     In the United States Court of Federal Claims
                                  No. 11-268C
                           (Filed: February 24, 2014)

*******************************
SECURITYPOINT HOLDINGS, Inc.,

              Plaintiff,

v.

THE UNITED STATES,

           Defendant.
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                                    ORDER

       Pending in this patent infringement case are the parties’ cross-motions
for summary judgment on validity. The issues have been extensively briefed,
and oral argument was held on February 21, 2014. For the reasons set out
below, the court denies both parties’ motions. The matter will be set for trial.

       SecurityPoint is suing the United States for the alleged unauthorized use
of SecurityPoint’s invention described in the 460 patent in claims 1-4, 6-9, and
12-15. The 460 patent concerns a system of recycling trays through security
screening checkpoints by use of movable carts and the display of advertising
on the bins. The patent dates to the provisional patent application filed on July
3, 2002. The 460 patent is comprised of one independent claim and 14
dependant claims. We rely on our prior opinion regarding claim construction
for the relevant background. See SecurityPoint Holdings, Inc. v. United
States,111 Fed. Cl. 1 (2013).

        For the purposes of the cross motions only, the parties agree that the the
field of relevant art is “security checkpoint screening operations,” and thus the
person of ordinary skill in the art is someone who, as of July 3, 2002,
possessed experience sufficient to have a comprehensive understanding of
security checkpoint screening operations. Because we were of the view that
it is not necessary to have a comprehensive understanding of security


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checkpoint screening operations in order to understand what is taught by the
460 patent, we declined during claim construction to adopt any particular
understanding of what is meant by a comprehensive understanding of security
checkpoint screening operations. See id. at 6. Our reluctance to do so has not
changed during the summary judgment process, which has focused on the
government’s two defenses: anticipation and obviousness.

        This matters because of disputes concerning the expert reports plaintiff
has proffered from Mr. Marcus Arroyo and Mr. Layel Abdel-Malek. Even
though Mr. Arroyo is arguably qualified in the area of security checkpoint
screening operations, and even though the government is willing to assume
that is the proper area of expertise, it has moved to strike portions of Mr.
Arroyo’s report and his deposition testimony because he is not qualified to
opine as to what the key patent in its anticipation defense, known as the “Flint
patent,” would have taught a person of ordinary skill of the art. Plaintiff
confuses the matter by offering the report of Mr. Abdel-Malek, who it
concedes would not be an expert in the field of art under its own definition, but
who it suggests has useful things to add because he is a systems engineer.
Plaintiff has also offered the views of the inventor, Mr. Joseph Ambrefe, Jr.,
although not in the form of an expert report, and defendant has objected to our
consideration of anything Mr. Ambrefe has written because he has not been
qualified as an expert.

        Although patent validity ultimately is a legal question, it has imbedded
within it certain preliminary factual issues. Graham v. John Deere Co. Of
Kansas City, 383 U.S. 1, 18 (1966). One is the level of ordinary skill in the
field of art. Defendant’s willingness, in other words, to use plaintiff’s
proffered definition does the court little good, when its real position is that the
correct field of art is something more on the order of general mechanical
engineering or systems design. The parties are completely at odds over the
direction our consideration should go with respect to prior art. We believe that
prudence dictates that we initially resolve at trial the question of the correct
field of art and the level of ordinary skill in it before attempting to define and
construe the parties’ proffered prior art and compare it to the 460 patent.1

      This preliminary confusion reverberates through other factual issues as
well. This becomes particularly acute when the parties argue over the


1
  We recognize that those subsequent considerations are likewise reliant on
factual determinations, which will also necessarily be made at trial.

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government’s anticipation defense. Defendant contends that the Flint patent
completely anticipates all of plaintiff’s claims. The key point of controversy
in that respect is whether passing “through” the “scanning device” found in the
460 patent can be found in Flint, which refers, among other things, to passing
“under” a “hopper,” which is part of the “tray filler.” Plaintiff’s response to
the anticipation argument is built around the asserted importance of security
scanning. Defendant, despite conceding the definition of a person skilled in
the art, fundamentally takes the position that the field of art is not limited to
security checkpoints.

       We note as well that plaintiff, late in the briefing process, introduced a
number of exhibits along with the affidavit of Mr. Ambrefe on the question of
secondary proof of non-obviousness. Defendant, while primarily relying on
the argument that the court should never get to secondary considerations, also
asks us to conclude that, as a matter of law, none of the materials offered
creates a triable issue of fact. Without endorsing any of plaintiff’s specific
contentions, we can say without question that there are numerous disputed
issues of fact raised by the secondary considerations.

                                CONCLUSION

       The pending dispositive motions of both parties are denied without
prejudice. All of the questions of fact imbedded in the issue of patent validity
remain open. The parties are directed to consult and propose a pretrial
schedule of events. Their joint report, which may contain competing views,
is due on or before March 25, 2014.




                                             s/ Eric G. Bruggink
                                            ERIC G. BRUGGINK
                                            Judge




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