Saturday, January 31, 2009

Obviousness overcome

In SÜD-CHEMIE, INC. v. MULTISORB TECHNOLOGIES, INC., the CAFC vacated and remanded a district court finding of obviousness on summary judgment.

The CAFC noted:

However, in concluding that Komatsu
teaches the use of compatible polymeric materials, the district court failed to
acknowledge that the specified classes of materials comprise a large number of
substances with quite different properties, and that various combinations of those
materials can be compatible or incompatible depending on how they are assembled in
layers to form the container. (...)

Thus, “compatible” materials have similar melting or
softening temperatures, while incompatible materials have dissimilar softening points.
The district court reasoned that “[t]he Komatsu patent does not identify the inner
surfaces of the films as comprised of compatible polymeric materials, but that does not
mean[] that they are not.” However, the Komatsu specification does identify the relative
softening points of the various polymeric films that constitute the package material, and
an analysis of those softening points indicates that Komatsu teaches the use of
incompatible materials
for the inner surfaces of the containers, whereas the ’942 patent
requires the use of compatible materials for those surfaces.


Claim 1 of the ’942 patent requires that the inner surface
of the laminate film be compatible with the inner surface of the microporous film—that is,
the softening points of those two layers must be consistent. In contrast, Komatsu
teaches that the microporous film and the inner laminate films should have quite different
softening points; Komatsu explains that the softening point of the microporous film
should preferably be at least 20°C higher than that of the inner laminate film.


However, Multisorb ignores the fact that while the ’942 patent requires the inner surfaces
of the laminate and microporous films to have similar softening points, Komatsu requires
the films to have dissimilar softening points. Komatsu thus does not teach the use of a
microporous film that is compatible with the inner surface of the laminate film.

Copying is mentioned as a secondary consideration:

Süd-Chemie contends that secondary considerations, including unexpected
results, copying, and commercial success indicate that the invention of the ’942 patent
would not have been obvious to a person of skill in the art.

Secondary considerations are given a boost in the opinion:

As we have repeatedly emphasized, evidence relating to secondary considerations
“constitutes independent evidence of nonobviousness” and can be quite instructive in
the obviousness inquiry. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358,
1365 (Fed. Cir. 2008).

Unexpected results can be important:

Süd-Chemie focuses in particular on the evidence of unexpected results. In that
regard, Süd-Chemie argues that a person of skill in the art would not have expected
uncoated laminate and microporous films to form stronger bonds than adhesive-coated

One needs evidence of unexpected results:

Multisorb is correct that conclusory statements in a patent’s specification cannot
constitute evidence of unexpected results in the absence of factual support.
See In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). However, the ’942 patent provides evidence
pertaining to the allegedly unexpected advantages of uncoated over coated films beyond
its mere declaration that the results were surprising. (...) The specification therefore contains
specific evidence pertinent to Süd- Chemie’s contention that the use of uncoated films
yields advantages over more conventional combinations

Secondary considerations don't always win:

Of course, evidence of unexpected results and other secondary considerations will not
necessarily overcome a strong prima facie showing of obviousness, see Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007),


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