Baker Hostetler Patent Watch: Mintz v. Dietz & Watson, Inc.

Alerts / May 31, 2012

Obviousness requires a court to walk a tight-rope blindfolded (to avoid hindsight) - an enterprise best pursued with the safety net of objective evidence.

On May 30, 2012, in Mintz v. Dietz & Watson, Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Newman, Dyk), inter alia, vacated and remanded the district court's summary judgment that U.S. Patent No. 5,413,148, which related to a casing structure for encasing meat products, was invalid for obviousness. The Federal Circuit stated:

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.... 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.

[T]he district court's obviousness ruling rests on U.S. Patent No. 698,499 (filed Mar. 28, 1901) (Hirner), U.S. Patent No. 1,981,057 (filed Oct. 29, 1931) (Lombardi), and U.S. Patent No. 9,001,395 (filed June 19, 1990) (Henricus). Hirner and Lombardi claim inventions related to knitted fabrics for products such as socks; Henricus, on the other hand, teaches various knitted encasements for meat. [T]he 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 defining 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 encasement structure disclosed in the '148 patent to solve that problem.

[T]he district court made a clear error in not considering or making any findings as to Mintz's evidence showing objective indicia of nonobviousness. This court has repeatedly emphasized that the objective indicia constitute "independent evidence of nonobviousness." Indeed, objective indicia "may often be the most probative and cogent evidence of nonobviousness in the record." Such evidence "may often establish that an invention appearing to have been obvious in light of the prior art was not."

These 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 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, 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 district court seemed to believe that it need not fully weigh objective indicia evidence. This court has consistently counseled otherwise. This obligation is not waived, as the district court seemed to suggest, by some procedural requirement that ducks consideration of evidence presented in the opening brief but not pursued in a reply brief or in an oral argument that veers in a different direction. Indeed, where the invention is less technologically complex, the need for Graham findings 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. In fact, 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. Instead, the proper analysis requires a form of amnesia that "forgets" the invention and analyzes the prior art and understanding of the problem at the date of invention.

Here, Mintz presented substantial evidence of unexpected results, expert skepticism, copying, commercial success, praise by others (even from the accused infringer PCM), failure by others, and long-felt need ... Having identified several errors in the district court's obviousness analysis, this court vacates and remands to the district court. In light of the following section on the issue of infringement, however, this court leaves to the district court to decide whether any further proceedings are necessary. The district court may proceed if the parties are still contesting validity of the '148 patent.

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung (lsung@bakerlaw.com or 202.861.1537) or any member of our Intellectual Property Team.

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