  United States Court of Appeals
      for the Federal Circuit
              __________________________

                   NORGREN INC.,
                     Appellant,

                           v.

     INTERNATIONAL TRADE COMMISSION,
                 Appellee,

                         AND


SMC CORPORATION AND SMC CORPORATION OF
              AMERICA,
              Intervenors.
              __________________________

                      2011-1349
              __________________________

   On appeal from the United States International Trade
Commission in Investigation No. 337-TA-587.
             __________________________

              Decided: November 14, 2012
              __________________________

    CARL F. MANTHEI, The Ollila Law Group LLC, of La-
fayette, Colorado, argued for appellant. With him on the
brief was CURTIS J. OLLILA.
2                                            NORGREN   v. ITC

    MARK B. REES, Attorney, Office of the General Coun-
sel, United States International Trade Commission, of
Washington, DC. With him on the brief were JAMES M.
LYONS, General Counsel, and ANDREA C. CASSON, Assis-
tant General Counsel for Litigation.

    ARTHUR I. NEUSTADT, Oblon, Spivak, McClelland,
Maier & Neustadt, L.L.P., of Alexandria, Virginia, argued
for intervenors. With him on the brief were THOMAS J.
FISHER, BARRY J. HERMAN and ERIC W. SCHWEIBENZ.
               __________________________

    Before LOURIE, LINN, and MOORE, Circuit Judges.

    Opinion for the court filed by Circuit Judge LINN.

    Dissenting opinion filed by Circuit Judge MOORE.

LINN, Circuit Judge.

     Norgren, Inc. (“Norgren”) appeals from the Interna-
tional Trade Commission’s (“Commission”) determination
of no violation of section 337 of the Tariff Act of 1930 (19
U.S.C. § 1337) (“section 337”) by the importation or sale
by SMC Corporation and SMC Corporation of America
(collectively “SMC”) of devices alleged to infringe Nor-
gren’s U.S. Patent No. 5,372,392 (“’392 Patent”) based on
the Commission’s conclusion that claims 1-5, 7, and 9 are
invalid as obvious. Certain Connecting Devices (“Quick
Clamps”) for Use with Modular Compressed Air Condi-
tioning Units, Including Filters, Regulators, and Lubrica-
tors (“FRL’s”) That Are Part of Larger Pneumatic Sys. and
the FRL Units They Connect, Inv. No. 337-TA-587, slip op.
at 1-3, 42 (U.S. Int’l Trade Comm’n June 3, 2011) (Com-
mission Opinion) (“Commission Op.”). Because the deci-
sion of the Commission is supported by substantial
evidence and is not arbitrary, capricious, or legally erro-
neous, this court affirms.
NORGREN   v. ITC                                          3

                      I. BACKGROUND

                    A. The ’392 Patent

     The ’392 Patent discloses a “four-sided, generally rec-
tangular clamp” for connecting two fluid flow elements,
especially the fluid flow elements used in compressed air
systems—filters, regulators, and lubricators. ’392 Patent
col. 1 ll. 6-10, 39-54. According to the ’392 Patent, previ-
ous “connecting means” were “relatively expensive to
produce and/or have consisted of loose parts that have to
be assembled by the user, some of which are susceptible
to being lost.” Id. col. 1 ll. 26-31. The objective of the
invention in the ’392 Patent was to “provide a simple,
relatively inexpensive, preferably unitary connecting
means . . . which permits ready disconnection of the
elements when desired.” Id. col. 1 ll. 32-36. The only
independent claim of the ’392 Patent—claim 1—claims a
four-sided, generally rectangular clamp structure having
a hinged side that can be opened to receive the flanges of
the fluid flow elements and closed to hold the flanges:

   1. Connecting structure for contiguously connect-
   ing together a pair of fluid-flow elements, each
   fluid flow element including a generally rectangu-
   lar ported flange so as to define a pair of ported
   flanges associated with the fluid-flow elements,
   said connecting structure comprising:

   a four-sided, generally rectangular clamp adapted,
   in its operative clamping position, to engage, in
   parallel relationship with one another, the pair of
   ported flanges, one of said sides of the clamp being
   pivotally mounted so that said one side can be
   pivoted out of said operative clamping position in
   order to permit reception of said flanges into the
   clamp and then pivoted back into said operative
   clamping position,
4                                           NORGREN   v. ITC

    sealing means for establishing fluid-tight commu-
    nication between the respective ports formed in
    said flanges, and

    locking means for releasably locking said one side
    in said operative clamping position, in which posi-
    tion the clamp urges the flanges towards one an-
    other thereby establishing together with said
    sealing means, said fluid-tight communication be-
    tween said ports.

Id. col. 4 ll. 44-66 (emphasis added).

                  B. Previous Proceedings

    Norgren filed a complaint with the Commission as-
serting that the importation or sale of SMC devices al-
leged to infringe the ’392 Patent violates section 337. The
administrative law judge (“ALJ”) found no section 337
violation because he construed the claims to require four
projecting rims on the flange of the fluid flow element
whereas the SMC flanges have only two such rims. The
ALJ also found the claims of the ’392 Patent to be nonob-
vious. On appeal, this court reversed the noninfringe-
ment determination because “the ‘generally rectangular
ported flange’ of the asserted claims of the ’392 patent is
not limited to a flange having four projecting rims.”
Norgren Inc. v. Int’l Trade Comm’n, 336 F. App’x 991,
995-96 (Fed. Cir. 2009) (nonprecedential) (“Norgren I”).
This court also vacated the ALJ’s determination of nonob-
viousness and remanded for the ALJ to consider obvious-
ness under the new claim construction. Id. at 996.

    On remand, the ALJ, focusing on the obviousness of
the clamp itself, found the asserted claims of the ’392
Patent not invalid under 35 U.S.C. § 103. The Commis-
sion reversed the decision of the ALJ, finding that the
asserted claims of the ’392 Patent were obvious, and thus
NORGREN   v. ITC                                            5
finding no section 337 violation. The Commission found
that a prior art SMC clamp (“old-style SMC connector”) is
both four-sided and generally rectangular, that the addi-
tion of a hinge to the old-style SMC connector would have
been obvious to a person having ordinary skill in the art,
and that the evidence failed to show secondary considera-
tions to support a finding of nonobviousness. The Com-
mission also found that the limitations of the dependent
claims did not render them nonobvious. Norgren ap-
pealed.      We have jurisdiction under 28 U.S.C.
§ 1295(a)(6).

                       II. DISCUSSION

                   A. Standard of Review

    The Commission’s interpretation of the patent statute
is reviewed de novo and factual findings are reviewed for
substantial evidence. Corning Glass Works v. U.S. Int’l
Trade Comm’n, 799 F.2d 1559, 1565 & n.5 (Fed. Cir.
1986) (citing 5 U.S.C. § 706). Substantial evidence is
“such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.” Universal
Camera Corp. v. NLRB, 340 U.S. 474, 477 (1951) (quoting
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938))
(internal quotation marks omitted). Substantial evidence
must be sufficient “to justify, if the trial were to a jury, a
refusal to direct a verdict when the conclusion sought to
be drawn from it is one of fact for the jury.” Id. (quoting
NLRB v. Columbian Enameling & Stamping Co., 306
U.S. 292, 300 (1939)) (internal quotation marks omitted).
Moreover, “the possibility of drawing two inconsistent
conclusions from the evidence does not prevent an admin-
istrative agency’s finding from being supported by sub-
stantial evidence.” Consolo v. Fed. Mar. Comm’n, 383
U.S. 607, 620 (1966).
6                                            NORGREN   v. ITC

                  B. Parties’ Arguments

    Norgren argues that there was insufficient evidence
that the old-style SMC connector is four-sided and gener-
ally rectangular and that it would not have been obvious
to one of ordinary skill in the art to solve the problems of
loose parts and ease of replacement by adding a hinge to a
four-sided, generally rectangular clamp. In particular,
Norgren argues that the expert witness for SMC, David
Trumper (“Trumper”), was over-qualified and not familiar
with the relevant industry at the time of the invention
claimed in the ’392 Patent; that there was insufficient
evidence that one of ordinary skill in the art would rea-
sonably expect the addition of a hinge to be successful;
that the prior art teaches away from the claimed inven-
tion; and that there was no evidence of a teaching, sug-
gestion, or motivation to adopt the solution claimed in the
’392 Patent. Additionally, Norgren argues that secondary
considerations support a finding of nonobviousness.
Finally, Norgren argues that the Commission’s finding of
obviousness was arbitrary and capricious because it
contradicted the earlier finding of nonobviousness and
that the Commission was required to uphold the ALJ’s
findings of fact unless they were clearly erroneous. Nor-
gren did not argue on appeal that the limitations of the
dependent claims would preserve their validity if inde-
pendent claim 1 is obvious.

     The Commission responds that the clamp claimed in
the ’392 Patent would have been obvious to one of ordi-
nary skill in the art at the time of the invention. The
Commission argues that the old-style SMC connector is
four-sided and generally rectangular and that the addi-
tion of the hinge was an obvious solution to the problems
of loose parts and ease of use based on both the prior art
and the common sense of a person having ordinary skill in
the art. In support of these findings, the Commission
argues that Trumper was a qualified expert witness and
NORGREN   v. ITC                                          7
that a person of ordinary skill in the art would have had a
reasonable expectation of success in combining the hinge
with the old-style SMC connector. The Commission also
argues that it reasonably found the evidence of secondary
considerations to be insufficient to support a finding of
nonobviousness. Finally, the Commission argues that its
decision was not arbitrary and capricious and that it
reviews a decision of an ALJ de novo. SMC makes similar
arguments.

                    C. Applicable Law

    An invention may not be patented if it would have
been obvious at the time of the invention to a person
having ordinary skill in the art. 35 U.S.C. § 103(a).
Obviousness is a question of law. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 427 (2007); Graham v. John Deere
Co., 383 U.S. 1, 17 (1966). However, several factual
inquiries underlie the determination of obviousness: the
scope and content of the prior art, the differences between
the claims and the prior art, the level of ordinary skill in
the art, and secondary considerations. Graham, 383 U.S.
at 17-18. The burden is on the challenger of the patent to
prove by clear and convincing evidence that the patent
claims are invalid. Microsoft Corp. v. i4i Ltd. P’ship, 131
S. Ct. 2238, 2242 (2011).

    “The combination of familiar elements according to
known methods is likely to be obvious when it does no
more than yield predictable results.” KSR, 550 U.S. at
416. A flexible teaching, suggestion, or motivation test
can be useful to prevent hindsight when determining
whether a combination of elements known in the art
would have been obvious. See Ortho-McNeil Pharm., Inc.
v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir.
2008); In re Translogic Tech., Inc., 504 F.3d 1249,
1260 (Fed. Cir. 2007). However, the Supreme Court held
that “[t]he obviousness analysis cannot be confined” to a
8                                             NORGREN   v. ITC

rigid application of the teaching, suggestion, or motiva-
tion test. KSR, 550 U.S. at 419. The common sense and
ordinary creativity of a person having ordinary skill in the
art are also part of the analysis. Id. at 420-21. Moreover,
“[o]ne of the ways in which a patent’s subject matter can
be proved obvious is by noting that there existed at the
time of invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.” Id.
at 419-20. “[A]ny need or problem known in the field of
endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in
the manner claimed.” Id. at 420. This includes, but is not
limited to, the problem motivating the patentee. See id.
(“The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee
was trying to solve. The Court of Appeals failed to recog-
nize that the problem motivating the patentee may be
only one of many addressed by the patent’s subject mat-
ter.” (citation omitted)).

    When there is a design need or market pressure to
    solve a problem and there are a finite number of
    identified, predictable solutions, a person of ordi-
    nary skill has good reason to pursue the known
    options within his or her technical grasp. If this
    leads to the anticipated success, it is likely the
    product not of innovation but of ordinary skill and
    common sense.

Id. at 421.

       D. Four-Sided, Generally Rectangular Clamp

    In Norgren I, this court found that “[t]he ‘generally
rectangular’ language pertains to the overall shape of the
flange.” 336 F. App’x at 995. While Norgren I specifically
addressed the claim language related to the flange, this
NORGREN   v. ITC                                         9
court recognizes—consistent with our claim construction
in Norgren I—that the clamp as a whole, and not merely
portions of it, must be four-sided and generally rectangu-
lar.

    The dispute centers not on the construction of the
claims but on the factual question of whether the old-style
SMC connector (shown in the figure below, adapted from
the Intervenors’ Brief at page 13) is four-sided and gener-
ally rectangular.



                            A




                   D                  B




                            C




    As a preliminary matter, Norgren questions whether
SMC and the Commission Investigative Staff proved that
the old-style SMC connector existed prior to 1993—when
the application for the ’392 Patent was filed. This argu-
ment is easily dismissed. First, Norgren made no objec-
tion to that exhibit when SMC offered it as representative
of a prior art connector. Commission Op. at 8; see Hr’g Tr.
438-39, Nov. 27, 2007 (“RPX-002, move that for admis-
10                                          NORGREN   v. ITC

sion. And this is a ’84 SMC connector.”). Moreover, the
record contains the testimony of Timothy Kuchta that “he
recognized RPX-002 as an SMC old-style connector.”
Certain Connecting Devices (“Quick Clamps”) for Use with
Modular Compressed Air Conditioning Units, Including
Filters, Regulators, and Lubricators (“FRL’s”) That Are
Part of Larger Pneumatic Sys. and the FRL Units They
Connect, Inv. No. 337-TA-587, slip op. at 13 (U.S. Int’l
Trade Comm’n Aug. 5, 2010) (Final Initial Determina-
tion); see Hr’g Tr. 512, Nov. 27, 2007. Thus, substantial
evidence supports the finding that the old-style SMC
connector was in existence prior to 1993.

    The Commission’s finding that the old-style SMC con-
nector is both four-sided and generally rectangular is also
supported by substantial evidence.        First, Norgren’s
expert, James Wiskamp (“Wiskamp”), in the first Com-
mission proceeding admitted in a deposition that the only
difference between the invention claimed in the ’392
Patent and the old-style SMC connector was the hinge.
While Wiskamp later described the shape of the old-style
SMC connector differently, the ALJ in the initial proceed-
ing considered Wiskamp’s attempt to distance himself
from his deposition statement not credible, and the Com-
mission on remand found no reason to depart from that
finding. The Commission had an adequate basis on which
to make such a finding.

    Second, the Commission properly relied on Trumper’s
testimony that the four sides of the old-style SMC connec-
tor are those required for its function and that the shape
formed by those sides is generally rectangular. This court
rejects Norgren’s argument that Trumper was not an
appropriate expert because he was not familiar with the
relevant industry and was overly-qualified. The person of
ordinary skill in the art was determined to be “someone
who would have had several years of industry experience
working with [Filters, Regulators, and Lubricators] and
NORGREN   v. ITC                                          11
connectors or would have had an engineering degree with
two years of industry experience.” Commission Op. at 26
(internal quotation marks omitted). Trumper was a
professor of mechanical engineering at MIT and had
experience with pneumatic systems and mechanical
connections. Because the person having ordinary skill in
the art is a “theoretical construct” and is “not descriptive
of some particular individual,” “a person of exceptional
skill in the art” should not be disqualified because he or
she is “not ordinary enough.” See Endress + Hauser, Inc.
v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042
(Fed. Cir. 1997) (emphasis in original). Additionally,
Trumper was accepted as an expert in the first proceeding
before the ALJ without objection. Thus, the Commission
was within its discretion to allow Trumper to testify as an
expert and to credit his testimony. See id.

    Third, the Commission based its conclusion on an ex-
amination of the physical exhibit of the old-style SMC
connector. The four outer “sides” of the old-style SMC
connector are labeled A-D in the above figure. And the
Commission found those four sides to be essential in
performing the clamping function of the old-style SMC
connector in the same manner as the new-style SMC
connector previously found to infringe. Moreover, these
four sides are a substantial part of the outer portion of the
old-style SMC clamp, and hence are decisive when defin-
ing its shape.

    The Commission concluded that the old-style SMC
connector was not only generally rectangular but also
four-sided within the meaning of the claim term. It
reached that conclusion based on Trumper’s testimony
and its examination of the old-style SMC connector that
was placed in evidence. From that record, the Commis-
sion found that four sides of the old-style SMC connector
were essential to its functionality as a connector, notwith-
standing the existence of other indents, cutouts, protru-
12                                           NORGREN   v. ITC

sions and other non-functional structural elements and
met the “four-sided” limitation of the claim. The dissent
takes a highly restrictive view of the Commission’s ruling
and disregards the functioning of the device in counting
all surface elements as “sides.” But there is nothing in
the record to compel that approach or, more significantly,
to conclude that substantial evidence does not support the
Commission’s determination.

     In Norgren I, it was undisputed that the flanges were
“generally rectangular” despite the fact that sloped sides
replaced corners of the rectangle. See 336 F. App’x at
995-96. The Commission recognized that the old-style
SMC connector was characterized by the same type of
deviation from a “precise rectangle,” i.e., missing corners,
as the flanges in Norgren I. Commission Op. at 20.
Whether the inside, the outside, or the entire thickness of
sides A through D in the above figure is considered, the
shape of the clamp is a rectangle, absent the corners. The
absence of the corners is part of the shape of the old-style
SMC connector as a whole, but it does not detract from its
generally rectangular configuration. Similarly, the thick-
ness or protrusion of the sides does not detract from its
generally rectangular shape. While a triangular clamp, a
circular clamp, or even a clamp with four sides arranged
as a trapezoid would not qualify as “generally rectangu-
lar,” the old-style SMC connector does.

    The responsibility of this court is not to re-weigh de
novo the evidence on close factual questions; it is to
review the decision of the Commission for substantial
evidence. This court concludes that the Commission’s
findings are supported by substantial evidence because “a
reasonable mind might accept” that the old-style SMC
connector is four-sided and generally rectangular. Uni-
versal Camera, 340 U.S. at 477 (quoting Consol. Edison,
305 U.S. at 229) (internal quotation marks omitted). This
NORGREN   v. ITC                                           13
court finds no basis to disturb the decision of the Commis-
sion.

                       E. The Hinge

    The Commission properly found that the only differ-
ence between the claimed invention and the prior art was
the “pivotally mounted” (hinged) side. The parties dis-
pute whether it would have been obvious to a person
having ordinary skill in the art at the time of the inven-
tion to modify the old-style SMC connector with a hinged
side.

    The Commission found that one of ordinary skill
would have been motivated to modify the prior art to
achieve the patented invention “to avoid loose parts and
for ease of use,” citing expert testimony and the problems
with the prior art described in the ’392 Patent. Commis-
sion Op. at 26-27. The Commission also found that the
solution of adding a hinge to the old-style SMC connector
was obvious. First, the Commission found that the prior
art U.S. Patent No. 4,915,418 (“Palatchy Patent”) taught
that adding a hinge to a pipe coupling eliminated loose
parts and made the connector easier to use. Commission
Op. at 28; see also Palatchy Patent col. 1 ll. 33-54 (describ-
ing the claimed pipe coupling with “hingedly connected”
segments that allow the coupling to be “more easily
positioned and held in place by the plumber” by allowing
the positioning of one segment while “permitting the
remaining segments to freely dangle beneath the posi-
tioned segment ready for application”). The invention of
the ’392 Patent solved similar problems in a similar way.
This art is relevant to the invention in the ’392 Patent
because the ’392 Patent is also directed to water pipes and
cites the Palatchy Patent. ’392 Patent, at [56], col. 4 ll.
34-38. While Norgren argues that Palatchy and the old-
style SMC connector teach away from the clamp claimed
in the ’392 Patent, nothing indicates that they “criticize,
14                                           NORGREN   v. ITC

discredit, or otherwise discourage investigation into the
invention claimed” as required for teaching away. DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (internal quotation marks
omitted).

    Second, the Commission found that the addition of the
hinge was a common sense solution. Hinges are a com-
mon mechanical component that would have been known
to those of ordinary skill in the art to solve a loose parts
problem. Commission Op. at 29-30 & n.18 (citing Adams
v. Bellaire Stamping Co., 141 U.S. 539 (1891)). Even
Norgren’s expert in the remand proceedings, John Wolfe
(“Wolfe”), indicated that a hinge was a common compo-
nent that one of ordinary skill at the time of the invention
would have understood to solve the loose parts problem.
Wolfe also testified that there were a finite number of
solutions to the loose parts problem. While Norgren
argues that the evidence did not show that one of ordi-
nary skill in the art would have expected the addition of
the hinge to succeed, the Commission’s conclusion that it
did is supported by substantial evidence. Trumper testi-
fied that the addition of the hinge did not affect the
clamping function. Similarly, Wolfe suggested that the
addition of the hinge would not require testing. Also, the
Commission correctly rejected Norgren’s argument that
the addition of a hinge was nonobvious because Wolfe had
not considered it. The correct analysis is whether it
would have been obvious to the hypothetical person of
ordinary skill in the art, not whether it was obvious to
Wolfe personally. See Amazon.com, Inc. v. Barnesandno-
ble.com, Inc., 239 F.3d 1343, 1364 (Fed. Cir. 2001).

    Norgren cites Innogenetics, N.V. v. Abbott Laborato-
ries, 512 F.3d 1363 (Fed. Cir. 2008), to support its argu-
ment that there was insufficient evidence of a motivation
to combine the elements and argues specifically that the
problem listed in the patent was insufficient motivation.
NORGREN   v. ITC                                        15
However, KSR expressly stated that “[o]ne of the ways in
which a patent’s subject matter can be proved obvious is
by noting that there existed at the time of invention a
known problem for which there was an obvious solution
encompassed by the patent’s claims.” 550 U.S. at 419-20.
In this case, the Commission properly found the claims
obvious based on evidence of known problems and an
obvious solution.

    Nothing presented by Norgren relating to secondary
considerations undercuts this conclusion. Contrary to
Norgren’s arguments, the evidence presented on secon-
dary considerations does not merit a finding of nonobvi-
ousness. The Commission agreed with the ALJ that
Wiskamp’s testimony on surprise and skepticism follow-
ing the release of Norgren’s clamp was lacking in detail
and lacking support in the record. The Commission also
found the evidence insufficient to show long-felt need, and
the testimony Norgren cites does not necessitate the
opposite conclusion. While Norgren argued that the
expert testimony indicating ways to modify the prior art
showed failure by others, the Commission found that the
testimony did not show that others tried and failed and
that Wolfe conceded that the clamp claimed in the ’392
Patent could have been made at the time of the invention.
The Commission found that Norgren failed to establish
commercial success and failed to show a nexus between
any success and the features claimed in the ’392 Patent.
See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
683 F.3d 1356, 1363 (Fed. Cir. 2012). Finally, the Com-
mission rejected Norgren’s assertion of copying because
the clamp accused of being a copy was excluded from the
remand proceeding because Norgren failed to provide a
foundation. The Commission’s determination of obvious-
ness, including its assessment of secondary considera-
tions, is supported by substantial evidence and is
consistent with the law. The invention in the ’392 Patent
16                                         NORGREN   v. ITC

was a combination of known elements with no more than
expected results. See KSR, 550 U.S. at 416-17.

              F. The Commission’s Decision

     Contrary to Norgren’s argument that the Commission
must uphold the decision of the ALJ unless it is clearly
erroneous, the Commission “reviews all of the ALJ’s
findings de novo.” Deere & Co. v. Int’l Trade Comm’n, 605
F.3d 1350, 1358 (Fed. Cir. 2010). Similarly, the Commis-
sion’s present finding of obviousness is not arbitrary and
capricious simply because the Commission found the
claims nonobvious before the remand. This court vacated
the Commission’s obviousness determination in Norgren
I, allowing the Commission to revisit obviousness. 336 F.
App’x at 996. Moreover, the Commission considered new
evidence on obviousness following the remand. The
Commission’s conclusion was not arbitrary or capricious.

                    III. CONCLUSION

   For the foregoing reasons, the judgment of the Com-
mission is affirmed.

                      AFFIRMED
  United States Court of Appeals
      for the Federal Circuit
               __________________________

                    NORGREN INC.,
                      Appellant,
                             v.
     INTERNATIONAL TRADE COMMISSION,
                 Appellee,
                           AND

SMC CORPORATION AND SMC CORPORATION OF
              AMERICA,
              Intervenors.
               __________________________

                       2011-1349
               __________________________

   On appeal from the United States International Trade
Commission in Investigation No. 337-TA-587.
             __________________________

MOORE, Circuit Judge, dissenting.
    The majority in this case affirms the holding by the
International Trade Commission (Commission) that
claims 1-5, 7, and 9 of U.S. Patent No. 5,372,392 (’392
patent) would have been obvious over the SMC prior-art
clamp. I dissent because I conclude that the claims would
not have been obvious to one of skill in the art in light of
the SMC prior-art clamp. In particular, I cannot agree
that the SMC prior-art clamp is “a four-sided, generally
rectangular clamp.” The Final Initial Determination by
NORGREN   v. ITC                                            2


the Administrative Law Judge in this case held that “An
examination of [the SMC prior-art clamp] shows that the
connector is not generally rectangular, and is not even
four sided.” J.A. 321. I agree completely with the deter-
minations by this ALJ and find that the Commission’s
findings to the contrary are not supported by substantial
evidence.
    Claim 1, the only independent claim of the ’392 pat-
ent, recites “a generally rectangular ported flange” and “a
four-sided, generally rectangular clamp adapted, in its
operative clamping position, to engage, in parallel rela-
tionship with one another, [a] pair of ported flanges . . . .”
’392 patent claim 1 (emphasis added). In the prior appeal
we held that SMC’s ported flange was generally rectangu-
lar despite having sloped corners. The picture below
depicts the SMC ported flange that we held was generally
rectangular:




Intervenors’ Br. 13.
3                                          NORGREN   v. ITC


     The claim language at issue on remand was not “gen-
erally rectangular ported flange”; it was “a four-sided,
generally rectangular clamp.” The ALJ was correct that
the focus must be on “the precise claim language”, J.A.
320, namely “a four-sided, generally rectangular clamp.”
It is clear from figure 1 of the patent what a four-sided
generally rectangular clamp is:




’392 patent fig.1 (red lines added). As illustrated in the
patent, the clamp is generally rectangular and has four
sides. The sides labeled 1a, 1b, and 1c define three sides
of the clamp. The side labeled 3 is the fourth side of the
clamp and, when the side is pivoted into operative clamp-
ing position, the clamp is generally rectangular. The
same is true of the commercial embodiment of the ’392
patent, the Excelon Quikclamp®:
NORGREN   v. ITC                                           4




See,       e.g.,      Norgren       Excelon        Quikclamp,
http://store.norgren.com/us/en/list/airline-preparation-
frl/accessories/frl-connectors/ (red lines added).
    We must look to the precise claim language and be
ever vigilant not to strip away patent rights by eliminat-
ing claim limitations. This claim requires the clamp to be
both “generally rectangular” and “four-sided” in structure.
Hence, while something with six sides (like the SMC
ported flange pictured above) might be generally rectan-
gular, that does not mean it is “four-sided.” The claim
does not require that the flange be four-sided, but it does
require that the clamp be “four-sided.” The claim also
recites the functional limitation that the clamp must be
“adapted, in its operative clamping position, to en-
gage . . . the pair of ported flanges.”
    Hence the claims require that the clamp is: (1) four-
sided; (2) generally rectangular; and (3) adapted in its
operative position to engage the flanges. These are three
distinct requirements, three distinct claim limitations.
The ALJ clearly understood this. The majority, however,
improperly combines the structural and functional claim
limitations to conclude that only the operative portion of
the clamp must be four-sided and generally rectangular.
5                                                NORGREN   v. ITC


This interpretation conflicts with the plain language of
the claim, which requires that the clamp as a whole be
“four-sided.” The majority recognizes this requirement:
“this court recognizes—consistent with our claim con-
struction in Norgren I—that the clamp as a whole, and
not merely portions of it, must be four-sided and generally
rectangular.” Maj. Op. at 8-9. In application, however,
the majority does the opposite. It holds: “the four sides of
the old-style SMC connector are those required for its
function and that the shape formed by those sides is
generally rectangular.” Maj. Op. at 10 (emphasis added);
see also Maj. Op. at 11 (“The four outer ‘sides’ of the old-
style SMC connector are labeled A-D . . . .” (emphasis
added)). The plain language and our prior case are clear
– the whole clamp must be four-sided and generally
rectangular, not just a portion of the clamp. It is not fair
for the majority to cherry-pick four sides on a sixteen-
sided clamp and then call it a four-sided clamp: how can
this be clear and convincing evidence of invalidity?
    As seen in the photo below (adapted from Intervenors’
Br. 13), the SMC prior-art clamp has sixteen sides:

                       3     4     5
                 1     2            6        7


                  16                     8


                       14           10
                15     13    12     11       9
NORGREN   v. ITC                                         6


The ALJ found that “An examination of RPX-002 shows
that the connector is not generally rectangular, and is not
even four-sided.” J.A. 321. The Commission rejected the
ALJ’s findings, instead concluding that the SMC prior art
clamp was “generally rectangular.” Though it is certainly
true that the claims do not require a perfect rectangle, I
do not agree with the Commission that the SMC prior art
clamp is generally rectangular. However, given that I
review the Commission fact findings for substantial
evidence, if the claim limitation was only a generally
rectangular clamp, I would not reverse on this point. But
the claim limitation is NOT “a generally rectangular
clamp.” It is a “four-sided, generally rectangular clamp.”
I cannot agree that a sixteen-sided clamp is four-sided. It
defies logic. And the fact that an expert testifies that a
sixteen-sided clamp is four-sided doesn’t make it so. I
refuse to strip a patentee of his patent rights based on
such testimony.
    The “four-sided, generally rectangular clamp” limita-
tion is different from both the “generally rectangular
flange” limitation and the “adapted, in its operative
clamping position” limitation. We should not treat the
four-sided limitation as superfluous or read it out of the
claim. Because the Commission’s fact finding that the
SMC prior art clamp meets the four-sided limitation is
not supported by substantial evidence, I would reverse
the determination of obviousness.
