Reply Brief in Support of KSR's Motion for Summary ... - Fried Frank

n. "OBVIOUSNESS" MUST BE DETERMIND BYREFERENCE TO SUBJECT MATTER RECITED INAN ASSERTED CLAIM, NOT BY REFERENCE TOSUBJECT MATTER "DEPICTED" IN A PATENT.On the legal question of validity, the entire thrst of Teleflex's opposition tosumary judgment is misdirected and erroneous"for it focuses on ",the design depicted-in, the Engelgau Patent" (Plft. Opp. Br. at 6; emphasis added), rather than lithe subject mattersought to be patented," 35 U.S.C. § 103(a), that is, thesubject matter recited in assertedClaim 4 ofthe '565 Patent.In wrting Claim 4 ofthe '565 Patent, Teleflex's patent counsel chose to describethe alleged "invention" in terms (e.g., "an adjustable pedal assembly (22) having a pedalar (14) moveable in fore and aft directionsii) that omitted any description ofthephysical characteristics and arangement of the strctues depicted in the drawings of the'565 Patent. 10 Far from limting asserted Claim 4 to the "design depicted in the Engelgau, Patent" (pltf. Opp. Br. at 6), the '565 Patent specification actually states that "(t)headjustable pedal assembly 22 can be any ofvarious adjustable pedal assemblies known inthe ar" ('565 Patent at col. 2, lines 55-56; see KSR Main Br. & Ex. 5). It is that sweepingclaim -- not the "design depicted in the Engelgau Patent" -- that the Cour must evaluate10 As KSR has elsewhere argued (see Briefin Opposition to Plaintiffs Two Motions forSumar Judgment of Infrgement filed July 28,2003, at 28-29), besides being invalidunder 35 U.S.C. § 103, asserted claim 4 ofthe '565 Patent represents a classic violation oflithe doctre that a patentee may not broaden his produCt claims by describing theproduct in terms offunction." General Elec. Co. v. Wabash Co., 304 U.S. 364,371(1938). Accord United Carbon Co. v. Biney & Smith Co., 317 U.S. 228,243 (1942);Holland Furitue Co. v. Perkis Glue Co., 277 U.S. 245, 257 (1928). ,It was only bydescribing Mr. Engelgau's alleged "invention" in terms ofits "fuction", and omittingreference to the physical strctues comprising the "invention", that Teleflex could evenargue that KSR was makng or sellig pedal systems embodying that alleged "invention".Ths is a separate and independent ground for awarding sumar judgment to KSR.13