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The Mead Corporation (“Mead”) appeals from the judgment of the United States District Court for the Northern District of Georgia, holding that Mead infringedclaims 1 and 13 of U.S. Patent No. 5,241,806 (“the ’806 patent”) owned by Riverwood International Corporation (“Riverwood”) and that these claims were notinvalid for obviousness. See Riverwood Int’l Corp. v. Mead Corp., No. 1:94-CV-0090-CAM (N.D. Ga. Jan. 13, 1999) (“Order”). Because the district courterroneously concluded as a matter of law that the claims were not invalid for obviousness, we reverse. Background This appeal arises out of a patent infringement dispute over cartoners. Cartoners are machines designed to automatically group articles, such as beverage cans orbottles, and load them into paperboard cartons. Cartoners are usually used in industrial applications such as beverage bottling facilities. Riverwood owns the rights tothe ’806 patent, embodied in practice by its TwinStack model. Claim 1 and dependent claim 13 of the ’806 patent are the only claims at issue. These two claimscover a cartoner with three incoming streams of articles and a barrel cam loader. This type of cartoner is known in the art as a three-conveyer cartoner. The loader,which is usually a barrel cam or an angulated guide in the prior art, forces the articles into the cartons. A barrel cam pushes the articles in a manner similar to ahorizontal escalator, whereas an angulated guide works passively, merely providing a static wall or rail to divert the path of the otherwise propelled articles. After Mead developed and marketed its DuoStack model, a three-conveyer cartoner with a barrel cam loader, Riverwood brought suit for infringement of the ’806patent. The district court appointed a special master pursuant to Federal Rule of Civil Procedure 53 to hear evidence and arguments from the parties. The specialmaster made findings of fact and concluded inter alia that claims 1 and 13 of the ’806 patent were invalid for obviousness. See Riverwood Int’l Corp. v. MeadCorp., No. 1:94-CV-0090-CAM (N.D. Ga. Mar. 11, 1998) (“Report”). The district court accepted the findings of fact in whole and without modification, butcontrary to the special master, concluded that the claims would not have been obvious to one of ordinary skill in the art. See Order at 3. Mead appeals this aspect ofthe district court’s judgment. Discussion On appeal from a non-jury trial, the ultimate determination of whether the claims at issue would have been obvious under 35 U.S.C. � 103 is a legal conclusion thatwe review de novo. See Robotic Vision Sys., Inc. v. View Eng’g, Inc. 189 F.3d 1370, 1376, 51 USPQ2d 1948, 1953 (Fed. Cir. 1999). An obviousnessdetermination is based on underlying factual inquiries including: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims; (3)the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465(1966); Robotic Vision, 189 F.3d at 1376, 51 USPQ2d at 1953. In addition, when obviousness is based on particular prior art references, there must be a showingof a suggestion or motivation to combine the teachings of those references, though it need not be expressly stated. See B.F. Goodrich Co. v. Aircraft Braking Sys.Corp., 72 F.3d 1577, 1582-83, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). In thiscase, the district court has accepted all of the special master’s findings of fact, and the appellant does not challenge any of them. Our task is to examine the findingsrelated to the factors articulated in Graham and determine whether the district court erred by deciding that the claims were not obvious as a matter of law. (1) Scope and Content of the Prior Art and (2) Difference Between the Prior Art and the Claims Claim 1 of the ’806 patent contains four limitations: an infeed conveyer, an article selecting conveyor, a carton conveyor, and an article group transfer means. Claim13 incorporates all the subject matter of claim 1 and adds a “cam track/cam follower assembly” to the fourth element. According to the special master, Riverwoodstipulated that a patent in the prior art, U.S. Patent No. 3,778,959 to Langen (“the Langen patent”), discloses the first three limitations of claim 1. See Report at 10.The special master found that the fourth limitation of claim 1 defines what is commonly known in the art as a “barrel cam loader” and that barrel cam loaders incartoners were known in the prior art. See id. The special master also found that a “cam track/cam follower assembly” is a common structure used in barrel camloaders, and concluded that “claim 13 [would have been] obvious for the same reasons as claim 1.” Id. at 27. In addition, the special master found that Langen “firstdisclosed in that patent angulated fixed guide rails stating that angulated fixed guides are an improvement over ‘escalators’ (barrel cam loaders), not that escalatorsare not an obvious alternative . . . .” Id. at 11. Upon examining the remainder of the prior art, the special master found that the prior art recognized the obviousnessof substituting one type of loader for another in a cartoner. See id. at 11. (3) Level of Skill in the Art The special master found that one of ordinary skill in the art “would be knowledgeable of problems and solutions to the design of cartoners” and that ” . . . thenumerous prior patents in evidence show that there were numerous solutions developed to solve the problems and the solutions occurred relatively frequently in arelatively sophisticated and developed technology.” Id. at 10; see Pro-mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,1630 (Fed. Cir. 1996). Thus, these findings support the conclusion that it would have been obvious to someone of ordinary skill in the art at the time of the inventionto replace the angulated fixed guide rail loader in the Langen patent with a barrel cam loader and that a suggestion or motivation to make that substitution existed inthe prior art. (4) Objective Factors According to the special master, Riverwood presented some evidence of commercial success. He found, however, that much of that success was attributable tofactors outside the scope of claims 1 and 13 of the ’806 patent. See id. at 15; In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (“Forobjective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”). Finally,the special master found that there is no evidence that the Mead DuoStack was a copy of the TwinStack cartoner, that there was no long-felt need for animprovement in cartoners that was solved by the subject matter of the claims of the ’806 patent, and that there was no significant evidence of the failure of others.See Report at 16. Based on these findings, he determined that the objective factors did not carry sufficient weight to override a conclusion of obviousness based onthe primary considerations. In view of all these findings, we are led to the ineluctable conclusion that claims 1 and 13 of the ’806 patent are invalid. The district court’s conclusion ofnonobviousness is not supportable by the facts found. Conclusion Accordingly, the judgment of the United States District Court for the Northern District of Georgia is reversed. REVERSED
Riverwood Int’l Corp. v. Mead Corp. United States Court of Appeals for the Federal Circuit No. 99-1274 RIVERWOOD INTERNATIONAL CORPORATION, Plaintiff-Appellee, v. THE MEAD CORPORATION, Defendant-Appellant. Counsel for Appellee: Wellington M. Manning, Jr., Neil C. Jones, and Craig N. Killen Counsel for Appellant: J. Peter Coll, Jr., James J. Murtha, Kristen Bancroft, Robert T. Edell, and Robert J. Glance Appealed From: United States District Court for the Northern District of Georgia Decided: May 17, 2000 Before: MAYER, Chief Judge, SCHALL and GAJARSA, Circuit Judges.
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