Thursday, May 31, 2012

CAFC in Mintz v. Dietz & Watson: The mere recita- tion of the words “common sense” without any support adds nothing to the obviousness equation

The outcome of Mintz v. Dietz and Watson was This court affirms the non-infringement determination and vacates the invalidity holding with a remand to the district court for further proceedings. Patent claim invalidity through obviousness was vacated, and the use of KSR "common sense" was trimmed back a bit. Separately, Chief Judge Rader made strong statements about the need to consider objective indicia of non-obviousness.

Of obviousness, the CAFC started with basics:

Under 35 U.S.C. § 103, a patent claim is invalid as obvious “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.” This statutory test requires factual inquiries: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Eli Lilly & Co. v. Teva Pharm. USA, Inc., 619 F.3d 1329, 1336 (Fed. Cir. 2010).

There was an immediate problem with the analysis by the district court:

In this case, the prior art, the problems giving rise to the invention, and the invention itself featured the meat encasement art. The district court, however, discounted the importance of familiarity or experience with meat products. Instead, the district court opined that the person of ordinary skill would have familiarity with the knitting art but no familiarity with the meat encasing art. Without some understanding of meat and meat encasement technology in various settings, the artisan of ordinary skill would not grasp many aspects of the invention. Therefore, entirely omitting the meat encasement art led the validity search astray.

As to the use of common sense:

The district court made a clear error, however, in its unsubstantiated reliance on “a common sense view” or “common sense approach” to hold that it would have been “obvious to try” a locking engagement. The mere recitation of the words “common sense” without any support adds nothing to the obviousness equation. Within the statutory test to determine if a claimed invention has advanced its technical art field enough to warrant an exclusive right, “common sense” is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan. 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.

At this juncture, the district court’s reliance on the perspective of an artisan in the knitting arts is especially problematic. The basic knowledge (common sense) of a knitting artisan is likely to be different from the basic knowledge in the possession of a meat encasement artisan. Moreover, the district court emphasized that the problem in the prior art was merely forming a checkerboard or grid-like pattern. To be specific, the district court erroneously phrased the issue as whether it would have been obvious to simply “fix each point of intersection” of each strand in order to solve that problem.

This statement of the problem represents a form of prohibited reliance on hindsight. The district court has used the invention to define the problem that the invention solves. Often the inventive contribution lies in defin- ing the problem in a new revelatory way. In other words, when someone is presented with the identical problem and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention. Instead, PCM must prove by clear and convincing evidence that a person of ordinary skill in the meat encasement arts at the time of the invention would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat en- casement structure disclosed in the ’148 patent to solve that problem.

Chief Judge Rader wrote in detail about objective indicia of non-obviousness, including the text:

These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight. See Crocs, Inc. v. ITC, 598 F.3d 1294, 1310 (Fed. Cir. 2010) (Objective indicia “can be the most probative evidence of non-obviousness in the record, and enable the court to avert the trap of hindsight.”). These objective criteria help inoculate the obviousness analysis against hindsight. The objective indicia “guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue.” Graham v. John Deere Co., 383 U.S. 1, 36 (1966). This built-in protection can help to place a scientific advance in the proper temporal and technical perspective when tested years later for obviousness against charges of making only a minor incremental improvement. “That which may be made clear and thus ‘obvious’ to a court, with the invention fully diagrammed and aided by experts in the field, may have been a break-through of substantial dimension when first unveiled.” Uniroyal, Inc. v. Budkin-Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988).

These objective criteria thus help turn back the clock and place the claims in the context that led to their inven- tion. Technical advance, like much of human endeavor, often occurs through incremental steps toward greater goals. These marginal advances in retrospect may seem deceptively simple, particularly when retracing the path already blazed by the inventor. For these reasons, this court requires consideration of these objective indicia because they “provide objective evidence of how the patented device is viewed in the marketplace, by those directly interested in the product.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988); see also Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1344 (Fed. Cir. 2011) (“The objective considerations reflect the contemporary view of the invention by competitors and the marketplace.”); Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991) (“The significance of a new structure is often better measured in the marketplace than in the courtroom.”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985) (“Recognizing the difficulty of casting one's mind back to the state of technology at the time the invention was made, courts have long recognized the usefulness of evidence of the contemporaneous attitude toward the asserted invention. A retrospective view of the invention is best gleaned from those who were there at the time.”). Obviousness requires a court to walk a tight- rope blindfolded (to avoid hindsight) — an enterprise best pursued with the safety net of objective evidence.


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