Objective Evidence Of Nonobviousness Must Be Commensurate In Scope With Claims

In MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., Nos. 12-1518, -1527 (Fed. Cir. Sept. 26, 2013), the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the district court's decision regarding validity and infringement of patents related to dispenser assemblies for perfumes. Specifically, the Court affirmed the district court's claim constructions, denial of a motion to exclude expert testimony, denial of a motion for SJ of indefiniteness, and finding of infringement, but reversed and remanded the district court's SJ of nonobviousness.

Plaintiffs MeadWestVaco Corporation and MeadWestVaco Calmar, Inc. (collectively "MWV") and Defendants Rexam Beauty and Closures, Inc. and Rexam Dispensing Systems S.A.S. (collectively "Rexam") and Valois of America, Inc. and Valois S.A.S. (collectively "Valois") compete in the perfume packaging industry. U.S. Patent Nos. 7,718,132 ("the '132 patent") and 7,722,819 ("the '819 patent"), assigned to MWV, are directed to an "invisible" dip tube for perfume that enhances the aesthetic appearance of the perfume bottle by appearing invisible when immersed in liquid. Both patents include claims specific to fragrance dispensers ("the fragrance-specific claims"). The '132 patent, which is a continuation of the '819 patent, includes additional claims (independent claim 15 and dependent claim 19) directed to generic dispensers ("the generic dispenser claims").

MWV sued Rexam and Valois for infringement of both patents, and Rexam and Valois counterclaimed for DJ of invalidity and noninfringement. The district court construed multiple claim terms and also ruled on various SJ motions, granting MWV's motion for SJ of nonobviousness and denying Rexam and Valois's motion for SJ of indefiniteness. Finally, the district court found that Rexam and Valois did not infringe the fragrance-specific claims of both patents, but did infringe the '132 patent's generic dispenser claims. Rexam and Valois appealed.

On appeal, the Federal Circuit first addressed the issue of obviousness. The Court noted that the district court's obviousness analysis did not distinguish between the fragrance-specific claims and the generic dispenser claims. Rather, the district court credited a variety of evidence in reaching its conclusion of nonobviousness, such as (1) evidence of long-felt need and commercial success in the perfume industry; (2) evidence that Valois and Rexam had reverse-engineered their own invisible dip tubes only...