                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                        2008-1537

                                  B-K LIGHTING, INC.,

                                                 Plaintiff-Appellant,

                                            v.

                         FRESNO VALVES & CASTINGS, INC.
                          (doing business as Vision3 Lighting),

                                                 Defendant-Appellee.


       Steven E. Shapiro, of Santa Monica, California, argued for plaintiff-appellant.

      Duane H. Mathiowetz, Howrey LLP, of San Francisco, California, argued for
defendant-appellee. With him on the brief were Irene Yang; and Richard L. Stanley, of
Houston, Texas.

Appealed from: United States District Court for the Central District of California

Judge Margaret M. Morrow
                        NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                       2008-1537

                                  B-K LIGHTING, INC.,

                                                        Plaintiff-Appellant,

                                            v.

                         FRESNO VALVES & CASTINGS, INC.
                          (doing business as Vision3 Lighting),

                                                        Defendant-Appellee.


Appeal from the United States District Court for the Central District of California in case
no. 06-CV-02825, Judge Margaret M. Morrow.

                           ___________________________

                              DECIDED: April 28, 2010
                           ___________________________


Before NEWMAN, SCHALL, and DYK, Circuit Judges.

Opinion for the court filed by PER CURIAM. Opinion concurring in part and dissenting
in part filed by Circuit Judge NEWMAN.

PER CURIAM.

       The United States District Court for the Central District of California ruled, on

summary judgment, that all of the claims of United States Patent No. RE39,084 (“the

’084 patent”) are invalid on the ground of obviousness.          B-K Lighting, Inc. (“B-K

Lighting”), the patentee, appeals. We affirm as to claims 5, 7, 8, and 23–31. As to

claims 3, 12, 15, 18, 19, 21, and 22, the judgment is vacated, and we remand for further

proceedings.
                                       BACKGROUND

       The invention is “an adjustable mount for sealed light fixtures that provides an

easy to use mechanism for adjusting and setting the desired lighting angle for light

emanating from the light fixture” while maintaining the integrity of the sealed light

system. ’084 patent col.2 ll.52–55. The lighting mount is described as having a novel

structure whereby the lighting angle can be easily moved and set in all directions during

installation, allowing the installer to stand back and evaluate the lighting effect without

the need for an iterative process of tightening and loosening the installation screws in

order to change the lighting angle, or needing another person to hold the fixture in place

while the lighting angle is evaluated before the installation is made permanent. The

claims that include this feature are claims 3, 12, 15, 18, 19, 21, and 22 of the ’084

patent, and this feature is described in those claims as a “first resistance means” that

allows “frictional pivoting.” Claim 3 is typical. It provides:

       An adjustable mount for a light fixture, comprising:
              a support member connected to the light fixture, said support
                   member having a first passageway therethrough to allow
                   passage of one or more electrical wires to said light fixture;
              a base member having a second passageway therethrough and a
                    base opening at one end of said base member, said base
                    member pivotally connected at an end opposite said base
                    opening to said support member, said second passageway
                    connected to said first passageway in said support member
                    to allow passage of said electrical wires;
              first locking means for locking said support member to said base
                      member;
              a first seal between said base member and said support member to
                       prevent entry of moisture and contaminants;
              a stud member having an upper end, a lower end and a stud
                    opening through said stud member, said upper end of said
                    stud member in said base opening and rotationally
                    interacting therewith, said lower end of said stud member


2008-1537                                      2
                     configured to connect to a source of electrical power, said
                     stud opening connected to said second passageway in said
                     base member to allow passage of said electrical wires from
                     said source of electrical power to said base member;
              second locking means for locking said base member to said stud
                    member; and
              a first resistance means for limiting free pivotal movement of said
                      base member relative to said support member, wherein said
                      first resistance means comprises a tapered opening in said
                      support member and a tapered post in said base member,
                      said tapered opening sized and configured to receive said
                      tapered post and allow frictional pivoting of said tapered post
                      therein.

’084 patent col.6 ll.32–67 (emphasis altered). B-K Lighting’s commercial embodiment of

the patented mount has the model number 360HD.              The accused infringer, Fresno

Valves & Castings, Inc. (“FVC”), is a competitor of B-K Lighting.

       After the ’084 patent issued, B-K Lighting sued FVC for infringement and for

unfair competition in the United States District Court for the Central District of California.

FVC responded with defenses and counterclaims relating to, among other things,

invalidity on the ground of obviousness. At the Markman hearing, the district court

construed thirteen of the terms in the claims.         Relevant to this appeal, the court

construed the “first resistance means” as “a tapered opening in the support member and

a tapered post in the base member, with the tapered opening sized and configured to

receive the tapered post and allow frictional pivoting of the tapered post in the tapered

opening and equivalents thereof,” and the court stated that this structure “limit[s] free

pivotal movement of said base member relative to said support member.” B-K Lighting,

Inc. v. Vision3 Lighting, No. CV 06-02825, 2008 WL 4811176, at *22, *25 (C.D. Cal.

Mar. 13, 2008) (emphasis added).          The parties agree that “frictional pivoting” is

“shorthand” for “limiting free pivotal movement.”



2008-1537                                     3
       Ultimately, the district court granted FVC’s motion for summary judgment of

invalidity of all claims of the ’084 patent on the ground of obviousness. B-K Lighting,

Inc. v. Fresno Valves & Castings, Inc., No. 06-CV-02825, slip op. at 45 (C.D. Cal. May

23, 2008) (“Summary Judgment Order”). The court concluded that the claims of the

’084 patent would have been obvious in light of the combination of B-K Lighting’s prior

360SL model and the Hydrel Corporation’s 7100 Series Architectural Lighting System

(“the Hydrel 7100”). Id. at 44 & n.135. 1 Focusing in particular on the frictional pivoting

limitation found in claims 3, 12, 15, 18, 19, 21, and 22, the court concluded that the

Hydrel 7100 disclosed frictional pivoting and dismissed B-K Lighting’s contrary expert

declaration as conclusory. Id. at 29–34. The parties stipulated to dismissal without

prejudice as to the other issues, and B-K Lighting timely appealed the judgment of

invalidity. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).

                                      DISCUSSION

       Summary judgment is appropriate when, drawing all justifiable inferences in the

nonmovant’s favor, there exists no genuine issue of material fact and the movant is

entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c)(2). We review the district

       1
               The district court also concluded after reviewing “B-K’s cursory arguments
regarding secondary considerations” that such evidence was not sufficient to overcome
“FVC’s strong showing of obviousness.” Summary Judgment Order, slip op. at 44. The
separate opinion concurring in part and dissenting in part deems this approach
erroneous. But, “as we have often held, evidence of secondary considerations does not
always overcome a strong prima facie showing of obviousness.” Asyst Techs., Inc. v.
Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); see, e.g., Agrizap, Inc. v.
Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“In this case, the objective
evidence of nonobviousness simply cannot overcome such a strong prima facie case of
obviousness.”); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (finding “no basis to disagree with the district court’s conclusion” that “given
the strength of the prima facie obviousness showing, the evidence on secondary
considerations was inadequate to overcome a final conclusion that claim 25 would have
been obvious”).


2008-1537                                   4
court’s grant of summary judgment de novo.          AquaTex Indus., Inc. v. Techniche

Solutions, 479 F.3d 1320, 1328 (Fed. Cir. 2007).

                                            I

       Before the district court, FVC cited several reference structures that, in

combination, were argued to render the ’084 claims obvious. With regard to claims 3,

12, 15, 18, 19, 21, and 22, the district court relied on the combination of B-K Lighting’s

model 360SL and the Hydrel 7100. The parties do not challenge the selection of these

references as the closest prior art. The 360SL is the foundation on which B-K Lighting

built the 360HD, and it lacks certain features of the 360HD, including the tapered

opening and tapered post whose design produces frictional pivoting. The Hydrel 7100

is a lighting mount that allows 180º vertical adjustment of the light fixture using a

pivoting structure that employs a tapered post and a tapered opening. The question of

obviousness was focused on the differences between the combination of these prior art

devices and claims 3, 12, 15, 18, 19, 21, and 22 of the ’084 patent, and in particular

whether the Hydrel 7100 disclosed frictional pivoting.        On appeal, B-K Lighting

principally asserts that claims 3, 12, 15, 18, 19, 21, and 22 would not have been

obvious because the Hydrel device did not disclose frictional pivoting.

       On summary judgment, the district court concluded that the Hydrel 7100

disclosed frictional pivoting.   Although the court noted that the testimony of FVC’s

expert, Dr. David Dornfeld (“Dornfeld”), and B-K Lighting’s expert, Dr. John D. Pratt

(“Pratt”), conflicted regarding whether the Hydrel 7100 disclosed frictional pivoting, and

that “at first blush this appears to be a ‘battle of the experts,’” id. at 31, the court

disregarded Pratt’s testimony that the Hydrel 7100 did not disclose frictional pivoting.




2008-1537                                   5
Therefore, the court held that the claims of the ’084 patent containing the “first

resistance means” requiring frictional pivoting would have been obvious in light of the

combination of B-K Lighting’s own 360SL and the Hydrel 7100.

       In the device described in claims 3, 12, 15, 18, 19, 21, and 22 of the ’084 patent,

a support member, to which the lighting fixture is attached, contains a tapered opening

that receives a tapered post from a base member. The tapered post pivots in the

tapered opening, and an internal compression fit between the tapered opening and

tapered post permits the light fixture to be adjusted and to remain in the adjusted

position when released; this is the frictional pivoting of the “first resistance means.”

       FVC’s expert, Dornfeld, stated in his expert declaration that tapers were known

mechanical elements with known properties in common industry use for over a century:

“A person of ordinary skill in the art would know that tapers have been used in the

industry for years and are widely used for holding machine tools, as spindles for axles,

or for any other application requiring a self-centering, self-locking shaft.” J.A. 1411.

Addressing the Hydrel 7100, Dornfeld stated:

       It is my opinion that Hydrel discloses a first resistance means. Hydrel has
       a self-releasing taper: a tapered opening in one half of the support
       member is sized and configured to receive a tapered post in the base
       member, and allows for infinite adjustment under load. The tapered post
       can frictionally pivot in the tapered opening. The self-releasing taper
       allows for infinite vertical adjustment through 180 degrees while under
       heavy load.

J.A. 1399 (emphasis added). Thus, “Hydrel . . . disclose[s] the first resistance means

explicitly, and as claimed in the ’084 patent.” J.A. 1411. Dornfeld stated that it “would

require only the use of common sense and creativity to combine the tapered opening

and post of . . . Hydrel” with other prior art references to obtain the ‘084 patent. Id. He




2008-1537                                     6
also noted that by using the “well-known taper element,” “the result obtained is

predictable, as each element functions in the way that it would be expected to.” Id.

      On the other hand, B-K Lighting’s expert, Pratt, stated that “there is no disclosure

of frictional pivoting and no tapered opening in the support member as required by the

court’s claim construction” in the Hydrel 7100. J.A. 2847. He opined that because

Hydrel employs a self-releasing taper, it “appears to teach away from frictional pivoting

and suggests that the tapered surfaces may instead be involved in a locking function.”

Id. Thus, according to Pratt, “the first resistance means element is not disclosed in

Hydrel, and this element is not an obvious variation from that disclosed in Hydrel.” Id.

As such, Pratt concluded that “the 360SL in view of Hydrel does not meet the elements

of claims 3, 12, and 15.” J.A. 2858.

      The district court disregarded Pratt’s declaration, calling it “conclusory” and

“factually unsupported.” Summary Judgment Order, slip. op. at 31–32. It is not clear,

however, why the court found Pratt’s declaration any more conclusory than Dornfeld’s.

Both experts based their opinions on the same data sheets for the Hydrel 7100. This

conflict in expert declarations regarding whether the Hydrel 7100 disclosed frictional

pivoting created a genuine issue of material fact that made summary judgment

inappropriate. See, e.g., Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330,

1338–39 (Fed. Cir. 2008); Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1351–52 (Fed.

Cir. 2000); Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1338–39 (Fed. Cir.

2000); Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).

Because the conflicting testimony of the parties’ experts regarding whether the Hydrel

7100 disclosed frictional pivoting created a genuine issue of material fact, we vacate the




2008-1537                                   7
district court’s judgment of invalidity for claims 3, 12, 15, 18, 19, 21, and 22 of the ’084

patent.

                                             II

       As for the claims that do not include the “first resistance means” that provides the

frictional pivoting, B-K Lighting argues that other limitations, appearing in one or more of

claims 5, 7, 8, and 23–31, distinguish the prior art. We have considered B-K Lighting’s

arguments on these limitations, and conclude that absent inclusion in the claims of the

means that requires frictional pivoting, the district court’s ruling has not been shown to

be incorrect. Accordingly, the judgment of invalidity as to these claims is affirmed.

       The case is affirmed in part, vacated in part, and remanded for further

proceedings in accordance with this opinion.

              AFFIRMED IN PART, VACATED IN PART, and REMANDED

                                         COSTS

       No costs.




2008-1537                                    8
                        NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit


                                         2008-1537



                                   B-K LIGHTING, INC.,

                                                         Plaintiff-Appellant,

                                              v.

                          FRESNO VALVES & CASTINGS, INC.
                           (doing business as Vision3 Lighting),


                                                         Defendant-Appellee.



Appeal from the United States District Court for the Central District of California in Case
no. 06-CV-02825, Judge Margaret M. Morrow.


NEWMAN, Circuit Judge, concurring in part, dissenting in part.

       On cross-motions for summary judgment, the district court granted the motion of

Fresno Valves & Castings (“FVC”), and ruled that United States Patent RE 39,084,

owned by B-K Lighting, is invalid on the ground of obviousness. The panel majority now

holds, solely for the reason that there were opposing expert opinions, that the question

of obviousness could not be resolved on summary judgment. This is an unnecessary

departure from the procedure that this court and the Supreme Court have accepted and

endorsed, in the interest of efficient resolution of patent disputes:
                                              I

       In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007), the Court stated that

while a “court can and should take into account expert testimony, which may resolve or

keep open certain questions of fact,” summary judgment should not be withheld

whenever parties present contradictory expert opinions, thereby manufacturing a

“conflict,” however attenuated. My colleagues on this panel hold that since there were

opposing expert opinions, without more, the question of obviousness requires trial. If

this procedure is to be the rule in patent cases let us be clear, to avoid the expensive

redundancy that is today achieved, whereby the parties and the district court pursued

the procedures of summary judgment through depositions, briefs, written opinion, final

judgment, and appeal. It is not a trivial matter to require the parties, the trial judge, and

perhaps ultimately this court, to repeat in the trial context much of what they have

already done.

       The record of the summary judgment proceeding contained extensive

documentary and testimonial evidence, undisputed except for the expert witnesses’

opinion concerning a prior art device. The district court adopted the position of the FVC

expert and held all of the ‘084 claims invalid on the ground of obviousness. I agree that

the district court erred, for the court adopted the view of the FVC expert that the prior art

device “can” provide frictional pivoting, rejecting the view of the B-K expert that the prior

device does not provide frictional pivoting based on the undisputed differences in the

placement of the pivot in the prior art device and the patented device. The question

arising from the expert testimony is readily reviewed on appeal, for the issue is not of




2008-1537                                    2
credibility, but of substance.    See KSR, 550 U.S. at 427 (deciding the question of

obviousness on appeal).

                                              II

       I agree that those claims of the ’084 patent that do not include the limitation to

“frictional pivoting” are invalid, for the claim breadth does not distinguish their scope

from the prior art. However, this court’s absence of discussion of the references in

connection wit the proposed remand produces the same error for which we criticize the

district court; that is, a conclusory ruling devoid of explanation.

       As to the claims that include the limitation of frictional pivoting, the legal question

of obviousness is now subject to trial and redetermination by the district court.          In

connection with the remand, I comment on two errors of application of the law of

obviousness, lest legal error be tacitly perpetuated:

                                              A

       First, the district court erred in its understanding of the law governing the role of

the “objective indicia” or “secondary considerations” in the analysis of obviousness. B-K

Lighting had pointed to the commercial success and FVC’s copying of the device of the

’084 patent, as evidence to be considered. However, the district court ruled that, as a

matter of law, the factors of copying, commercial success, and unexpected results are

not to be considered at all, when there is a “strong prima facie case of obviousness”

based on prior art alone. B-K Lighting, Inc. v. Fresno Valves & Castings, Inc., No. 06-

CV-02825, slip op. at 44 (C.D. Cal. May 23, 2008) (“Summary Judgment Order”). Thus

the district court declined to consider B-K Lighting’s evidence of these factors. My




2008-1537                                     3
colleagues on this panel support this holding, although it is contrary to the Supreme

Court’s and the Federal Circuit’s long-standing precedent.

      The Court in KSR confirmed the Court’s earlier holding in Graham v. John Deere

Co., 383 U.S. 1 (1966) that “commercial success, long felt but unsolved needs, failure of

others, etc.,” are an integral part of the obviousness analysis, and serve as a check

against “the use of hindsight,” 550 U.S. at 421 (quoting Graham, 383 U.S. at 36). The

correct focus is not whether such evidence can be invoked to rebut a prima facie case

based on prior art; the focus is whether a prima facie case is established at all when

such evidence is considered. See Custom Accessories, Inc. v. Jeffrey-Allan Indus.,

Inc., 807 F.2d 955, 958 (Fed. Cir. 1986) ("Under Graham, a district court makes proper

fact findings on those four inquiries and then assesses the ultimate legal question of

nonobviousness.”); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1380

(Fed. Cir. 1986) (“Objective evidence such as commercial success, failure of others,

long-felt need, and unexpected results must be considered before a conclusion on

obviousness is reached and is not merely ‘icing on the cake,’ as the district court stated

at trial.” (emphasis in original)); Minnesota Mining and Mfg. Co. v. Johnson & Johnson

Orthopaedics, Inc., 976 F.2d 1559, 1573 (Fed. Cir. 1992) (same).

      The district court’s ruling that the evidence of commercial success and

unexpected results would not be considered at all, in view of the court’s conclusion that

there was a “strong prima facie case” based on prior art, is contrary to precedent

embodied in dozens of holdings, for the reasons explained in Stratoflex, Inc. v. Aeroquip

Corp., 713 F.2d 1530 (Fed. Cir. 1983):

      Evidence of secondary considerations may often be the most probative
      and cogent evidence in the record. It may often establish that an invention



2008-1537                                   4
      appearing to have been obvious in light of the prior art was not. It is to be
      considered as part of all the evidence, not just when the decisionmaker
      remains in doubt after reviewing the art.

Id. at 1538-39 (internal citations omitted). See also Knoll Pharm. Co., Inc. v. Teva

Pharms. USA, Inc., 367 F.3d 1381, 1385 (Fed. Cir. 2004) (“The so-called ‘objective’

criteria must always be considered and given whatever weight is warranted by the

evidence presented.”); Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir.

1984) (“In determining the question of obviousness, inquiry should always be made into

whatever objective evidence of nonobviousness there may be.”); Kansas Jack, Inc. v.

Kuhn, 719 F.2d 1144, 1150 (Fed. Cir. 1983) (“[A]ll evidence touching the obvious-

nonobvious issue must be fully considered before a conclusion is reached on that

issue”). The objective evidence must be considered in determining whether a prima

facie case of obviousness had been made.

      Numerous decisions have reinforced this rule, as the court “has repeatedly

explained, [such evidence] is not just a cumulative or confirmatory part of the

obviousness calculus but constitutes independent evidence of nonobviousness.” Ortho-

McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008). In

Ortho-McNeil the court reiterated that secondary considerations often provide some of

the best “independent evidence of obviousness.” Id.; see also Ruiz v. AB Chance Co.,

234 F.3d 654, 667 (Fed. Cir. 2000) (“Our precedents clearly hold that secondary

considerations, when present, must be considered in determining obviousness.”). As

described in Simmons Fastener Corp. v. Ill. Tool Works, Inc., 739 F.2d 1573, 1575

(Fed. Cir. 1984):

      The section 103 test of nonobviousness set forth in Graham is a four part
      inquiry comprising not only the three familiar elements (scope and content



2008-1537                                  5
       of the prior art, differences between the prior art and the claims at issue,
       and level of ordinary skill in the pertinent art), but also evidence of
       secondary considerations when such evidence is, of course, present.
       Only after all evidence of nonobviousness has been considered can a
       conclusion on obviousness be reached. The trial court's error lies in its
       exclusion of such evidence in arriving at a conclusion on the obviousness
       of the claimed invention.

(citation omitted). See also Lindemann Maschinenfabrik GMBH v. American Hoist and

Derrick Co., 730 F.2d 1452, 1461 (Fed. Cir. 1984) (“All evidence must be considered

before a conclusion on obviousness is reached.”). In Ashland Oil, Inc. v. Delta Resins &

Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985), the court stated that:

       Just as it is legal error for a district court to fail to consider relevant
       evidence going to secondary considerations, it may be legal error for a
       district court to presuppose that all evidence relating to secondary
       considerations, when considered with the other Graham indicia relating to
       the obviousness/nonobviousness issue, cannot be of sufficient probative
       value to elevate the subject matter of the claimed invention to the level of
       patentable invention.

(citations omitted). The matter was settled long ago. Let us not invite legal error by

relying on the recent sprinkling or aberrant statements.

       It is a bedrock principle of appellate review that earlier panel decisions prevail

unless overturned by the court sitting en banc. Newell Cos. v. Kenney Mfg. Co., 864

F.2d 757, 765 (Fed. Cir. 1988). Such precedence to established law is demanded by

the integrity of judicial process. Sacco v. Dep’t of Justice, 317 F.3d 1384, 1386 (Fed.

Cir. 2003). It appears that the district court was led into error, for the court cited recent

contrary rulings of panels of this court, as are now cited in the Per Curiam opinion.

These rulings are contrary to the precedent that binds us.           The criteria by which

obviousness is determined is not a matter of the draw of the panel; it is a matter of

substantive patent law, and requires national uniformity.




2008-1537                                    6
                                             B

       Another aspect of the district court’s analysis suggests possible misdirection.

The district court criticized, that “B-K proffers no evidence that, viewed as a whole, the

device protected by the ’084 patent produced unexpected results. It contends only that

the taper interaction was unexpected.” The district court held that B-K Lighting must

show not that “a single element of the invention” produced an unexpected result, but

that “viewed as a whole, the device . . . produced unexpected results.” B-K Lighting,

Summary Judgment Order at 43-44 & n.134.

       Patentability of a new mechanical device indeed requires consideration of the

invention as a whole as compared with the prior art.         However, advantageous or

unexpected properties are often due to a particular component of the device; it does not

negate patentability of the device when the unexpected results are due to a particular

component.

                                             III

       In sum, I believe the matter is ripe for decision on this appeal. But, since the

case is being remanded for trial, I encourage the district court to avoid the errors of law

into which it had been led the first time around.




2008-1537                                    7
