The court reversed the district court’s denial of Emerson’s JMOL motion regarding the jury’s verdict that the asserted claims of ABT’s patent were not obvious in view of four prior art references. The court held that the issue of obviousness turned on whether a person of ordinary skill in the art would have combined elements from the prior art references to arrive at the “recycle control” limitation of the claims. Applying the doctrine from KSR that, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result,” the court held that the combination of the prior art references would have yielded a predictable result. The court further addressed the evidence of non-obviousness, but held that the evidence of commercial success was insufficient, because it did not include evidence related to the nexus between the invention and the commercial success.
ABT Systems, LLC v. Emerson Electric Co., Case Nos. 2014-1618, 2014-1700 (August 19, 2015); Opinion by: Schall, joined by Prost and Clevenger; Appealed From: District Court for the Eastern District of Missouri, Fleissig, J. Read the full opinion here.