Taking into account the implied factual findings, the court went through the full Graham-Deere analysis on this one, but I found the motivation to combine discussion the most relevant and useful for prosecution. In particular, the CAFC found that (the jury implicitly found that) (1) each of the prior art references worked perfectly on its own for its intended purpose and (2) none of the prior art references disclosed the object of the claimed invention of utilizing negative pressure to heal wounds. The CAFC then gives us this great quote that I will no doubt use in future obviousness arguments myself, especially to the Board: “Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound [as in the references], would have no reason to combine the features of both devices into a single device … On the basis of this evidence, hindsight provides the only discernible reason to combine the prior art references.”
Background / Facts: The patents at issue are directed to methods and apparatuses for treating difficult-to-heal wounds by applying suction or negative pressure. At the district court, the jury was provided with a special verdict form that posed several factual questions, but also asked them to weigh-in on the ultimate legal conclusion of obviousness. Despite the jury’s recommendation that the patents be found valid and nonobvious, the district court concluded that “the evidence is clear and convincing that there is no legally sufficient basis on the record to conclude that all asserted claims of the patents in suit were not obvious.” The fact that the jury also found that several objective indicia of nonobviousness were present did not alter the district court’s conclusion because, it said, “the Court is not convinced that they overcome the strong case of obviousness established by the teaching in the prior art.”
Issue(s): Whether a court must accept not only the jury’s explicit factual findings but also their implicit factual findings (supported by substantial evidence) imputed to their ultimate conclusion on obviousness.
Holding(s): Yes. While it is not error to submit legal questions to the jury as part of a Rule 49(a) special verdict form, “since the answer to the legal question necessarily resolves any disputed underlying factual issues,” the court must accept implicit factual findings upon which the legal conclusion is based when they are supported by substantial evidence. Because the district court included the ultimate question of obviousness on the special verdict form, all of the factual determinations underlying the ultimate question were implicitly put to the jury for resolution. The district court was required to accept all implicit factual findings supporting the jury’s conclusion with respect to the ultimate conclusion of obviousness that were supported by substantial evidence.