Judge Posner sets up the case:
The plaintiffs own a manufacturer, called Know Mind Enterprises, and the
defendant, doing business under the name Topco Sales, is another manufacturer. Both
firms produce what the parties call “sex aids” but are colloquially referred to as “sex
toys.” A more perspicuous term is “sexual devices,” by analogy to “medical devices.”
The analogy lies in the fact that, like many medical devices (thermometers for example),
what we are calling sexual devices are intended to be inserted into bodily orifices, albeit
for a different purpose.
The devices are generally in the shape of rods of various curvatures and are
made out of rubber, plastic, glass, or some combination of these materials. Until the
plaintiffs began manufacturing their patented sexual devices, glass sexual devices were
made out of soda-lime glass, the most common form of glass. The plaintiffs’ patent
(U.S. Patent No. Re 38,924, the 2005 reissue of No. 6,132,366, filed on April 1, 1999)
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.”
There is an interesting citation within the case:
That glass has the properties that the patent claims for it, and one can see how
those properties (even resistance to electricity, see M. Klintschar, P. Grabuschnigg & A.
Beham, Death from Electrocution During Autoerotic Practice: Case Report and Review
of the Literature, 19 Am. J. Forensic Med. Pathology 190 (1998)) might enhance the
utility of sexual devices made out of it. Nevertheless, though the plaintiffs’ invention is
useful (setting aside any qualms that one might have about sexual devices in general),
it is not patentable if it would have been “obvious,” not of course to the average person
but to a person having the relevant technical skills.
While LBE was at Stanford, a grad student did die from a fire initiated by the use of an
autoerotic device, and was enshrined on the front pages of the Stanford Daily.
From a legal perspective, the patent holder was pushing a "secondary consideration"
(commercial success) and the defendant was pushing the obviousness of the substitution
of one kind of glass for another. One readily sees how this will come out:
Given that it has commercial value, as heavily emphasized by the plaintiffs, and given that Pyrex,
made originally as we said from borosilicate glass, has been sold by Corning for almost a century
(and it was sold under other names beginning in 1893, when borosilicate glass was first invented), to call
its use in a sexual device “obvious” may seem the triumph of hindsight over insight.
Judge Posner observes:
The commercial success of a product can have many
causes unrelated to patentable inventiveness; for example, the commercial success of
an “invention” might be due not to the invention itself but to skillful marketing of the
product embodying the invention.
"Skillful marketing" underlies the success of many innovations, which innovations
may arise from inventions of different magnitudes. The presence of "skillful marketing" may or
may not negate the significance of the invention.
The nub of this issue-->
Among the inventions that the law deems obvious are those modest, routine,
everyday, incremental improvements of an existing product or process that confer
commercial value (otherwise they would not be undertaken) but do not involve sufficient
inventiveness to merit patent protection. 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.
Judge Posner cites to KSR and to MuniAuction:
This case thus exemplifies the Supreme Court’s analysis in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007). “When a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same reason, 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.” Id. at 417 (emphasis
added). (The last sentence describes our case to a tee.) There was, the Court
continued, no need for the district court to “seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would employ.” Id.
at 418. See also Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326–27 (Fed.
And Ball Aerosol is cited in the next paragraph:
Another case on point is Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 992–93 (Fed. Cir. 2009): “The combination of putting feet on
the bottom of the candle holder and using the cover as a base for the candle holder was
a predictable variation.… The combination of a cover-stand and feet on the bottom of
the candle holder was obvious to try in an effort to minimize scorching, as the
combination would further raise the bottom of the candle holder above the supporting
surface. The resulting, and desired, decreased heat transfer between the candle holder
and the supporting surface from the combination would have been entirely predictable
and grounded in common sense.”
And of substitution cases:
And if more is required to make our point, there is the venerable case of
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR Int’l
Co. v. Teleflex Inc., supra, 550 U.S. at 406, 415, 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 (the doorknob itself, as distinct from the knob on the end of it, being
an assemblage of knob, shank, and spindle). Other substitution cases in which
patentability was denied on grounds of obviousness include Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1535–38 (Fed. Cir. 1983); Brunswick Corp. v. Champion Spark
Plug Co., 689 F.2d 740, 749-50 (7th Cir. 1982), and Lyle/Carlstrom Associates, Inc. v.
Manhattan Store Interiors, Inc., 635 F. Supp. 1371, 1381-83 (E.D.N.Y. 1986), aff’d, 824
F.2d 977 (Fed. Cir. 1987). These decisions, too, support our conclusion that the
judgment must be reversed with instructions to dismiss the suit.
**Separately, on Judge Posner and plagiarism-->
Velvel on Posner on plagiarism
**Of the Ritchie case, see also
Lubricious and Protective Coatings for Glass Containers by Paul W. L. Graham, which technical article undercuts Judge Posner's comment about lubricious. [Posner--> By “lubricious”—a word whose primary meaning, appropriate for a sexual device,
is “lecherous”—the patent means only “slippery,” which is the secondary meaning of the word. ]
Slick Glass Dildos are an “Obvious” Improvement!