Technology Is Not Necessarily Obvious Simply Because It Is Easily Understood
May 30, 2012
Last Month at the Federal Circuit - June 2012
Judges: Rader (author), Newman, Dyk
[Appealed from: S.D. Cal., Judge Lorenz]
In Mintz v. Dietz & Watson, Inc., No. 10-1341 (Fed. Cir. May 30, 2012), the Federal Circuit affirmed a district court’s grant of SJ of noninfringement and vacated its grant of SJ of invalidity for obviousness with remand to the district court.
Marcus and Neil Mintz (collectively “Mintz”) appear as coinventors on U.S. Patent No. 5,413,148 (“the ’148 patent”), directed to a structure for encasing meat products. Mintz sued Package Concepts & Materials, Inc. (“PCM”) for infringement, based on PCM’s bubble netting, collagen replacement, and cubic netting product lines. The district court granted PCM’s motion for SJ of noninfringement and invalidity, and Mintz appealed.
In its obviousness analysis, the Federal Circuit first found that the district court’s omission of meat encasement art led the validity search astray. The Court noted that the patent specification repeatedly focuses on meat encasement art, and that the problem solved by the invention concerns meat encasement.
Regarding the differences between the invention and the prior art, the Federal Circuit held that the district court correctly found that the prior art disclosed all of the claim’s limitations except the “intersecting in locking engagement” limitation. The Court held, however, that the district court made a clear error in its unsubstantiated reliance on “a common sense view” or “common sense approach” to conclude that a locking engagement would have been obvious to try. “With little more than an invocation of the words ‘common sense’ (without any record support showing that this knowledge would reside in the ordinarily skilled artisan), the district court overreached in its determination of obviousness.” Slip op. at 9.
The Federal Circuit further found that the district court relied on hindsight, using the invention to define the problem that the invention solves. The Court stated that PCM must prove by clear and convincing evidence that a person of ordinary skill in the meat encasement arts at the time of invention would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat encasement structure disclosed in the ’148 patent to solve that problem.
The Federal Circuit next found that the district court made a clear error in not considering or making findings as to Mintz’s evidence showing objective indicia of nonobviousness. The Court stated that “consideration of these objective indicia [is required] because they ‘provide objective evidence of how the patented device is viewed in the marketplace, by those directly interested in the product.’” Id. at 11 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988)). “Obviousness requires a court to walk a tightrope blindfolded (to avoid hindsight)—an enterprise best pursued with the safety net of objective evidence.” Id.
The Court further noted that “[s]imply because the technology can be easily understood does not mean that it will satisfy the legal standard of obviousness.” Id. at 13. “In fact, objective consideration of simple technology is often the most difficult because, once the problem and solution appear together in the patent disclosure, the advance seems self-evident.” Id. The Court concluded that Mintz presented substantial evidence of unexpected results, expert skepticism, copying, commercial success, praise by others (including PCM), failure by others, and long-felt need, and remanded the determination of obviousness to the district court. The Court stated, however, that in light of its infringement holding, explained below, the district court could decide whether any further proceedings are necessary.
Turning to infringement, the Federal Circuit held that the district court correctly found that the accused PCM products do not infringe the ’148 patent, because they do not satisfy the “intersecting in locking engagement” claim limitation. The Court noted that the PCM products have the same gap between each longitudinal strand that Mintz argued the prior art showed as distinct from the claimed invention. Mintz’s argument for why the prior art lacks the “intersecting in locking engagement” claim limitation applies similarly to explain why PCM’s accused products also lack that limitation.
Summary authored by Shana K. Cyr, Ph.D., Esq.