The Federal Circuit has affirmed the ruling of a district court that a pitching machine maker infringed upon the patents of a similar sporting goods manufacturer, ProBatter Sports, LLC. In so ruling, the appeals court found that the infringing company “did not meet its burden of establishing obviousness before the district court.”
ProBatter Sports, LLC and Sports Tutor, the infringing company, both sell programmable pitching machines meant to simulate real-life pitching situations. ProBatter’s mechanical pitching machine stands behind a video projection of an actual pitcher winding up and pitching. A ball thrust from the pitching machine emerges from a hole in the video screen towards a batter and/or catcher. ProBatter’s product synchronizes the ball release with the video so that the batter and/or catcher experience something similar to a live pitcher’s pitch. The machine can throw a wide variety of pitch types at varying speeds and can alternate between right-handed and left-handed pitcher simulation. Major league and collegiate baseball programs have purchased ProBatter’s system.
The ProBatter system practices ProBatter’s U.S. Patent No. 6,182,649 and its continuation patent, U.S. Patent No. 6,546,924. These patents describe a ball-throwing machine “able to interchangeably deliver pitches of different types to different locations at different speeds with less than ten-second intervals between pitches.” The claimed machine is also capable of changing pitch type, speed, and delivery location “without the need to manually readjust the machine between pitches.” The patents allege that this was not possible in prior art machines because of the difficulty in quickly changing motor speed. The patents explain that the claimed machine is able to rapidly decelerate its motors by incorporating a “dynamic braking mechanism.”
ProBatter sued Sports Tutor in the District of Connecticut, alleging that Sports Tutor’s HomePlate machine infringed ‘649 patent claims 1-12, 25-27, and 31, as well as ‘924 patent claim 1. Sports Tutor then challenged the patents in a series of ex parte reexaminations, two on each patent, during which the district court stayed the litigation. In the first round of reexaminations, the examiner rejected many of the claims as obvious in view of the prior art, but the Board of Patent Appeals and Interferences reversed those rejections and allowed the claims. The Board reasoned that the dynamic braking limitation was not disclosed in any of the allegedly anticipatory references and that there was no motivation to combine the prior art ball-throwing machine references with the prior art dynamic braking reference, U.S. Patent No. 5,187,419, drawn generally to an electric motor. The examiner rejected Sports Tutor’s invalidity challenges in the second round of reexaminations and allowed the asserted claims.
Following reexamination, the district court lifted the stay and entered summary judgment of infringement, which Sports Tutor does not appeal. The district court denied motions seeking to determine validity on summary judgment and held a bench trial on that issue, after which the parties filed post-trial briefs. The court ruled that Sports Tutor “did not carry its clear and convincing burden at trial or in its post-trial briefing to prove invalidity of the asserted patent claims.” The district court “specifically found that Sports Tutor did not satisfy its burden because it never explicitly argued for a particular combination of references or proffered a motivation to combine references. The court emphasized that it could not make factual findings on the scope and content of the prior art or the differences between the claims and the prior art because Sports Tutor failed to identify any particular prior art combinations.”
Sports Tutor appealed the district court’s validity ruling.
A patent claim is unpatentable as obvious “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.” 35 U.S.C. § 103.1
Sports Tutor claimed that the district court erred by holding that Sports Tutor failed to show that the claims were invalid as obvious. As support, Sports Tutor “directs us to the examiner’s initial rejections of the claims during reexamination and to the Board’s later reversal of those rejections, both of which Sports Tutor placed into evidence along with the underlying prior art references. Sports Tutor reads the Board’s decision narrowly, interpreting the Board as disagreeing with the examiner only on whether a motivation to combine references existed. In other words, Sports Tutor speculates that the Board’s silence as to the examiner’s findings on scope and content of the prior art and other Graham factors means that the Board acquiesced in those findings. Therefore, according to Sports Tutor, all it needed to do to prove obviousness before the district court was to show dynamic braking in the context of a ball-throwing machine. Sports Tutor thus believes that, at the district court, it ‘cured the problem’ with the reexamination by introducing new prior art references that teach dynamic braking in ball-throwing machines, even though Sports Tutor nowhere addressed any of the other claim limitations in its presentations to the district court. See J.A. 1117. Sports Tutor argues that by purportedly showing that the dynamic braking limitation was in the prior art, taken with the examiner’s rejection that the Board reversed, it met its burden of proving obviousness by clear and convincing evidence before the district court.”
The Federal Circuit disagreed, writing that “to overcome the statutory presumption of patent validity (Sports Tutor) must persuade the factfinder by clear and convincing evidence. See i4i, 564 U.S. at 95. Sports Tutor did not satisfy that burden here because it failed to articulate a clear theory of obviousness.
“ … Sports Tutor merely cited, without explanation, the examiner’s original—and ultimately reversed—rejection.” Furthermore, it “did not adduce expert testimony or even present attorney argument on why one of skill would have been motivated to combine dynamic braking with the other prior art references directed to pitching machines. Accepting Sports Tutor’s argument would essentially eliminate the motivation to combine requirement and essentially turn an obviousness analysis into an anticipation analysis.”
In summary, “Sports Tutor’s showing that dynamic braking existed in isolation is not enough to show that one of ordinary skill would have combined that teaching with prior art pitching machines absent some motivation to combine supplied by Sports Tutor.”
ProBatter Sports, LLC v. Sports Tutor, INC; Fed. Cir.; 2016-1800, 2017 U.S. App. LEXIS 3831; 3/1/97
Attorneys of Record: (for plaintiff-appellee) John Richard Horvack, JR., Carmody Torrance Sandak & Hennessey LLP, New Haven, CT. (for defendant-appellant) Blake Robert Hartz, Woodard, Emhardt, Moriarty, McNett & Henry LLP, Indianapolis, IN.