UNITED STATES DISTRICT COURT FOR THE

DISTRICT OF NEW HAMPSHIR E

Hvpertherm, Inc .

V .

American Torch Tip CompanV

Civil No . 05-cv-373-JD

O R D E R

Hypertherm moves for reconsideration of that part of

the court's order issued on December 29, 2008, in which it denied

summary judgment in Hypertherm's favor on ATTC's defense that

claims 11 and 12 of United States Patent No . 5,310,988 ("'988

patent") were obvious in light of the patent's background

section . Hypertherm argues that because the Whitney electrode

evidence was excluded and ATTC has conceded that the Whitney

drawing is not prior art, ATTC can not prove its claim . Although

ATTC has not yet responded to the motion, the court will resolve

the issue in the interests of saving time and resources .

Hypertherm is correct that ATTC primarily asserted that a

combination of the Whitney electrode and the background section

of the '988 patent rendered claims 11 and 12 obvious . ATTC also

relied on its expert's report, however, to assert that th e

background section alone was a basis for finding obviousness .

Hypertherm argued, without citation to authority : "Unlike an

anticipation determination, which involves only a single prior

Case 1:05-cv-00373-JD Document 418 Filed 01/16/09 Page 1 of 4
art reference, an obviousness determination necessarily involves

combining elements or limitations of two or more prior art

references to render the claimed invention obvious ." Dkt . no .

176 at 20 . Hypertherm continued : "Indeed, ATTC does not even

allege that the background section, standing alone, invalidates

any of the asserted claims . "

In its objection, ATTC cited its expert's report . James K .

Sprague, ATTC's expert witness, stated in his report that the

Whitney electrode and the electrodes described in the background

section of the '988 patent "alone or in combination with each

other along with the knowledge of one of ordinary skill in the

art at the time of the invention, disclose every limitation of

the '988 patent, . . . independent claims 11 and 12 ." Report, 1

32(5) . ATTC also cited authority that a single prior art

reference may be sufficient to show obviousness in appropriate

circumstances .

Hypertherm mentioned the background section argument in one

sentence in its reply, stating only : "Moreover, the background

section of the '988 Patent, like the Whitney Drawing, fails to

teach the step of selecting a hafnium diameter in coordination

with the operating current ." That unsupported statement, offered

only in the reply, was insufficient to counter ATTC's expert's

opinion . Hypertherm failed to address the legal issue of whethe r

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obviousness may be found based on a single prior art reference .

For purposes of reconsideration, Hypertherm argues in detai l

that ATTC actually relied on the Whitney electrode and Whitney

drawing for most of its obviousness analysis . Hypertherm did not

offer the analysis of ATTC's charts, which it now submits for

reconsideration, to counter ATTC's expert's opinion for purposes

of summary judgment . Hypertherm did not move for leave to

supplement its motion for summary judgment after the court

granted its motion to strike ATTC's evidence pertaining to

manufacture and sales of the Whitney electrode . While ATTC's

proof of its defense may be fatally weak, as Hypertherm suggests,

the court will not now consider proof not submitted for purposes

of summary judgment .

Conclusion

For the foregoing reasons, the plaintiff's motion fo r

partial reconsideration (document no . 411) is denied

SO ORDERED .

/s/ Joseph A . DiClerico, Jr .

Joseph A . DiClerico, Jr .

United States District Judge

January 16, 200 9

cc : Benjamin Stern, Esq .

Colin Cabral, Esq .

Jill Anderson, Esq .

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Jacob Baron, Esq .

Steven Bauer, Esq .

Lucas Blower, Esq .

Seth Cannon, Esq .

Joseph Capraro, Jr ., Esq .

Christopher Carney, Esq .

Jeffery Cross, Esq .

Joseph Dattilo, Esq .

Ami Gandhi, Esq .

Maia Harris, Esq .

Marc Kallish, Esq .

Rhett Krulla, Esq .

Jonathan Lax, Esq .

Richard Nelson, Esq .

W . Scott O'Connell, Esq .

Jeremy Oczek, Esq .

Richard Rochford, Jr ., Esq .

David Ruoff, Esq .

John Shapiro, Esq .

John Skeriotis, Esq .

Wayne Tang, Esq .

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