance to be analyzed, (4) second means coupled to said apparatus for applying electrical potential acr o ss said c apillary tube whereby a sample flows through said capillary tube and past said detector, (5) said first means inc l udes a rotatable table carrying a plurality of sample cups and (6) a holder for holding an end of said capillar y tube in operative relation with one of the said cups, said cups containing either buffer solu tion or a sample to be analyzed, and (7) said capillary tube is in the form of a coil of glass tubing (8) secured to a support member. Id.

∗ The words “secured to a support member” are not present in the final, publis hed version of the ‘172 patent. T he parties stipulated at trial that this was a printing error only. Those words appear in claim 32 as issued.

04-1493 3Beckman manufactures and sells t he P/ ACE 2000 and 5000 Series capillary electrophoresis devices (“the a ccused devices” or “the P / ACE devic es”). Beckman contends a prototype devic e, named OTEP II, con t ained all the elements recited in c l aim 32. Princet on does not contest that B e ckman made OTEP II by February 1, 1987. That date, t herefore, is the relevant reduction-topractice date for the P / ACE devic es. Beckman began selling P/ACE devices as early as 1993. Guzman filed the applicat ion for the ‘172 patent on November 14, 1988. Thus, the critical date for evaluating 35 U.S.C. § 102(b) prior art references is November 14, 1987. Several references , publis hed before November 14, 1987, discussed the electrophoretic concepts emb odied in claim 32 of the ‘172 patent. Two partic u lar references stand out. The first, an article by Honda dated September 1987, describes ways to introd uce automatically different samples into a capillary electrophoresis device. Su sumu Honda, et. al., “Evaluation of an Automatic Siphonic Sampler for Capillar y Zone Electrophoresis,” Int’l J. on Chromatography, Electrophor esis and Related Methods . The second, a Ph.D. thesis by Lukacs, was published in 1983 by a graduate student of Dr. James W. Jorgenson, an expert who testified on beh alf of Beckman. The Lukacs thesis disclos es the coiling of capillary tubes during electrophoretic work. Coiling a capillary tube lengt hens the tubing wit hout increasing the size of the electrophor etic device. A longer t ube provides better separation and identification of analytes.

04-1493 4On November 21, 1996, Princeton f iled suit, alleging that the P/ACE devices infringed claim 32 of the ‘172 patent. Beckman denied infringement and sought a declaration of invalidity on grounds of obviou s ness and prior invention. Following a grant of summary judgment of noninfringe m ent, Princeton appealed. In an unpublished opinion, this court revers ed, holding that the district court had improperly construed the sixth element in claim 32. Prin ceton Biochemicals, Inc. v. Beckma n Instrume nts, Inc. , 1999 WL 641233, at *6 (Fed. Cir. 1999) (“The proper interpretation of the holder limit ation is that ‘in operative relation’
encompass e s both vertical movement of the holder as well as vertical movement of the sample cups and the table.”). On remand, the district court conduc ted a nine-day trial followed by motions for JMOL from both parties. T he district court re served judgment until after the jury verdict. The jury deci ded in favor of Princeton on all issues. Specifically , the jury found that Princeton prov ed by a preponderance of the evidenc e that Beckman’s devic es infringe d claim 32 of the ‘172 patent; that Beckman did not prove by clear and convin cing evidence that claim 32 of the patent was invalid for obviousness; and fi nally, that Beckman did not prove “by clear and convinc i ng evidence that clai m 32 is invalid because the invention described in that claim was made by Beckm an before it was made by Princeton.” Beckman timely renewed its JMOL motion and moved alternatively for a new trial. In due course, the di strict court issued a carefully composed, 194-page opinion that set aside the jury’s verdict and found all counts in favor of Beckman.

04-1493 5Princeton Biochem ic als, Inc. , 2004 WL 1398227. The district court also granted Beckman’s motion for a new trial. Id. at *91. Princeton timely appealed to this court. This court has jurisdic tion under 28 U.S.C. § 1295(a)(1).
II. "The grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed under the law of the regional circuit in which the appeal from the dist rict court would usually lie." Summit Tech., Inc. v. Nidek Co. , 363 F.3d 1219, 1223 (Fed. Cir. 2004). Under the law of the Third Circuit, review of a district court's ruling on JMOL is plenary. Shellenberger v. Su mmit Bancorp, Inc. , 318 F.3d 183, 186 (3rd Cir. 2003). The party requesting the JMOL must show that substantial evidenc e did not support the jury’s fi ndings, where substantial evid ence is “such relevant evidenc e from the record taken as a whole as might be accepted by a r easonable mind as adequate to support the finding under review.” Tex. Instruments Inc. v. Cypres s Semiconductor Corp. , 90 F.3d 1558, 1563 (Fed. Cir . 1996). This court must also consider all the evidence before t he jury and draw all reasonable inferences in favor of the prevailing party on that issue, i.e ., the non-movant. RichardsonVicks Inc. v. Upjohn Co. , 122 F.3d 1476, 1479 (Fed. Cir. 1997). Regarding the obvious nes s issue in this case, this c ourt must determine w hether the jury had substantial evidence upon whic h to conc lude that Beckman met its burden of showing invalidity by clear and convinc i ng evidence. This court also reviews the legal stand ards that the jury applied in reaching its verdict to determi ne whether they were correct as a matter of l a w.

04-1493 6Markman v. Westview Instruments, Inc. , 52 F.3d 967, 975 (Fed. Cir. 1995) (en banc ), aff’d , 517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996). When reviewing a jury’s verdict on obviousness the court reviews the “conclus i ons on obvious nes s, a question of law, without def erence, and the underlying findings of fact, whether explicit or im plicit within the verdict, for substantial evidenc e.” LNP Eng’g Plas tics, Inc. v. Miller Wa ste Mills, Inc. , 275 F.3d 1347, 1353 (Fed. Cir. 2001). Specifically, the jury is presum ed to have “resolved the underlying factual disputes in favor of the verdict winne r and [this court leaves] those presumed findings undisturbed if they are supported by substantial evidenc e ”. Jurgens v. McKasy , 927 F.2d 1552, 1557 (Fed. Cir. 1991).
III. Section 103 of title 35 of the United States Code states: A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole woul d have been obvious at the time the invention was ma de to a pers on having ordinary skill in the a r t to which said subject matter pertains. 35 U.S.C. § 103(a) (2000). Th e legal conc lusion, that a claim is obvious within § 103(a), depends on at least four underly ing factual issues: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in t he pe rtinent art; and (4 ) evaluatio n of any relevant secondary considerations. See Graham v. John Deere Co. of Kansas City , 383 U.S. 1, 17 (1966). A nalyzing the record support for those factors for Beckman’s Rule 50(b) motion, the trial court concluded that claim 32 was obvious. Thus, the court granted Beckman’ s motion fo r J M OL, se t aside the jury

04-1493 7verdict rejecting the obviousness cha llenge, and entered j udgment invalidating claim 32. There is no dispute that the referenc es introduced at trial disclosed every element in claim 32. Guzman admitted thi s in his testimony at trial. Thus, aside from the relevanc e of the asserted refere nces, the only disputed issue at trial, and asserted on appeal, was whether ther e was motivation to combine the elements already present in t he prior art. As this cour t outlined in Ruiz v. A.B. Chance Co. , 357 F.3d 1270, 1275 (Fed. Cir. 2004) , in making the assessment of differences between the prior art and the claimed subject ma tter, section 103 specifically requires cons ideration of the claimed invention “as a whole.” Inventions typically are new c o mbinations of existing principles or features. Envtl. Designs, Ltd. v. Union Oil Co. , 713 F.2d 693, 698 (Fed. Cir. 1983) (noting that “virtually all [inv entions] are comb inations of ol d elements”). The “as a whole” instruction in title 35 prevents ev aluation of the invent ion part by part. Ruiz , 357 F.3d at 1275. Without this im portant requirement, an obviousness assessment might successfully break an in vention into its component parts, then find a prior art reference corre sponding to each component. Id. This line of reasoning would import hindsight into t he obviousness determi nation by using the invention as a roadmap to find its prior art components. Further, this improper method would discount the value of combining various existing features or principles in a new way to achieve a new result - often the essenc e of invention. Id.

04-1493 8Contrary to this reasoning, sect ion 103 requires assessment of the invention as a whole. Id. This “as a whole” assessment of the invention requires a showing that an artisan of ordinary skill in the art at the ti me of invention, confronted by the same pr oblems as the inventor and with no knowledge of the claimed invention, would have selected the various el ements from the pri o r art and combined them in t he claimed manner. Id. In other words, section 103 requires some suggestion or motivation, bef ore the invention it self, to make the new combination. See In re Rou ffet , 149 F.3d 1350, 1355-56 (Fed. Cir. 1998). In setting aside the jury’s verdict and hold i ng claim 32 obvious, the district court syste m atically and vigilantly consi der ed the relevant prior art refe rences and testimony of both parties. The Honda article relate s to claim 32’s first six elements and describ es an automated cap illary electrophoresis device with a rotatable table carrying a plurality of sa mple cups. P r inceton does not contest that the Honda article disclos es elements one through six. Theref ore, at the time of Princeton’s claim 32 invention, the prior art had disclosed elements one through six. With respect to the seventh elemen t, the district court found that the Lukacs thesis disclos ed the construction and use of a coiled glass capillary in a capillary electrophoresis apparatus. Princeton Biochemicals, Inc. , 2004 WL 1398227, at *40. Additionally, Dr. Jor genson testified about Ms. Lukacs’s work with coiled capillaries based on his own ob servations in the laboratory with Ms. Lukacs. H e noted that they coiled glass capillar ies that were two to three meters and longer . Id. at *24. In light of the Luk acs thesis, Dr. Guzman conceded at

04-1493 9trial that he was not the first to coil a ca pillar y in an e l ectrophoresis device. Id. at *40. Therefore, at the ti me of Princeton’s claim 32 in v ention, element 7 was also known in the prior art. Element 8 of claim 32 recites the r equirement that the capillar y tube of claim 32, in the form of glass tubing, mu st be “secured to a support member.” At trial, Dr. Guzman testified t hat he did not invent “secur ing capillary tubes or any portion thereof to support members” and did not deny that this element was “old” or that it did not “add” anything new to t he claim. From this , the district court correctly concluded that element 8 was known in the prior art. Id. at *40. Furthermore, in its brief to this c ourt, Princeton conceded that elements one through eight were separately known in the prior art. As discuss ed, simply identifying all of the elements in a claim in the prior art does not render a claim obvious. Ruiz , 357 F.3d at 1275. Instead section 103 requir e s some suggestion or motivati on in the prior art to make the new combination. Rouffet , 149 F.3d at 1355-56. A suggesti on or motivation to modif y prior art teachings may appear in the content of the public prior art, in the nature of the problem addressed by the inventi on, or even in the knowledge of one of ordinary skill in the art. SIBIA N euroscienc es, Inc. v. Cadus Pha rm. Corp. , 225 F.3d 1349, 1356 (Fed. Cir. 2000). Dr. Jorgenson testified that the moti vation to combine these references was found in the knowledge of those skilled in the art at the time of Guzman’s invention. See SIBI A Neurosc i ences, Inc. , 225 F.3d at 1356 (stating that

04-1493 10motivation, suggestion or reason to combi ne items of pri o r art may come from the knowledge of one of ordinary skill in t he art). As Jorgenson explained: [T]he combination is obvious. Ever y one of the individual ideas is obvious. And the combination is absolutely obvious. Everybody in all of the related fields in all of the related technologies is doing those kinds of things . . . . T he entire package taken together is obvious. Id. Princeton offered no evidenc e to rebut Dr. Jorgenson’s testimony. Dr. Jorgenson’s testimony on motivation to combine is unrebutted. Moreover, it is consist ent with the prior ar t introduced at trial. The only additions to the Honda prior art in this inv ention wer e coiling the capillaries (Lukacs prior art) and supporting the coils ( c oncededly pr ior art). Both of those simple additions appear in other prior art refer ences. Thus, Dr. Jorgenson testified, without any rebutting evidence in the reco rd, that the sugges tion to coil and secure the capillaries in the Honda devic e was within the knowledge of o n e of skill in the art. In In re Lee , this court expressed skepticism about invoking the knowledge of a skilled artisan to supply the motivation to combine on a sc anty record. 277 F.3d 1338, 1343- 44 (Fed. Cir . 2002) (“This factual question of motivation . . . could not be resolved on subjective belief and unknown authority.”). Dr. Jorgens on supplied detailed analysis of the prior art and the reasons that one of ordi nary skill wo uld p o ssess knowle dge a nd motivation to combine these simple elements. In addition, the nature of the problem supplies a motivation to combine these prior art references. The district court provided a detailed analysis of the nature of the problem solved by the inv ention. Princeton Biochemicals , Inc. ,

04-1493 112004 WL 1398227, at *37-40. The problem was lengthening and securing the capillaries on the Honda aut om atic device to produce better separation. Id. at *38. The prior art Lukacs thesis stated that lengthening was precisely the reason for coiling. Id. at *39. With regard to secu ring, Dr. Osborne, a Beckman wit ness, testified about the problem of a capillary electrophores is device whose capillar y swayed during use and affected th e separation result. Id. Dr . Os borne observed: “[W]e did not want the capillar y to move during the separation.” Id. I n other words, the nature of t he problem called for exactly the solutions in the prior art. Moreover the nature of the pr oblem, as noted again in Dr. Jorgenson’s testimony, called for the comb ination. Dr. Jorgenson observed that the problem called for coiled electrophoresis tubes, incl uding capilla r y tubes, secured in plac e in a variety of ways. Id. He also testified that one of ordinary skill in the art at the time of the invention woul d know t o coil a capillary to save space. Id. Regarding the securing of a capillary tube to a suppor t member, D r . Jorgenson also testifie d that it would be obvio us to one of ordinary skill in the art to do so, as “you don’t want a coil floating around without some kind of support.” Id. Thus, the nature of the problem also supplies a motivation to make this combination of closely related prior art elements. The district court al so properly f ound that the references for this obvious nes s analysis were proper prior art. A reference is appropriate prior art if within the field of the inventor’s endeavor . Bausch & Lomb, Inc. v. BarnesHind/Hy drocurve, Inc. , 796 F.2d 443, 449 (Fed. Cir. 1986). Alternatively, a reference qualifies as prior art if “reas onably pertinent to the particular problem

04-1493 12with whic h the invento r was involved.” Id. “A reference is r easonably pertinent if, even though it may be in a different fiel d of endeavor, it is one whic h, because of the matter with which it deals, logica lly would have commended itself to an inventor’s attention in considerin g his problem.” In re GPAC Inc. , 57 F.3d 1573, 1578 (Fed. Cir. 1995) (quotations and c i tati ons omitted). If a reference’s disclos ure relates to the same problem as the claimed invention, “that fact supports use of that reference in an obviousness rejection.” In re Clay , 966 F.2d 656, 659 (Fed. Cir. 1992). In this case, all the references for obvious ness constitute analogous art, even though some of the references fa ll within the related field of liquid chromatography. Throughout the prosecut ion history of the ‘172 patent, the examiner consistently rejected element s one through six of claim 32 as obvious, citing references ranging from capillary elect r ophoresis to liquid chromatography - a related means of separating analytes. The examiner stat ed on the record: “[L]iquid chromatography and capillary electrophoresis are cl osely related techniques. ” The district court also item ized other references in the chemical separations field, describing the rela tion to electrophoretic separation or chromatography or both. Princeton Biochemicals, Inc. , 2004 WL 1398227, at *36-37. The district court further est ablis hed that capillary electrophoresis is closely related to the types of elec trophoreses de scribed in some of the references. Id. at *37. Finally, Dr. Jorgenson offered expert testimony that one of ordinary skill in the art would look to these related fields to solve problems in the field of capillar y electrophoresis. Id. at *37.

04-1493 13The district court also examined w hether the prior art references were reasonably pertinent to the particular probl ems with which the invention of claim 32 was in volved. Id. at *37-39. In defining such pr oblems, the district court looked to Dr. Guzman’s own testimony that the electrophoretic device needed to be compact and immobile. Id. at *38. As already noted, the district court properly as sessed that the prior art refe rences addressed those same problems in the same way. Id. at *39. In sum, the distri ct court used proper prior art references in its correct obviousness analysis

. Viewing the evidenc e as a w hole and in a light most favorable to Princeton, this court agrees with the dist rict court that ther e was not substantia l evidenc e to support the jury verdict. Beca use claim 32 is inv a lid for obvious ness, this court need not reach the issues of prior i n vention and infringement. COSTS Each party shall bear its own costs.
AFFIRMED

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