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
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
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 to produce the meat encasement structure disclosed
in the '148 patent to solve that problem.
The Federal Circuit next found that the district court made a
clear error in not considering or making findings as to Mintz's
evidence showing objective indicia of nonobviousness. The
Court stated that "consideration of these objective indicia
[is required] because they 'provide objective evidence of how
the patented device is viewed in the marketplace, by those directly
interested in the product.'" Id. at 11
(quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1391 (Fed. Cir. 1988)). "Obviousness
requires a court to walk a tightrope blindfolded (to avoid
hindsight)—an enterprise best pursued with the safety net
of objective evidence." Id.
The Court further noted that "[s]imply because the
technology can be easily understood does not mean that it will
satisfy the legal standard of obviousness." Id.
at 13. "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." Id. The Court
concluded that Mintz presented substantial evidence of unexpected
results, expert skepticism, copying, commercial success, praise by
others (including PCM), failure by others, and long-felt need, and
remanded the determination of obviousness to the district
court. The Court stated, however, that in light of its
infringement holding, explained below, the district court could
decide whether any further proceedings are necessary.
Turning to infringement, the Federal Circuit held that the
district court correctly found that the accused PCM products do not
infringe the '148 patent, because they do not satisfy the
"intersecting in locking engagement" claim
limitation. The Court noted that the PCM products have the
same gap between each longitudinal strand that Mintz argued the
prior art showed as distinct from the claimed invention.
Mintz's argument for why the prior art lacks the
"intersecting in locking engagement" claim limitation
applies similarly to explain why PCM's accused products also
lack that limitation.
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