We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, June 4, 2012. Brief synopses are presented below.
Plasmart v. Kappos & Wang, Case No. 2011-1570 (Fed. Cir. May 22, 2012) (attached).
Appellee sells the TwistCar, a scooter with a handlebar that is twisted to propel the scooter. Appellee also owns patent No. 6,722,674, which claims a scooter with a safety wheel mounted to a “supporting arm fowardly extended from said driven portion of said twister member.” Appellant Plasmart filed for inter partes reexam, where the examiner rejected the claims as obvious over the prior art. The prior art includes two Chinese patent applications. The first reference discloses a tricycle with two safety wheels that are mounted off the ground and attached to the body base. The second reference discloses a scooter similar to the TwistCar, but without any safety wheels. On appeal to the BPAI, the Board reversed and found several of the claims patentable.
Plasmart appealed to the Federal Circuit which found that the patent was obvious. The Court stated that the Board’s factual findings are reviewed for substantial evidence and the Board’s legal conclusions are reviewed de novo. The Court stated that it has a large amount of analysis/discretion in determining whether the factual findings lead to a conclusion of obviousness.
The Federal Circuit accepted all of the BPAI’s factual findings regarding the scope and content of the prior art; the level of skill in the art; and the differences between the claimed invention and the prior art. However, the court rejected the BPAI’s ultimate conclusion on obviousness, holding that the “minor distinctions” identified by the Board were insufficient to distinguish the claimed invention from the prior art. The Court stated that the modification in Appellee’s patent “is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability), and would thus have been obvious.”
Mintz v. Dietz & Watson, Case No. 2010-1341 (Fed. Cir. May 30, 2012) (attached).
The Mintzes own Patent No. 5,413,148 toward a casing structure for meat products that permits the meat to bulge between netting strands while avoiding the more complex stuffing process associated with prior knitted meat encasements. Package Concepts & Materials, Inc. (PCM), a former distributor of Mintz products, filed a declaratory judgment action against Mintz and Mintz filed a separate patent infringement action against PCM. The cases were consolidated and the district court granted summary judgment to PCM, holding that the patent was invalid because of obviousness.
On appeal, the Federal Circuit reversed the holding of invalidity. In its opinion, the Federal Circuit discussed the need to avoid hindsight bias when analyzing obviousness. The Court provided guidance on ways to avoid hindsight bias: by requiring that use of the “common sense” obviousness argument be supported; by avoiding the use of the patent itself in defining the problem the invention solves; and by emphasizing the need to analyze the objective indicia of nonobviousness.
The district court had relied on a common sense argument to conclude that it would have been “obvious to try” an element of the claimed invention. The Federal Circuit held that more is required than simply stating that the invention was a result of “common sense”. The Court indicated that further evidence was required, such as record support showing that the knowledge would have resided in the ordinarily skilled artisan.
The Federal Circuit also found that the district court erred by using the invention to define the problem that the invention solves. The Court stated that it may be the problem itself that is the inventive contribution, even if the solution to the problem is known.
The Federal Circuit emphasized the importance of considering the objective indicia of nonobviousness in order to avoid hindsight bias. Mintz had provided evidence including unexpected results, expert skepticism, copying, commercial success, praise by others, failure by others and long-felt need. The district court had failed to give substantive consideration to the objective evidence of nonobviousness.
Accordingly, the Federal Circuit reversed the district court holding of obviousness. However, the Federal Circuit affirmed the district court’s summary judgment of noninfringement of the patent.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 4, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.