On May 30, 2012, the U.S. Court of Appeals for the Federal Circuit vacated the district court's grant of summary judgment of obviousness in a case involving a patent directed to a knit casing structure designed to encase meat products. Mintz v. Dietz & Watson, Inc., Case No. 2010-1341 (Fed. Cir. May 30, 2012).
The Federal Circuit panel strongly emphasized the importance of objective indicia of non-obviousness for "incremental" inventions. Repeatedly warning against the "forbidden use of hindsight," the panel held that it was an error for the district court to rely on its "common sense view" that the patented invention was "obvious to try," without providing any sort of explanation or factual support. Id. at 8. Because such "marginal advances in retrospect may seem deceptively simple," it is especially important to use the "powerful" objective criteria to "help inoculate the obviousness analysis against hindsight." Id. at 10–11. The obviousness inquiry "requires a court to walk a tightrope blindfolded (to avoid hindsight)," a task that "is often the most difficult" for easy to understand technology. Id. at 11–13. To avoid hindsight bias, the panel stated that the district court's obvious inquiry "requires a form of amnesia." Id. at 13.
The Federal Circuit further held that the district court's determination that the relevant field of art was the knitting art, rather than the meat encasing art, was clear error. Because the prior art, the problems giving rise to the invention, and the invention, itself featured meat encasing art, that art should have informed the artisan's point of view. In the panel's view, this error became especially problematic during analysis of the "differences between the claimed invention and prior art," since the basic knowledge of a knitting artisan is different from the knowledge of a meat encasing artisan. Id. at 9.
What This Means for You
This case highlights the importance of careful consideration of all of the Graham factors in an obviousness analysis. In particular, the Federal Circuit strongly emphasized the importance of the fourth factor (i.e., "objective indicia" or the so-called secondary considerations, such as commercial success or expert skepticism) to guard against improper hindsight. Likewise, a correct definition of the level of ordinary skill and the relevant field of art are necessary to frame the overall inquiry and avoid hindsight bias, particularly as it relates to ascertaining the significance of any differences between the prior art and the claimed invention.
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