We wrote recently about a summary judgment decision in which
Judge Indira Talwani found certain asserted claims of two patents
on a type of breakable screw to be obvious in light of the prior
art. This ruling came even though the patentee had produced some
evidence of copying, and even though the accused infringer had not
shown a motivation to combine. The case provides useful insights
into the law on patent obviousness, and this post expands on the
obviousness issues in more detail.
In a lengthy opinion addressing a number of different issues,
Judge Talwani first ruled that several other claims in each of the
patents were anticipated by the prior art, which included two
examples of previously-available breakable screws. The specific
claims at issue here, however, were deemed not anticipated because
they added additional elements, such as describing particular
lengths for a non-threaded screw portion.
The fact that the claims survived an anticipation challenge,
however, did not mean that they would survive an obviousness
challenge based on the same prior art references. Eyeego contended
that the patent claims were not obvious in light of the prior art
in part because Hilco had not shown any evidence of a motivation to
combine or modify any prior art references. Relying on the Supreme
Court’s precedent in KSRv. Teleflex, Judge
Talwani pointed out that evidence of such a motivation is not
required to prove obviousness; because the claims are nothing more
than "predictable variations" on the prior art, they are
Although Eyeego had presented some objective evidence of
non-obviousness, in Judge Talwani's view, this still could not
save the patents, even at summary judgment. Eyeego had presented
some evidence of copying – the inventor had presented her
patented screw to Hilco, which had had the opportunity to review
and evaluate the invention before coming out with its allegedly
infringing product. Eyeego contended that at the summary judgment
stage, this showing was sufficient to overcome the obviousness
challenge. But to Judge Talwani, this "scant" evidence of
copying was insufficient. Citing a recent Federal Circuit decision
in the ongoing Apple v. Samsung litigation, Judge Talwani
found that Eyeego's copying evidence was simply not enough to
overcome an obviousness finding, where as was the case here, there
is a “substantial question of validity” raised by the
In the changing landscape of obviousness law, this case is a
good example of how the obviousness jurisprudence can play out.
Even at summary judgment, and where there are only two prior art
references and no motivation to combine, patentees may find that
they need more than scant objective evidence in the record to
overcome an obviousness motion.
The case is The Hilsinger Company v. Eyeego, LLC, Civil
Action No. 1:13-cv-10594-IT (D. Mass.), before Judge Indira
Talwani. A copy of the opinion can be found here.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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