Ohio Willow Wood Co. v. Alps South, LLC.

Unremarkable secondary indicia of non-obviousness was inadequate to rebut a strong prima facie case of obviousness.

Opinion (REYNA): The Ohio Willow Wood Company (“OWW”) alleged infringement of its ‘237 patent against Alps South, LLC (“Alps”). OWW appealed a summary judgment in favor of Alps that held '237 invalid due to collateral estoppel and obviousness, and Alps appealed a summary judgment for OWW that denied inequitable conduct. OWW argued estoppel based on prior litigation of certain claims should not control because the claims did not use identical language. However, the Court noted that estoppel relies on common issues and not common language alone. OWW next contended that the numerical limits on certain characteristics of the “gel composition” and “fabric” of its claims were not obvious. The Court rebutted by finding that nothing in the record indicated that numerical limits to these obvious claim limitations required anything other than the exercise of routine skill in the art. The Court also rejected OWW’s creative argument that secondary indicia (its products commercial success and competitor imitations) established non-obviousness. The Court found that OWW’s devices were prima facie obvious and that the secondary indicia applied equally to OWW’s prior art. Finally, the Court held that there were genuine issues of material fact as to whether OWW committed inequitable conduct. Collateral estoppel and obviousness was AFFIRMED. Inequitable conduct was REVERSED and REMANDED.