## Facts

- Fresenius manufactured hemodialysis machines and sued for declaratory judgments of noninfringement and invalidity against Baxter, which owned patents covering hemodialysis machines with integrated touchscreen user interfaces, including claims 26–31 of U.S. Patent No. 5,247,434.
- The ’434 patent described a dialysis machine integrated with a computer and touchscreen interface for monitoring and controlling treatment parameters.
- At trial, Fresenius relied on prior art including a publication describing an anesthesia-delivery system using a touchscreen interface; the publication also discussed advantages touchscreen technology would provide in dialysis equipment.
- The publication’s author testified the reference suggested combining touchscreens with dialysis equipment, and Fresenius’s expert testified a person of ordinary skill could implement the combination.
- A jury found one asserted patent anticipated and found the remaining asserted claims (including the touchscreen-related claims) obvious.
- The district court granted Baxter’s motion for judgment as a matter of law (JMOL) on obviousness, overturning the jury verdict on the grounds that Fresenius failed to prove certain non-touchscreen limitations were in the prior art and failed to show sufficient motivation to combine.
- Fresenius appealed the JMOL; Baxter cross-appealed on other issues.

## Issues

1. Whether substantial evidence supported the jury’s finding that the asserted dialysis-machine claims were obvious under 35 U.S.C. § 103.
2. Whether the district court improperly reweighed evidence and applied an unduly restrictive motivation-to-combine analysis in granting JMOL overturning the jury verdict.

## Decision

- The Federal Circuit reversed the district court’s JMOL on obviousness.
- The court reinstated the jury’s verdict finding the asserted claims obvious.
- The court held that the record contained substantial evidence supporting the jury’s implicit factual findings on motivation to combine and reasonable expectation of success.
- The case was remanded for further proceedings consistent with reinstatement of the obviousness verdict.

## Legal Principles

- JMOL overturning a jury verdict is improper if a reasonable jury could have reached the verdict on the evidence; a court may not reweigh evidence or substitute its view of disputed facts.
- Obviousness is a legal conclusion based on underlying factual determinations (including the scope and content of prior art, differences from the claims, and the knowledge of a person of ordinary skill), which a jury may resolve when tried to a jury.
- A motivation to combine may be supported by prior art that expressly identifies benefits of applying a known technology in the claimed field, together with testimony that a skilled artisan could implement the combination with a reasonable expectation of success.
- Obviousness can be proven through the combined teachings of multiple references and skilled-artisan knowledge; the analysis is not limited to matching each claim limitation to a single reference in a rigid manner.

## Conclusion

The Federal Circuit held that substantial evidence supported the jury’s finding that Baxter’s dialysis-machine touchscreen claims were obvious, and it reversed the district court’s JMOL because the district court improperly supplanted the jury’s factfinding on motivation to combine and related obviousness predicates.


Fresenius USA, Inc. v. Baxter Int'l, Inc., 582 F.3d 1288 (Fed. Cir. 2009)