Rosco, Inc. v. Mirror Lite Company, 03-1562, Federal Circuit, January 19, 2005 – non-precedential – reversed and remanded
The technology here? School bus mirrors, in particular, an oval elliptical mirror. Rosco argued that six of the patent claims had been "known or used by others in the United States prior to the invention date," and introduced as evidence a mirror of its own. The district court found this argument persuasive and found those claims invalid under § 102(a). Rosco also argued that three of the claims were obvious under § 103, but the district court disagreed, stating that Rosco had failed to present a motivation to combine the prior art references.
On appeal, the Federal Circuit focused on the standard of proof required. For anticipation (one prior art reference meets every claim limitation), that standard is clear and convincing evidence. To meet this standard, testimonial evidence of invalidity must be corroborated by documentary, physical, or circumstantial evidence, or the oral testimony of someone other than an alleged inventor or interested party. In Rosco's case, its co-owners both testified about anticipation. While the district court found Rosco's mirror to be sufficient corroboration for this testimony, the Federal Circuit disagreed. Furthermore, the Federal Circuit found that Rosco's patent expert's testimony was not corroborating because his testimony was based on what one of the co-owners had told him, he was not skilled in the art, and he had no independent judgment. Finally, the Federal Circuit found the district court's visual inspection of the mirror to be insufficient, because the district court is not skilled in the art, and no scientific measurements were done. Thus, Rosco had not proven anticipation by clear and convincing evidence.
The Federal Circuit agreed with the district court in that Rosco had failed to prove obviousness because it did not point to any motivation to combine the prior references.
The technology here? School bus mirrors, in particular, an oval elliptical mirror. Rosco argued that six of the patent claims had been "known or used by others in the United States prior to the invention date," and introduced as evidence a mirror of its own. The district court found this argument persuasive and found those claims invalid under § 102(a). Rosco also argued that three of the claims were obvious under § 103, but the district court disagreed, stating that Rosco had failed to present a motivation to combine the prior art references.
On appeal, the Federal Circuit focused on the standard of proof required. For anticipation (one prior art reference meets every claim limitation), that standard is clear and convincing evidence. To meet this standard, testimonial evidence of invalidity must be corroborated by documentary, physical, or circumstantial evidence, or the oral testimony of someone other than an alleged inventor or interested party. In Rosco's case, its co-owners both testified about anticipation. While the district court found Rosco's mirror to be sufficient corroboration for this testimony, the Federal Circuit disagreed. Furthermore, the Federal Circuit found that Rosco's patent expert's testimony was not corroborating because his testimony was based on what one of the co-owners had told him, he was not skilled in the art, and he had no independent judgment. Finally, the Federal Circuit found the district court's visual inspection of the mirror to be insufficient, because the district court is not skilled in the art, and no scientific measurements were done. Thus, Rosco had not proven anticipation by clear and convincing evidence.
The Federal Circuit agreed with the district court in that Rosco had failed to prove obviousness because it did not point to any motivation to combine the prior references.
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