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Sundance v. DeMonte: Federal Circuit Overrules District Court's Holding of Non-obviousness

BY Angie M. Hankins
February 26, 2009

On Dec. 24, 2008, the Federal Circuit issued its decision in Sundance v. DeMonte, 2008 WL 5351734 (Fed. Cir. 2008), overruling the district court's holding of non-obviousness. Applying the standard set forth in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Federal Circuit found that the patent was an obvious combination of the prior art and noted that the district court committed two errors by: 1) erroneously allowing a patent attorney, who was not skilled in the relevant technology, to testify regarding obviousness; and 2) vacating the jury verdict of obviousness and granting judgment as a matter of law on non-obviousness, based on its erroneous interpretation of the prior art. The Federal Circuit also held a patent attorney, lacking the relevant expertise, could not testify as an expert witness regarding non-infringement and invalidity.

The District Court Decision

Sundance, Inc. and Merlot Tarpaulin and Sidekit Manufacturing Co., Inc. (collectively “Sundance”), the owners of U.S. Patent No. 5,026,109 (“the '109 patent”), sued DeMonte Fabricating Ltd. and Quick Draw Tarpaulin Systems, Inc. (collectively “DeMonte”) in the District Court for the Eastern District of Michigan for infringement of claim 1 of the '109 patent. Claim 1 recited “a retractable, segmented cover system used with a truck,” from which cover sections could be removed “independent of the other cover sections.” Sundance, 2008 WL 5351734 at *1. At trial, DeMonte argued that the '109 patent was obvious in light of two prior art references, U.S. Patent Nos. 4,189,178 (“Cramaro”) and 3,415,260 (“Hall”). Cramaro disclosed a retractable cover for use in trucks, and Hall disclosed a cover system divided into sections. DeMonte's patent attorney, Daniel Bliss, testified that there would have been motivation to combine Cramaro and Hall. However, Bliss did not have experience in cover systems.

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