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Patent for Glass Sexual Device Held Obvious

April 24, 2009

Decision icon Decision

Last Month at the Federal Circuit - May 2009

Judges: Michel, Bryson, Posner (Circuit Judge sitting by designation, author)

[Appealed from: M.D. Fla., Judge Lazzara]

In Ritchie v. Vast Resources, Inc. (doing business as Topco Sales (“Topco”)), Nos. 08-1528, -1529 (Fed. Cir. Apr. 24, 2009), the Federal Circuit reversed the district court’s finding of infringement and held that the patent-at-issue was obvious under 35 U.S.C. § 103(a).

Plaintiffs Steven Ritchie and David Reynard (collectively “Ritchie”) own U.S. Patent No. RE38,924 (“the ’924 patent”), the 2005 reissue of U.S. Patent No. 6,132,366, which is directed to what the parties referred to as a “sex aid.” The ‘924 patent claims a “sexual aid . . . fabricated of a generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial absorptions.” Slip op. at 2 (alteration in original). Until Ritchie began manufacturing the patented sexual devices, glass sexual devices were made out of soda-lime glass, the most common form of glass. The plaintiffs’ patented sexual devices, however, contain boron oxide and are made from “borosilicate glass,” the glass out of which Pyrex glassware was originally made. The district court found that Topco’s product infringed the ’924 patent and Topco timely appealed. Ritchie, dissatisfied with the amount of relief granted by the district court, cross-appealed.

On appeal, the Federal Circuit considered only whether the patented invention would have been obvious to persons skilled in the relevant art. First, the Court construed the terms “lubricious” and “appreciable amount” as used in the ‘924 patent claims. The Court determined that the term “lubricious,” as used in the ‘924 patent, meant slippery, but found that the ‘924 patent’s use of the word was confusing because glass is smooth rather than slippery. Reconciling the confusion, the Court stated that “what is meant is that the glass, because it contains oxide of boron, is smoother than soda-lime glass and therefore becomes slippery with less lubricant than a device made out of soda-lime glass.” Id. at 2-3. The Court also found the use of the vague term “appreciable amount” of oxide boron to be troublesome. Ultimately, the Court determined that “the plaintiffs are claiming that their invention uses glass that has the amount of boron oxide usually found in borosilicate glass.” Id. at 3.

The Court noted that Corning Glass Works, the original manufacturer of Pyrex, has been selling products made from borosilicate glass for almost a century and borosilicate glass has been sold in other products since 1893, when it was first invented. Borosilicate glass has the properties the ‘924 patent claims, and the Court acknowledged that one can see how those properties might enhance the utility of sexual devices made out of the material.

Despite the usefulness of a sexual device crafted out of borosilicate glass, the Court stated that the device is not patentable if it would have been obvious to a person having the relevant technical skills. Despite the commercial value of the patented device, which Ritchie heavily emphasized, and the successful sales of Pyrex products for almost a century, in the Court’s view, to call the use of borosilicate glass in a sexual device obvious “may seem the triumph of hindsight over insight.” Id. The Court explained that commercial success is deemed a “secondary” indicator of nonobviousness and can have causes unrelated to patentable inventiveness, such as skillful marketing. The Court reminded that “those modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value” sometimes do not involve sufficient inventiveness to merit patent protection. Id. at 4. In the Court’s view, “this class of inventions is well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable. This is such a case.” Id.

The Federal Circuit acknowledged that a manufacturer might change the composition of a type of glass by adding or subtracting types or amounts of the various components, and the change might not be obvious. The Court found, however, that the ’924 patent contains only a vague reference to an “appreciable amount” of oxide boron and does not claim any variant of off-the-shelf borosilicate glass. The Court concluded that, because borosilicate glass is a standard product with well-known properties, including those listed in the ‘924 patent, “to experiment with substituting borosilicate glass for ordinary glass in a sexual device was not a venture into the unknown.” Id. at 5.

The Court next concluded that the case exemplified the Supreme Court’s analysis in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), which stated that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Slip op. at 5 (quoting KSR, 550 U.S. at 417). The Court also compared the case to Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984 (Fed. Cir. 2009), in which a combination of putting feet on the bottom of a candle holder and using the cover as a base for the candle holder was a predictable variation. The Court further cited Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR, which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob. Ultimately, the Court reversed the district court with instructions to dismiss the suit.