Judgment for Patentee Following Bench Trial

Kleen-Tex Industries, Inc. v. Mountville Mills, Inc., No. 3:03-cv-093 (N.D. Ga. Mar. 3, 2008) (Camp, J.)

Following a bench trial, Judge Camp issued an Order finding the patent-in-suit (which related to a process for making a machine washable track control floor mat) valid, enforceable, and infringed. In particular, the Court held that although the claimed invention comprised a combination of known elements, the unpredictable results and other secondary considerations yielded by the claimed combination precluded a finding of obviousness. In addition, the Court found that certain conduct and litigation tactics of the Defendant rendered the case “exceptional” and awarded the Plaintiff 100% of its attorneys’ fees.

The Court began its analysis by addressing a claim construction issue raised by the parties’ invalidity arguments that was not addressed in the Court’s Markman Order. Specifically, the asserted claims recited that a step of bonding the tufts of yarn to a rubber substrate was “such that the mat is machine washable without substantial degradation of tufts.” Based on a review of the specification and prosecution history, the Court held that this phrase did not constitute a claim limitation, but instead was an inherent result of the twisting, tufting, and bonding steps recited in the claims. As a result, the Defendant’s arguments that this phrase rendered the claims invalid for lack of enablement and indefiniteness were deemed to be moot.

The Court next addressed the issue of willful infringement under the standards articulated by the Federal Circuit in In re Seagate. The Defendant conceded infringement at trial and the Court found that such infringement was intentional. Nevertheless, because the Defendant had a credible invalidity defense sufficient to take the case to trial, the Court held that there was not enough evidence to support a finding of willful infringement.

On the question of the patent-in-suit’s validity, the Court held that even if the Defendant could show that a motivation existed to combine the prior art references or establish a prima facie case of obviousness, “the overwhelming objective evidence of nonobviousness would refute that argument.” In particular, the Court found that the Plaintiff presented the following strong and credible evidence of nonobviousness: a long felt but unsolved need for a washable wipe-and-scrape mat, widespread attempts and failures to achieve such a mat, unexpected results from certain steps recited in the claims, and substantial commercial success by the Plaintiff. After remarking that “[t]he hallmark of the Supreme Court’s opinion in KSR is predictability,” the Court concluded that based on the evidence, “the results obtained by [Plaintiff’s] combination of known elements were unpredictable.” Consequently, the Court held that the claimed invention was not obvious.

Lastly, the Court found the case to be “exceptional” under 35 U.S.C. § 285 and ordered the Defendant to pay the Plaintiff 100% of its attorneys’ fees. The Court based its finding on the following: (1) the Defendant did not take the Plaintiff’s infringement allegations seriously, but instead denied infringement based on irrelevant considerations without conducting an investigation into the scope of the claims; (2) the Defendant threatened to disrupt the Plaintiff’s economic interests if it maintained the lawsuit; (3) the Defendant “wasted a considerable amount of valuable judicial resources” by opposing the Plaintiff’s motions for summary judgment of infringement only to concede infringement at trial; and (4) the Defendant took no remedial action to lessen the impact of its infringement, such as introducing a non-infringing substitute product.