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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) Plaintiff, ) ) v. ) ) MAXWELL TECHNOLOGIES, INC., ) ) Defendant. ) __________________________________________) NESSCAP CO., LTD.,

C.A. No. 06-764-GMS

MAXWELL TECHNOLOGIES, INC.'S REPLY BRIEF IN SUPPORT OF ITS MOTION TO TRANSFER VENUE TO THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA PURSUANT TO 28 U.S.C. § 1404(a) YOUNG CONAWAY STARGATT & TAYLOR Josy W. Ingersoll (No. 1088) Karen E. Keller (No. 4489) 1000 West Street Brandywine Building, 17th Floor Wilmington, DE 19801 P.O. Box 391 Wilmington, DE 19899-0391 (302) 571-6689 [email protected] MORRISON & FOERSTER LLP David C. Doyle (CA Bar No. 70690) Brian M. Kramer (CA Bar No. 201780) 12531 High Bluff Drive, Suite 100 San Diego, CA 92130 (858) 720-5100 [email protected] Dated: March 2, 2007 Attorneys for Defendant Maxwell Technologies, Inc.

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TABLE OF CONTENTS Page I. II. INTRODUCTION ............................................................................................ 1 ARGUMENT ................................................................................................... 2 A. A Transfer is Required to Ensure the Personal Attendance of NonParty Witnesses..................................................................................... 2 1. Dr. Bendale and Mr. Farahmandi Are the Only Witnesses Who Can Testify Regarding Their Intent, or Lack Thereof, to Willfully Infringe the Patent-in-Suit....................................... 2 The San Diego Witnesses Designed a Majority of the Accused Products ...................................................................... 4

2. B.

The San Diego Action and the Delaware Action Involve the Same Technology, and the PTO Classification Differences Are Meaningless .......................................................................................... 5 The Balance of Private Interests Tips in Favor of Transfer .................... 8 1. 2. The Convenience of the Parties Favors Transfer to the Southern District of California ................................................... 8 The Convenience of the Witnesses Favors Transfer ................. 10 Trying Two Cases Involving the Same Parties and the Same Technology in Two Different Courts is Inefficient ......... 11 Delaware Has No Local Interest in This Case .......................... 12 The Lack of Congestion in the Southern District of California Favors Transfer ....................................................... 14

C.

D.

The Balance of Public Interests Favors Transfer .................................. 11 1. 2. 3.

III. IV.

THE SECOND DELAWARE ACTION SHOULD BE DISMISSED.............. 14 CONCLUSION .............................................................................................. 15

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TABLE OF AUTHORITIES Page CASES 3Com Corp. v. D-Link Sys., Inc., C.A. No. 03-014-GMS, 2003 U.S. Dist. LEXIS 7120 (D. Del. Apr. 25, 2003) ..................9, 13 Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294 (Fed. Cir. 2001)................................................................................................3 Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192 (D. Del. 1998) .......................................................................................2, 9 Allergan, Inc. v. Alcon Labs., C.A. Nos. 02-1682-GMS, 2003 U.S. Dist. LEXIS 2564 (D. Del. Feb. 25, 2003).......................................................................................................................................9 Alloc, Inc. v. Unilin Decor N.V., C.A. Nos. 03-253-GMS, 05-857-GMS, 2006 U.S. Dist. LEXIS 78019 (D. Del. Oct. 26, 2006) .........................................................................................................................9 Bayer Bioscience N.V. v. Monsanto Co., C.A. No. 03-023-GMS, 2003 U.S. Dist. LEXIS 4594 (D. Del. Mar. 5, 2003)...........................9 Brunswick Corp. v. Precor, Inc., C.A. No. 00-691-G 2000 U.S. Dist. LEXIS 22222 (D. Del. Dec. 12, 2000) .............................9 Corixa Corp. v. Idec Pharms. Corp., C.A. No. 01-615-GMS, 2002 U.S. Dist. LEXIS 2980 (D. Del. Feb. 25, 2002) .........................9 Gustafson, Inc. v. Intersystems Indus. Prods., Inc., 897 F.2d 508 (Fed. Cir. 1990)..................................................................................................3 Ikos Sys. v. Cadence Design Sys., C.A. No. 02-1335-GMS, 2002 U.S. Dist. LEXIS 20574 (D. Del. Oct. 21, 2002)...................................................................................................................................4, 9 In re Huene, No. 99-1514, 2000 U.S. App. LEXIS 19978 (Fed. Cir. August 11, 2000) ................................6 In re Mlot-Fijalkowski, 676 F.2d 666 (C.C.P.A. 1982) .............................................................................................5, 6 Mentor Graphics Corp. v. Quickturn Design Sys., 77 F. Supp. 2d 505 (D. Del. 1999) ...........................................................................................9

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TABLE OF AUTHORITIES (continued) Page Morgan v. Ward, 699 F. Supp. 1025 (N.D.N.Y. 1988) ........................................................................................4 Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005 (Fed. Cir. 1983)................................................................................................6 Pennwalt Corp. v. Purex Industries, Inc., 659 F. Supp. 287 (D. Del. 1986) ..............................................................................................2 Rolls-Royce Ltd. v. GTE Valeron Corp., 800 F.2d 1101 (Fed. Cir. 1986)................................................................................................3 SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462 (Fed. Cir. 1997)................................................................................................3 State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226 (Fed. Cir. 1985)................................................................................................3 Truth Hardware Corp. v. Ashland Prods., C.A. No. 02-1541-GMS, 2003 U.S. Dist. LEXIS 409 (D. Del. Jan. 13, 2003)..........................4 Uniroyal, Inc. v. Rudkin-Wiley Corp., 939 F.2d 1540 (Fed. Cir. 1991)................................................................................................3 Vulcan Eng'g Co. v. FATA Aluminium, Inc., 278 F.3d 1366 (Fed. Cir. 2002)............................................................................................3, 4 Windsor Shirt Co. v. New Jersey Nat'l Bank, 793 F. Supp. 589 (E.D. Pa. 1992) ............................................................................................4 STATUTES 28 U.S.C. § 1404(a).....................................................................................................................9 35 U.S.C. § 102.........................................................................................................................11 Fed. R. Civ. Proc. 12(b)(5) ......................................................................................................13 U.S.D.C. District of Delaware Local Rule 7.1.1.........................................................................15

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I.

INTRODUCTION

NessCap's basis justifying Delaware as its choice of forum ­ that Maxwell is a Delaware corporation ­ does not overcome the inefficiencies associated with two courts resolving the same issues and the fact that the Southern District of California can subpoena non-party witnesses that this Court cannot. Conducting the trial in San Diego, with live witnesses and an appreciable nexus with the local community, is in the interest of justice. The parties will save the expense of litigating two lawsuits involving the admittedly same technology ­ ultracapacitors ­ on two coasts. This District has no connection to the sole plaintiff, Korea-based NessCap Co., Ltd. ("LIMITED"). This District likewise has no connection to the ultracapacitor industry. The Southern District of California, on the other hand, is (1) where most of the accused products were invented and manufactured, and (2) where both parties have customers. This Court should also transfer the case in the interest of justice so that a single court can keep track of the inconsistent positions that LIMITED is taking in the two lawsuits. For example, in the San Diego action, LIMITED is arguing that it could not be served with the complaint in Delaware because it has no ties here; but in this case, LIMITED is embracing its American parent corporation's Delaware incorporation to justify its choice of Delaware. In addition, LIMITED is telling the San Diego court that it "has no presence in the United States;" but in this case, it has filed a declaration of one of its employees stating that he lives in the United States, runs LIMITED's U.S. operations, and would be inconvenienced by a trial outside of Delaware. LIMITED cannot have it both ways.

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II.

ARGUMENT A. A Transfer is Required to Ensure the Personal Attendance of Non-Party Witnesses.

"It is desirable to hold trial at a place where the personal attendance of witnesses through the use of subpoena power can be reasonably assured." Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 205 (D. Del. 1998) (quoting Pennwalt Corp. v. Purex Industries, Inc., 659 F. Supp. 287, 291 (D. Del. 1986). A trial in the Southern District of California will have far more live witnesses than a trial in Delaware because not a single non-party witness resides within this Court's subpoena power. Maxwell identified at least two likely non-party witnesses, Dr. Priya Bendale and Mr. Curtis J. Farahmandi, both of whom are high level executives at different San Diego technology companies, and both of whom indicated that they do not want to come to Delaware to testify in this case. (D.I. 15, Kramer Decl. ¶¶ 8-10.) LIMITED presumably contacted each and confirmed that Dr. Bendale and Mr. Farahmandi will not come to Delaware. Instead of challenging the inconvenience to these witnesses or their reluctance to travel to Delaware, LIMITED has tried to downplay their significance in two ways. First, LIMITED focuses solely on the witnesses' capacity to testify on the prior art and ignores the significance of each as an infringement witness, particularly with regard to LIMITED's allegations of willful infringement. (D.I. 1, ¶ 11.) Second, LIMITED uses a truncated quote from the opening brief to argue that the Swiss inventors, as opposed to Dr. Bendale or Mr. Farahmandi, invented the accused products in this case. 1. Dr. Bendale and Mr. Farahmandi Are the Only Witnesses Who Can Testify Regarding Their Intent, or Lack Thereof, to Willfully Infringe the Patent-in-Suit.

Dr. Bendale served as Maxwell's Senior Director of Research & Development, and Mr. Farahmandi served as Technical Director of Research & Development. (D.I. 14, Balanson Decl. ¶¶ 8-9.) Between the two of them, they hold at least 19 Maxwell patents related to ultracapacitor technology and were responsible for design elements of 2
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many of Maxwell's 29 different BOOSTCAP® products on the market today. (Id.) While expert witnesses may be able to testify regarding whether a particular product infringes or whether a piece of prior art anticipates, it is well established that percipient witnesses are required to determine whether infringement was willful. See e.g., SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1465 (Fed. Cir. 1997) (listing willful infringement factors including "whether there was independent invention or attempts to design around and avoid the patent or any other factors tending to show good faith"); Uniroyal, Inc. v. Rudkin-Wiley Corp., 939 F.2d 1540, 1546 (Fed. Cir. 1991) (noting that testimony by designer of accused product was important to show absence of copying in rebutting allegation of willful infringement); State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1237-38 (Fed. Cir. 1985) (absence of copying by designer was evidence that infringement was not willful); Rolls-Royce Ltd. v. GTE Valeron Corp., 800 F.2d 1101, 1109 (Fed. Cir. 1986) (testimony from engineers about attempts to design around patent and avoid infringement demonstrate an absence of willfulness). When determining whether infringement was willful, a jury must assess the defendant's state of mind. "Whether an act is `willful' is by definition a question of the actor's intent. . . ." Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1309 (Fed. Cir. 2001) (quoting Gustafson, Inc. v. Intersystems Indus. Prods., Inc., 897 F.2d 508, 510 (Fed. Cir. 1990)). In this case, the jury will have to assess the Maxwell inventors' mental state when designing and launching the accused BOOSTCAP® products. With regard to Dr. Bendale, for example, the willful infringement inquiry will ask: (1) Were her BOOSTCAP® inventions independent efforts? (2) Did she consider LIMITED's patents or products when designing the BOOSTCAP® products? (3) Did her efforts amount to a "deliberate disregard for the property rights of the patentee?" Vulcan Eng'g Co. v. FATA Aluminium, Inc., 278 F.3d 1366, 1378 (Fed. Cir. 2002); and (4) Did she "exercise[] due

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care to avoid infringement?" Id. The same questions will be asked of Mr. Farahmandi with regard to the BOOSTCAP® elements he designed. LIMITED argues that instead of having Dr. Bendale and Mr. Farahmandi testify live before a jury in California, their depositions should be videotaped in California and shown to a Delaware jury. But in the context of willfulness, a jury will want to observe the live demeanor of witnesses testifying about "deliberate disregard" and "due care": "The rule in our circuit is clear, . . . since demeanor is best judged by live testimony, live testimony is usually better than videotaped testimony." Windsor Shirt Co. v. New Jersey Nat'l Bank, 793 F. Supp. 589, 608 (E.D. Pa. 1992), aff'd, 989 F.2d 490 (3d Cir. 1993); see also Morgan v. Ward, 699 F. Supp. 1025, 1048 n.33 (N.D.N.Y. 1988) ("It should be noted that in a case like this, where many of the key factual issues turn on the credibility of the witnesses, the inability of the court to observe the deposition witness's demeanor severely hinders its ability to fulfill its fact-finding responsibility.").1 2. The San Diego Witnesses Designed a Majority of the Accused Products.

LIMITED misleads by repeating three times in its brief that "the accused products in this lawsuit were `invented by a team of Maxwell employees based in Switzerland.'" (D.I. 23 at 11, 12, and 17.) The full quotation from Maxwell's opening brief reads: "`The D cell line of Boostcap® ultracapacitors' was invented by a team of Maxwell employees based in Switzerland." (D.I. 13 at 12.) The D cell line of BOOSTCAP® ultracapacitors represents only 2 of 29 different BOOSTCAP®

1

LIMITED cites Truth Hardware Corp. v. Ashland Prods., C.A. No. 02-1541GMS, 2003 U.S. Dist. LEXIS 409 (D. Del. Jan. 13, 2003), for the proposition that "a flight to Delaware is not an onerous task warranting transfer." (D.I. 23 at 10.) LIMITED ignores that Dr. Bendale and Mr. Farahmandi will not get on a plane to come to Delaware. Moreover, in Truth Hardware, the non-party witnesses were not within the subpoena power of either Delaware or the Northern District of Illinois, which was the potential transferee jurisdiction. 2003 U.S. Dist. LEXIS 409 at *5. Here, Maxwell is seeking to move the case to a jurisdiction where the non-party witnesses can be compelled to testify. 4
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ultracapacitors accused by LIMITED in this case. (D.I. 14, Balanson Decl. ¶ 5; D.I. 17, Gallay Decl. ¶ 7; D.I. 16, Schneuwly Decl. ¶ 7.) A majority of the BOOSTCAP® ultracapacitors were invented in San Diego, and many of the Maxwell employees who designed the accused products in this case have retired or left Maxwell for other reasons. (D.I. 14, Balanson Decl. ¶ 7.) Maxwell has no control over those witnesses. (Id.) B. The San Diego Action and the Delaware Action Involve the Same Technology, and the PTO Classification Differences Are Meaningless.

LIMITED claims that there would be no saving of judicial resources if this action were transferred to the Southern District of California because the San Diego action "has no relation to the instant action." (D.I. 23 at 4.) LIMITED bases this assertion largely on the fact that the PTO placed LIMITED's `544 patent in a different "class" than the patents at issue in the San Diego litigation. This difference purportedly renders the `544 patent "unrelated to Maxwell's patents at issue in the San Diego action." (D.I. 23 at 14.) But PTO classification has no bearing on the Southern District of California's consideration of the matter. The Federal Circuit and its predecessor, the Court of Customs and Patent Appeals, have observed that differences in PTO classification are of little significance when examining claimed inventions. In In re Mlot-Fijalkowski, 676 F.2d 666 (C.C.P.A. 1982), the court faced an argument similar to the one advanced by LIMITED. There, a patent applicant sought to overcome an obviousness rejection by arguing that two of the references cited by the examiner were from a different class and therefore irrelevant. Id. at 670. The court rejected this argument noting that: While we find the diverse Patent Office classification of the references to be some evidence of "non-analogy," and likewise find the cross-reference in the official search notes to be some evidence of "analogy," we consider the similarities and differences in structure and function of the inventions disclosed in the references to carry far greater weight. 5
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Such evidence is inherently weak also, because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem. Id. n.5 (emphasis in original); see also In re Huene, No. 99-1514, 2000 U.S. App. LEXIS 19978 at *12-14 (Fed. Cir. August 11, 2000) (recognizing that a patent in the "Tool" classification was prior art to a "Surgery" patent based on its function and citing Mlot-Fijalkowski for the proposition that classification is inherently weak evidence for differences) (attached hereto as Ex. 1); accord Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005 (Fed. Cir. 1983) (combining prior art patents from two different classes to invalidate a patent). As with obviousness, infringement focuses on the invention as claimed; the patent class will matter far less than the "structure and function of the invention." Cf. Mlot-Fijalkowski, 676 F.2d at 670. Ultracapacitors are a combination of electrical and chemical components. The PTO must place them within its existing classification system. Sometimes, like here, the PTO classifies an ultracapacitor as a chemical invention with an electrical subclass, and sometimes as an electrical invention with a chemical subclass. Specifically, LIMITED's `544 patent belongs to parent class 429 "Chemistry: electrical current producing apparatus, product, and process" while the allegedly irrelevant `924 and `074 patents in the San Diego action belong to parent class 361 "Electricity: electrical systems and devices." (D.I. 1 in C.A. No. 07-035-GMS, Exs. 1-2.) It is clear from just this portion of the definitions that all three patents relate to the field of electrical devices; however the parent classification tells only half the story. The primary subclass for the `544 patent is 94 "plural concentric or single coiled electrode." (March 2, 2007 Declaration of Brian M. Kramer In Support of Maxwell's Reply ("Kramer Reply Decl."), Ex. A at 429-2.) The primary subclasses for the `924 and `074 patents are 511 and 509 respectively which refer to "electrolytic systems or devices, liquid electrolytic capacitors, anode type electrode" with the final element being "wound" for subclass 511

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and "aluminum or tantalum" for subclass 509. (Kramer Reply Decl., Ex. B at 361-8.) All three patents are defined by the PTO classification system with respect to their electrode structure. In fact the structure of the electrodes described in the `544 patent and `924 patents, as defined by the PTO, are analogous with one described as "coiled" and the other "wound." Combining these definitions with the descriptions of the devices in the `544 and `924 patents it becomes clear that they relate to the same devices. Compare the `544 patent claim 1: "An electric energy storage device . . . comprising: at least one electrode formed by rolling up a stacked layer. . . " with `924 Patent claim 1: "A device for accumulating electrical energy comprising a substantially cylindrical winding of strips. . . ." (D.I. 1, Ex. 1; D.I. 1 in C.A. No. 07-035-GMS, Ex. 1.) The `074 patent primarily describes the structure of particular kinds of electrodes and is therefore relevant to both the `544 and `924 patents. (D.I. 1 in C.A. No. 07-035-GMS, Ex. 2.) In light of the small differences in the classification definitions and the similarity in claimed inventions, the two actions clearly involve similar inventions. This becomes even more apparent when the accused devices are considered. Both this litigation and the San Diego litigation deal with ultracapacitor technology. In the San Diego action, Maxwell is seeking preliminary injunctive relief because LIMITED is trying to switch Maxwell's customers to LIMITED's "knockoff," infringing products. LIMITED's description of the technology at issue in this case is nearly identical to Maxwell's description from four months ago in the San Diego action: Maxwell's November 2, 2006 Description of the Technology-at-Issue in San Diego An ultracapacitor is an electrochemical capacitor with the ability to store a large amount of energy for a given mass compared to a normal capacitor, and the ability to deliver high levels of power for a given mass compared to a battery. Ultracapacitors are not as affected by temperature variations as 7
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LIMITED's February 23, 2007 Description of the Technology-at-Issue in Delaware An ultracapacitor is a new alternative type of energy storage device. As compared to batteries, ultracapacitors provide up to one hundred times the power, operate reliably under extreme temperature conditions (i.e., -40°C to 60°C), last a very long time with little or no maintenance, and are

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batteries, have a longer life, can be recharged almost instantaneously, and are not degraded by frequent or intensive use. . . . Ultracapacitors have been predicted to be the next generation of energy supply units for electronic devices, potentially even replacing batteries in products ranging from calculators to automobiles. (Kramer Reply Decl., Ex. C at 3-4.)

environmentally friendly. These robust characteristics make the ultracapacitor an ideal solution for an assortment of applications ranging from power quality, solar applications, portable telecom, and electronics, to automotive applications. The ultracapacitor is considered to be a key component for achieving fuelefficient and "green" cars of the future. (D.I. 23 at 3.)

There can be no question that the court which hears this action will need to learn ultracapacitor technology, be it Maxwell's, LIMITED's, or both. There is a substantial technology overlap regardless of whether the accused ultracapacitors are LIMITED's or Maxwell's. C. The Balance of Private Interests Tips in Favor of Transfer. 1. The Convenience of the Parties Favors Transfer to the Southern District of California.

Both parties are already litigating against each other in the Southern District of California. Both parties have retained San Diego counsel to represent them. With the exception of the Swiss inventors of a limited number of accused products, nearly all Maxwell witnesses, documents, and tangible evidence are located in San Diego. With regard to LIMITED, its opposition brief does not address the arguments it made to the San Diego court trying to escape that court's jurisdiction: "LIMITED has no offices in the United States, is not registered to do business anywhere in the United States, and has no registered agents in the United States. . . . LIMITED is a foreign corporation located in South Korea. It has no presence in the United States." (D.I. 15, Kramer Decl., Ex. 2 at 1; Kramer Reply Decl., Ex. D at 1-2.) With no ties to or presence in the United States (with the obvious exception of its San Diego customers), Delaware cannot be any more convenient to LIMITED than any other forum in the United States. The only connection to Delaware is Maxwell's state of incorporation. While Maxwell is subject to personal jurisdiction in Delaware and should generally be

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expected to litigate here, that factor is just one of many that the Court must consider under Jumara. Section 1404(a) could have been drafted to preclude corporations from transferring cases outside of their states of incorporation. Congress instead chose to focus the inquiry on the convenience of the parties, the convenience of the witnesses, and the interest of justice. See 28 U.S.C. § 1404(a). This Court, considering the other relevant factors, has granted motions to transfer by defendants who were Delaware corporations. See, e.g., Alloc, Inc. v. Unilin Decor N.V., C.A. Nos. 03-253-GMS, 05857-GMS, 2006 U.S. Dist. LEXIS 78019 (D. Del. Oct. 26, 2006) (attached hereto as Ex. 2); 3Com Corp. v. D-Link Sys., Inc., C.A. No. 03-014 GMS, 2003 U.S. Dist. LEXIS 7120 (D. Del. Apr. 25, 2003) (attached to D.I. 13 as Ex. B); Bayer Bioscience N.V. v. Monsanto Co., C.A. No. 03-023 GMS, 2003 U.S. Dist. LEXIS 4594 (D. Del. Mar. 5, 2003) (attached to D.I. 13 as Ex. C); Allergan, Inc. v. Alcon Labs., C.A. No. 02-1682GMS, 2003 U.S. Dist. LEXIS 2564 (D. Del. Feb. 25, 2003) (attached to D.I. 13 as Ex. D); Ikos Sys. v. Cadence Design Sys., C.A. No. 02-1335-GMS, 2002 U.S. Dist. LEXIS 20574 (D. Del. Oct. 21, 2002) (attached to D.I. 13 as Ex. G); Corixa Corp. v. Idec Pharms. Corp., C.A. No. 01-615 GMS , 2002 U.S. Dist. LEXIS 2980 (D. Del. Feb. 25, 2002) (attached hereto as Ex. 3); Brunswick Corp. v. Precor Inc., C.A. No. 00691-GMS, 2000 U.S. Dist. LEXIS 22222 (D. Del. Dec. 12, 2000) (attached hereto as Ex. 4); Mentor Graphics Corp. v. Quickturn Design Sys., 77 F. Supp. 2d 505 (D. Del. 1999); Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192 (D. Del. 1998). In each of those cases, this Court held that other factors outweighed the Delaware incorporation of the defendant.2

2

LIMITED claims that by filing its Answer and Counterclaims in this case, Maxwell has shown a "willingness to litigate in this forum." That makes no sense, particularly since Maxwell expressly states in its Answer that the case should be transferred to the Southern District of California. (D.I. 7 ¶ 5.) Filing a motion to transfer under 28 U.S.C. § 1404(a) does not relieve a party of its obligation to answer a complaint. Maxwell has done only the minimum in this jurisdiction to avoid a default 9
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2.

The Convenience of the Witnesses Favors Transfer.

As explained above, because LIMITED has alleged willful infringement in this case, the actual Maxwell inventors, most of whom are located in San Diego, and none of whom are located within this Court's subpoena power, will have to testify about their mental state regarding LIMITED's allegations of willful behavior. Some of the witnesses (e.g., Dr. Bendale and Mr. Farahmandi) are no longer employed by Maxwell and cannot be compelled by Maxwell (or this Court) to testify in Delaware. With regard to the Swiss inventors who work in Maxwell's San Diego facilities four times per year, LIMITED argues that party witnesses play no role in assessing the convenience of the witnesses, but then goes on to argue that Delaware is a convenient forum for its Korea-based chairman, Sunwook Kim, who testified that he "regularly" travels to the generic "east coast of the United States" and New York City. (D.I. 19, Kim Decl. ¶¶ 9-10.)3 To the extent the Court considers these party witnesses at all, Maxwell submits that it is far more convenient for the Swiss inventors to travel less than 10 miles from Maxwell's San Diego facilities to the Southern District of California's courthouse than it is for LIMITED's Chairman to travel 129 miles from NessCap Inc.'s New York City office to the Caleb Boggs Federal Building. With regard to the declaration of LIMITED's "U.S. Operations Project Manager," Hyun Jin Song, his testimony is at odds with the arguments made by LIMITED in San Diego. Dr. Song states in his affidavit that he lives in the Unites States and regularly travels to Michigan, New Jersey, and Washington, D.C. to work with LIMITED's "U.S.-based customers." (D.I. 20, Song Decl. ¶ 5.) But LIMITED has told the San Diego court that LIMITED "has no offices in the United States" and "has no presence in the United States." (D.I. 15, Kramer Decl., Ex. 2 at 1; Kramer Reply Decl.,

judgment or waiving its rights. It has focused its efforts in the San Diego action, where it is actively seeking a preliminary injunction. 3 NessCap, Inc. has stated to the San Diego court that "Sunwook Kim plays no role in the day-to-day operations of LIMITED." (Kramer Reply Decl., Ex. G at 6.) 10
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Ex. D at 1-2.) If Dr. Song is a nomadic businessman with no office to work from, he can travel to and testify in San Diego. In fact, as the LIMITED employee who services LIMITED's "U.S.-based customers," Dr. Song presumably works in San Diego, too, since the only LIMITED customer identified by either party is located in San Diego County. (D.I. 14, Balanson Decl. ¶ 12.) Moreover LIMITED's claim that Dr. Song can testify about LIMITED's "U.S. activities" is so vague that any convenience to him cannot seriously be considered in the transfer analysis. LIMITED claims that there are other, unidentified witnesses who will find that Delaware is a more convenient forum. Specifically, LIMITED claims that the patent-atissue was filed by a Washington D.C.-based law firm, and that is somehow relevant to Maxwell's allegations of inequitable conduct. But Maxwell has not alleged misconduct by the prosecuting patent attorneys. Rather, it has alleged misconduct by the LIMITED inventors who knew of but failed to disclose Maxwell's prior art. (D.I. 7 ¶¶ 18-19.) Moreover, according to PTO records, the patent attorney of record listed on the face of the patent-in-suit, Mr. Phillip Avruch, now lives over 1,000 miles away in South Florida. (Kramer Reply Decl., Ex. E.) Thus, even if Mr. Avruch were a witness in this case, the proximity of Washington D.C. to Wilmington is irrelevant. D. The Balance of Public Interests Favors Transfer. 1. Trying Two Cases Involving the Same Parties and the Same Technology in Two Different Courts is Inefficient.

In its opening brief, Maxwell argued that, based on LIMITED's press release linking the San Diego action and this action, LIMITED would be asserting the `544 patent-in-suit in this case as prior art in the San Diego action. LIMITED now claims that it is not asserting the `544 patent as prior art in the San Diego action. While puzzling,4 LIMITED's apparent admission that the `544 patent "is not prior art to either
4

The `544 patent appears on its face to have an April 25, 2000 priority date. The `074 patent-at-issue in the San Diego action claims a May 12, 2000 priority date. Thus, 11
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U.S. Patent No. 6,525,924 or 6,631,074" is welcomed and accepted. (D.I. 23 at 4.) However, the overlap between the San Diego action and this action is not premised solely on the assertion of the `544 patent as prior art in the San Diego action. The two cases still involve ultracapacitors, the same parties, and the same witnesses. For example, former Maxwell employee Priya Bendale will testify in this case on whether she designed the accused products with the specific intent to infringe LIMITED's patent. She likely will also testify in the San Diego action as the lead inventor of the patent-insuit. Likewise, LIMITED's chairman, Sunwook Kim, will likely testify as an inventor of the patent-in-suit in this case. In the San Diego action, he has already submitted at least one declaration and will be called to testify about damages, such as price erosion, caused by LIMITED's infringing activities in California. LIMITED has filed its opposition to Maxwell's motion for preliminary injunction in the San Diego action, but did not serve Maxwell or otherwise identify the prior art it is asserting against Maxwell's patents in the San Diego action. LIMITED has also filed a "mirror image" declaratory judgment action in this Court based on the patents at issue in the San Diego litigation. Because LIMITED's San Diego action briefs remain under seal, any additional similarities between the San Diego action and this action based on prior art asserted by LIMITED remain hidden from Maxwell and this Court. LIMITED's failure to provide Maxwell with its opposition brief to Maxwell's preliminary injunction motion, while permitted, serves no purpose beyond gamesmanship, especially in light of LIMITED's "mirror image" action filed against Maxwell in this District. 2. Delaware Has No Local Interest in This Case.

Not a single ultracapacitor has been sold in the State of Delaware by either party. While Maxwell and LIMITED sell ultracapacitors throughout the world, that does not on the face of the patents, it appears that the `544 patent could be prior art under some sections of 35 U.S.C. § 102. 12
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make Delaware the logical forum to litigate this case. San Diego has significant ties to this dispute. Most of the accused products were invented and manufactured in San Diego, and both parties have sold ultracapacitors to customers in San Diego. (D.I. 14, Balanson Decl. ¶ 12.) LIMITED tries to turn this case into a local Delaware controversy by embracing the Delaware incorporation of its parent, NessCap, Inc. But LIMITED has failed to address the statements it made to the San Diego court that the two entities are separate: "[T]here is no evidence of an agency relationship between NessCap, Inc. and LIMITED. LIMITED operates independently from NessCap, Inc. . . ." (D.I. 15, Kramer Decl., Ex. 3 at 3); "[I]t is apparent that NessCap, Inc. and LIMITED are two distinct entities." (Kramer Decl., Ex. 4 at 3.) LIMITED currently has a Rule 12(b)(5) motion to dismiss for insufficient service of process pending in the San Diego action. In that case, LIMITED was served with the San Diego action complaint in both New York and at NessCap, Inc.'s registered agent in Wilmington, Delaware. LIMITED maintains that it could not be served with the complaint in Delaware because it is not sufficiently related to NessCap, Inc. to establish ties to this jurisdiction. (Kramer Reply Decl., Ex. F at 1-3.) However, in this Court, LIMITED repeatedly mentions the Delaware incorporation of its parent and the Wilmington address of its registered agent in an effort to convince this Court that Delaware is the appropriate forum for this lawsuit. LIMITED cannot have it both ways. If it tells the San Diego court that it cannot be served in Delaware, LIMITED cannot tell this Court that the "home turf" rules apply and that its choice of this forum should be respected.5

5

There is no chance that the San Diego action will be dismissed with prejudice as to LIMITED. LIMITED has conceded that it is subject to personal jurisdiction in San Diego, presumably because it sells products in San Diego. Its remaining argument regarding insufficient service of process will be mooted shortly because Maxwell is eliminating any possible service issue by serving LIMITED a third time ­ this time in 13
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3.

The Lack of Congestion in the Southern District of California Favors Transfer.

LIMITED does not dispute that there are 463 pending cases per judgeship in Delaware, compared to only 256 in the Southern District of California. (Compare D.I. 15. Kramer Decl., Ex. 9 with Ex. 10.) LIMITED instead points to a different statistic indicating that the average time to trial is 23.5 months in Delaware compared to 25.4 months in Southern California. LIMITED then claims on that basis that the parties will save costs in this District. (D.I. 23 at 16.) Putting aside that the less than two month difference is meaningless on its face, LIMITED's argument ignores that absent a transfer, the parties will engage in 23.5 months of litigation in one district in addition to 25.4 months of litigation in the other district. A total of 48.9 months of litigation cannot be more efficient than half as many months in one jurisdiction. III. THE SECOND DELAWARE ACTION SHOULD BE DISMISSED

Maxwell explained in its opening brief that LIMITED filed its compulsory counterclaims from the San Diego action as a separate lawsuit in this Court, C.A. No. 07-035-GMS. That action ("the second Delaware action") is a "mirror image" of the San Diego action and seeks a declaratory judgment that the exact patents at issue in the San Diego action are not infringed and are invalid. LIMITED admitted in its opposition brief that the second Delaware action was filed for the sole purpose of having a case on file outside of San Diego in case the San Diego action is dismissed. Maxwell will file a separate motion to strike the "backup" lawsuit clogging this Court's docket. Maxwell will not object if the Court instead dismisses that case sua sponte.

South Korea under the Hague convention. Thus, LIMITED will face the preliminary injunction in San Diego upon the earlier of: (1) Judge Houston holding that service in Delaware was sufficient; or (2) completing service under the Hague convention. 14
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IV.

CONCLUSION

For the foregoing reasons, this Court should transfer this case to the Southern District of California.6 Dated: March 2, 2007 YOUNG CONAWAY STARGATT & TAYLOR /s/ Karen E. Keller Josy W. Ingersoll (No. 1088) Karen E. Keller (No. 4489) 1000 West Street Brandywine Building, 17th Floor Wilmington, DE 19801 P.O. Box 391 Wilmington, DE 19899-0391 (302) 571-6689 [email protected] MORRISON & FOERSTER LLP David C. Doyle (CA Bar No. 70690) Brian M. Kramer (CA Bar No. 201780) 12531 High Bluff Drive, Suite 100 San Diego, CA 92130 (858) 720-5100 [email protected] Attorneys for Defendant Maxwell Technologies, Inc.

6

LIMITED's gratuitous paragraph alleging that Maxwell failed to "meet and confer" on this motion is nonsense. (D.I. 23 at 1.) Maxwell stated in its Answer filed weeks before this motion that it would be moving to transfer this case to the Southern District of California. (D.I. 7 ¶ 5.) LIMITED did not agree to a transfer and thereafter filed its compulsory counterclaims from the San Diego action in yet another lawsuit in Delaware. Counsel for Maxwell called LIMITED's counsel of record the day it sought to file this motion asking for its consent. LIMITED's counsel advised Maxwell's counsel to speak to other LIMITED lawyers who never returned our call and who were supposedly unavailable to "meet and confer" on the motion to transfer that day or even the next day. Two days later, Maxwell's counsel finally pinned down a LIMITED lawyer, who still claimed he was unprepared to "meet and confer." Maxwell satisfied its Local Rule 7.1.1 "meet and confer" obligations despite LIMITED's best efforts to turn the rule into a tool to delay the filing of the motion. 15
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CERTIFICATE OF SERVICE I, Karen E. Keller, Esquire, hereby certify that on March 2, 2007, the foregoing document was electronically filed with the Clerk of the Court using CM/ECF which will send notification that such filing is available for viewing and downloading to the following counsel of record: Denise Seastone Kraft, Esquire EDWARDS ANGELL PALMER & DODGE LLP 919 North Market Street Suite 1500 Wilmington, DE 19801 [email protected] I further certify that on March 2, 2007, the foregoing document was served by hand delivery on the above-listed counsel of record and on the following non-registered participants in the manner indicated below: BY E-MAIL ON MARCH 2, 2007 AND FEDERAL EXPRESS ON MARCH 5, 2007 George W. Neuner, Esquire Brian M. Gaff, Esquire EDWARDS ANGELL PALMER & DODGE LLP 101 Federal Street Boston, MA 02110

YOUNG CONAWAY STARGATT & TAYLOR, LLP /s/ Karen E. Keller Karen E. Keller (No. 4489) The Brandywine Building, 17th Floor 1000 West Street Wilmington, DE 19801 302-571-6600 [email protected]

DB02:5693274.1

065911.1001

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EXHIBIT 1

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LEXSEE 2000 U.S. APP. LEXIS 19978

Analysis As of: Mar 02, 2007 IN RE DONALD R. HUENE 99-1514 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 2000 U.S. App. LEXIS 19978 August 11, 2000, Decided NOTICE: [*1] RULES OF THE FEDERAL CIRCUIT COURT OF APPEALS MAY LIMIT CITATION TO UNPUBLISHED OPINIONS. PLEASE REFER TO THE RULES OF THE UNITED STATES COURT OF APPEALS FOR THIS CIRCUIT. SUBSEQUENT HISTORY: Reported in Table Case Format at: 2000 U.S. App. LEXIS 37478. PRIOR HISTORY: (Serial No. 08/425,453). DISPOSITION: Affirmed. CASE SUMMARY: bone screw. Among other rulings, the court held that the aircraft reference was suitable analogous art for determining obviousness. It addressed a similar problem as did appellant's invention: how to prevent the misalignment of the installation tool and the fastener so that the tool did not "cam out" of the fastener head, thus stripping the head and ruining the fastener. OUTCOME: Court affirmed lower tribunal's judgment, because it did not err in using prior art reference regarding aircraft screw driving system to determine the obviousness of appellant's bone screw driving invention. Both concerned same problem of maintaining proper alignment of driver to prevent stripping of screw head. LexisNexis(R) Headnotes PROCEDURAL POSTURE: Appellant sought review of the judgment of the Board of Patent Appeals and Interferences sustaining the rejection under 35 U.S.C.S. § 103 of various claims in his application to patent an absorbable bone screw and insertion tool, used in surgical applications. OVERVIEW: Appellant's patent for his absorbable bone screw and insertion tool claimed that its concern was to remedy the problem of absorbable screws becoming knocked off-axis during insertion. Appellant claimed that his system assured the proper orientation of the screw relative to the driver at all times. The Patent and Trademark Office rejected several of appellant's claims as obvious under several prior art references, and the lower tribunal affirmed. Appellant's primary argument on appeal was that a prior art reference to a titanium aircraft screw (aircraft reference) was used to determine obviousness, whereas his claim was for a bio-absorbable

Patent Law > Claims & Specifications > Enablement Requirement > General Overview Patent Law > Nonobviousness > Elements & Tests > Claimed Invention as a Whole Patent Law > Nonobviousness > Elements & Tests > Prior Art [HN1] Under 35 U.S.C.S. § 103, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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[HN2] Obviousness under 35 U.S.C.S. § 103 is a legal conclusion based upon four factual inquiries. These inquiries consist of (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of nonobviousness.

Civil Procedure > Appeals > Standards of Review > De Novo Review Patent Law > Jurisdiction & Review > Standards of Review > De Novo Review Patent Law > U.S. Patent & Trademark Office Proceedings > General Overview [HN3] In the context of patent law and the nonpatentability of an invention because of obviousness, the United States Court of Appeals for the Federal Circuit (court) reviews the ultimate conclusion of obviousness de novo. The court reviews the Board of Patent Appeals and Interferences' fact findings under the substantial evidence standard of the Administrative Procedure Act.

Patent Law > Inequitable Conduct > Effect, Materiality & Scienter > General Overview Patent Law > Nonobviousness > Elements & Tests > Prior Art [HN6] In the context of patent law, the non-patentability of an invention because of obviousness, and the use of prior art references that are only analogous to the claimed invention, a reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. Consequently, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. Thus, if a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.

Patent Law > Nonobviousness > Elements & Tests > Prior Art Patent Law > Nonobviousness > Elements & Tests > Secondary Considerations [HN4] In the context of patent law and the nonpatentability of an invention because of obviousness, the scope of the prior art has been defined as that reasonably pertinent to the particular problem with which the inventor was involved. Secondary considerations include evidence of factors tending to show nonobviousness, such as commercial success of the invention, satisfying a long-felt need, failure of others to find a solution to the problem at hand, and copying of the invention by others.

Patent Law > Inequitable Conduct > Effect, Materiality & Scienter > General Overview Patent Law > Nonobviousness > Elements & Tests > Ordinary Skill Standard Patent Law > Nonobviousness > Elements & Tests > Prior Art [HN7] In the context of patent law and the nonpatentability of an invention because of obviousness, as far as the matter of analogous prior art is concerned, evidence of classification of prior art in different categories by the Patent and Trademark Office is inherently weak, because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.

Patent Law > Inequitable Conduct > Effect, Materiality & Scienter > General Overview Patent Law > Nonobviousness > Elements & Tests > Prior Art [HN5] In the context of patent law and the nonpatentability of an invention because of obviousness, whether a prior art reference is analogous art is a question of fact. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Patent Law > Inequitable Conduct > Effect, Materiality & Scienter > General Overview Patent Law > Nonobviousness > Elements & Tests > Prior Art Patent Law > Nonobviousness > Elements & Tests > Teaching Away From Invention [HN8] In the context of patent law and the nonpatentability of an invention because of obviousness, whether a prior art reference "teaches away" from a claimed invention depends on the particular facts. In general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. JUDGES: Before NEWMAN, PLAGER, and SCHALL, Circuit Judges.

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OPINION BY: SCHALL OPINION: SCHALL, Circuit Judge. DECISION Donald R. Huene ("Huene") appeals from the decision of the Board of Patent Appeals and Interferences ("Board") sustaining the rejection under 35 U.S.C. § 103 of claims 1-7, 9-11, and 14-24 of U.S. patent application no. 08/425,453, which were all of the claims pending in Huene's application. We affirm. DISCUSSION I. A. The Huene Application Huene's application is directed to an absorbable bone screw and a tool for its insertion. The screw is used in surgery to attach bone fragments. In the "FIELD OF THE INVENTION" portion of his application, Huene states: "The disclosed invention is a screw for the internal fixation of bone fragments. The screw is manufactured from a material which is absorbable by the body . . . . A tool to which the screw may be selectively fixed is also disclosed, and the tool maintains proper orientation and [*2] alignment of the screw throughout the insertion process." The prior art teaches that the use of absorbable bone screws is advantageous over the use of metal screws. In the "BACKGROUND OF THE INVENTION" of his application, Huene states: "Absorbable bone screws . . . generally are formed from materials not having the strength characteristics of metal, so that prior surgical screwdrivers may not maintain proper orientation of the screw relative to the driver. The absorbable screw may, for example, become cocked or knocked off axis during insertion, with the result that the screw may not be properly inserted." Huene also describes "a need for an absorbable bone screw and a tool for its insertion which assure the proper positioning of the screw relative to the driver at all times. The disclosed invention is thus directed to a unique absorbable bone screw, and a tool especially adapted for insertion of that bone screw." In the "OBJECTS AND SUMMARY OF THE INVENTION" of his application, Huene states: "The primary object of the disclosed invention is an absorbable bone screw which cooperates with a driver for maintaining proper orientation of the screw relative to the driver." Figure 1 of [*3] the application shows an embodiment of the bone screw of the invention 10, 12, and 16 attached to the driver D1 of the invention. Figure 2 shows an embodiment of the bone screw and a portion of the attached driver. Figure 3 shows an embodiment of

the bone screw that is not attached to a portion of the driver. In Figures 2 and 3, the screw S1 has a series of slots 24 configured to receive keys 44 extending from the driver D1. Another embodiment of the invention is shown in Figure 6, where screw S2 has a series of detents 68 for receiving posts 78 extending from the driver D2. In both embodiments, the screw head has a central threaded bore 22 or 66, separate from the detents or slots, that receives the threaded end of rod 28 (Figure 1) of the driver to secure the screw to the driver tool. [SEE FIGURES 1, 2, 3 AND 6 IN ORIGINAL] Claim 1 was selected as representative of claims 1-3, 6, 7, 9-11, 14-19, and 22-24. Claim 1 recites: A bone screw, comprising: a) a threaded shank having an axis of rotation; b) a head integral with said shank, said head including a surface disposed generally normal to said axis and said head and said shank formed from a bioabsorbable material; c) a [*4] plurality of driver means disposed about said surface wholly remote from said axis, each of said driver means adapted for engagement with a cooperating driver element of a rotary driver so that said head and thereby said shank may be rotated about said axis; and d) a threaded bore coaxial with said axis extending inwardly from said surface for threadedly engaging a cooperating threaded element of the rotary driver. Claim 4 was chosen as representative of claims 4, 5, 20 and 21. Claim 4 recites: The bone screw of claim 2, n1 wherein: a) each of said driver means opens on the periphery of said head.

n1 Claim 2 recites: "The bone screw of claim 1, wherein: a) each of said driver means is formed in said head and opens on said surface." B. The Prior Art Gogolewski

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U.S. Patent No. 5,275,601 to Gogolewski et al. ("Gogolewski") discloses a self-locking absorbable bone screw and plate system, as shown in Figures 1a, 4a, and 4b below. The absorbable bone screw has a threaded shaft for insertion [*5] into the bone, and a head to connect it in the screw hole of a bone plate. The head is flared and the outer surface is corrugated to lock into the bone plate. The bone screw has a hexagonally shaped hole to allow insertion of the bone screw with the use of a hexagon shaped tool. [SEE FIGURE ORIGINAL] Treharne U.S. Patent No. 4,973,333 to Treharne ("Treharne") discloses a reabsorbable compressing screw for repairing bone fractures, shown in Figure 2 below. The screw can be provided with a head that is designed to allow a faster absorption rate by exposing more of its surface area to body fluids. The screw also can include a head with notches and slots to accommodate a driving tool. [SEE FIGURE 2 IN ORIGINAL] Rich U.S. Patent No. 4,466,314 to Rich ("Rich") is entitled "NONSLIP FASTENER TORQUING SYSTEM." Rich discloses a nonslip fastener torquing system that uses a fastener (e.g., a screw) with a special head that has a "threaded recess" and "torque receiving recesses" matched to a tool that threadably engages (i.e., screws into) the head and uses the threaded engagement to provide a solid base for torque applicators, such as drive pins or [*6] drive blades so that high torque fasteners, which otherwise would use Phillips or other torquing systems, can be installed and removed without fear that the torquing tool will cam out of the head of the fastener and thereby ruin the fastener. As shown in Figures 1 through 4 below, Rich describes a driver tool 26 having a stud 28 that threadably engages the bore 18 of a screw 12. An advantage of Rich is that it does not require a jig or other holding device to prevent the camming action, thus reducing the cost of installing and removing the fasteners. [SEE FIGURES 1, 2, 3 AND 4 IN ORIGINAL] In the "BACKGROUND OF THE INVENTION" Rich teaches that, in the aerospace industry, there is an extensive use of fasteners which are torqued to high levels. These fasteners commonly are made from expensive materials, such as titanium. Conventional slots, or arrangements such as Phillips heads, tend to fail when the torquing tool is not perfectly centered or oriented with respect to the head of the screw. The common failure 1a AND FIGURE 4b IN

mode is for the tool to come out of alignment with the fastener head and cam out of the recess in the head-causing the recess to become deformed and making the fastener unusable. [*7] This can present a sizable manufacturing and maintenance expense. Rich identifies a "need for a positive, recessed, fastener torquing system whose tooling can be used universally and which greatly reduces the cost of installing and removing the fasteners." Rich also teaches that "it is an object of the present invention to provide a fastener torquing system which can be used repeatedly without damage to the head of the fastener." Another object of Rich "is to eliminate the 'camming out' problem commonly associated with fasteners having recessed torqued application means." Yet another object of Rich "is to provide a torque application system which can be adapted to various sizes of fasteners and torque requirements." Boschetto U.S. Patent No. 4,466,315 to Boschetto et al. ("Boschetto") discloses a combination tool that is used to drive simultaneously a screw requiring a screwdriver as a driving element and a screw requiring a spanner wrench as a driving element, as shown in Figure 1 below. One object of the invention is to provide a tool including the spanner wrench that can be used without the screwdriver portion. One embodiment shows peripheral slots extending longitudinally [*8] of the sleeve-like body. Another embodiment shows the slots opening on the periphery of the screw head. The peripheral slots are engaged by the lugs of the spanner wrench portion of the combination tool. [SEE FIGURE 1 IN ORIGINAL] C. Procedural History During prosecution, the examiner rejected claim 1 for obviousness in view of Gogolewski and Rich, or Treharne and Rich. The examiner also rejected claim 4 for obviousness in view of Gogolewski, Rich and Boschetto, or Treharne, Rich and Boschetto. The Board affirmed the examiner's rejections. With respect to representative claim 1, the Board found that Gogolewski and Treharne disclose reabsorbable bone screws with a head portion. The Board also found that Rich discloses a nonslip fastener torquing system. With respect to representative claim 4, the Board found that Boschetto discloses a screw head with slots along its periphery. The Board rejected Huene's argument that Rich is nonanalogous art and determined that Huene's secondary evidence of nonobviousness did not overcome the strong prima facie case of obviousness.

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Huene requested rehearing. The Board granted the request to the extent of reconsidering its decision, but denied [*9] the request with respect to making any changes in the decision. The Board also noted a typographical error in its earlier opinion with respect to its conclusion that Rich is analogous art under the test set forth in In re Wood, 599 F.2d 1032, 1036, 202 U.S.P.Q. (BNA) 171, 174 (CCPA 1979) ("The determination that a reference is from a nonanalogous art is . . . two-fold. First, we decide if the reference is within the field of the inventor's endeavor. If it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved."). In particular, the Board's earlier opinion mistakenly stated that "Rich falls at least into the former category [i.e., within the field of the inventor's endeavor] of the Wood test." The Board's opinion on rehearing made it clear that, in the Board's opinion, "Rich falls at least into the latter category of the Wood test" (emphasis in original), and that it had mistakenly referred to the "former" category of the Wood test in the earlier opinion. II. [HN1] Under 35 U.S.C. § 103, "[a] patent may not be obtained . . . if the differences between [*10] the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." [HN2] Obviousness under 35 U.S.C. § 103 is a legal conclusion based upon four factual inquiries. See B.F. Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577, 1582, 37 U.S.P.Q.2D (BNA) 1314, 1318 (Fed. Cir. 1996). "These inquiries consist of: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of nonobviousness." Id. (citations and quotations omitted). [HN3] We review the ultimate conclusion of obviousness de novo. See In re Donaldson Co., 16 F.3d 1189, 1192, 29 U.S.P.Q.2D (BNA) 1845, 1848 (Fed. Cir. 1994) (en banc). We review the Board's fact findings under the substantial evidence standard of the Administrative Procedure Act. See Dickinson v. Zurko, 527 U.S. 150, 152, 144 L. Ed. 2d 143, 119 S. Ct. 1816 (1999); In re Gartside, 203 F.3d 1305, 1315, 53 U.S.P.Q.2D (BNA) 1769, 1775 (Fed. Cir. 2000). [*11] [HN4] "The scope of the prior art has been defined as that 'reasonably pertinent to the particular problem with which the inventor was involved.'" Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535, 218 U.S.P.Q. (BNA) 871, 876 (Fed. Cir. 1983) (quoting In re Wood, 599 F.2d at 1036, 202 U.S.P.Q. (BNA) at 174). "Secondary considerations include evidence of factors tending to show nonobviousness, such as commercial success of

the invention, satisfying a long-felt need, failure of others to find a solution to the problem at hand, and copying of the invention by others." B.F. Goodrich, 72 F.3d at 1582, 37 U.S.P.Q.2D (BNA) at 1318. Huene's main argument on appeal is that Rich is not analogous prior art and that, therefore, it was improperly combined with Gogolewski and Treharne. In particular, Huene argues that Rich is nonanalogous art because it is directed to a titanium aircraft screw, whereas Gogolewski and Treharne are directed to bioabsorbable screws. According to Huene, the problem Rich sought to solve arose due to the hardness of titanium. By contrast, Huene asserts, the problem he set out to solve (failure of the bone screw to maintain proper alignment during [*12] insertion) arose as a result of the softness of the absorbable fastener material. Thus, Huene claims that one confronting a problem due to the softness of material would not look to how others solved problems attributable to hardness. According to Huene, nothing in Rich suggests its use with soft materials, such as an absorbable bone screw. Also, Huene contends that the PTO itself has recognized that Rich is nonanalogous art because it has classified Rich differently than Gogolewski and Treharne. n2 n2 Rich is classified under U.S. Patent Class 81 (Tools), whereas Gogolewski and Treharne are classified under U.S. Patent Class 606 (Surgery). [HN5] Whether a prior art reference is analogous art is a question of fact. See In re Paulsen, 30 F.3d 1475, 1481, 31 U.S.P.Q.2D (BNA) 1671, 1675 (Fed. Cir. 1994). We have stated that "two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference [*13] is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Clay, 966 F.2d 656, 658-59, 23 U.S.P.Q.2D (BNA) 1058, 1060 (Fed. Cir. 1992) (citations omitted). Rich is not in the same field of endeavor as Huene. However, it still may properly be combined with Gogolewski or Treharne if it is reasonably pertinent to the problem Huene attempts to solve. See id. at 659, 23 U.S.P.Q.2D (BNA) at 1060-61. [HN6] "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." Id., 23 U.S.P.Q.2D (BNA) at 1061. Consequently, "the purposes of both the

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invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve." Id. Thus, we have stated that "if a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact [*14] supports use of that reference in an obviousness rejection." Id. [HN7] As far as the matter of analogous prior art is concerned, evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5, 213 U.S.P.Q. (BNA) 713, 716 n.5 (CCPA 1982). We see no reason to disturb the Board's finding that Rich is analogous prior art