Technology Is Not Necessarily Obvious Simply Because It Is Easily Understood

Last Month at the Federal Circuit - June 2012

Judges: Rader (author), Newman, Dyk [Appealed from S.D. Cal., Judge Lorenz]

In Mintz v. Dietz & Watson, Inc., No. 10-1341 (Fed. Cir. May 30, 2012), the Federal Circuit affirmed a district court's grant of SJ of noninfringement and vacated its grant of SJ of invalidity for obviousness with remand to the district court.

Marcus and Neil Mintz (collectively "Mintz") appear as coinventors on U.S. Patent No. 5,413,148 ("the '148 patent"), directed to a structure for encasing meat products. Mintz sued Package Concepts & Materials, Inc. ("PCM") for infringement, based on PCM's bubble netting, collagen replacement, and cubic netting product lines. The district court granted PCM's motion for SJ of noninfringement and invalidity, and Mintz appealed.

In its obviousness analysis, the Federal Circuit first found that the district court's omission of meat encasement art led the validity search astray. The Court noted that the patent specification repeatedly focuses on meat encasement art, and that the problem solved by the invention concerns meat encasement.

Regarding the differences between the invention and the prior art, the Federal Circuit held that the district court correctly found that the prior art disclosed all of the claim's limitations except the "intersecting in locking engagement" limitation. The Court held, however, that the district court made a clear error in its unsubstantiated reliance on "a common sense view" or "common sense approach" to conclude that a locking engagement would have been obvious to try. "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." Slip op. at 9.

"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." Slip op. at 9.

The Federal Circuit further found that the district court relied on hindsight, using the invention to define the problem that the invention solves. The Court stated that PCM must prove by clear and convincing evidence that a person of ordinary skill in the meat encasement arts at the time of invention would have recognized the adherence problem recognized by the inventors and found it obvious...