In Mintz v. Diets & Watson, Inc., the Federal Circuit vacated the district court's determination that the claims at issue were obvious. In so doing, the court discussed several steps in an obviousness analysis that can guard against the improper use of hindsight. The court's emphasis on the importance of objective evidence of non-obviousness is a reminder of the potential value of developing a strong factual record to support patentability.
The Patent at Issue
The patent at issue was U.S. Patent 5,413,148 directed to a casing structure for encasing meat products. Claim 1 was cited as representative.
1. An elongated tubular casing
structure for encasing meat products, said elongated structure
having a longitudinal direction and a transverse lateral direction,
said casing structure comprising:
a stockinette member comprising a closely knit tubular member formed of closely knit threads and having a first stretch capacity;
a knitted netting arrangement having a second stretch capacity and comprising a first plurality of spaced strands extending in said longitudinal direction and a second plurality of spaced strands extending in said lateral direction;
the longitudinal and lateral strands of said netting arrangement each intersecting in locking engagement with one another to form a grid-like pattern comprising a plurality of four-sided shapes;
said strands of said netting arrangement being knit into the threads of said stockinette member, whereby said netting arrangement and said stockinette member are integrally formed so that said casing structure comprises an integrally formed structure;
said first stretch capacity being greater than said second stretch capacity;
whereby, when a meat product is stuffed into said casing structure under pressure, said meat product forms a bulge within each of said four-sided shapes to thereby define a checker-board pattern on the surface thereof, said stockinette member forming a shield to prevent the adherence of adjacent meat product bulges over said strands of said netting arrangement.
(emphasis added in the Federal Circuit decision)
As summarized in the Federal Circuit decision, the state of the art was to use "netting that allows meat to bulge between the netting strands and produce a desirable checkerboard pattern on the meat's surface," but "the meat would bulge and cook around the netting strands, causing difficulty in peeling the netting off the cooked meat." While one prior art approach used a separate layer of collagen film (a stockinette) under the netting, this "required a two-step stuffing process that was labor intensive and expensive." In contrast, the claimed invention "integrates a stockinette into a netting to make a new kind of meat encasement."
The Obviousness Challenge
The district court granted summary judgment of obviousness based on two patents directed to knitted fabrics and one patent directed to knitted meat encasements. In reviewing this determination, the Federal Circuit discussed several steps in an obviousness analysis that can guard against the improper use of hindsight.
Determining the Level of Skill in the Art
As summarized by the Federal Circuit:
Factors that may be considered in determining level of skill include: type of problems encountered in art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.
The court noted that "the problems giving rise to the invention, and the invention itself featured the meat encasement art." Yet, the district court "discounted the importance of familiarity or experience with meat products" and instead "opined that the person of ordinary skill would have familiarity with the knitting art but no familiarity with the meat encasing art." The Federal Circuit disagreed with this analysis, noting that "[w]ithout 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."
The Trap of Relying on "Common Sense"
The Federal Circuit found "clear error" in the district court's "unsubstantiated reliance on 'a common sense view' or 'common sense approach'" when it held that it "would have been 'obvious to try' a locking engagement."
The Federal Circuit explained that "common sense" as used in an obviousness inquiry "is a shorthand label for knowledge so basic that it certainly lies within the skill set of the ordinary artisan." By invoking "the words 'common sense' (without any record support showing that this knowledge would reside in the ordinarily skilled artisan), the district court over-reached in its determination of obviousness."
The Federal Circuit noted that this error was compounded by the district court's "reliance on the perspective of an artisan in the knitting arts," because 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."
The Problem of Defining the Problem
The Federal Circuit found that the district court erroneously focused on the solution provided by the invention when it characterized the problem as "merely forming a checkerboard or grid-like pattern," such that the obviousness inquiry boiled down to "whether it would have been obvious to simply "fix each point of intersection" of each strand in order to solve that problem." The Federal Circuit reasoned that the district court's "statement of the problem represents a form of prohibited reliance on hindsight" because the "district court has used the invention to define the problem that the invention solves." The Federal Circuit noted that this approach is erroneous because "[o]ften the inventive contribution lies in defining the problem in a new revelatory way."
According to the Federal Circuit, the correct inquiry was whether "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 encasement structure disclosed in the '148 patent to solve that problem."
Objective Indicia of Non-Obviousness
The Federal Circuit found clear error in the district court's failure to consider or make any findings regarding "evidence showing objective indicia of non-obviousness." The court emphasized that "[t]hese objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on 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. . . . 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."
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, 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." . . . Obviousness requires a court to walk a tight-rope blindfolded (to avoid hindsight) — an enterprise best pursued with the safety net of objective evidence.
The Federal Circuit noted that the patentee had "presented considerable record evidence on objective indicia, including unexpected results, expert skepticism, copying, commercial success, praise by others (even from the accused infringer PCM), failure by others, and long-felt need." Nevertheless, the district court "[i]nexplicably" and "erroneously stated, 'Plaintiffs do not appear to offer any objective evidence of nonobviousness.'"
In view of all these errors, the Federal Circuit vacated the district court's summary judgment of obviousness. (The Federal Circuit affirmed the summary judgment of non-infringement.)
Creating a Strong Factual Record
This Federal Circuit decision highlights the importance of creating a strong factual record to support patentability. The level of skill in the art, the basic knowledge/common sense of the ordinary skilled artisan, and the problems recognized in the prior art are all factual issues that could be supported with objective evidence. Moreover, the Federal Circuit's emphasis on the value of objective evidence of any secondary indicia of non-obviousness should be taken into consideration when deciding how to build or defend a case of non-obviousness. Here, it looks like the patent holder presented a strong case, but the district court did not give the evidence due consideration. The Federal Circuit makes clear that district courts have an "obligation" to fully weigh all objective evidence, so patent holders could do well to marshall such evidence to bolster their patents.
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