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United States: Federal Circuit Re-Emphasizes The Importance Of Secondary Considerations Of Non-Obviousness And Defining The Person Of Ordinary Skill In The Obviousness Analysis
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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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