Business Wins Can Boost Patent Prospects‏

In Mintz v. Dietz & Watson, Inc. (Fed. Cir. May 30, 2012), the Federal Circuit found, inter alia, the district court had made a clear error in not considering or making any findings as to Mintz’s evidence showing objective indicia of nonobviousness for a patented invention whose claims were directed to a casing structure for meat products.

Objectively Nonobvious

For emphasis, the Federal Circuit repeated previous recognition by itself and the Supreme Court, on the importance of objective indicia of nonobviousness. The decision-maker entrusted with review of this topic of nonobviousness may be:

the patent examiner,
the Board of Patent Appeals and Interferences (BPAI), or
the judiciary

at different points in:

prosecution of a patent application in the US Patent and Trademark Office (USPTO),
appeal from patent prosecution,
assertion of an issued patent, or
appeal of a judicial determination in the court system.

Extolment

Objective indicia may often be the most probative and cogent evidence of nonobviousness in the record. Indeed, objective indicia may be the most pertinent, probative, and revealing evidence available to the decision-maker in reaching a conclusion on the obviousness/nonobviousness issue. Such evidence may often establish that an invention appearing to have been obvious in light of the prior art, was not.

Check on Hindsight

Objective indicia can be the most probative evidence of nonobviousness in the record, and enable the decision-maker to avert the trap of hindsight. These objective criteria help inoculate the obviousness analysis against hindsight. The objective guideposts are powerful tools for decision-makers faced with the difficult task of avoiding subconscious reliance on hindsight. The objective indicia guard against slipping into use of hindsight, and resist the temptation to read into the prior art the teachings of the invention in issue. This built-in protection can help 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 decision-maker, with the invention fully diagrammed and aided by experts in the field, may have been a breakthrough of substantial dimension when first unveiled. These objective criteria thus help turn back the clock and place the claims in the context that led to their invention. 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, the Federal Circuit requires consideration of the objective indicia because they provide objective evidence of how the implementation of the patented invention was viewed in the marketplace, by directly interested third parties. The objective considerations reflect the contemporary view of the invention by competitors and the marketplace. Evidence of the contemporaneous attitude toward the invention helps to cast one's mind back to the state of technology at the time the invention was made. A retrospective view of the invention is best gleaned from those who were there at the time. Obviousness requires a decision-maker to avoid hindsight by walking a tightrope blindfolded: an enterprise best pursued with the safety net of objective evidence.

Evidence

Mintz presented considerable record evidence on objective indicia, including unexpected results, expert skepticism, copying, commercial success, praise by others (even from the accused infringer), failure by others, and long-felt need.

District Court Error

Inexplicably, the district court erroneously stated, “Plaintiffs do not appear to offer any objective evidence of nonobviousness.” The record also shows that Mintz gave the district court an opportunity to correct this error by noting this oversight in its motion for reconsideration. In denying that motion, the district court acknowledged that Mintz did present such evidence in its opening summary judgment brief. Nonetheless, the district court dismissed without consideration that presentation as “scant.” To the contrary, the district court should have proceeded to analyze the evidence.

Easily Understood Technology

Where the invention is less technologically complex, the need for findings on objective indicia of nonobviousness can be important to ward against falling into the forbidden use of hindsight. Simply because the technology can be easily understood does not mean that it will satisfy the legal standard of obviousness. 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. The proper analysis instead requires a form of amnesia that forgets the invention and analyzes the prior art and understanding of the problem at the date of invention.

Praise from Competitor

The Federal Circuit noted its previous recognition of the probative value of praise by a competitor.

Sour Grapes

Praise from a competitor tends to indicate that the invention was not obvious. Before the litigation, the accused infringer recognized the technology as a significant advance and touted the advantages. The accused infringer’s recognition of the importance of this advance is relevant to a determination of nonobviousness. The litigation argument that an innovation is really quite ordinary carries diminished weight when offered by those who had tried and failed to solve the same problem, and then promptly adopted the solution that they are now denigrating. When differences that may appear technologically minor nonetheless have a practical impact, particularly in a crowded field, the decision-maker must consider the obviousness of the invention in this light. Such objective indicia as commercial success, or filling an existing need, illuminate the technological and commercial environment of the inventor, and aid in understanding the state of the art at the time the invention was made.

Business Wins

For 8 years when serving as the distributor of products covered by the patent at issue, the accused infringer sent customers many letters and brochures praising the benefits of those products. Once Mintz terminated the distribution agreement, the accused infringer began selling other products being accused of infringement in this case. Similarly, other companies have been accused of infringement by Mintz and either requested to license the patent or were found to infringe a related European patent. Mintz has been granted similar patents in other countries and has sold embodiments of the patent in twenty countries. Before Mintz’s claimed invention, despite the old elastic netting having been sold on the market for over 30 years and the collagen film for over 10 years, the prior art disclosed no solutions to the problem of meat adherence without a laborious two-step process or higher expense. Mintz presented an example of a competitor who tried to solve the problem but failed. Since their introduction over 15 years ago, the products covered by the patent have become the industry standard. Mintz has sold over $70 million of these patented products in the United States alone.

Lesson

The Federal Circuit confirmed the value of objective indicia of nonobviousness. Mintz's business wins translated into support for validity of its claimed invention.

Separate Topic of Claim Construction

Separate from the focus of this post, Mintz nevertheless suffered from its claim language failing to cover the accused infringer's products that competed in the marketplace with the products covered by Mintz's patent. Patent infringement occurs if an accused device or process meets each limitation of a patent claim, literally or under the doctrine of equivalents, where available. For more on the topic of claim construction for patent infringement, see my post.