American Law Reports ALR Federal The ALR

Transcription

23 A.L.R. Fed. 326
23 A.L.R. Fed. 326 (Originally published in 1975)
Page 1
American Law Reports ALR Federal
The ALR databases are made current by the weekly addition of relevant new cases.
Comment note—application and effect of 35 U.S.C.A. § 103, requiring nonobvious subject matter, in determining validity of patents
Jean F. Rydstrom, LL.B.
TABLE OF CONTENTS
Article Outline
Index
Table of Cases, Laws, and Rules
Research References
ARTICLE OUTLINE
I Introduction
§ 1[a] Generally—Scope
§ 1[b] Generally—Related matters
§ 1[c] Generally—Applicable statutory provisions
§ 2[a] Summary and comment—In general
§ 2[b] Summary and comment—Practice pointers
§ 3[a] Background—Early leading cases
§ 3[b] Background—Presumption of patent validity
§ 3[c] Background—Constitutional standard of patentability; "advance in the art"
II General considerations
§ 4 Statutory requirement of nonobvious subject matter constitutionality
§ 5[a] As presenting questions of fact and law—Generally
§ 5[b] As presenting questions of fact and law—Application of "clearly erroneous" standard; findings of fact
§ 5[c] As presenting questions of fact and law—Conclusion of law
§ 6[a] Purpose and effect of statute—Judicial precedents codified
§ 6[b] Purpose and effect of statute—Demanding standard imposed
§ 6[c] Purpose and effect of statute—"Flash of creative genius" eliminated
§ 7[a] Procedure for determining obviousness—Factual inquiries to be made
§ 7[b] Procedure for determining obviousness—"Subject matter as a whole" to be considered
§ 7[c] Procedure for determining obviousness—"Hindsight" to be avoided
§ 8 Teachings of prior art, generally
§ 9[a] What constitutes pertinent prior art—Generally; particular references pertinent
§ 9[b] What constitutes pertinent prior art—Particular references not pertinent
§ 10 Effect of ignorance of prior art
§ 11[a] Who is "a person having ordinary skill in the art"—Generally
© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
23 A.L.R. Fed. 326
§ 11[b] Who is "a person having ordinary skill in the art"—Illustrative cases
III Particular indicia of nonobviousness
A Technical considerations
§ 12 Generally; Supreme Court cases
§ 13 Prior art teaching away from invention
§ 14 Skepticism of experts
§ 15 Recognition of significance by experts
§ 16 Absence of prior art references
§ 17 Combination exceeding sum of parts; "synergistic effect" found
§ 18 Effect of absence of unusual or unexpected results
§ 19 Other technical considerations
B Economic or "secondary" considerations
§ 20 In general
§ 21 Failure of others
§ 22 Commercial success
§ 23 Long-felt but unsolved need
§ 24 Commercial acquiescence
§ 25 Copying by others
§ 26 Effect of simultaneous solution
Research References
INDEX
Abandonment of patentable device on experiment effect of § 9[a]
presumption of abandonment arising from failure to make invention publicly
known § 8
Above ground swimming pool, fence surrounding § 13
Absence of unusual or unexpected results, effect of § 18
Absorbing shocks, patent involving simple spring-cushioned hitches for purposes of § 7[c]
Absorptive process, "drying" process as § 17
Acoustics. Noise, infra
Adams case, effect of §§12,13,16,17
Adhesive tape or coating used to package electrical resistors §§9[a],18
"Advance in the art" § 3[c]
Advertising, commercial success arising from § 22
Agriculture. Farming equipment, patents involving, infra
Airplanes and aviation battery-operated electric lamp useful for marking airport runways § 22
cantilever truss used for wing support § 9[a]
data plotting and indicating device for projecting paths of airplanes §§9[a],17
floats or pontoons § 9[b]
Air pollution, valve for automobile engine to prevent § 23
Alignment of filter belts used in sanitation and industrial fields § 19
"All spray saturator" used in production of ammonium sulphate crystals §§14,15,25
Ammonium sulphate, method for production of §§14,15,25
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23 A.L.R. Fed. 326
Page 3
AM sum-and-difference matrixing added to presently existint FM stereo systems § 11[a]
Analog device used in processing of spectrographic data § 16
Anchor-type wall fastener §§7[a],18
Antenna for TV color reception with undirectional performance over wide band width of frequencies § 13
"Anticipated" patent as relating to statutory requirements of novelty of subject matter § 8
Applicable statutory provisions § 1[c]
Application of "clearly erroneous" standard as presenting questions of law and fact § 5[b]
Aquarium filter with magnetic drive couplings, combination patent on § 10
Arduous, long study and experimentation, "flash of genius" test excluding from patentability most mechanical
advances derived from § 6[c]
Aerating stream of water emerging from faucet to prevent splashing §§22,24
Army and Navy, bringing invention to attention of § 12
"Art," defined § 8
Asbestos and wool used as stuffing fibers, process involving § 9[a]
Asphalt "cold joint," invention eliminating need for § 12
concrete, infra
process for mixing of sand and asphalt § 9[a]
Assembly of old elements, difficulty and improbability of finding invention in § 6[a]
Atom bomb, patent on valves for use in development of § 20
Automatic car-washing or cleaning equipment §§7[a],9[b],11[a],17
Automatic cup-dispensing machines, nestable plastic container for use in §§11[a],17,21,22
Automatic latching, spring-loaded trailer hitch §§7[c],11[b]
Automobile equipment. Motor vehicle equipment, infra
Aviation. Airplanes and aviation, supra
Background § 3
"Back scratching" effect, licensing arrangements giving rise to § 24
"Balanced grip" as prevailing concept of grapple structure § 13
Ballistics, expertise in § 11[b]
Barbells consisting of plastic shell filled with concrete § 9[a]
Barn floor flushing arrangement § 14
Batteries Adams battery §§12,13,16,17
electric lamps operated by batteries used for marking airport runways § 22
Beer or soft drink cans, rotary latching for wrap-around cartons of "six-pack" type §§9[a],26
Bicycle seats, design patent on § 11[b]
Biodegradable detergents, patent on § 7[a]
Biological specimens to be sliced for microscopic examination, freezing of § 9[a]
Bituminous concrete, invention eliminating need for "cold joint" used in paving with § 12
Bit used in drilling oil wells, effect of seal for use in § 20
"Blacktop." Asphalt, supra
Blades, patent embracing self-cleaning blade principle § 9[b]
Blow-by control devices on automobiles § 23
Boats, patent on planing boat hull §§9[b],15
Bonding woven fabric backing to waffled sponge rubber, patent relating to method of § 7[a]
23 A.L.R. Fed. 326
Bottles and bottling devices inspecting empty bottles, patent on machine for § 9[a]
lining metal bottle caps § 20
Boxes of collapsible nature, patent involving § 22
Brakes cross-link for handbrake for small rail cars used in mines § 9[a]
power brake unit for motor vehicles, patents relating to § 7[a]
Break-through development in colored television field, experts' immediate recognition of patent as § 15
Bridges, trusses used for support of § 9[a]
Bristles for brush, synthetic filament adapted for use as §§13,24
British patent, effect of § 9[b]
Brush bristles, synthetic filament adapted for use as §§13,24
Bulkhead on freightcar, patent involving § 9[a]
Burden of proof placed upon party attacking validity of patent §§6[a],7[a]
Cabinet industry, hinge for latchless doors useful in § 23
Cables of "push-pull" variety § 23
Cameras for taking of motion pictures, patent involving § 7[c]
Canadian government, practice of tagging poultry encouraged by § 22
Cans, rotary latching action for wrap-around cartons of "six-pack" type used for §§9[a],26
Cantilever truss used for roof support, patent involving § 9[a]
Cardboard strip, machine flaring one edge of § 10
Cartridges consisting of single-reel, endless-magnetic-tape § 7[a]
Cellulose fiber and certain resins, prior studies showing chemical reaction between § 13
Ceramic tile used in gas burner as trade secret not covered by patent § 22
Chairs. Seats and chairs, infra
Character spacing problem in photocomposition techniques § 21
Checks, process for removal of erroneously uncoded magnetic ink characters on § 9[a]
Cheese packaging §§19,21,25
Chemical problem distinguished from data processing problem § 9[a]
Chicken. Poultry and poultry products, infra
Circular knit thermal fabric § 21
"Clearly erroneous" standard, application as presenting questions of law and fact § 5[b]
Clip-on earring pads § 23
Closure devices, patent involving § 9[a]
Coatings and coating processes iron and steel, coating providing corrosion protection § 23
lenses § 6[a]
shoes, process involving application of latex coating to § 9[a]
Coaxial transmission line, tap-off of high frequency signals from § 21
Codification of common law, statutory standards for inventions as § 6[c]
Codification of judicial precedents § 6[a]
Coke oven gas used to produce ammonium sulphate crystals §§14,15,25
Cold-flow properties of nylon anchor in wall fastener, advantages of § 7[a]
"Cold joint" used in paving with "blacktop," elimination of § 12
Collapsible box, patent involving § 22
Collimated light used to space characters in photocomposition § 21
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23 A.L.R. Fed. 326
Color television, patents issued in field of §§13-15
Combination exceeding sum of parts §§17,18
Combination patents ammonium sulphate, production of § 25
aquarium filter with magnetic drive couplings § 10
synergistic effect of § 18
Comment and summary § 2
Commercial acquiescence § 24
Commercial success § 22
Common law, statutory standards for invention as codification of § 6[c]
Common-pins used to package electrical resistors §§9[a],18
Computers spectrographic data, computers used in processing of § 16
speed of traffic violators, electronic computing device used to measure §§16,23
Concentricity gauge, patent involving § 11[b]
Concrete barbells consisting of plastic shell filled with § 9[a]
"cold joint," elimination of necessity for use of § 12
paving concrete highways, mechanism for § 21
Conductors, flexible tie for bundle of electrical conductors § 26
Consent decrees, patent "built up" by wholesale use of § 24
Constitutionality of statutory requirement of nonobvious subject matter §§4,5
Constitutional standard of patentability § 3[c]
Copying by others, generally § 25
Cork particles mixed with latex binder, process involving § 9[a]
Corn huskers, shrimp peeler referenced to § 23
Corrosion protection for iron and steel, coating providing § 23
Corrugated paper board, patent on apparatus for printing on §§9[a],11[b]
Costs of big litigation, small producing units incapable of undertaking § 24
Coupler for freightcar having cushioning effect § 11[a]
Coupling and rod system for rock drills § 13
Credibility of witnesses, opportunity of trial judge to evaluate § 5[b]
Cross-link device for handbrake for mine rail cars related to patent for bulkhead gate § 9[a]
Crying dolls § 23
Cultivator, patent relating to § 9[b]
Cummerbund of universal-size, patent involving § 11[a]
Cuprous chloride and magnesium used as electrodes resulting in improved battery § 12
Cups for nestable plastic container used in automatic dispensing machines §§11[a],17,21,22
Curls, clamps used to maintain § 22
Curved TV screen and matching curved mask § 15
Cushioning effects for freightcar coupler § 11[a]
Data plotting device for projecting onto screen paths of aircraft §§9[a],17
Data processing problem distinguished from mere chemical problem § 9[a]
Decorative appeal of finished plywood § 24
Defeathering of poultry, apparatus and method for §§9[b],14
Demanding standard imposed § 6[b]
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23 A.L.R. Fed. 326
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Design patents above ground swimming pool § 13
bicycle seats § 11[b]
liquid pourer § 7[a]
rack for displaying trousers § 25
railings, device to hold ornamental hand railings offset from posts § 9[a]
reclining chairs § 23
sphygmomanometers § 20
"Desire" of industry, patent fulfilling § 23
Detergents having biodegradable qualities, patents on § 7[a]
Developing definition of "invention" by judicial precedents § 6[a]
Developmental know-how and inventive experimentation, distinguished § 5[c]
Diatomacous earth-filled mats for presses § 11[b]
Difficulty and improbability of finding invention in assembly of old elements § 6[a]
Digital computer used in processing of spectrographic data § 16
Diminishing resources available to humankind, patent as having effect of § 6[a]
Disclosure of innovations, granting monopoly for limited period as incentive to § 6[a]
Dispensing machines, nestable plastic container for cups used in §§11[a],17,21,22
Dolls, patents involving weeping dolls § 23
Doors. Windows and doors, infra
Dredge, commercial success of § 22
Drilling equipment rock drills, coupling and rod system for § 13
seal used in bit of oil well drill § 20
Dryer, apparatus for feeding wood veneer into multi-deck conveyor-type of § 13
Drying and wash towel made of moist paper applicator enclosed in pouch § 17
Early leading cases § 3[a]
Earring pads for clip-on jewelry § 23
Economic or "secondary" considerations §§20-26
Education of groups of persons attempting to solve particular problem resolved by patent, effect of § 11[b]
Ejecting and spraying fibers and other materials with liquid binders before deposit upon surface, patent involving § 9[a]
Electrical conductors, flexible tie for bundle of § 26
Electrical control panel field, slotted wiring duct solving problems in § 7[c]
Electrical resistors, convenient means of packaging §§9[a],18
Electric connectors, multi-contact terminals for § 8
Electrolyte, cuprous chloride and magnesium used in § 12
Electro-optical techniques for detection of foreign objects in empty bottles § 9[a]
Elevators. Loading and unloading equipment, infra
Elimination of "flash of creative genius" § 6[c]
Empty bottles, patent on machine for inspection of § 9[a]
Error committed by judge as person not having ordinary skill in art § 11[b]
Evaporative step, "drying" as § 17
Evidence burden of proof placed upon party attacking validity of patent §§6[a],7[a]
presumptions, infra
23 A.L.R. Fed. 326
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Exchanges on senate floor before passage of patent bill § 6[c]
Expansion anchor, hammer-driven screw-nail used in §§7[a],18
Experience by reason of exposure rather than formalized education, effect of § 11[a]
Experimentation and study, excluding from patentability most mechanical advances derived from § 6[c]
Experimentation of inventive nature and developmental know-how, distinguished § 5[c]
Fabrics. See more specific lines
Fact and law questions presented by statutory requirement of nonobvious subject matter § 5
Factual inquiries pursuant to determination of obviousness § 7[a]
Failure of prior attempts, effect of §§6[a],10,21
Farm equipment, patents involving animal carcasses, apparatus and method for cleaning of § 9[b]
barn floor flushing arrangement § 14
mowing machine § 9[b]
plow shank, patent involving §§6[b],12
poultry and poultry products, infra
silo unloader, patent involving §§9[a],23
Faucet, device used to obtain aerated stream of water from §§22,24
FCC approval of radio system as dampening researchers' incentive § 23
Federal Rules of Civil Procedure, application of §5[b],5[c]
Fence surrounding above ground swimming pool § 13
Fender of automobile, method for placing gasoline tank in § 11[b]
Fiberglass, patents involving §§9[a],17,18,23,26
Filing application for patent on previously discovered invention or improvement, effect of failure to file on subsequent application for same improvement or invention by another person § 10
Fillers used in paper-making, effect of prior art on § 9[a]
Findings of fact arising from application of "clearly erroneous" standard § 5[b]
Finger-operated pump sprayer §§9[a],12
Fish, cleaning of § 9
Flared strip of cardboard, machine creating § 10
"Flash of creative genius", elimination of § 6[c]
Flat sponge, bonding woven fabric backing to § 7[a]
Flexible tie for bundle of electrical conductors § 26
Flexing plowshank, patent involving § 12
Floats or pontoons for seaplanes § 9[b]
Fluid dynamics, adaptation of magnetic coupling to aquarium pumps as elementary to person skilled in field of §
10
FM stereo and radio systems §§10,11[a],23
Foam, lamination of polyurethane foam to fabric by use of flame heat § 11[b]
Foreign objects in empty bottles detected by electro-optical techniques § 9[a]
Foreign patents or protection § 26
Fowl. Poultry and poultry products, infra
Freezing biological specimens for microscopic examination, freezing of § 9[a]
gems, freezing as method for working §§9[a],26
Freightcars. Railroad equipment, infra
23 A.L.R. Fed. 326
Page 8
Fruit rinds, machine to remove § 9[b]
Full fidelity FM stereo radio §§10,11[a],23
Function of patent § 6[a]
Gas burner, commercial success of § 22
Gasoline tank placed in fender of automobile, method for § 11[b]
Gas preservative free of mold-inducing air used in cheese packaging §§19,21,25
Gauge, hole location and concentricity gauge § 11[b]
Gemstones, method and apparatus for holding §§9[a],26
General considerations §§4-11
German patent previously disclosing particular feature, effect of § 9[a]
Glass window panel, patent involving § 21
Good idea as basis for patentability § 8
Governments of United States and Canada encouraging practice of tagging poultry § 22
Graham case, effect of §§6[a],6[c],7[a],17,19,20,23
Graphic and corrugating arts, machines and techniques practice in § 9[a]
Grapple, patent involving §§13,18
Grass growing along railroad tracks, mowing machine to cut § 9[b]
Gravel and rock strainers, shrimp peelers referenced to § 23
Grinding and polishing gemstones, method and apparatus for holding §§9[a],26
Grooving or striating plywood to prevent edge separation § 9[a]
Hair, clamps used to maintain "formed curls" in § 22
Hammer-driven screw-nail for use in expansion anchor, advantages of §§7[a],18
Handbrake for small rail cars used in mines as similar to patent for bulkhead gate § 9[a]
Hand-held cutter employed for fiberglass cutting § 18
Handwarmer, commercial success of § 22
Hangars, trusses used for support of § 9[a]
Hayracks, inventions involving § 7[c]
"He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office" §
6[b]
High frequency signals from coaxial transmission line, tap-off § 21
High speed planing boat hull, patent on §§9[b],15
Highways and roads computer used to apprehend highway speeders §§16,23
paving concrete highways, mechanism for § 21
visibility of markers at night §§15,23
"Hindsight", avoidance of § 7[c]
Hinge for latchless doors, patents on § 23
History of statutes and judicial decisions, effect of § 6[a]
Hitch for trailers, patents involving §§7[c],11[b]
Hogs, apparatus for dehairing and polishing carcasses of § 9[b]
Hole location and concentricity gauge, patent relating to § 11[b]
"Home-made," invention disregarded as § 9[a]
Hostility of judicial decisions toward issuance of patents § 6[a]
Hotchkiss case, effect of §§4,6[a]
Hulls for boats, patents involving §§9[b],15
23 A.L.R. Fed. 326
Humane animal trap, need for development of §§15,23
Huskers for corn machines, shrimp peelers referenced to § 23
Hydraulic power operating dredge § 22
Hypothetical person, question as to what would be obvious to §§10,11[b]
Idea as basis for patentability § 8
Ignorance of prior art, effect of § 10
Illustrative cases involving "person having ordinary skill in the art" § 11[b]
Impartial experts, recognition of significance by § 15
"Impedence," radio electronics problems involving § 13
Improbability of finding invention in assembly of old elements § 6[a]
Improvements made over prior art, effect of §§5[c],6[a]
Incentive monopoly granted for limited period of time as incentive to disclosure of
innovations § 6[a]
radio systems, need for FCC approval as creating dampening effect on researchers'
incentive § 23
"Increased standard" of strictness as to overall test applied to patents § 6[a]
Inferences. Presumptions, infra
Ink fountain for rotary letter press, patent on § 4[b]
Ink, process for removal of erroneously uncoded magnetic ink characters on check § 9[a]
Inquiries made pursuant to determination of obviousness § 7[a]
Insecticide containers and sprayers §§7[b],9[a],12
Insulated piercing pin and screw-jack combined to pierce coaxial cable § 21
Intention of legislature §6[a],6[c]
Interior decorative and acoustical surfaces stuffed by means of non-glass fibers § 9[a]
Introduction §§1-3
"Invention", legislative failure to define § 6[a]
Invertible platform and parallel linkage system used in load elevators for trucks § 18
Iron and steel industries, patents involving §§23,24
Jewelry clip-on earring pads § 23
freezing as method for working gemstones §§9[a],26
Judge's competence to ascertain level of skill in pertinent art, question as to § 11[b]
Judicial precedents codified § 6[a]
Judiciary ill-fitted to discharge technological duties cast upon it by patent legislation § 20
Knitted fabrics, patents involving §§6[c],21
Knowledge abandonment presumed from failure to make invention publicly known § 8
ignorance of prior art, effect of § 10
prior pertinent references or uses of art, inventor's awareness of § 9[a]
vacuum drum filter belt process § 19
Lamination of polyurethane foam to fabric by use of flame heat, patents relating to § 11[b]
Latchless doors, patents on hinge for § 23
Latex coating for shoes, process involving application of § 9[a]
Law and fact questions presented by statutory requirement of nonobvious subject matter § 5
Leg-hold trap, replacement of §§15,23
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23 A.L.R. Fed. 326
Page 10
Legislative history, effect of § 6[a]
Legislative intent, construction of §6[a],6[c]
Lenses, patent claims for coated to prevent reflection § 6[a]
Licenses obtained under patent, effect of § 24
Light dimmer, semi-conductors to provide wall switch for § 20
Lining metal bottle caps, patents involving § 20
Lint, devices used to blow lint off of textile making machinery § 9[b]
Liquid containers having pouring spouts as related to pump sprayers §§9[a],12
Liquid pourer, design patent issued upon § 7[a]
Loading and unloading equipment § 9[a]log loading, grapple used for § 13
ship's cargo, loading gear for § 11[b]
suction silo unloader § 23
truck elevators § 18
Locks on collapsible boxes § 22
Log trailers and loading devices, inventions involving §§7[c],13
Long, arduous study and experimentation, "flash of genius" test excluding from patentability most mechanical
advances derived from § 6[c]
Long-felt but unsolved need, effect of § 23
Magazine articles and other published material, prior art references in §§9[a],10,11[b],23
Magnetic drive couplings, combination patent on aquarium filter equipped with § 10
Magnetic ink characters on check, process for removal of § 9[a]
Magnetic sound recording tapes § 7[a]
Manner in which invention was made, immateriality of § 6[c]
Marine Corps barbell, magazine article pertaining to § 9[a]
Marker for highway pavement visible at night §§15,23
Market-place success of product, inference arising from § 22
Maxims § 6[b]
Meatball mold, patent on § 5[a]
Metal casting and mechanical molding problems § 9[a]
Metal cylindrical rolls of printing press, patent on stereotype mat used in casting of §§9[a],11[b]
Method under which invention was made, immateriality of § 6[c]
Microscopic examination, freezing of biological specimens to be sliced for § 9[a]
Military, bringing invention or improvement to attention of § 12
Mining rail cars, cross-link patent on handbrake for § 9[a]
Missile and star tracking, electronic and optical techniques developed in § 9[a]
Moist paper towelettes performing drying function while remaining moist, nonobviousness of § 17
Mold-free cheese packaging method §§19,21,25
Monophonically compatible full fidelity FM stereo radio §§10,11[a],23
Monopoly granted for limited period as incentive to disclosure of innovations § 6[a]
Motion picture cameras, patent involving § 7[c]
Motor vehicle equipment air pollution by automobile engine, valve to prevent § 23
automatic car-washing or cleaning equipment §§7[a],9[b],11[a],17
computers used to apprehend highway speeders §§16,23
fender of automobile, method for placing gasoline tank in § 11[b]
23 A.L.R. Fed. 326
Page 11
power brake unit, invention relating to § 7[a]
shock absorbers § 24
trucks, infra
weather strip around doors, clip used to mount § 9[a]
wind deflectors attached to corner post of stationwagon § 22
Moving objects, detection techniques developed through missile and star tracking fields § 9[a]
Mowing machine, patent on § 9[b]
Multi-contact terminals for electrical connectors, patent involving § 8
National advertising campaign, commercial success arising from § 22
Naval architecture, skills in § 11[b]
Navy and Army, bringing invention or improvement to attention of § 12
Nestable plastic container for cups used in automatic dispensing machines §§11[a],17,21,22
"New and useful", legislative definition for "invention" limited to § 6[a]
Nighttime, patent on highway markers visible in §§15,23
Noise non-glass fibers used in acoustical surfaces § 9[a]
power roof exhausters, ventilator patents used to reduce noise of § 23
Nylon expansion anchor combined with screw-nail for wall fastener, advantages of §§7[a],18
Obstructions in soil, patent granted on spring clamp hinged to permit plow shank to rise when striking § 6[b]
Obviousness vel non as matter of law § 5[c]
Oil-extended synthetic rubber composition for use in tire treads §§15,23
Oil wells, effect of seal for use in bit used to drill § 20
Old elements, difficulty and improbability of finding invention in assembly of § 6[a]
Onion skinners, shrimp peelers referenced to § 23
Open-end cartons related to six-sixed cartons § 9[a]
Optical and electronic techniques, development of § 9[a]
"Ordinary skill," defined or construed § 11[a]
Outriggers or pontoons for seaplane, patents on § 9[b]
Overhead door, patent application on § 25
Packaging bottles and bottling devices, supra
cheese packaging §§19,21,25
electrical resistors, packaging of §§9[a],18
"six-pack" cartons, rotary latching action for §§9[a],26
tree wrapping machine § 18
Panoramic motion picture camera arrangement, patent involving § 7[c]
Paper and paper products effect of prior art on fillers used in paper-making § 9[a]
printing and printing presses, infra
tensile strength of wet paper, resin to improve § 13
washing and drying towel contained in pouch § 17
Parallel linkage system and invertible platform used in load elevators for trucks § 18
Particular indicia of nonobviousness §§12-26
Paths of airplanes, data plotting and indicating device to project §§9[a],17
Peanut stemmers, shrimp peelers referenced to § 23
23 A.L.R. Fed. 326
Peeling raw shrimp, machine designed for § 23
Peg-making industry, commercial success in § 22
"Person having ordinary skill in the art", who is § 11
Pertinent prior art, what constitutes § 9
Photocomposition patents § 21
Pictorial double face board, making of § 9[a]
Pigs, apparatus for dehairing and polishing carcasses of § 9[b]
Pins used to package electrical resistors §§9[a],18
Planing boat hull, patent involving §§9[b],15
Plastic and plastic-related products § 9[a]barbells consisting of plastic shell filled with concrete § 9[a]
brush bristles, synthetic filament adapted for §§13,24
fiberglass roving § 26
nestable plastic container for use in automatic cup-dispensing machines,
§§11[a],17,21,22
polyurethane foam § 11[b]
"push-pull cable", plastic lining in § 23
simultaneous deposition of fiber reinforced plastic § 15
Plotting device for projecting on screen aircraft paths §§9[a],17
Plow shank hitting obstructions in soil, patent granted upon spring clamp hinged to permit rise of § 6[b]
Plywood §§9[a],24
Polishing and grinding of gemstones, freezing as method to effect §§9[a],26
Pollution valve to prevent unburned hydrocarbons of automobile engine from polluting air § 23
Polymer filament adopted for use as brush bristles §§13,24
Polyurethane foam laminated to fabric by use of flame heat, patents relating to § 11[b]
Pontoons or seaplane floats, patents on § 9[b]
Postcards, patent involving § 7[a]
Poultry and poultry products defeathering apparatus §§9[b],14
tagging of poultry, commercial success in § 22
Pourer of liquids, design patent issued upon § 7[a]
Power brake unit for motor vehicles, patents on § 7[a]
Power piston wad for shotgun shells § 11[b]
Power ventilator industry, patented device reducing noise § 23
Practice pointers § 2[b]
Precedents codified § 6[a]
Present patent laws, senate patent bill creating codification of § 6[c]
Press-in clip for weather stripping home window frames, patent on § 9[a]
Presumptions abandonment presumed from failure to make invention publicly known § 8
commercial success of products strengthening presumption of patent validity § 22
hypothetical person's skill and knowledge § 11[b]
validity of patent, presumption of §§3[b],20,22
Pricing policies as contributing factor to commercial success § 22
Printing and printing presses photocomposition patents § 21
prior art references contained in published materials §§9[a],10,11[b],23
Page 12
23 A.L.R. Fed. 326
ribbon consisting of two layers, patent issued on § 9[a]
rotary printing press, ink fountain for § 4[b]
stereotype mat used in casting metal cylindrical rolls for §§9[a],11[b]
Prior art absence of prior art references § 16
defined or construed §§8,9[a],10,11
teachings of §§8-10
technical consideration of prior art teaching away from invention § 13
Prior attempts to perfect invention, failure of §§6[a],10,21
Procedure for determining obviousness § 7
Public good, patents issued for § 6[a]
Publishing. Printing and printing presses, supra
Pumps and spraying devices ammonium sulphate crystals, production of §§14,15,25
aquarium filters § 10
automatic car wash devices §§7[a],9[b],11[a],17
development of pumps § 20
fiberglass industry, devices useful in §§23,26
finger-operated pump sprayers §§9[a],12
insecticide spraying devices §§7[b],9[a],12
Purpose and effect of statute § 6
"Push-cut" action shears, patent involving § 8
"Push-pull cable" § 23
Questions of law and fact presented by statutory requirement of nonobvious subject matter § 5
Radar coaxial transmission cables, tapping of § 21
Radiant heat burner used in working asphalt pavement, patent involving § 12
Radio and television coaxial transmission cables, piercing of § 21
color TV, patents involving §§13-15
curved screen and matching curved TV mask § 15
stereo-radio systems §§10,11[a],23
"tangible action" on TV screen § 24
Railings, design patent issued on device to hold ornamental hand railings offset from posts § 9[a]
Railroad equipment bulkhead, patent involving § 9[a]
coupler with cushioning effects § 11[a]
grapple designed for use in loading logs on railroad car § 13
grass along tracks, machine for cutting of § 9[b]
rails, devices similar to those formerly used to secure § 9[a]
Rapid advances in technology, effect of § 6[b]
"Reasonable person" in specialized area, emergence of § 11[a]
Reclining chair, patent on new design for § 23
Recognition of significance by experts § 15
Recording or sound equipment, patents on cartridges used for § 7[a]
Records of paths of airplanes, machines to preserve §§9[a],17
Page 13
23 A.L.R. Fed. 326
Reflection, claims of patent for coated lenses to prevent § 6[a]
Reinforced plastics field §§9[a],15
Related fields of art, teachings of prior art as including § 8
Related matters § 1[b]
Removal of erroneously uncoded magnetic ink characters on checks, process consisting of § 9[a]
Resin deposit of fiberglass with resin binder, patent involving § 9[a]
simultaneous deposition of fiber reinforced plastic, methods and apparatus
for § 15
tensile strength of wet paper, resin to improve § 13
Resistors, means of conveniently packaging electrical resistors §§9[a],18
Resources available to humankind, patent as causing diminishment of § 6[a]
Retaining and shoring walls when digging trench, elimination of necessity for § 11[a]
Ribbon for printing purposes consisting of two layers § 9[a]
Rinds of aciduous fruits, machine to remove § 9[b]
Roads. Highways and roads, supra
Rock and gravel strainers, shrimp peeler referenced to § 23
Rock drills, coupling and rod system for § 13
Roof cantilever truss used to support § 9[a]
noise of power roof exhausters, patent to reduce § 23
Rotary latching action for wrap-around cartons of "six-packs," §§9[a],26
"Rotary letter press ink fountain", patent on § 7[b]
Roving §§18,23,26
Royalties paid for use of patent, effect of § 24
Rubber tire treads, oil-extended synthetic rubber composition for use in §§15,23
waffled sponge rubber, bonding woven fabric backing to § 7[a]
Runways at airports, battery-operated electric lamps useful for marking § 22
Sanitation, alignment of filter belts used in § 19
Scales or skin of fish, apparatus for removing § 9
Scope of annotation § 1[a]
Screw-jack and insulated piercing pin combined to pierce coaxial cable § 21
Screw-nail expander for wall fastener, patent on §§7[a],18
Seaplane floats or pontoons, patents on § 9[b]
Seats and chairs bicycle seats, design patent on § 11[b]
reclining chair, design patent involving § 23
"Secondary" or economic considerations §§20-26
Self-cleaning mowing machine, patent on § 9[b]
Semi-conductors to provide wall switch dimmer for lights § 20
Senate floor exchanges prior to passage of patent bill § 6[c]
Shears providing "push-cut" action, patent involving § 8
Ship's cargo loading gear, patent involving § 11[b]
Shock absorbers §§7[c],24
Shoes, process involving application of latex coating to § 9[a]
Page 14
23 A.L.R. Fed. 326
Page 15
Shotgun shells, power piston wad for § 11[b]
Shrimp, machine designed to clean §§16,23
Significance recognized by experts § 15
Silo unloader, patent involving §§9[a],23
Simultaneous deposition of fiber reinforced plastic, methods and apparatus for § 15
Simultaneous ejectment and spraying of fibers and other materials with liquid binders before deposit upon surface § 9[a]
Simultaneous solution, effect of § 26
Single-reel, endless-magnetic-tape cartridge, patents on § 7[a]
"Six-pack" carriers for beer or soft drink cans, rotary latching action for wrap-around cartons for §§9[a],26
Skepticism of experts § 14
Skillful advertising, commercial success arising from § 22
"Slavish imitation" of certain elements of patentee's invention § 25
Slotted wiring duct, expert testimony as to obviousness of § 7[c]
Small animals, swing frame trap for catching §§15,23
Small boat high speed planing hull §§9[b],15
Small producing units incapable of undertaking costs of large litigation § 24
Social and economic factors as reason for commercial success § 22
Soft drink cans or beer, rotary latching for wrap-around cartons of "six-pack" type §§9[a],26
Solenoid restricter valve in water line of automobile cleaning equipment apparatus, advantages of § 7[a]
Solvent for magnetic ink § 9[a]
Sound reproduction, patents on cartridges used for purposes of § 7[a]
Specialized "reasonable person," emergence of § 11[a]
Spectrographic data, method and apparatus for processing of § 16
Speed of traffic violators, electronic computing device used to measure §§16,23
Sphygmomanometer, design patent on § 20
Sponge, process for bonding woven fabric backing to § 7[a]
Sprayers. Pumps and spraying devices, supra
Spring clamp hinged to permit plow shank to rise when hitting obstructions in soil §§6[b],12
Spring-loaded, automatic latching trailer hitch §§7[c],11[b]
Stacker ring for plastic cups, patent involving §§11[a],17,21,22
Star and missile tracking, development of electronic and optical techniques in fields of § 9[a]
Stationwagon, wind deflectors attached to rear corner posts of § 22
Statutes application of § 1[c]
nonobvious subject matter, statutory requirement of §§4,5
purpose and effect of § 6
Steel and iron industries, patents involving §§23,24
Stereo systems, patents involving §§10,11[a],23
Stereotype mat used in casting metal cylindrical rolls for printing press §§9[a],11[b]
Straight pins used for packaging electrical resistors §§9[a],18
Streets. Highways and roads, supra
Striating plywood to prevent edge separation, patent on method of § 9[a]
Strictness of overall test applied to patents, change in §6[a],6[b]
Study and experimentation, excluding from patentability most mechanical advances derived from § 6[c]
23 A.L.R. Fed. 326
Page 16
"Subject matter as a whole" considered pursuant to determination of obviousness § 7[b]
Suction silo unloader §§9[a],23
Sugar cane, British patent on machine used for cutting of § 9[b]
Summary and comment § 2
Sum of parts, combination exceeding §§17,18
Superior workmanship, commercial success arising from § 22
Supreme Court cases involving technical considerations § 12
Swimming pools §§13,22
Swing frame animal trap §§15,23
"Synergistic effect" found §§17,18
"Tangible action" on TV screen § 24
Tap-off of high frequency signals from coaxial transmission line § 21
Teachings of prior art §§8-10
Technical considerations of indicia of nonobviousness §§12-19
Technology, effect of rapid advances in § 6[b]
Television. Radio and television, supra
Tensile strength of wet paper, method employing use of resin to increase § 13
"Thermal break" window and door frames § 11[b]
Thermodynamics, elementary knowledge of § 11[b]
Time of invention, obviousness or nonobviousness determined as of § 7[c]
Tire treads, oil-extended synthetic rubber composition for use in §§15,23
Tooth positioner, patent on §§9[a],22
Toy, invention compared to § 9[a]
Trade secret not covered by patent § 22
Trailer hitch, patents involving §§7[c],11[b]
Traps, swing frame animal trap §§15,23
Tree wrapping machine § 18
Trench shoring machine, patent involving § 11[a]
Trial judge's competence to ascertain level of skill, question as to § 11[b]
Trigger mechanism in animal traps §§15,23
Trouser rack for display purposes, design patent on § 25
Trucks fasteners § 20
grapple designed for loading logs on § 13
load elevators § 18
Truss used for bridge or roof support, patent involving § 9[a]
United States Government encouraging practice of tagging poultry § 22
Universal-size cummerbund, patent involving § 11[a]
Unloading equipment. Loading and unloading equipment, supra
Vacuum created at flat-ended rear of forward moving stationwagon, wind deflectors designed to dissipate § 22
Vacuum drum filter belt process § 19
Validity of patent, presumption of §§3[b],20,22
Valves air pollution from automobile engine, valve to prevent § 23
atom bomb, valves used in development of § 20
23 A.L.R. Fed. 326
Page 17
Veneer, machine for feeding into multiple-deck conveyor-type dryer § 13
Ventilating systems noise reduction device § 23
valves designed to prevent pollution by automobile engine § 23
Waffled sponge rubber, patent relating to method of bonding woven fabric backing to § 7[a]
Walls dimmer for lights, semi-conductors to provide switch for § 20
fastener composed of nylon and cylindrical screw-nail §§7[a],18
sphygmomanometers mounted on, design patent involving § 20
trench shoring machine eliminating necessity for repeated retaining and
shoring of § 11[a]
Washing and drying towel made from moist paper applicator enclosed in pouch § 17
Washing equipment for automatic car-wash §§7[a],9[b],11[a],17
Water, method of treating bodies of § 5[b]
Waterskiing, patent on device to aid learning of § 6[a]
Weather-stripping home window frames or automobiles, patent on press-in clip for § 9[a]
Weeping doll § 23
"Wet batteries," Adams battery superior to § 12
What constitutes pertinent prior art § 9
Who is "a person having ordinary skill in the art" § 11
Wind deflectors attached to corner post of stationwagon § 22
Windows and doors glass window panel, patent involving § 21
hinge for latchless doors § 23
overhead door § 25
press-in clip for application of weather strip to § 9[a]
"thermal break" window and door frames § 11[b]
Wings of airplane, cantilever truss used for support of § 9[a]
Wood veneer, machine for feeding into multiple-deck conveyor-type dryer § 13
Wool and asbestos used as stuffing fibers, process involving § 9[a]
Workmanship, commercial success arising from § 22
Wrap-around cartons of "six-pack" carriers, patent relating to rotary latching action for §§9[a],26
Table of Cases, Laws, and Rules
United States
28 U.S.C.A. § 1338(a). See 1[a]
35 U.S.C.A. §§ 101 and 102. See 4
35 U.S.C.A. § 101. See 7[b]
35 U.S.C.A. § 102. See 1[c], 6[a], 8, 13, 26
35 U.S.C.A. § 102(b). See 12
35 U.S.C.A. § 103. See 1[c], 2[a], 3[a], 3[c], 4, 5[a], 5[b], 5[c], 6[a], 6[b], 6[c], 7[a], 7[b], 7[c], 8, 9[a],
23 A.L.R. Fed. 326
Page 18
9[b], 10, 11[a], 11[b], 12, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26
35 U.S.C.A. §§ 103(a), 282. See 7[b]
35 U.S.C.A. § 103(a). See 4, 5[a], 5[c], 6[a], 7[a], 7[b], 7[c], 8, 9[a], 9[b], 11[a], 12, 13, 17, 18, 19, 20,
21, 25
35 U.S.C.A. § 282. See 3[b]
Supreme Court
Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S. Ct. 305, 24 L. Ed. 2d 258
(1969) — 3[c], 6[a], 7[a], 11[a], 12, 17
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S. Ct. 971, 103 L. Ed. 2d 118 (1989)
— 6[a], 18
Carsonite International Corporation v. Carson Manufacturing Company, Inc., 460 U.S. 1052, 103 S. Ct.
1499, 75 L. Ed. 2d 930 (1983) — 7[a]
Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S. Ct. 37, 86 L. Ed. 58 (1941) —
3[a], 6[b], 6[c]
Dann v. Johnston, 425 U.S. 219, 96 S. Ct. 1393, 47 L. Ed. 2d 692 (1976) — 8, 9[a], 15, 20
Densmore v. Scofield, 102 U.S. 375, 26 L. Ed. 214, 1880 WL 18799 (1880) — 6[b]
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 551 U.S. 1113, 127 S. Ct. 2937,
168 L. Ed. 2d 262 (2007) — 19
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 122 S. Ct. 1831, 152 L. Ed.
2d 944 (2002) — 16
Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 64 S. Ct. 593, 88 L. Ed. 721 (1944) —
3[a], 5[a]
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) — 2[a],
3[b], 3[c], 4, 5[a], 6[a], 6[b], 6[c], 7[b], 8, 9[a], 10, 11[a], 12, 17, 19, 20, 23
Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S. Ct. 127, 95 L. Ed.
162 (1950) — 2[a], 3[a], 5[a], 6[a], 18
Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S. Ct. 127, 95 L. Ed.
162 (1950) — 17
Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 86 S. Ct. 335, 15 L. Ed. 2d 304 (1965) — 10
Hollister v. Benedict & Burnham Mfg. Co., 113 U.S. 59, 5 S. Ct. 717, 28 L. Ed. 901 (1885) — 3[a]
Hotchkiss v. Greenwood, 52 U.S. 248, 11 How. 248, 13 L. Ed. 683, 1850 WL 6799 (1850) — 3[a], 4,
23 A.L.R. Fed. 326
Page 19
6[a]
KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007) — 12
Lear, Inc. v. Adkins, 395 U.S. 653, 89 S. Ct. 1902, 23 L. Ed. 2d 610 (1969) — 6[b]
Marco Dental Products, Inc. v. Austin, 435 U.S. 918, 98 S. Ct. 1477, 55 L. Ed. 2d 511 (1978) — 17
Marconi Wireless T. Co. of America v. U.S., 320 U.S. 1, 63 S. Ct. 1393, 87 L. Ed. 1731 (1943) — 20
Molins Machine Co., Inc. v. Rengo Co., Ltd., 454 U.S. 1055, 102 S. Ct. 600, 70 L. Ed. 2d 591 (1981)
— 7[a]
Parker v. Flook, 437 U.S. 584, 98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978) — 7[b]
Reckendorfer v. Faber, 92 U.S. 347, 23 L. Ed. 719, 1875 WL 17811 (1875) — 6[b]
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S. Ct. 1532, 47 L. Ed. 2d 784 (1976) — 4, 5[a], 9[a], 18
Shaw v. Cooper, 32 U.S. 292, 8 L. Ed. 689, 1833 WL 4186 (1833) — 6[b]
U.S. v. Adams, 383 U.S. 39, 86 S. Ct. 708, 15 L. Ed. 2d 572 (1966) — 11[a], 12, 13, 14, 15, 16, 17
U.S. v. Esnault-Pelterie, 303 U.S. 26, 58 S. Ct. 412, 82 L. Ed. 625 (1938) — 5[a]
Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S. Ct. 1040, 137 L. Ed. 2d
146 (1997) — 16
First Circuit
A & H Mfg. Co., Inc. v. Contempo Card Co., Inc., 576 F. Supp. 894 (D.R.I. 1983) — 20, 22
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 339 F. Supp. 2d 202 (D. Mass. 2004) — 7[a], 20
Arrow Intern., Inc. v. Spire Biomedical, Inc., 635 F. Supp. 2d 46 (D. Mass. 2009) — 9[a]
Avant, Inc. v. Polaroid Corp., 572 F.2d 889 (1st Cir. 1978) — 8, 22
Candela Laser Corp. v. Cynosure, Inc., 862 F. Supp. 632 (D. Mass. 1994) — 8
Colortronic Reinhard & Co., K.G. v. Plastic Controls, Inc., 668 F.2d 1 (1st Cir. 1981) — 19
Colourpicture Publishers, Inc. v. Mike Roberts Color Productions, Inc., 394 F.2d 431 (1st Cir. 1968) —
7[a]
Columbia Broadcasting System v. Sylvania Elec. Products, Inc., 415 F.2d 719 (1st Cir. 1969) — 14, 15,
24
Columbia University in City of New York, Trustees of v. Roche Diagnostics GmbH, 272 F. Supp. 2d 90
(D. Mass. 2002) — 8, 11[a], 19, 21
23 A.L.R. Fed. 326
Page 20
Custom Paper Products Co. v. Atlantic Paper Box Co., 469 F.2d 178, 16 Fed. R. Serv. 2d 1356 (1st Cir.
1972) — 10
Dale Electronics, Inc. v. R. C. L. Electronics, Inc., 488 F.2d 382 (1st Cir. 1973) — 3[b]
Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 526 F. Supp. 2d 162 (D. Mass. 2007) — 13
Diomed, Inc. v. AngioDynamics, Inc., 450 F. Supp. 2d 130 (D. Mass. 2006) — 8
Golf Tech, LLC v. Edens Technologies, LLC, 592 F. Supp. 2d 167 (D. Me. 2009) — 11[a]
Insight Technology Inc. v. SureFire, LLC, 447 F. Supp. 2d 120, 2004 DNH 120 (D.N.H. 2006) — 5[a],
8, 20
International Tel. & Tel. Corp. v. Raychem Corp., 538 F.2d 453 (1st Cir. 1976) — 5[a], 17
Inverness Medical Switzerland GmbH v. Acon Laboratories, Inc., 323 F. Supp. 2d 227 (D. Mass. 2004)
— 7[a]
Koppers Co. v. Foster Grant Co., 396 F.2d 370 (1st Cir. 1968) — 19
Mangosoft, Inc. v. Oracle Corp., 421 F. Supp. 2d 392, 2006 DNH 30 (D.N.H. 2006) — 5[a], 7[a]
Metaframe Corp. v. Biozonics Corp., 352 F. Supp. 1006 (D. Mass. 1972) — 7[a], 8, 10
NewRiver, Inc. v. Newkirk Products, Inc., 674 F. Supp. 2d 320 (D. Mass. 2009) — 5[a], 8
Omegaflex, Inc. v. Parker Hannifin Corp., 425 F. Supp. 2d 171 (D. Mass. 2006) — 7[a], 8
Polaroid Corp. v. Eastman Kodak Co., 519 F. Supp. 381 (D. Mass. 1981) — 22
Potter Instrument Co., Inc. v. Odec Computer Systems, Inc., 499 F.2d 209 (1st Cir. 1974) — 8
Printguard, Inc. v. Anti-Marking Systems, Inc., 535 F. Supp. 2d 189 (D. Mass. 2008) — 7[a]
R.H. Murphy Co., Inc. v. Illinois Tool Works, Inc., 409 F. Supp. 2d 53 (D. Mass. 2006) — 7[a], 8, 20
Rosen v. Lawson-Hemphill, Inc., 549 F.2d 205 (1st Cir. 1976) — 5[a], 15, 17
Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355 (1st Cir. 1977) — 9[a], 18, 22, 23
Shields-Jetco, Inc. v. Torti, 314 F. Supp. 1292 (D.R.I. 1970) — 11[a], 20, 25
Second Circuit
Alloc, Inc. v. Norman D. Lifton Co., 653 F. Supp. 2d 469 (S.D. N.Y. 2009) — 5[a]
Alza Corp. v. Mylan Laboratories, Inc., 310 F. Supp. 2d 610 (D. Vt. 2004) — 8, 11[a], 13, 17, 20
American Cyanamid Co. v. U.S. Surgical Corp., 833 F. Supp. 92 (D. Conn. 1992) — 5[c], 8
23 A.L.R. Fed. 326
Page 21
American Permahedge, Inc. v. Barcana, Inc., 857 F. Supp. 308 (S.D. N.Y. 1994) — 8
Arriflex Corp. v. Aaton Cameras, Inc., 220 U.S.P.Q. 424, 1983 WL 64844 (S.D. N.Y. 1983) — 16
Astra Aktiebolag v. Andrx Pharmaceuticals, Inc., 222 F. Supp. 2d 423 (S.D. N.Y. 2002) — 7[a]
Burgess Cellulose Co. v. Wood Flong Corp., 431 F.2d 505 (2d Cir. 1970) — 9[a], 11[b]
Cargill, Inc. v. Sears Petroleum & Transport Corp., 388 F. Supp. 2d 37 (N.D. N.Y. 2005) — 7[b]
Champion Spark Plug Co. v. Gyromat Corp., 603 F.2d 361 (2d Cir. 1979) — 21
Continental Can Co. v. Old Dominion Box Co., 393 F.2d 321 (2d Cir. 1968) — 9[a], 26
Corporate Communications Consultants, Inc. v. Columbia Pictures Industries, Inc., 576 F. Supp. 1429
(S.D. N.Y. 1983) — 13, 22
Deering, Milliken & Co. v. Temp-Resisto Corp., 274 F.2d 626 (2d Cir. 1960) — 22
Dennison Mfg. Co. v. Ben Clements and Sons, Inc., 467 F. Supp. 391 (S.D. N.Y. 1979) — 7[a], 9[a], 17
, 19, 26
Dielectric Laboratories, Inc. v. American Technical Ceramics, 545 F. Supp. 292 (E.D. N.Y. 1982) —
7[a], 9[a], 17
Digitronics Corp. v. New York Racing Ass'n, Inc., 553 F.2d 740 (2d Cir. 1977) — 9[a], 18, 22, 23
E. J. Brooks Co. v. Stoffel Seals Corp., 266 F.2d 841 (2d Cir. 1959) — 22
Eutectic Corp. v. Metco, Inc., 579 F.2d 1 (2d Cir. 1978) — 13, 22
Federal Sign & Signal Corp. v. Bangor Punta Operations, Inc., 357 F. Supp. 1222 (S.D. N.Y. 1973) —
16, 23
Formal Fashions, Inc. v. Braiman Bows, Inc., 369 F.2d 536 (2d Cir. 1966) — 11[a]
Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.2d 124 (2d Cir. 1958) — 9[a], 24
Indiana General Corp. v. Krystinel Corp., 421 F.2d 1023 (2d Cir. 1970) — 10
Infosint, S.A. v. H. Lundbeck A/S, 612 F. Supp. 2d 405 (S.D. N.Y. 2009) — 8
Interconnect Planning Corp. v. Feil, 543 F. Supp. 610 (S.D. N.Y. 1982) — 7[a], 8
Jamesbury Corp. v. Litton Indus. Products, Inc., 586 F.2d 917 (2d Cir. 1978) — 17
Ken Wire & Metal Products, Inc. v. Columbia Broadcasting Systems, Inc., 338 F. Supp. 624 (S.D. N.Y.
1971) — 11[b]
Kwik Products, Inc. v. National Exp., Inc., 356 F. Supp. 2d 303 (S.D. N.Y. 2005) — 7[a], 8
23 A.L.R. Fed. 326
Page 22
Lancaster Colony Corp. v. Aldon Accessories, Ltd., 506 F.2d 1197 (2d Cir. 1974) — 9[b], 25
Leighton Technologies LLC v. Oberthur Card Systems, S.A., 423 F. Supp. 2d 425 (S.D. N.Y. 2006) —
7[a]
Leinoff v. Louis Milona & Sons, Inc., 556 F. Supp. 273 (S.D. N.Y. 1982) — 17
Lerner v. Child Guidance Products, Inc., 547 F.2d 29 (2d Cir. 1976) — 8, 25
Leviton Mfg. Co. v. Slater Elec., Inc., 331 F. Supp. 395 (E.D. N.Y. 1970) — 20
Liberty Leather Products Co., Inc. v. VT Intern. Ltd., 894 F. Supp. 136 (S.D. N.Y. 1995) — 7[a]
Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263 (2d Cir. 1967) — 9[a], 17
Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., 208 F. Supp. 2d 344 (E.D. N.Y. 2002) — 13
Lorenz v. F. W. Woolworth Co., 305 F.2d 102 (2d Cir. 1962) — 23
Louis Marx & Co., Inc. v. Buddy L Corp., 453 F. Supp. 392 (S.D. N.Y. 1978) — 7[b]
Lyon v. Bausch & Lomb Optical Co., 224 F.2d 530 (2d Cir. 1955) — 6[a]
Medinol Ltd. v. Guidant Corp., 412 F. Supp. 2d 301 (S.D. N.Y. 2005) — 7[a], 7[b], 8, 9[a], 11[a], 20
Neato, LLC v. Rocky Mountain Traders, 138 F. Supp. 2d 245 (D. Conn. 2001) — 7[a]
Nippon Elec. Glass Co., Ltd. v. Sheldon, 539 F. Supp. 542 (S.D. N.Y. 1982) — 7[a], 11[a]
Norman v. Lawrence, 285 F.2d 505 (2d Cir. 1960) — 23
Omega Engineering, Inc. v. Cole-Parmer Instrument Co., 198 F. Supp. 2d 152 (D. Conn. 2002) — 7[a]
Omeprazole Patent Litigation, In re, 490 F. Supp. 2d 381 (S.D. N.Y. 2007) — 16
On-Line Technologies, Inc. v. Perkin-Elmer Corp., 428 F. Supp. 2d 67 (D. Conn. 2006) — 4
Papyrus Technology Corp. v. New York Stock Exchange, LLC, 653 F. Supp. 2d 402 (S.D. N.Y. 2009)
— 5[a], 11[a], 20
Pass & Seymour, Inc. v. Hubbell Inc., 532 F. Supp. 2d 418 (N.D. N.Y. 2007) — 7[a]
Perricone v. Medicis Pharmaceutical Corp., 539 F. Supp. 2d 571 (D. Conn. 2008) — 22
Pfizer, Inc. v. Perrigo Co., 988 F. Supp. 686 (S.D. N.Y. 1997) — 16, 20
Plantronics, Inc. v. Roanwell Corp., 535 F.2d 1397 (2d Cir. 1976) — 22
Preuss v. General Elec. Co., 392 F.2d 29 (2d Cir. 1968) — 5[c], 10, 11[a], 23
Pullman Inc. v. ACF Industries Inc., 393 F.2d 83 (2d Cir. 1968) — 11[a]
23 A.L.R. Fed. 326
Page 23
Rains v. Niaqua, Inc., 406 F.2d 275 (2d Cir. 1969) — 13, 22
Reeves Bros., Inc. v. U.S. Laminating Corp., 282 F. Supp. 118 (E.D. N.Y. 1968) — 11[b], 26
Reiner v. I. Leon Co., 285 F.2d 501 (2d Cir. 1960) — 6[a], 22
Rogers Corp. v. Arlon, Inc., 855 F. Supp. 560 (D. Conn. 1994) — 7[b]
Sanofi-Synthelabo v. Apotex Inc., 492 F. Supp. 2d 353 (S.D. N.Y. 2007) — 8
Sanofi-Synthelabo v. Apotex Inc., 488 F. Supp. 2d 317 (S.D. N.Y. 2006) — 7[b]
Scanner Technologies Corp. v. Icos Vision Systems Corp., N.V., 486 F. Supp. 2d 330 (S.D. N.Y. 2007)
— 5[a]
Scanner Technologies Corp. v. Icos Vision Systems Corp., N.V., 253 F. Supp. 2d 624 (S.D. N.Y. 2003)
— 17
Schimizzi v. Chrysler Corp., 462 F. Supp. 630 (S.D. N.Y. 1978) — 26
S.C. Johnson & Son, Inc. v. Carter-Wallace, Inc., 614 F. Supp. 1278 (S.D. N.Y. 1985) — 13, 15, 20, 22
Sears Ecological Applications Co., LLC v. MLI Associates, LLC, 652 F. Supp. 2d 244 (N.D. N.Y.
2009) — 5[a]
Shackelton v. J. Kaufman Iron Works, Inc., 689 F.2d 334 (2d Cir. 1982) — 17, 21, 22, 23
Shaw v. E. B. & A. C. Whiting Co., 417 F.2d 1097 (2d Cir. 1969) — 5[b], 7[c], 13, 20, 24, 25
Stryker Corp. v. Intermedics Orthopedics, Inc., 891 F. Supp. 751 (E.D. N.Y. 1995) — 16
Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc., 417 F. Supp. 2d 341 (S.D. N.Y. 2006) —
7[a], 8, 11[a]
Teleflex Inc. v. American Chain & Cable Co., 273 F. Supp. 573 (S.D. N.Y. 1967) — 23
Timely Products Corp. v. Arron, 523 F.2d 288 (2d Cir. 1975) — 8, 21, 22
Turner v. Montgomery Ward & Co., 556 F. Supp. 344 (E.D. N.Y. 1982) — 18
Upjohn Co. v. Medtron Laboratories, Inc., 800 F. Supp. 1181 (S.D. N.Y. 1992) — 7[a]
U.S. Philips Corp. v. Iwasaki Elec. Co., Ltd., 607 F. Supp. 2d 470 (S.D. N.Y. 2009) — 8
U. S. Philips Corp. v. National Micronetics Inc., 550 F.2d 716 (2d Cir. 1977) — 5[a], 22, 23
W. A. Baum Co. v. Propper Mfg. Co., 343 F. Supp. 1016 (E.D. N.Y. 1972) — 20
Welsh Mfg. Co. v. Sunware Products Co., 236 F.2d 225 (2d Cir. 1956) — 23
Yamanouchi Pharmaceutical Co. v. Danbury Pharmacal, Inc., 21 F. Supp. 2d 366 (S.D. N.Y. 1998) —
23 A.L.R. Fed. 326
Page 24
7[c], 8
Third Circuit
ADE Corp. v. KLA-Tencor Corp., 220 F. Supp. 2d 303 (D. Del. 2002) — 7[a]
ADM Corp. v. Speedmaster Packaging Corp., 525 F.2d 662, 21 Fed. R. Serv. 2d 223 (3d Cir. 1975) —
5[c]
Advanced Medical Optics, Inc. v. Alcon, Inc., 361 F. Supp. 2d 404 (D. Del. 2005) — 8, 11[a], 21, 22,
23
Agrizap, Inc. v. Woodstream Corp., 431 F. Supp. 2d 518 (E.D. Pa. 2006) — 7[a]
Allegheny Drop Forge Co. v. Portec, Inc., 541 F.2d 383 (3d Cir. 1976) — 9[a]
Allen-Bradley Co. v. Air Reduction Co., 273 F. Supp. 930 (W.D. Pa. 1967) — 9[a], 18
Allen Industries, Inc. v. National Sponge Cushion, Inc., 292 F. Supp. 504 (D.N.J. 1967) — 5[a], 7[a]
Altana Pharma AG v. Teva Pharmaceuticals USA, Inc., 532 F. Supp. 2d 666 (D.N.J. 2007) — 7[a]
Aluminum Co. of America v. Amerola Products Corp., 552 F.2d 1020 (3d Cir. 1977) — 18, 21
Alza Corp. v. Andrx Pharmaceuticals, LLC, 607 F. Supp. 2d 614 (D. Del. 2009) — 5[c]
American Cyanamid Co. v. Hercules Inc., 260 F. Supp. 368 (D. Del. 1966) — 13
American Standard Inc. v. Pfizer Inc., 722 F. Supp. 86 (D. Del. 1989) — 8
American Sterilizer Co. v. Sybron Corp., 614 F.2d 890 (3d Cir. 1980) — 10
Ampex Corp. v. Eastman Kodak Co., 461 F. Supp. 2d 232 (D. Del. 2006) — 5[a], 8
AMP, Inc. v. Fujitsu Microelectronics, Inc., 853 F. Supp. 808 (M.D. Pa. 1994) — 11[a]
Applera Corp. v. Micromass UK Ltd., 204 F. Supp. 2d 724 (D. Del. 2002) — 7[a], 8, 11[a]
Astrazeneca AB v. Mutual Pharmaceutical Co., Inc., 278 F. Supp. 2d 491 (E.D. Pa. 2003) — 8, 17
AstraZeneca LP v. Apotex, Inc., 623 F. Supp. 2d 579 (D.N.J. 2009) — 8
Atlas Copco Aktiebolag v. Ingersoll-Rand Co., 279 F. Supp. 783 (D.N.J. 1967) — 3[b]
Austin Powder Co. v. Atlas Powder Co., 568 F. Supp. 1294 (D. Del. 1983) — 11[a]
Baut v. Pethick Const. Co., 262 F. Supp. 350 (M.D. Pa. 1966) — 21
Bayer AG v. Dr. Reddy's Laboratories, Ltd., 518 F. Supp. 2d 617 (D. Del. 2007) — 7[a]
BOC Health Care, Inc. v. Nellcor Inc., 892 F. Supp. 598 (D. Del. 1995) — 19
23 A.L.R. Fed. 326
Page 25
Boehringer Ingelheim Animal Health, Inc. v. Schering-Plough Corp., 984 F. Supp. 239 (D.N.J. 1997)
— 7[a], 7[c]
Borden Co. v. Clearfield Cheese Co., 369 F.2d 96 (3d Cir. 1966) — 7[a]
Boston Scientific Scimed, Inc. v. Cordis Corp., 434 F. Supp. 2d 308 (D. Del. 2006) — 21
Brimonidine Patent Litigation, In re, 666 F. Supp. 2d 429 (D. Del. 2009) — 19
California Medical Products, Inc. v. Tecnol Medical Products, Inc., 921 F. Supp. 1219 (D. Del. 1995)
—8
Callaway Golf Co. v. Acushnet Co., 585 F. Supp. 2d 600 (D. Del. 2008) — 10
Continental Can Co. v. Crown Cork & Seal Co., 415 F.2d 601 (3d Cir. 1969) — 20
Corning Inc. v. SRU Biosystems, 400 F. Supp. 2d 653 (D. Del. 2005) — 7[a], 8, 19
Cosden Oil & Chemical Co. v. American Hoechst Corp., 543 F. Supp. 522 (D. Del. 1982) — 8
Daiichi Pharmaceutical Co., Ltd. v. Apotex, Inc., 441 F. Supp. 2d 672 (D.N.J. 2006) — 13
Daiichi Pharmaceutical Co., Ltd. v. Apotex, Inc., 380 F. Supp. 2d 478 (D.N.J. 2005) — 8
Discovision Associates v. Disc Mfg., Inc., 25 F. Supp. 2d 301 (D. Del. 1998) — 7[c], 8
Eaton Corp. v. Parker-Hannifin Corp., 292 F. Supp. 2d 555 (D. Del. 2003) — 7[a], 13
Eli Lilly and Co. v. Premo Pharmaceutical Laboratories, Inc., 630 F.2d 120 (3d Cir. 1980) — 7[b]
eSpeed, Inc. v. Brokertec USA, L.L.C., 404 F. Supp. 2d 575 (D. Del. 2005) — 11[a]
Everett Laboratories, Inc. v. Breckenridge Pharmaceutical, Inc., 573 F. Supp. 2d 855 (D.N.J. 2008) —
5[a], 7[a], 22
Fisher-Price, Inc. v. Safety 1st, Inc., 279 F. Supp. 2d 530, 51 U.C.C. Rep. Serv. 2d 341 (D. Del. 2003)
—8
Forest Laboratories, Inc. v. Ivax Pharmaceuticals, Inc., 237 F.R.D. 106 (D. Del. 2006) — 21
Fuji Photo Film Co. Ltd. v. Jazz Photo Corp. Inc., 173 F. Supp. 2d 268 (D.N.J. 2001) — 4
General Battery Corp. v. Gould, Inc., 545 F. Supp. 731 (D. Del. 1982) — 11[a], 11[b]
General Elec. Co. v. Nintendo Co., Ltd., 983 F. Supp. 512 (D.N.J. 1997) — 8
Genzyme Corp. v. Atrium Medical Corp., 315 F. Supp. 2d 552 (D. Del. 2004) — 19
GNB Battery Technologies, Inc. v. Exide Corp., 876 F. Supp. 605 (D. Del. 1995) — 7[a]
GNB Battery Technologies, Inc. v. Exide Corp., 876 F. Supp. 582 (D. Del. 1995) — 7[b]
23 A.L.R. Fed. 326
Page 26
Grayzel v. St. Jude Medical, Inc., 345 F. Supp. 2d 466 (D.N.J. 2004) — 7[a]
Hadco Products, Inc. v. Walter Kidde & Co., 462 F.2d 1265 (3d Cir. 1972) — 6[b]
Honeywell Intern., Inc. v. Hamilton Sundstrand Corp., 166 F. Supp. 2d 1008 (D. Del. 2001) — 7[a]
Honeywell Intern., Inc. v. Universal Avionics Systems Corp., 343 F. Supp. 2d 272 (D. Del. 2004) —
7[a], 7[c]
Honeywell Intern., Inc. v. Universal Avionics Systems Corp., 288 F. Supp. 2d 638 (D. Del. 2003) — 8
IGT v. Bally Gaming Intern., Inc., 610 F. Supp. 2d 288 (D. Del. 2009) — 9[a]
Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 333 F. Supp. 2d 265 (D. Del. 2004) — 7[a],
11[a]
Imperial Chemical Industries, PLC v. Danbury Pharmacal, Inc., 777 F. Supp. 330 (D. Del. 1991) — 8,
18
Imperial Chemical Industries, PLC v. Henkel Corp., 545 F. Supp. 635 (D. Del. 1982) — 8
IMX, Inc. v. LendingTree, LLC, 405 F. Supp. 2d 479 (D. Del. 2005) — 7[a], 9[a], 20
Isco Intern., Inc. v. Conductus, Inc., 279 F. Supp. 2d 489 (D. Del. 2003) — 8, 14
Janssen Pharmaceutica N.V. v. Mylan Pharmaceuticals, Inc., 456 F. Supp. 2d 644 (D.N.J. 2006) — 20
Jenn-Air Corp. v. Penn Ventilator Co., 464 F.2d 48 (3d Cir. 1972) — 23
Johns Hopkins University v. CellPro, 894 F. Supp. 819 (D. Del. 1995) — 9[a]
Jones Knitting Corp. v. Morgan, 361 F.2d 451 (3d Cir. 1966) — 6[c], 21
Joy Technologies, Inc. v. Flakt, Inc., 820 F. Supp. 802 (D. Del. 1993) — 8
Judkins v. HT Window Fashions Corp., 624 F. Supp. 2d 427 (W.D. Pa. 2009) — 8
Kao Corp. v. Unilever U.S., Inc., 334 F. Supp. 2d 527 (D. Del. 2004) — 8, 11[a], 13, 14, 15, 17, 18, 19,
21, 22, 23, 25, 26
Keiser v. J. Wiss & Sons Co., 340 F. Supp. 41 (D.N.J. 1972) — 8
Key Pharmaceuticals, Inc. v. Hercon Laboratories Corp., 981 F. Supp. 299 (D. Del. 1997) — 19
Lang v. Prescon Corp., 545 F. Supp. 933 (D. Del. 1982) — 7[a], 8
L. D. Schreiber Cheese Co., Inc. v. Clearfield Cheese Co., Inc., 540 F. Supp. 1128 (W.D. Pa. 1982) —
7[a], 9[a]
LP Matthews LLC v. Bath & Body Works, Inc., 458 F. Supp. 2d 198 (D. Del. 2006) — 7[a], 8
23 A.L.R. Fed. 326
Page 27
Matsushita Elec. Indus. Co., Ltd. v. Cinram Intern., Inc., 299 F. Supp. 2d 348 (D. Del. 2004) — 8, 13,
14, 20, 21, 24, 25
McNeil-PPC, Inc. v. L. Perrigo Co., 207 F. Supp. 2d 356 (E.D. Pa. 2002) — 8, 19
Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 288 F. Supp. 2d 601 (D. Del. 2003) — 8, 21, 24
Merck & Co., Inc. v. TEVA Pharmaceuticals USA, Inc., 228 F. Supp. 2d 480 (D. Del. 2002) — 5[a]
Modern Millinery Box Corp. v. Boas Box Co., 219 F. Supp. 615 (E.D. Pa. 1963) — 22
Moleculon Research Corp. v. CBS, Inc., 594 F. Supp. 1420 (D. Del. 1984) — 7[a], 7[b]
Muniauction, Inc. v. Thomson Corp., 502 F. Supp. 2d 477 (W.D. Pa. 2007) — 5[c]
National Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 254 F. Supp. 2d 527 (E.D. Pa. 2003) — 9[b],
11[a], 20, 21, 25
Northern Engineering and Plastics Corp. v. Eddy, 652 F.2d 333 (3d Cir. 1981) — 9[a]
Novelart Mfg. Co. v. Carlin Container Corp., 363 F. Supp. 58 (D.N.J. 1973) — 9[a]
Novozymes A/S v. Genencor Intern., Inc., 446 F. Supp. 2d 297 (D. Del. 2006) — 7[a]
Omark Industries, Inc. v. Colonial Tool Co., Inc., 672 F.2d 362 (3d Cir. 1982) — 7[a], 18
Oracle Corp. v. Parallel Networks, LLP, 588 F. Supp. 2d 549 (D. Del. 2008) — 20
Ortho-McNeil Pharmaceutical, Inc. v. Kali Laboratories, Inc., 482 F. Supp. 2d 478 (D.N.J. 2007) —
9[a]
Oxford Gene Technology Ltd. v. Mergen Ltd., 345 F. Supp. 2d 444 (D. Del. 2004) — 9[a]
Oxford Gene Technology Ltd. v. Mergen Ltd., 345 F. Supp. 2d 431 (D. Del. 2004) — 7[a], 8
Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d 870 (3d Cir. 1977) — 8
PBI Performance Products, Inc. v. NorFab Corp., 514 F. Supp. 2d 732 (E.D. Pa. 2007) — 8, 9[a]
Pfizer Inc. v. Ranbaxy Laboratories Ltd., 405 F. Supp. 2d 495 (D. Del. 2005) — 7[a]
Pfizer Inc. v. Teva Pharmaceuticals USA, Inc., 482 F. Supp. 2d 390 (D.N.J. 2007) — 9[a]
Pfizer Inc. v. Teva Pharmaceuticals USA, Inc., 460 F. Supp. 2d 655 (D.N.J. 2006) — 18
Pfizer Inc. v. Teva Pharmaceuticals USA, Inc., 460 F. Supp. 2d 650 (D.N.J. 2006) — 20, 23
Philips Electronics North America Corp. v. Contec Corp., 312 F. Supp. 2d 632 (D. Del. 2004) — 5[c]
Power Integrations, Inc. v. Fairchild Semiconductor Intern., Inc., 585 F. Supp. 2d 568 (D. Del. 2008) —
20
23 A.L.R. Fed. 326
Page 28
Procter & Gamble Co. v. Paragon Trade Brands, Inc., 989 F. Supp. 547 (D. Del. 1997) — 7[c], 9[a],
9[b], 11[a], 20, 22, 25, 26
Purdue Pharma Products L.P. v. Par Pharmaceutical, Inc., 642 F. Supp. 2d 329 (D. Del. 2009) — 8
Regents of University of California v. Howmedica, Inc., 530 F. Supp. 846 (D.N.J. 1981) — 20
Rengo Co. Ltd. v. Molins Mach. Co., Inc., 657 F.2d 535, 60 A.L.R. Fed. 534 (3d Cir. 1981) — 7[a]
Rhenalu v. Alcoa, Inc., 224 F. Supp. 2d 773 (D. Del. 2002) — 19
R. M. Palmer Co. v. Luden's, Inc., 236 F.2d 496 (3d Cir. 1956) — 6[c]
Schering Corp. v. Precision-Cosmet Co., Inc., 614 F. Supp. 1368 (D. Del. 1985) — 13
Scimed Life Systems, Inc. v. Johnson & Johnson, 225 F. Supp. 2d 422 (D. Del. 2002) — 5[a]
Scott Paper Co. v. Moore Business Forms, Inc., 594 F. Supp. 1051 (D. Del. 1984) — 5[b], 5[c]
Sims v. Mack Truck Corp., 608 F.2d 87 (3d Cir. 1979) — 11[b]
Solarex Corp. v. Arco Solar, Inc., 805 F. Supp. 252 (D. Del. 1992) — 7[a]
Stanley Works v. McKinney Mfg. Co., 520 F. Supp. 1101 (D. Del. 1981) — 2[b]
Studiengesellschaft Kohle mbH v. Dart Industries, Inc., 549 F. Supp. 716 (D. Del. 1982) — 7[c]
Syngenta Seeds, Inc. v. Monsanto Co., 404 F. Supp. 2d 594 (D. Del. 2005) — 7[a], 20
Systematic Tool & Mach. Co. v. Walter Kidde & Co., Inc., 555 F.2d 342 (3d Cir. 1977) — 9[a], 11[a]
Telcordia Technologies, Inc. v. Cisco Systems, Inc., 592 F. Supp. 2d 727 (D. Del. 2009) — 7[a]
Thomas & Betts Corp. v. Winchester Electronics Division of Litton Systems, Inc., 519 F. Supp. 1191
(D. Del. 1981) — 9[a], 25
318 Patent Infringement Litigation, In re, 578 F. Supp. 2d 711 (D. Del. 2008) — 5[a], 7[a]
Tokyo Shibaura Elec. Co., Ltd. v. Zenith Radio Corp., 548 F.2d 88 (3d Cir. 1977) — 5[c], 8, 21, 22
Trio Process Corp. v. L. Goldstein's Sons, Inc., 461 F.2d 66 (3d Cir. 1972) — 7[b]
Tristrata Technology, Inc. v. ICN Pharmaceuticals, Inc., 313 F. Supp. 2d 405 (D. Del. 2004) — 8, 11[a]
, 20
Tyco Industries, Inc. v. Tiny Love, Ltd., 914 F. Supp. 1068 (D.N.J. 1996) — 7[a], 7[c]
Universal Athletic Sales Co. v. American Gym, Recreational & Athletic Equipment Corp., Inc., 546
F.2d 530 (3d Cir. 1976) — 9[a], 14
U. S. Expansion Bolt Co. v. Jordan Industries, Inc., 488 F.2d 566, 23 A.L.R. Fed. 316 (3d Cir. 1973) —
23 A.L.R. Fed. 326
Page 29
7[a], 18, 20
Warner-Lambert Co. v. Teva Pharmaceuticals USA, 289 F. Supp. 2d 515 (D.N.J. 2003) — 8, 9[b]
Wesley Jessen Corp. v. Bausch & Lomb, Inc., 209 F. Supp. 2d 348 (D. Del. 2002) — 20
W. L. Gore & Associates, Inc. v. Carlisle Corp., 529 F.2d 614, 41 A.L.R. Fed. 941 (3d Cir. 1976) — 23
Worthington v. Southern New Jersey Newspapers, Inc., 323 F. Supp. 443 (D.N.J. 1970) — 7[b]
Ziggity Systems, Inc. v. Val Watering Systems, 769 F. Supp. 752 (E.D. Pa. 1990) — 7[a], 11[a]
Fourth Circuit
Alza Corp. v. Mylan Laboratories, Inc., 388 F. Supp. 2d 717 (N.D. W. Va. 2005) — 7[a]
Applied Material, Inc. v. Tokyo Seimitsu, Co., Ltd., 446 F. Supp. 2d 538 (E.D. Va. 2006) — 7[b]
Beloit Corp. v. J.M. Voith, GmbH, 626 F. Supp. 991 (E.D. Va. 1986) — 7[a]
Blohm and Voss AG v. Prudential-Grace Lines, Inc., 489 F.2d 231 (4th Cir. 1973) — 6[b], 11[b]
Blumcraft of Pittsburgh v. Citizens and Southern Nat. Bank of S. C., 407 F.2d 557 (4th Cir. 1969) —
9[a]
Brown v. Brock, 240 F.2d 723 (4th Cir. 1957) — 23
Contech Stormwater Solutions, Inc. v. Baysaver Technologies, Inc., 534 F. Supp. 2d 616 (D. Md. 2008)
— 7[c]
CVI/Beta Ventures, Inc. v. Custom Optical Frames, Inc., 893 F. Supp. 508 (D. Md. 1995) — 13
Deering Milliken Research Corp. v. Beaunit Corp., 538 F.2d 1022 (4th Cir. 1976) — 5[a], 22
Diamond Intern. Corp. v. Maryland Fresh Eggs, Inc., 523 F.2d 113 (4th Cir. 1975) — 9[a]
Diversified Products Corp. v. Sports Stores, Inc., 294 F. Supp. 375 (D. Md. 1968) — 8, 9[a]
Emergency Fuel, LLC v. Pennzoil-Quaker State Co., 293 F. Supp. 2d 569 (D. Md. 2003) — 7[a], 8
Entron of Md., Inc. v. Jerrold Electronics Corp., 295 F.2d 670 (4th Cir. 1961) — 21
Geneva Pharmaceuticals, Inc. v. Glaxosmithkline PLC., 213 F. Supp. 2d 597 (E.D. Va. 2002) — 11[a]
Honolulu Oil Corp. v. Shelby Poultry Co., 293 F.2d 127 (4th Cir. 1961) — 9[b], 14, 21
Kabushiki Kaisha Audio-Technica v. Atlantis Sound, Inc., 629 F.2d 978 (4th Cir. 1980) — 7[a]
Leviton Mfg. Co., Inc. v. Universal Sec. Instruments, Inc., 304 F. Supp. 2d 726 (D. Md. 2004) — 8, 21
Mahaffy & Harder Engineering Co. v. Standard Packaging Corp., 389 F.2d 525 (4th Cir. 1968) — 5[b]
23 A.L.R. Fed. 326
Page 30
Maschinenfabrik Rieter, A. G. v. Greenwood Mills, 340 F. Supp. 1103 (D.S.C. 1972) — 7[c]
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., 348 F. Supp. 2d 713 (N.D. W. Va.
2004) — 7[a]
Otto v. Koppers Co., 246 F.2d 789 (4th Cir. 1957) — 14, 15, 22, 25
Oxy Metal Industries Corp. v. Roper Corp., 579 F. Supp. 664 (D. Md. 1984) — 3[b]
Pacific Furniture Mfg. Co. v. Preview Furniture Corp., 626 F. Supp. 667 (M.D. N.C. 1985) — 22
Perfection-Cobey Co., Division of Harsco Corp. v. City Tank Corp., 597 F.2d 419 (4th Cir. 1979) — 8
Plasser American Corp. v. Canron, Inc., 546 F. Supp. 589 (D.S.C. 1980) — 17, 21, 22
Porter-Cable Mach. Co. v. Black & Decker Mfg. Co., 402 F.2d 517 (4th Cir. 1968) — 5[b]
S. H. Kress & Co. v. Aghnides, 246 F.2d 718 (4th Cir. 1957) — 22, 24
Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 185 F. Supp. 2d 588 (D. Md. 2002)
— 7[a], 9[a]
Technograph Printed Circuits, Ltd. v. Martin-Marietta Corp., 474 F.2d 798 (4th Cir. 1973) — 20
Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 21 Fed. R. Serv. 2d 1405 (4th Cir. 1976) — 5[a],
22
Fifth Circuit
Ag Pro, Inc. v. Sakraida, 474 F.2d 167 (5th Cir. 1973) — 14
Amerace Esna Corp. v. Highway Safety Devices, Inc., 330 F. Supp. 313 (N.D. Tex. 1971) — 15, 23
Antici v. KBH Corp., 324 F. Supp. 236 (N.D. Miss. 1971) — 7[c], 11[b]
Arbrook, Inc. v. American Hosp. Supply Corp., 202 U.S.P.Q. 676, 1977 WL 22742 (N.D. Tex. 1977) —
16
Benchcraft, Inc. v. Broyhill Furniture Industries, Inc., 681 F. Supp. 1190 (N.D. Miss. 1988) — 17, 22
Bird Provision Co. v. Owens Country Sausage, Inc., 568 F.2d 369 (5th Cir. 1978) — 9[a], 11[b]
Cathodic Protection Service v. American Smelting & Refining Co., 594 F.2d 499 (5th Cir. 1979) —
9[a]
Control Components, Inc. v. Valtek, Inc., 609 F.2d 763 (5th Cir. 1980) — 16
Courtesy Communications Corp. v. C-Five, Inc., 455 F. Supp. 1183 (N.D. Tex. 1978) — 7[a]
Dow Chemical Co. v. American Cyanamid Co., 615 F. Supp. 471 (E.D. La. 1985) — 3[b]
23 A.L.R. Fed. 326
Page 31
Ebeling v. Pak-Mor Mfg. Co., 683 F.2d 909 (5th Cir. 1982) — 7[a], 20
Eudy v. Motor-Guide, Herschede Hall Clock Co., 651 F.2d 299 (5th Cir. 1981) — 9[a]
Fred Whitaker Co. v. E. T. Barwick Industries, Inc., 551 F.2d 622 (5th Cir. 1977) — 9[a], 18, 26
Gaddis v. Calgon Corp., 506 F.2d 880 (5th Cir. 1975) — 22
Garrett Corp. v. American Safety Flight Systems, Inc., 502 F.2d 9 (5th Cir. 1974) — 7[a]
Hobbs v. U.S., Atomic Energy Commission, 451 F.2d 849 (5th Cir. 1971) — 3[b], 20
Ingersoll-Rand Co. v. Brunner & Lay, Inc., 474 F.2d 491 (5th Cir. 1973) — 13
John Zink Co. v. National Airoil Burner Co., Inc., 613 F.2d 547 (5th Cir. 1980) — 19, 23
Kori Corp. v. Wilco Marsh Buggies and Draglines, Inc., 708 F.2d 151 (5th Cir. 1983) — 17
Laitram Corp. v. Deepsouth Packing Co., 443 F.2d 928 (5th Cir. 1971) — 16
Medical Designs, Inc. v. Medical Technology, Inc., 786 F. Supp. 614 (N.D. Tex. 1992) — 20, 21, 23,
24, 25
MICR-Shield Co. v. First Nat. Bank of Miami, 404 F.2d 157 (5th Cir. 1968) — 9[a]
Minton v. National Ass'n of Securities Dealers, Inc., 226 F. Supp. 2d 845 (E.D. Tex. 2002) — 9[a]
Neutrino Development Corp. v. Sonosite, Inc., 410 F. Supp. 2d 529 (S.D. Tex. 2006) — 7[a]
Neutrino Development Corp. v. Sonosite, Inc., 337 F. Supp. 2d 942 (S.D. Tex. 2004) — 8
Parker v. Motorola, Inc., 524 F.2d 518 (5th Cir. 1975) — 5[a], 18
Reed Tool Co. v. Dresser Industries, Inc., 672 F.2d 523 (5th Cir. 1982) — 5[a], 7[a], 20
Robbins Co. v. Dresser Industries, Inc., 554 F.2d 1289 (5th Cir. 1977) — 11[a]
Sel-O-Rak Corp. v. Henry Hanger & Display Fixture Corp. of America, 232 F.2d 176 (5th Cir. 1956) —
25
Smith Industries Intern. v. Hughes Tool Co., 396 F.2d 735 (5th Cir. 1968) — 20
Southwestern Bell Telephone, L.P. v. Arthur Collins, Inc., 464 F. Supp. 2d 588 (N.D. Tex. 2006) — 8
Steelcase, Inc. v. Delwood Furniture Co., Inc., 578 F.2d 74, 26 Fed. R. Serv. 2d 190 (5th Cir. 1978) —
9[a], 19, 22
Transocean Offshore Deepwater Drilling, Inc. v. GlobalSantaFe Corp., 443 F. Supp. 2d 836 (S.D. Tex.
2006) — 17, 20
Tri-Collar, Inc. v. Reamco, Inc., A Division of Sun Oil Co., 538 F. Supp. 669 (W.D. La. 1982) — 17
23 A.L.R. Fed. 326
Page 32
Union Carbide Corp. v. Dow Chemical Co., 682 F.2d 1136 (5th Cir. 1982) — 8
Van Gorp Mfg., Inc. v. Townley Indus. Plastics, Inc., 464 F.2d 16 (5th Cir. 1972) — 17
Wentworth v. Gulton Industries, Inc., 578 F. Supp. 508 (N.D. Tex. 1982) — 9[a]
White v. Mar-Bel, Inc., 509 F.2d 287 (5th Cir. 1975) — 21, 22
Whitehall Corp. v. Western Geophysical Co. of America, 664 F. Supp. 1056 (S.D. Tex. 1986) — 7[a],
7[b]
Whitley v. Road Corp., 624 F.2d 698 (5th Cir. 1980) — 7[a]
Yoder Bros., Inc. v. California-Florida Plant Corp., 537 F.2d 1347 (5th Cir. 1976) — 8
Zero Mfg. Co. v. Mississippi Milk Producers Ass'n, 358 F.2d 853 (5th Cir. 1966) — 23
Sixth Circuit
Alco Standard Corp. v. Tennessee Valley Authority, 597 F. Supp. 133 (W.D. Tenn. 1984) — 7[b]
American Seating Co. v. National Seating Co., 586 F.2d 611 (6th Cir. 1978) — 5[b], 5[c], 18, 20
Automotive Technologies Intern. v. BMW of North America, Inc., 378 F. Supp. 2d 780 (E.D. Mich.
2005) — 7[a], 8, 9[a], 11[a], 18, 21, 22, 23, 25
Bendix Corp. v. Freeland Gauge Co., 407 F.2d 1293 (6th Cir. 1969) — 5[b]
Buzzelli v. Minnesota Mining & Mfg. Co., 480 F.2d 541 (6th Cir. 1973) — 7[a], 11[b]
Cardinal of Adrian, Inc. v. Peerless Wood Products, Inc., 363 F. Supp. 1298 (E.D. Mich. 1973) — 23
Christiana Industries v. Empire Electronics, Inc., 443 F. Supp. 2d 870 (E.D. Mich. 2006) — 13
Cleveland Fabricating Co. v. Adsure, Inc., 298 F. Supp. 1275 (N.D. Ohio 1968) — 8, 26
Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828 (6th Cir. 1956) — 23, 24
Eisele v. St. Amour, 423 F.2d 135 (6th Cir. 1970) — 11[b]
Eltra Corp. v. Basic Inc., 599 F.2d 745 (6th Cir. 1979) — 16
Emerson Elec. Co. v. Spartan Tool, LLC, 223 F. Supp. 2d 856 (N.D. Ohio 2002) — 7[a]
Foseco Intern. Ltd. v. Fireline Inc., 607 F. Supp. 1537 (N.D. Ohio 1984) — 13, 22, 23
General Motors Corp. v. Estate Stove Co., 203 F.2d 912 (6th Cir. 1953) — 6[a]
General Motors Corp. v. Toyota Motor Co., Ltd., 667 F.2d 504 (6th Cir. 1981) — 7[a]
General Motors Corp. v. Toyota Motor Co., Ltd., 467 F. Supp. 1142 (S.D. Ohio 1979) — 9[a], 20
23 A.L.R. Fed. 326
Page 33
General Tire & Rubber Co. v. Firestone Tire & Rubber Co., 489 F.2d 1105 (6th Cir. 1973) — 15, 23
Hanson v. Alpine Valley Ski Area, Inc., 611 F.2d 156 (6th Cir. 1979) — 16, 22
Henrob Ltd. v. Böllhoff Systemtechnick GmbH & Co., 625 F. Supp. 2d 524 (E.D. Mich. 2008) — 7[b]
Indian Head Industries, Inc. v. Ted Smith Equipment Co., Inc., 859 F. Supp. 1095 (E.D. Mich. 1994) —
8
Johns-Manville Corp. v. Guardian Industries Corp., 586 F. Supp. 1034 (E.D. Mich. 1983) — 7[b]
Kaiser Industries Corp. v. McLouth Steel Corp., 400 F.2d 36 (6th Cir. 1968) — 5[c]
Kearney & Trecker Corp. v. Cincinnati Milacron Inc., 562 F.2d 365 (6th Cir. 1977) — 17
Lacks Industries, Inc. v. McKechnie Vehicle Components USA, Inc., 55 F. Supp. 2d 702 (E.D. Mich.
1999) — 8
Minnesota Min. and Mfg. Co. v. Blume, 684 F.2d 1166 (6th Cir. 1982) — 7[a], 15
Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 8 Fed. R. Serv. 2d
38A.1, Case 2 (6th Cir. 1964) — 3[b], 5[c], 8
National Latex Products Co. v. Sun Rubber Co., 274 F.2d 224 (6th Cir. 1959) — 21, 23, 25
National Rolled Thread Die Co. v. E. W. Ferry Screw Products, Inc., 541 F.2d 593 (6th Cir. 1976) — 8
Nickola v. Peterson, 580 F.2d 898, 3 Fed. R. Evid. Serv. 177 (6th Cir. 1978) — 5[a], 5[c], 18, 22
Oatey Co. v. IPS Corp., 665 F. Supp. 2d 830 (N.D. Ohio 2009) — 20
Old Reliable Wholesale, Inc. v. Cornell Corp., 609 F. Supp. 2d 742 (N.D. Ohio 2009) — 7[b]
Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 298 F. Supp. 435 (W.D. Mich. 1969) — 7[c]
Park-Ohio Industries, Inc. v. Letica Corp., 617 F.2d 450 (6th Cir. 1980) — 18
Reynolds Metal Co. v. Acorn Bldg. Components, Inc., 548 F.2d 155 (6th Cir. 1977) — 5[a], 14, 18, 22
Rogers v. Desa Intern., Inc., 166 F. Supp. 2d 1202 (E.D. Mich. 2001) — 7[a]
Rolls-Royce Ltd. v. GTE Valeron Corp., 625 F. Supp. 343 (E.D. Mich. 1985) — 7[a]
Sadler-Cisar, Inc. v. Commercial Sales Network, Inc., 786 F. Supp. 1287 (N.D. Ohio 1991) — 7[a], 8,
11[a]
Semmler v. American Honda Co., Inc., 990 F. Supp. 967 (S.D. Ohio 1997) — 9[a]
Smith v. ACME General Corp., 614 F.2d 1086 (6th Cir. 1980) — 7[a], 17
Teleflex Inc. v. KSR Intern. Co., 298 F. Supp. 2d 581 (E.D. Mich. 2003) — 13, 20
23 A.L.R. Fed. 326
Page 34
Torin Corp. v. Philips Industries, Inc., 625 F. Supp. 1077 (S.D. Ohio 1985) — 17
TWM Mfg. Co., Inc. v. Dura Corp., 722 F.2d 1261 (6th Cir. 1983) — 17
U.S. Gypsum Co. v. Dale Industries Inc., 383 F.2d 497 (6th Cir. 1967) — 3[b]
USM Corp. v. Detroit Plastic Molding Co., 536 F. Supp. 902 (E.D. Mich. 1982) — 3[b], 8
Verve, L.L.C. v. Crane Cams, Inc., 395 F. Supp. 2d 558 (E.D. Mich. 2005) — 7[a], 19
Weatherchem Corp. v. J.L. Clark, Inc., 937 F. Supp. 1262 (N.D. Ohio 1996) — 7[c]
Seventh Circuit
Abbott Laboratories v. Sandoz, Inc., 529 F. Supp. 2d 893 (N.D. Ill. 2007) — 7[a]
Abbott Laboratories v. Sandoz, Inc., 500 F. Supp. 2d 846 (N.D. Ill. 2007) — 13
Abbott Laboratories v. Sandoz, Inc., 500 F. Supp. 2d 807 (N.D. Ill. 2007) — 13
A.B. Dick Co. v. Burroughs Corp., 617 F. Supp. 1382 (N.D. Ill. 1985) — 7[a]
Allen Group, Inc. v. Nu-Star, Inc., 575 F.2d 146 (7th Cir. 1978) — 18
All States Plastic Mfg. Co., Inc. v. Weckesser Co., Inc., 362 F. Supp. 94 (N.D. Ill. 1973) — 26
American Standard, Inc. v. York Intern. Corp., 244 F. Supp. 2d 990 (W.D. Wis. 2002) — 13
Ashland Oil, Inc. v. Delta Oil Products Corp., 685 F.2d 175, 11 Fed. R. Evid. Serv. 827 (7th Cir. 1982)
— 20
Beatrice Foods Co. v. Tsuyama Mfg. Co., 619 F.2d 3 (7th Cir. 1979) — 9[a]
Best Lock Corp. v. ILCO Unican Corp., 896 F. Supp. 836 (S.D. Ind. 1995) — 23
Black & Decker Inc. v. Robert Bosch Tool Corp., 476 F. Supp. 2d 887 (N.D. Ill. 2007) — 8
Blaw-Knox Co. v. I. D. Lain Co., 230 F.2d 373 (7th Cir. 1956) — 21
Bontrager v. Steury Corp., 457 F. Supp. 526 (N.D. Ind. 1978) — 7[a], 7[c], 18
Briggs & Stratton Corp. v. Kohler Co., 398 F. Supp. 2d 925 (W.D. Wis. 2005) — 8
Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740 (7th Cir. 1982) — 13, 19
Burland v. Trippe Mfg. Co., 543 F.2d 588 (7th Cir. 1976) — 7[a], 8, 18
Canaan Products, Inc. v. Edward Don & Co., 388 F.2d 540 (7th Cir. 1968) — 17
Carboline Co. v. Mobil Oil Corp., 301 F. Supp. 141 (N.D. Ill. 1969) — 23
23 A.L.R. Fed. 326
Page 35
Centsable Products, Inc. v. Lemelson, 591 F.2d 400 (7th Cir. 1979) — 7[a], 8
Chicago Rawhide Mfg. Co. v. Crane Packing Co., 523 F.2d 452 (7th Cir. 1975) — 5[a], 22
Cloud v. Standard Packaging Corp., 376 F.2d 384 (7th Cir. 1967) — 7[a]
Continental Oil Co. v. Witco Chemical Corp., 484 F.2d 777 (7th Cir. 1973) — 7[a]
Depuy Inc. v. Zimmer Holdings, Inc., 343 F. Supp. 2d 675 (N.D. Ill. 2004) — 8
Dickey-john Corp. v. International Tapetronics Corp., 710 F.2d 329 (7th Cir. 1983) — 22
Dual Mfg. & Engineering, Inc. v. Burris Industries, Inc., 202 U.S.P.Q. 708, 1979 WL 25021 (7th Cir.
1979) — 5[b]
E-T Industries, Inc. v. Whittaker Corp., 523 F.2d 636 (7th Cir. 1975) — 19
Eli Lilly and Co. v. Teva Pharmaceuticals USA, Inc., 609 F. Supp. 2d 786 (S.D. Ind. 2009) — 5[a]
Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 364 F. Supp. 2d 820 (S.D. Ind. 2005) — 7[a]
, 8, 9[a], 11[a], 22
Ellipse Corp. v. Ford Motor Co., 452 F.2d 163 (7th Cir. 1971) — 21
Endress + Hauser, Inc. v. Hawk Measurement Systems Pty. Ltd., 892 F. Supp. 1107 (S.D. Ind. 1995) —
19
Erie Technological Products, Inc. v. Die Craft Metal Products, Inc., 461 F.2d 5 (7th Cir. 1972) — 11[b]
Fisher-Barton Blades, Inc. v. Blount, Inc., 584 F. Supp. 2d 1126 (E.D. Wis. 2008) — 8
For Your Ease Only, Inc. v. Natural Science Industries, Inc., 233 F. Supp. 2d 988 (N.D. Ill. 2002) —
7[b]
Freeman v. Hammond Corp., 464 F. Supp. 404 (N.D. Ill. 1978) — 7[a]
Gass v. Montgomery Ward & Co., 387 F.2d 129 (7th Cir. 1967) — 5[c], 7[a]
General American Transp. Corp. v. Cryo-Trans, Inc., 893 F. Supp. 774 (N.D. Ill. 1995) — 22
General Elec. Co. v. SonoSite, Inc., 641 F. Supp. 2d 793 (W.D. Wis. 2009) — 5[a]
Gettelman Mfg. Inc. v. Lawn "N' Sport Power Mower Sales & Service, Inc., 517 F.2d 1194 (7th Cir.
1975) — 5[a]
Glaros v. H.H. Robertson Co., 615 F. Supp. 186 (N.D. Ill. 1985) — 7[a]
Glaros v. H.H. Robertson Co., 600 F. Supp. 342 (N.D. Ill. 1984) — 8
Glaxo Group Ltd. v. Apotex, Inc., 268 F. Supp. 2d 1013 (N.D. Ill. 2003) — 7[c], 8, 11[a], 12
23 A.L.R. Fed. 326
Page 36
Great Northern Corp. v. Henry Molded Products, Inc., 864 F. Supp. 865 (E.D. Wis. 1994) — 21
Haberman v. Playtex Products, Inc., 403 F. Supp. 2d 708 (W.D. Wis. 2005) — 5[a], 8
Henkel Corp. v. Coral, Inc., 754 F. Supp. 1280 (N.D. Ill. 1990) — 21, 22, 23, 24, 25
Illinois Tool Works, Inc. v. Continental Can Co., 273 F. Supp. 94 (N.D. Ill. 1967) — 11[a]
Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 436 F.2d 1180 (7th Cir. 1971) — 17, 21, 22
Indiana Mills & Mfg., Inc. v. Dorel Industries Inc., 458 F. Supp. 2d 890 (S.D. Ind. 2006) — 7[a]
John O. Butler Co. v. Block Drug Co., Inc., 620 F. Supp. 771 (N.D. Ill. 1985) — 7[a]
Kennatrack Corp. v. Stanley Works, 216 F. Supp. 394 (N.D. Ill. 1961) — 22
Kimberly-Clark Corp. v. Johnson & Johnson, 573 F. Supp. 1179 (N.D. Ill. 1983) — 8
Leach v. Badger Northland, Inc., 385 F.2d 193 (7th Cir. 1967) — 23
Leach v. Rockwood & Co., 273 F. Supp. 779 (W.D. Wis. 1967) — 9[a], 10, 20
Lee Blacksmith, Inc. v. Lindsay Bros., Inc., 605 F.2d 341 (7th Cir. 1979) — 17
Louis A. Grant, Inc. v. Keibler Industries, Inc., 191 U.S.P.Q. 424, 1976 WL 21190 (7th Cir. 1976) —
9[a], 11[a], 18, 22
Malsbary Mfg. Co. v. ALD, Inc., 447 F.2d 809 (7th Cir. 1971) — 9[b], 11[a], 17
Manufacturers Systems, Inc. v. ADM Industries, Inc., 615 F.2d 741 (7th Cir. 1979) — 9[a]
Matherson-Selig Co. v. Carl Gorr Color Card, Inc., 301 F. Supp. 336 (N.D. Ill. 1967) — 20
McKee Door Co. v. Forest Door Co., 284 F.2d 809 (7th Cir. 1960) — 25
Mooney v. Brunswick Corp., 489 F. Supp. 544 (E.D. Wis. 1980) — 8
National Business Systems, Inc. v. AM Intern., Inc., 546 F. Supp. 340 (N.D. Ill. 1982) — 7[c], 17
National Dairy Products Corp. v. Borden Co., 394 F.2d 887 (7th Cir. 1968) — 7[c], 19, 21, 23, 25
Nordberg Inc. v. Telsmith, Inc., 881 F. Supp. 1252 (E.D. Wis. 1995) — 8
Novo Indus. Corp. v. Standard Screw Co., 374 F.2d 824 (7th Cir. 1967) — 5[b], 23
Panduit Corp. v. Burndy Corp., 517 F.2d 535 (7th Cir. 1975) — 23
Paper Converting Mach. Co. v. Magna-Graphics Corp., 680 F.2d 483 (7th Cir. 1982) — 11[a], 20
Pederson v. Stewart-Warner Corp., 536 F.2d 1179 (7th Cir. 1976) — 5[a], 18
23 A.L.R. Fed. 326
Page 37
Photon, Inc. v. Eltra Corp., 308 F. Supp. 133 (N.D. Ill. 1969) — 21
Procter & Gamble Co. v. McNeil-PPC, Inc., 615 F. Supp. 2d 832 (W.D. Wis. 2009) — 7[a]
Remcor Products Co. v. Scotsman Group, Inc., 860 F. Supp. 568 (N.D. Ill. 1994) — 7[b]
Republic Industries, Inc. v. Schlage Lock Co., 592 F.2d 963 (7th Cir. 1979) — 7[a], 9[a], 17
Reynolds Metals Co. v. Aluminum Co. of America, 609 F.2d 1218 (7th Cir. 1979) — 9[a]
Reynolds Metals Co. v. Aluminum Co. of America, 457 F. Supp. 482 (N.D. Ind. 1978) — 17
Roberts v. Sears, Roebuck & Co., 723 F.2d 1324 (7th Cir. 1983) — 5[a], 11[a], 19
Roche Diagnostics Corp. v. Selfcare Inc., 233 F. Supp. 2d 1038 (S.D. Ind. 2002) — 7[a]
Rockwell v. Midland-Ross Corp., 438 F.2d 645 (7th Cir. 1971) — 7[a]
Se-Kure Controls, Inc. v. Diam USA, Inc., 662 F. Supp. 2d 1006 (N.D. Ill. 2009) — 8
Shemitz v. Deere & Co., Inc., 623 F.2d 1180 (7th Cir. 1980) — 7[a]
Shumaker v. Gem Mfg. Co., 311 F.2d 273 (7th Cir. 1962) — 22, 25
Speakman Co. v. Water Saver Faucet Co., Inc., 358 F. Supp. 1314 (N.D. Ill. 1973) — 11[b]
Spinmaster, Ltd. v. Overbreak LLC, 404 F. Supp. 2d 1097 (N.D. Ill. 2005) — 7[a]
St. Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977) — 5[a], 9[a], 18
Super Products Corp. v. D P Way Corp., 546 F.2d 748 (7th Cir. 1976) — 18
Sutter Products Co. v. Pettibone Mulliken Corp., 428 F.2d 639 (7th Cir. 1970) — 10
Techtronic Industries Co., Ltd. v. Chervon Holdings, Ltd., 395 F. Supp. 2d 720 (N.D. Ill. 2005) — 7[a]
T. P. Laboratories, Inc. v. Huge, 371 F.2d 231 (7th Cir. 1966) — 9[a], 22
Uarco Inc. v. Moore Business Forms, Inc., 440 F.2d 580 (7th Cir. 1971) — 13
Unarco Industries, Inc. v. Evans Products Co., 275 F. Supp. 331 (N.D. Ill. 1966) — 9[a]
Walt Disney Productions v. Fred A. Niles Communications Center, Inc., 369 F.2d 230 (7th Cir. 1966)
— 7[c]
Wolens v. F.W. Woolworth Co., 703 F.2d 983 (7th Cir. 1983) — 5[c], 7[a]
Zegers v. Zegers, Inc., 365 F.2d 156 (7th Cir. 1966) — 9[a]
Zimmer Technology, Inc. v. Howmedica Osteonics Corp., 453 F. Supp. 2d 1030 (N.D. Ind. 2006) —
11[a]
23 A.L.R. Fed. 326
Page 38
Eighth Circuit
AIR-vend, Inc. v. Thorne Industries, Inc., 625 F. Supp. 1123 (D. Minn. 1985) — 7[a], 7[c]
Airlite Plastics Co. v. Plastilite Corp., 526 F.2d 1078 (8th Cir. 1975) — 5[c], 22
Allan Block Corp. v. County Materials Corp., 634 F. Supp. 2d 979 (D. Minn. 2008) — 22
American Infra-Red Radiant Co. v. Lambert Industries, Inc., 360 F.2d 977 (8th Cir. 1966) — 6[a], 22
Anchor Wall Systems v. Rockwood Retaining Walls, Inc., 610 F. Supp. 2d 998 (D. Minn. 2009) — 5[a]
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 912 F. Supp. 422 (W.D. Ark. 1996) — 8
Black & Decker Mfg. Co. v. Ever-Ready Appliance Mfg. Co., 684 F.2d 546 (8th Cir. 1982) — 7[a],
9[a]
Black & Decker Mfg. Co. v. Ever-Ready Appliance Mfg. Co., 518 F. Supp. 607 (E.D. Mo. 1981) — 18,
22
Caldwell v. Kirk Mfg. Co., 269 F.2d 506 (8th Cir. 1959) — 2[a]
Cardiac Pacemakers, Inc. v. Coratomic, Inc., 535 F. Supp. 280 (D. Minn. 1982) — 9[b]
Cedarapids, Inc. on Behalf of El-Jay Div. v. Nordberg, Inc., 895 F. Supp. 1230 (N.D. Iowa 1995) — 25
Clark Equipment Co. v. Keller, 570 F.2d 778 (8th Cir. 1978) — 5[b], 20
Devon Distributing Corp. v. Miner, 331 F. Supp. 2d 791 (S.D. Iowa 2004) — 8
Flour City Architectural Metals v. Alpana Aluminum Products, Inc., 454 F.2d 98 (8th Cir. 1972) — 5[c]
, 11[b]
Greening Nursery Co. v. J & R Tool & Mfg. Co., 376 F.2d 738 (8th Cir. 1967) — 5[b], 18
Iridex Corp. v. Synergetics, Inc., 478 F. Supp. 2d 1146 (E.D. Mo. 2007) — 8
John Blue Co. v. Dempster Mill Mfg. Co., 275 F.2d 668 (8th Cir. 1960) — 6[a]
Kemin Foods, L.C. v. Pigmentos Vegetables del Centro S.A. de C.V., 357 F. Supp. 2d 1105 (S.D. Iowa
2005) — 8, 11[a], 13, 16, 21, 22, 23, 25
L & A Products, Inc. v. Britt Tech Corp., 365 F.2d 83 (8th Cir. 1966) — 7[a]
Maxwell v. J. Baker, Inc., 820 F. Supp. 444 (D. Minn. 1993) — 7[a]
Maxwell v. J. Baker, Inc., 805 F. Supp. 735 (D. Minn. 1992) — 22, 23
Medtronic, Inc. v. Cardiac Pacemakers, Inc., 555 F. Supp. 1214 (D. Minn. 1983) — 10
Medtronic, Inc. v. Catalyst Research Corp., 547 F. Supp. 401 (D. Minn. 1982) — 7[a]
23 A.L.R. Fed. 326
Page 39
Moore v. Stewart, 600 F. Supp. 655 (W.D. Ark. 1985) — 7[a]
National Connector Corp. v. Malco Mfg. Co., 392 F.2d 766 (8th Cir. 1968) — 8
Reinke Mfg. Co., Inc. v. Sidney Mfg. Corp., 594 F.2d 644 (8th Cir. 1979) — 18, 19
Remington Arms Co. v. Herter's, Inc., 324 F. Supp. 760 (D. Minn. 1970) — 11[b]
Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005) — 8, 11[a]
Schneider (Europe) AG v. SciMed Life Systems, Inc., 852 F. Supp. 813 (D. Minn. 1994) — 11[b]
Selmix Dispensers, Inc. v. Multiplex Faucet Co., 277 F.2d 884 (8th Cir. 1960) — 8
Skee-Trainer, Inc. v. Garelick Mfg. Co., 361 F.2d 895 (8th Cir. 1966) — 6[a], 9[a]
Span-Deck, Inc. v. Fab-Con, Inc., 677 F.2d 1237 (8th Cir. 1982) — 7[a], 18
Toro Co. v. SCAG Power Equipment, Inc., 256 F. Supp. 2d 1009 (D. Neb. 2003) — 8, 11[a], 21
Toro Co. v. Scag Power Equipment, Inc., 241 F. Supp. 2d 1057 (D. Neb. 2003) — 5[c]
University of Illinois Foundation v. Winegard Co., 402 F.2d 125 (8th Cir. 1968) — 13
Vision-Ease Lens, Inc. v. Essilor Intern. SA, 322 F. Supp. 2d 991 (D. Minn. 2004) — 13
Woodstream Corp. v. Herter's, Inc., 446 F.2d 1143 (8th Cir. 1971) — 3[b], 15, 23
Ninth Circuit
ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc., 592 F. Supp. 2d 1208 (N.D. Cal. 2008)
— 7[b]
Al-Site Corp. v. Cable Car Sunglasses, 911 F. Supp. 410 (N.D. Cal. 1994) — 7[b]
Alcor Aviation, Inc. v. Radair, Inc., 527 F.2d 113 (9th Cir. 1975) — 22
Austin v. Marco Dental Products, Inc., 560 F.2d 966 (9th Cir. 1977) — 5[b], 17, 22
Bally Gaming, Inc. v. IGT, 623 F. Supp. 2d 1213 (D. Nev. 2008) — 5[a]
Baxter Diagnostics, Inc. v. AVL Scientific Corp., 924 F. Supp. 994 (C.D. Cal. 1996) — 9[a]
Bentley v. Sunset House Distributing Corp., 359 F.2d 140 (9th Cir. 1966) — 5[a]
Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 563 F. Supp.
2d 1016 (N.D. Cal. 2008) — 7[a]
Bristol Locknut Co. v. SPS Technologies, Inc., 677 F.2d 1277 (9th Cir. 1982) — 7[a], 22
Cable Elec. Products, Inc. v. Genmark, Inc., 582 F. Supp. 93 (N.D. Cal. 1984) — 25
23 A.L.R. Fed. 326
Page 40
Canadian Ingersoll-Rand Co. v. Peterson Products of San Mateo, Inc., 223 F. Supp. 803 (N.D. Cal.
1963) — 8, 9[a], 18, 23, 26
Carpet Seaming Tape Licensing Corp. v. Best Seam Inc., 694 F.2d 570 (9th Cir. 1982) — 18
Ceco Corp. v. Bliss & Laughlin Industries, Inc., 557 F.2d 687 (9th Cir. 1977) — 18, 22, 26
Chiron Corp. v. Genentech, Inc., 268 F. Supp. 2d 1126 (E.D. Cal. 2002) — 8, 9[b], 11[a], 21
Clairol Inc. v. Brentwood Industries, Inc., 193 U.S.P.Q. 683, 1976 WL 21063 (C.D. Cal. 1976) — 8
Comcast Cable Communications Corp. v. Finisar Corp., 571 F. Supp. 2d 1137 (N.D. Cal. 2008) — 20
Computrol, Inc. v. Lowrance Electronics, Inc., 893 F. Supp. 1440 (D. Idaho 1994) — 20
Crown Mach. & Tool Co. v. KVP-Sutherland Paper Co., 297 F. Supp. 542 (N.D. Cal. 1967) — 3[b]
Cygnus Telecommunications Technology, LLC, Patent Litigation, In re, 481 F. Supp. 2d 1029 (N.D.
Cal. 2007) — 16
Deere & Co. v. Sperry Rand Corp., 513 F.2d 1131 (9th Cir. 1975) — 18, 20
Depomed, Inc. v. Ivax Corp., 532 F. Supp. 2d 1170 (N.D. Cal. 2007) — 8
Ecolochem, Inc. v. Southern California Edison Co., 863 F. Supp. 1165 (C.D. Cal. 1994) — 8
Friskit, Inc. v. RealNetworks, Inc., 499 F. Supp. 2d 1145 (N.D. Cal. 2007) — 20
Geo. M. Martin Co. v. Alliance Mach. Systems Intern., LLC, 634 F. Supp. 2d 1024 (N.D. Cal. 2008) —
7[a]
George J. Meyer Mfg. Co. v. San Marino Electronic Corp., 422 F.2d 1285 (9th Cir. 1970) — 8, 9[a]
Globe Linings, Inc. v. City of Corvallis, 555 F.2d 727 (9th Cir. 1977) — 9[b], 18
Grayson v. McGowan, 543 F.2d 79 (9th Cir. 1976) — 5[a]
Griffith Rubber Mills v. Hoffar, 313 F.2d 1 (9th Cir. 1963) — 6[a]
Hammerquist v. Clarke's Sheet Metal, Inc., 658 F.2d 1319 (9th Cir. 1981) — 7[a], 17
Herschensohn v. Hoffman, 593 F.2d 893, 27 Fed. R. Serv. 2d 445 (9th Cir. 1979) — 18
Hewlett-Packard Co. v. Tel-Design, Inc., 460 F.2d 625 (9th Cir. 1972) — 18
Jeddeloh Bros. Sweed Mills, Inc. v. Coe Mfg. Co., 375 F.2d 85 (9th Cir. 1967) — 13
Kaakinen v. Peelers Co., 301 F.2d 170 (9th Cir. 1962) — 23
Kamei-Autokomfort v. Eurasian Automotive Products, 553 F.2d 603 (9th Cir. 1977) — 9[a], 18
23 A.L.R. Fed. 326
Page 41
Laitram Corp. v. Depoe Bay Fish Co., 549 F. Supp. 29 (D. Or. 1982) — 21, 23
Lawrence v. Gillette Co., 603 F.2d 68 (9th Cir. 1979) — 19
Lee's Aquarium & Pet Products, Inc. v. Python Pet Products, Inc., 951 F. Supp. 1469 (S.D. Cal. 1997)
— 9[b]
Lucent Technologies Inc. v. Gateway, Inc., 509 F. Supp. 2d 912 (S.D. Cal. 2007) — 16
Lucent Technologies, Inc. v. Microsoft Corp., 544 F. Supp. 2d 1080 (S.D. Cal. 2008) — 9[b]
Mattel, Inc. v. Hyatt, 664 F.2d 757 (9th Cir. 1981) — 2[b]
Medtronic Vascular Inc. v. Abbott Cardiovascular Systems, Inc., 614 F. Supp. 2d 1006 (N.D. Cal.
2009) — 7[a]
Mollura v. Miller, 609 F.2d 381 (9th Cir. 1979) — 18
Monolithic Power Systems, Inc. v. O2 Micro Intern. Ltd., 476 F. Supp. 2d 1143 (N.D. Cal. 2007) — 8
Monroe Auto Equipment Co. v. Superior Industries, Inc., 332 F.2d 473 (9th Cir. 1964) — 7[c], 24
Network Appliance, Inc. v. Bluearc Corp., 374 F. Supp. 2d 825 (N.D. Cal. 2005) — 8, 11[a], 15, 20, 21,
22, 23, 25
Old Town Canoe Co. v. Glenwa, Inc., 229 F. Supp. 2d 1151 (D. Or. 2002) — 7[a]
Omark Industries, Inc. v. Carlton Co., 458 F. Supp. 449 (D. Or. 1978) — 7[a], 17
Omark Industries, Inc. v. Textron, Inc., 688 F.2d 1242 (9th Cir. 1982) — 17
Ormco Corp. v. Align Technology, Inc., 653 F. Supp. 2d 1016 (C.D. Cal. 2009) — 5[a]
O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., 420 F. Supp. 2d 1070 (N.D. Cal. 2006) —
7[a], 20
Pacific Contact Laboratories, Inc. v. Solex Laboratories, Inc., 209 F.2d 529 (9th Cir. 1953) — 6[c]
Palmer v. Orthokinetics, Inc., 611 F.2d 316 (9th Cir. 1980) — 8, 22
Patent Category Corp. v. Target Corp., 567 F. Supp. 2d 1171 (C.D. Cal. 2008) — 7[b]
Payne Metal Enterprises, Limited v. McPhee, 382 F.2d 541 (9th Cir. 1967) — 5[c], 7[a], 20
Penn Intern. Industries v. Pennington Corp., 583 F.2d 1078 (9th Cir. 1978) — 17, 20
Penn Intern. Industries, Inc. v. New World Mfg., Inc., 691 F.2d 1297 (9th Cir. 1982) — 18
Pfizer, Inc. v. International Rectifier Corp., 545 F. Supp. 486 (C.D. Cal. 1980) — 8
Photo Electronics Corp. v. England, 581 F.2d 772 (9th Cir. 1978) — 8, 17, 22, 23
23 A.L.R. Fed. 326
Page 42
Reeves Instrument Corp. v. Beckman Instruments, Inc., 444 F.2d 263 (9th Cir. 1971) — 21, 23
Regimbal v. Scymansky, 444 F.2d 333 (9th Cir. 1971) — 18
Rosen Entm't Sys, LP v. Icon Enters, Inc., 359 F. Supp. 2d 902 (C.D. Cal. 2005) — 8, 11[a], 13
Santa Anita Mfg. Corp. v. Lugash, 369 F.2d 964 (9th Cir. 1966) — 18
Santa Fe-Pomeroy, Inc. v. P & Z Co., Inc., 569 F.2d 1084 (9th Cir. 1978) — 17, 20, 21, 23
Sarkisian v. Winn-Proof Corp., 697 F.2d 1313 (9th Cir. 1983) — 7[a], 17, 20
Sarkisian v. Winn-Proof Corp., 688 F.2d 647 (9th Cir. 1982) — 7[a], 17
Sarkisian v Winn-Proof Corp. (1981, CA9 Or) 662 F2d 596, 213 USPQ 912 —17
Satco, Inc. v. Transequip, Inc., 594 F.2d 1318 (9th Cir. 1979) — 18
Schwinn Bicycle Co. v. Goodyear Tire & Rubber Co., 444 F.2d 295 (9th Cir. 1970) — 11[b], 20
Seiko Epson Corp. v. Coretronic Corp., 633 F. Supp. 2d 931 (N.D. Cal. 2009) — 5[a]
Semiconductor Energy Laboratory Co. Ltd. v. Chi Mei Optoelectronics Corp., 531 F. Supp. 2d 1084
(N.D. Cal. 2007) — 7[a]
Semiconductor Energy Laboratory Co. Ltd. v. Chi Mei Optoelectronics Corp., 485 F. Supp. 2d 1089
(N.D. Cal. 2007) — 8, 20
Shuffle Master, Inc. v. MP Games LLC, 553 F. Supp. 2d 1202 (D. Nev. 2008) — 5[a]
Smith & Nephew, Inc. v. Arthrex, Inc., 511 F. Supp. 2d 1046 (D. Or. 2007) — 9[a]
Smith Intern., Inc. v. Hughes Tool Co., 664 F.2d 1373 (9th Cir. 1982) — 17
SSP Agricultural Equipment, Inc. v. Orchard-Rite Ltd., 592 F.2d 1096 (9th Cir. 1979) — 18
St. Regis Paper Co. v. Royal Industries, 552 F.2d 309 (9th Cir. 1977) — 8
Synvasive Corp. v. Stryker Corp., 478 F. Supp. 2d 1193 (E.D. Cal. 2007) — 5[a], 20
Teknowledge Corp. v. Cellco Partnership, 626 F. Supp. 2d 1027 (N.D. Cal. 2009) — 8
Therasense, Inc. v. Becton, Dickinson and Co., 560 F. Supp. 2d 835 (N.D. Cal. 2008) — 5[a]
Tokyo Keiso Co., Ltd. v. SMC Corp., 533 F. Supp. 2d 1047 (C.D. Cal. 2007) — 8, 11[b], 20
Vectra Fitness, Inc. v. Icon Health & Fitness, Inc., 288 F. Supp. 2d 1155 (W.D. Wash. 2003) — 8, 21,
25
Visto Corp. v. Sproqit Technologies, Inc., 413 F. Supp. 2d 1073 (N.D. Cal. 2006) — 5[c], 8
23 A.L.R. Fed. 326
Page 43
Walker v. General Motors Corp., 362 F.2d 56, 10 Fed. R. Serv. 2d 1336 (9th Cir. 1966) — 10, 11[b]
Wesley Jessen Corp. v. Coopervision, Inc., 207 F. Supp. 2d 1103 (C.D. Cal. 2002) — 8, 11[a]
Young Corp. v. Jenkins, 396 F.2d 893 (9th Cir. 1968) — 13, 18, 20
Tenth Circuit
Blish, Mize & Silliman Hardware Co. v. Time Saver Tools, Inc., 236 F.2d 913 (10th Cir. 1956) — 6[c]
Bushnell, Inc. v. Brunton Co., 673 F. Supp. 2d 1241 (D. Kan. 2009) — 2[a]
Carson v. Bland, 398 F.2d 423 (10th Cir. 1968) — 3[c]
CMI Corp. v. Metropolitan Enterprises, Inc., 534 F.2d 874 (10th Cir. 1976) — 5[c], 8, 13
Deere & Co. v. Hesston Corp., 593 F.2d 956 (10th Cir. 1979) — 18
Eimco Corp. v. Peterson Filters & Engineering Co., 406 F.2d 431 (10th Cir. 1968) — 5[b], 19
Freeman v. Gerber Products Co., 506 F. Supp. 2d 529 (D. Kan. 2007) — 8
Freeman v. Gerber Products Co., 450 F. Supp. 2d 1248 (D. Kan. 2006) — 7[c], 20
Gambro Lundia AB v. Baxter Healthcare Corp., 896 F. Supp. 1522 (D. Colo. 1995) — 8
Golight, Inc. v. Wal-Mart Stores, Inc., 216 F. Supp. 2d 1175 (D. Colo. 2002) — 5[c]
Halliburton Co. v. Dow Chemical Co., 514 F.2d 377 (10th Cir. 1975) — 19
Hildebrand v. Steck Mfg. Co., Inc., 395 F. Supp. 2d 1036 (D. Colo. 2005) — 7[a], 8, 22, 23
Hinde v. Hot Sulphur Springs, Colorado, 482 F.2d 829 (10th Cir. 1973) — 5[b]
Innovative Scuba Concepts, Inc. v. Feder Industries, Inc., 819 F. Supp. 1487 (D. Colo. 1993) — 9[a]
Lam, Inc. v. Johns-Manville Corp., 668 F.2d 462 (10th Cir. 1982) — 7[a], 20
Laser Technology, Inc. v. Nikon, Inc., 215 F. Supp. 2d 1135 (D. Colo. 2002) — 7[a]
Milgo Electronic Corp. v. United Business Communications, Inc., 623 F.2d 645 (10th Cir. 1980) — 13
Mott Corp. v. Sunflower Industries, Inc., 314 F.2d 872 (10th Cir. 1963) — 9[b]
Ohio Citizens Trust Co. v. Lear Jet Corp., 403 F.2d 956 (10th Cir. 1968) — 7[a]
Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., 708 F.2d 1554 (10th Cir. 1983) —
5[b]
Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., 515 F. Supp. 834 (W.D. Okla. 1980)
— 9[a]
23 A.L.R. Fed. 326
Page 44
Price v. Lake Sales Supply R. M., Inc., 510 F.2d 388 (10th Cir. 1974) — 5[a]
Ralston Purina Co. v. Far-Mar-Co, Inc., 586 F. Supp. 1176 (D. Kan. 1984) — 19, 22, 23
Rutter v. Williams, 541 F.2d 878 (10th Cir. 1976) — 5[a], 18
Sidewinder Marine, Inc. v. Starbuck Kustom Boats and Products, Inc., 597 F.2d 201 (10th Cir. 1979) —
5[b], 9[a], 19, 22
Simmons, Inc. v. Bombardier, Inc., 328 F. Supp. 2d 1188 (D. Utah 2004) — 18, 21, 25
Storage Technology Corp. v. Quantum Corp., 370 F. Supp. 2d 1116 (D. Colo. 2005) — 8, 11[a], 21, 22,
23, 25
True Temper Corp. v. CF&I Steel Corp., 601 F.2d 495, 27 Fed. R. Serv. 2d 912 (10th Cir. 1979) — 9[a]
Eleventh Circuit
Arthur J. Schmitt Foundation v. Stockham Valves & Fittings, Inc., 292 F. Supp. 893 (N.D. Ala. 1966)
— 20
Connell v. Sears, Roebuck and Co., 559 F. Supp. 229 (N.D. Ala. 1983) — 8
Dippin' Dots Patent Litigation, In re, 249 F. Supp. 2d 1346 (N.D. Ga. 2003) — 5[a]
Dow Chemical Co. v. Mee Industries, 264 F. Supp. 2d 1018 (M.D. Fla. 2002) — 7[a]
Flexiteek Americas, Inc. v. Plasteak, Inc., 641 F. Supp. 2d 1297 (S.D. Fla. 2009) — 8
Hamilton Products, Inc. v. O'Neill, 492 F. Supp. 2d 1328 (M.D. Fla. 2007) — 8
Hunt Industries, Inc. v. Fibra Boats, Inc., 299 F. Supp. 1145 (S.D. Fla. 1969) — 9[b], 15
Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 648 F. Supp. 2d 1294 (M.D. Fla. 2009) —
5[a], 20
Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 634 F. Supp. 2d 1293 (M.D. Fla. 2008) —
7[a]
Levenger Co. v. Feldman, 516 F. Supp. 2d 1272 (S.D. Fla. 2007) — 5[a]
Medtronic Xomed, Inc. v. Gyrus ENT LLC, 440 F. Supp. 2d 1300 (M.D. Fla. 2006) — 13
North American Oil Co., Inc. v. Star Brite Distributing, Inc., 148 F. Supp. 2d 1351 (N.D. Ga. 2001) —
12
Ramos v. Biomet, Inc., 828 F. Supp. 1570 (S.D. Fla. 1993) — 7[a], 21, 22, 23
Sensormatic Electronics Corp. v. TAG Co. US, LLC, 632 F. Supp. 2d 1147 (S.D. Fla. 2008) — 7[a]
23 A.L.R. Fed. 326
Page 45
District of Columbia Circuit
Bowles Fluidics Corp. v. Mossinghoff, 620 F. Supp. 1297 (D.D.C. 1985) — 7[a]
Commissioner of Patents v Deutsche Gold-Und-Silber-Scheidianstalt Vormals Roessls (1968) 130 App
DC 95, 397 F2d 656 —3[c]
Dow Jones & Co., Inc. v. Ablaise Ltd., 632 F. Supp. 2d 23 (D.D.C. 2009) — 22
Ferag AG v. Grapha-Holding AG, 935 F. Supp. 1238 (D.D.C. 1996) — 8
Filmon Process Corp. v. Spellright Corp., 274 F. Supp. 312 (D. D.C. 1967) — 9[a], 10
General Tire & Rubber Co. v Brenner (1967) 127 App DC 102, 381 F2d 270 —10
Hitachi Koki Co., Ltd. v. Doll, 620 F. Supp. 2d 4 (D.D.C. 2009) — 5[a]
Hitachi Koki Co., Ltd. v. Dudas, 556 F. Supp. 2d 41 (D.D.C. 2008) — 22
Markman v. Lehman, 987 F. Supp. 25 (D.D.C. 1997) — 22
Morphosys AG v. Cambridge Antibody Technology Ltd., 158 F. Supp. 2d 84 (D.D.C. 2001) — 5[c]
National Distillers & Chemical Corp. v Brenner (1967) 128 App DC 386, 389 F2d 927 —3[b]
New Wrinkle, Inc. v Watson (1953) 92 App DC 137, 206 F2d 421 —6[c]
Federal Circuit
Abbott Laboratories v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002) — 7[b]
ACS Hosp. Systems, Inc. v. Montefiore Hosp., 732 F.2d 1572 (Fed. Cir. 1984) — 7[c], 8
Akamai Technologies, Inc. v. Cable & Wireless Internet Services, Inc., 344 F.3d 1186 (Fed. Cir. 2003)
— 13, 16
Aktiebolaget Karlstads Mekaniska Werkstad v. U.S. Intern. Trade Com'n, 1 Fed. Cir. (T) 21, 705 F.2d
1565 (1983) — 7[a]
Altana Pharma AG v. Teva Pharmaceuticals USA, Inc., 566 F.3d 999 (Fed. Cir. 2009) — 5[a]
Alza Corp. v. Mylan Laboratories, Inc., 464 F.3d 1286 (Fed. Cir. 2006) — 18
Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563 (Fed. Cir.
1996) — 13
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953 (Fed. Cir. 1997) — 7[a], 13, 16, 20
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985) — 5[c]
ATD Corp. v. Lydall, Inc., 159 F.3d 534 (Fed. Cir. 1998) — 7[c]
23 A.L.R. Fed. 326
Page 46
Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569 (Fed. Cir. 1984) — 11[b]
Avia Group Intern., Inc. v. L.A. Gear California, Inc., 853 F.2d 1557 (Fed. Cir. 1988) — 7[a]
Battiston, In re, 139 Fed. Appx. 281 (Fed. Cir. 2005) — 9[a]
Bayer Schering Pharma AG v. Barr Laboratories, Inc., 575 F.3d 1341 (Fed. Cir. 2009) — 8
Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718 (Fed. Cir. 2002) — 6[a], 8
B.F. Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577 (Fed. Cir. 1996) — 8
Bigio, In re, 381 F.3d 1320 (Fed. Cir. 2004) — 9[a]
Bowers v. Baystate Technologies, Inc., 302 F.3d 1334 (Fed. Cir. 2002) — 7[a]
Brouwer, In re, 77 F.3d 422 (Fed. Cir. 1996) — 9[b]
Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985) — 13, 22, 25
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004) — 7[a]
Carl Schenck, A.G. v. Nortron Corp., 713 F.2d 782 (Fed. Cir. 1983) — 13
Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774 (Fed. Cir. 1983) — 18
Clay, In re, 966 F.2d 656 (Fed. Cir. 1992) — 9[b]
Comaper Corp. v. Antec, Inc., 596 F.3d 1343 (Fed. Cir. 2010) — 8, 9[a]
Commonwealth Scientific and Indus. Research Organisation v. Buffalo Technology (USA), Inc., 542
F.3d 1363 (Fed. Cir. 2008) — 7[a]
Concrete Unlimited Inc. v. Cementcraft, Inc., 776 F.2d 1537 (Fed. Cir. 1985) — 9[a]
Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed. Cir. 1983) — 3[b], 5[a], 7[a], 17
Cooper v. Ford Motor Co., 748 F.2d 677 (Fed. Cir. 1984) — 7[a]
Corkill, In re, 771 F.2d 1496 (Fed. Cir. 1985) — 13
Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005) — 8
Crown Operations Intern., Ltd. v. Solutia Inc., 289 F.3d 1367 (Fed. Cir. 2002) — 7[a]
Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254 (Fed. Cir. 2007) — 15
Dance, In re, 160 F.3d 1339 (Fed. Cir. 1998) — 7[c], 8
DBC, In re, 545 F.3d 1373 (Fed. Cir. 2008) — 5[c]
23 A.L.R. Fed. 326
Page 47
De Blauwe, In re, 736 F.2d 699 (Fed. Cir. 1984) — 5[c], 17
Dembiczak, In re, 175 F.3d 994 (Fed. Cir. 1999) — 7[c]
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) — 8
Deuel, In re, 51 F.3d 1552 (Fed. Cir. 1995) — 9[b]
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006)
— 11[b], 19
Electro Medical Systems, S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048 (Fed. Cir. 1994) — 16
Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 471 F.3d 1369 (Fed. Cir. 2006) — 8, 13
Environmental Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693 (Fed. Cir. 1983) — 11[a], 14
Epstein, In re, 32 F.3d 1559, 40 Fed. R. Evid. Serv. 773 (Fed. Cir. 1994) — 8
Etter, In re, 756 F.2d 852 (Fed. Cir. 1985) — 8
EWP Corp. v. Reliance Universal Inc., 755 F.2d 898 (Fed. Cir. 1985) — 7[b]
Farrenkopf, In re, 713 F.2d 714 (Fed. Cir. 1983) — 19
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000) — 16
Freedman Seating Co. v. American Seating Co., 420 F.3d 1350 (Fed. Cir. 2005) — 3[c]
Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288 (Fed. Cir. 2009) — 2[a]
Friskit, Inc. v. Real Networks, Inc., 306 Fed. Appx. 610 (Fed. Cir. 2009) — 23
Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549 (Fed. Cir. 1985) — 7[a]
Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437, 48 Fed. R. Evid. Serv. 611 (Fed. Cir. 1997) —
5[a], 8, 17
Fulton, In re, 391 F.3d 1195 (Fed. Cir. 2004) — 8, 9[a]
Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) — 7[a]
GPAC Inc., In re, 57 F.3d 1573 (Fed. Cir. 1995) — 9[a]
Grabiak, In re, 769 F.2d 729 (Fed. Cir. 1985) — 13
Great Northern Corp. v. Davis Core & Pad Co., Inc., 782 F.2d 159 (Fed. Cir. 1986) — 7[a]
Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297 (Fed. Cir. 2005) — 5[a]
Gulack, In re, 703 F.2d 1381 (Fed. Cir. 1983) — 19
23 A.L.R. Fed. 326
Page 48
Gurley, In re, 27 F.3d 551 (Fed. Cir. 1994) — 13
Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314 (Fed. Cir. 2003) — 8
Huang, In re, 100 F.3d 135 (Fed. Cir. 1996) — 22
Hupp v. Siroflex of America, Inc., 122 F.3d 1456 (Fed. Cir. 1997) — 8, 9[a]
Huston, In re, 308 F.3d 1267 (Fed. Cir. 2002) — 8
i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) — 5[a]
i4i Ltd. Partnership v. Microsoft Corp., 589 F.3d 1246 (Fed. Cir. 2009) — 5[a]
Interconnect Planning Corp. v. Feil, 774 F.2d 1132 (Fed. Cir. 1985) — 7[b]
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004) — 7[a], 16, 21
Jervis B. Webb Co. v. Southern Systems, Inc., 742 F.2d 1388 (Fed. Cir. 1984) — 17
Johnson, In re, 747 F.2d 1456 (Fed. Cir. 1984) — 4
Johnston, In re, 435 F.3d 1381 (Fed. Cir. 2006) — 8
Kahn, In re, 441 F.3d 977 (Fed. Cir. 2006) — 5[a], 20
Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144 (Fed. Cir. 1983) — 18, 22
Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d 1420 (Fed. Cir. 1997) — 9[b]
Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437 (Fed. Cir. 1984) — 5[a], 5[b], 5[c]
Kumar, In re, 418 F.3d 1361 (Fed. Cir. 2005) — 8, 13
L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993) — 8
Lalu, In re, 747 F.2d 703 (Fed. Cir. 1984) — 8
Lamb-Weston, Inc. v. McCain Foods, Ltd., 78 F.3d 540 (Fed. Cir. 1996) — 8
Lencco Racing Co., Inc. v. Jolliffe, 10 Fed. Appx. 865 (Fed. Cir. 2001) — 7[a]
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452 (Fed. Cir.
1984) — 15, 22, 26
Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) — 3[b]
Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861 (Fed. Cir. 1985) — 7[a]
Lowry, In re, 32 F.3d 1579 (Fed. Cir. 1994) — 7[a]
23 A.L.R. Fed. 326
Page 49
Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) — 5[a]
Massachusetts Institute of Technology v. AB Fortia, 4 Fed. Cir. (T) 8, 774 F.2d 1104 (1985) — 8
McGinley v. Franklin Sports, Inc., 262 F.3d 1339 (Fed. Cir. 2001) — 4
McNeil-PPC, Inc. v. L. Perrigo Co., 337 F.3d 1362 (Fed. Cir. 2003) — 7[a]
Media Technologies Licensing, LLC v. Upper Deck Co., 596 F.3d 1334 (Fed. Cir. 2010) — 2[a], 22
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir. 2006) — 7[a], 8
Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563 (Fed. Cir. 1983) — 3[b], 7[a], 9[a]
Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) — 8, 11[a], 19
Mettke, In re, 570 F.3d 1356 (Fed. Cir. 2009) — 5[c]
Minnesota Min. and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559 (Fed. Cir. 1992)
— 23
Monolithic Power Systems, Inc. v. O2 Micro Intern. Ltd., 558 F.3d 1341 (Fed. Cir. 2009) — 5[c]
Motorola, Inc. v. Interdigital Technology Corp., 121 F.3d 1461 (Fed. Cir. 1997) — 7[a], 8, 9[a], 14, 16
National Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319 (Fed. Cir. 2004) — 13, 20
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) — 7[a]
Netscape Communications Corp. v. Konrad, 295 F.3d 1315 (Fed. Cir. 2002) — 12
Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) — 7[a]
Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309 (Fed. Cir. 2006) — 19
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299 (Fed. Cir. 2006) — 8
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., 520 F.3d 1358 (Fed. Cir. 2008) — 19
Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082 (Fed. Cir. 1985) — 7[c]
Para-Ordnance Mfg., Inc. v. SGS Importers Intern., Inc., 73 F.3d 1085 (Fed. Cir. 1995) — 8
Paulsen, In re, 30 F.3d 1475 (Fed. Cir. 1994) — 22
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309 (Fed. Cir. 1985) — 5[b], 5[c]
Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) — 7[a]
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888 (Fed. Cir. 1984) — 7[a], 22
23 A.L.R. Fed. 326
Page 50
Petersen Mfg. Co., Inc. v. Central Purchasing, Inc., 740 F.2d 1541 (Fed. Cir. 1984) — 5[a]
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) — 8
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342 (Fed. Cir. 2007) — 8
Piasecki, In re, 745 F.2d 1468 (Fed. Cir. 1984) — 20
Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332 (Fed. Cir. 2005) — 8, 11[a], 20
Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) — 20
Reading & Bates Const. Co. v. Baker Energy Resources Corp., 748 F.2d 645 (Fed. Cir. 1984) — 8
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476 (Fed. Cir. 1997) — 7[a], 22
Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573 (Fed. Cir. 1983) — 3[b], 20
Ruiz v. A.B. Chance Co., 357 F.3d 1270 (Fed. Cir. 2004) — 17
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008) — 5[a]
Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368 (Fed. Cir. 2006) — 8
Seachange Intern., Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005) — 5[a]
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566 (Fed. Cir. 1996) — 25
Sernaker, In re, 702 F.2d 989 (Fed. Cir. 1983) — 17
Shelcore, Inc. v. Durham Industries, Inc., 745 F.2d 621, 16 Fed. R. Evid. Serv. 1270 (Fed. Cir. 1984) —
3[b]
Source Search Technologies, LLC v. LendingTree, LLC, 588 F.3d 1063 (Fed. Cir. 2009) — 5[a]
Sovish, In re, 769 F.2d 738 (Fed. Cir. 1985) — 9[a], 13, 17
Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985) — 11[a]
State Contracting & Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057 (Fed. Cir. 2003) — 8
State Industries, Inc. v. Rheem Mfg. Co., 769 F.2d 762 (Fed. Cir. 1985) — 13, 20
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) — 18, 20
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371 (Fed. Cir. 2005) — 8, 11[a], 21, 22, 23, 25
Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007) — 13
Tapco Intern. Corp. v. Van Mark Products Corp., 18 Fed. Appx. 865 (Fed. Cir. 2001) — 7[a]
23 A.L.R. Fed. 326
Page 51
Teleflex, Inc. v. KSR Intern. Co., 119 Fed. Appx. 282 (Fed. Cir. 2005) — 12
Texas Instruments Inc. v. U.S. Intern. Trade Com'n, 988 F.2d 1165 (Fed. Cir. 1993) — 5[a]
Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988 (Fed. Cir. 1995) — 23
Thorpe, In re, 777 F.2d 695 (Fed. Cir. 1985) — 6[c]
Thrift, In re, 298 F.3d 1357 (Fed. Cir. 2002) — 8
Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985) — 8
Translogic Technology, Inc., In re, 504 F.3d 1249 (Fed. Cir. 2007) — 5[c]
Valmet Paper Machinery, Inc. v. Beloit Corp., 105 F.3d 1409 (Fed. Cir. 1997) — 8
Vandenberg v. Dairy Equipment Co., a Div. of DEC Intern., Inc., 740 F.2d 1560 (Fed. Cir. 1984) —
5[b]
Velander v. Garner, 348 F.3d 1359 (Fed. Cir. 2003) — 8, 11[a], 18
Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858 (Fed. Cir. 1993) — 8
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) — 3[b], 7[b], 7[c], 9[a],
13, 20, 22, 23
Zurko, In re, 258 F.3d 1379 (Fed. Cir. 2001) — 7[a]
Specialized Courts
Aufhauser, Application of, 399 F.2d 275 (C.C.P.A. 1968) — 7[b]
Barnett v. U.S., 6 Cl. Ct. 631 (1984) — 7[a]
Baxter, In re, 656 F.2d 679 (C.C.P.A. 1981) — 9[a]
Boeing Co., The v. U.S., 69 Fed. Cl. 397 (2006) — 7[a]
Bowser, Inc. v. U. S., 181 Ct. Cl. 834, 388 F.2d 346 (1967) — 17
Brunswick Corp. v. U.S., 34 Fed. Cl. 532 (1995) — 8
Carroll, Matter of Application of, 601 F.2d 1184 (C.C.P.A. 1979) — 15
Chemical Separation Technology, Inc. v. U.S., 51 Fed. Cl. 771 (2002) — 5[a], 7[a]
Del Mar Engineering Laboratories v. U. S., 207 Ct. Cl. 815, 524 F.2d 1178 (1975) — 10
Ellicott Mach. Corp. v. U.S., 186 Ct. Cl. 655, 405 F.2d 1385 (1969) — 22
Erwin-Newman Co. v. U. S., 183 Ct. Cl. 822, 393 F.2d 819 (1968) — 9[a]
23 A.L.R. Fed. 326
Page 52
Fogarty v. U.S., 5 Cl. Ct. 402 (1984) — 8
Gargoyles, Inc. v. U.S., 32 Fed. Cl. 157 (1994) — 9[b]
Hallman, In re, 655 F.2d 212 (C.C.P.A. 1981) — 9[a]
International Glass Co. v. U. S., 187 Ct. Cl. 376, 408 F.2d 395 (1969) — 8, 9[a], 26
Kistler Instrumente AG. v. U. S., 224 Ct. Cl. 370, 628 F.2d 1303 (1980) — 7[a]
Laverne, Application of, 356 F.2d 1003 (C.C.P.A. 1966) — 11[a]
Magerlein, Application of, 602 F.2d 366 (C.C.P.A. 1979) — 19
Messerschmidt v. U.S., 29 Fed. Cl. 1 (1993) — 8, 22, 23
Nalbandian, In re, 661 F.2d 1214 (C.C.P.A. 1981) — 11[a]
Palmer v. U. S., 182 Ct. Cl. 896, 1968 WL 9144 (1968) — 22
Paymaster Technologies, Inc. v. U.S., 61 Fed. Cl. 593 (2004) — 8, 11[a], 13, 20
Penda Corp. v. U.S., 29 Fed. Cl. 533 (1993) — 13
Pfund v. U.S., 40 Fed. Cl. 313 (1998) — 8
Prater, Application of, 415 F.2d 1393, 6 A.L.R. Fed. 134 (C.C.P.A. 1969) — 16
Rockwell Intern. Corp. v. U.S., 37 Fed. Cl. 478 (1997) — 15
Rosen, In re, 673 F.2d 388 (C.C.P.A. 1982) — 11[b]
UMC Electronics Co. v. U.S., 8 Cl. Ct. 604 (1985) — 7[a], 7[c]
Waymouth, Application of, 499 F.2d 1273 (C.C.P.A. 1974) — 13
Zoltek Corp. v. U.S., 86 Fed. Cl. 738 (2009) — 20
I. Introduction
§ 1[a] Generally—Scope
Three distinct statutory conditions affect patentability: utility, novelty, and nonobviousness of the subject
matter (see § 1[c], infra). This note collects a number of leading and illustrative recent cases which have given
particular attention to the third condition, nonobviousness, as it has been applied in determining the validity of
patents that have been issued. The purpose of the note is to present from those cases an overview of the general
questions of what "obviousness" means and its effect in patent law, with brief consideration of significant earlier
cases and the constitutional standard of patentability as they relate to the statutory requirement of nonobvious
subject matter.
23 A.L.R. Fed. 326
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The cases considered are generally limited to those arising in the United States District Courts, which have
original jurisdiction of actions relating to patents, under 28 U.S.C.A. § 1338(a), and this includes actions for infringement of issued patents as well as declaratory judgment suits alleging the invalidity and noninfringement of
issued patents (see Am. Jur. 2d, Patents §§ 413-414). Thus, the concern of this note is with the theoretical basis
of the test of nonobviousness as reflected in selected decisions arising from actions originating in the District
Courts, and no effort has been made to collect all of the numerous cases decided each year involving patents in
which various courts are confronted with and must resolve problems of obviousness.[1]
It is the rare case in which the patentee is himself a party to an action on his patent, since patents are almost
invariably assigned to others for commercial exploitation. However, for simplicity in referring to the parties in
cases discussed in the annotation, the patent holder defending or contending for his rights has generally been
called the patentee, whether he actually was such, or was a transferee of the patentee's rights.[2]
Comment Note. Neither in this note nor in the Later Case Service therefor is there any attempt at an exhaustive citation of cases.
§ 1[b] Generally—Related matters
Related Annotations are located under the
heading of this Annotation.
Research References
§ 1[c] Generally—Applicable statutory provisions
In 1952, Congress enacted a statute entitled "Conditions for Patentability; Non-Obvious Subject Matter,"[3]
which is codified as 35 U.S.C.A. § 103 It provides:
"A patent may not be obtained though the invention is not identically disclosed or described as set forth in §
102 of this title,[4] if the differences between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made."
§ 2[a] Summary and comment—In general
[Cumulative Supplement]
With utility and novelty ( § 1[a], supra), the subject matter of an invention must possess the quality of
nonobviousness. This quality, required by the Patent Act of 1952, 35 U.S.C.A. § 103 (§ 1[c], supra), reflects the
earlier and judicially developed concept of "invention" (§ 4, infra) which was based on consideration of a constitutional standard (§ 3[c], infra), and without which no subject matter was patentable(§ 3[a], infra).
The quality of nonobviousness is determined by a factual inquiry (§ 7[a], infra) directed to the differences
between the subject matter sought to be patented and the prior art. (As to what constitutes prior art, see § 9, infra.) If the differences are such that "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art" (as to who such a person is, see § 11, infra), it is
unpatentable. The emphasis is on facts, and to a District Court's findings of fact the "clearly erroneous" test of
Rule 52 applies on review (§ 5[b], infra). However, these facts must be measured against the legal standard of
nonobviousness set out in the statute (§ 5[a], infra), and patentability is thus ultimately a question of law for the
court. To this conclusion of law, the "clearly erroneous" test does not apply on review (§ 5[c], infra).
23 A.L.R. Fed. 326
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A patent whose validity is being contested is aided by a presumption in its favor, but this presumption does
not establish that the Patent Office was correct in determining that the subject matter was not obvious (§ 3[b],
infra). The courts must independently determine obviousness for themselves from a consideration of the facts
and law (§ 5[a], infra), in light of the subject matter of the invention as a whole (§ 7[b], infra), and while avoiding hindsight (§ 7[c], infra). They must apply a demanding standard in determining what would have been obvious to a person having ordinary skill in the art at the time of the invention (§ 6[b], infra). Although the patentee's
manner of reaching his result, whether by long toil or a flash of genius, does not matter, his result must still be
one that would not have been obvious when judged by that strict standard (§ 6[c], infra).
The factual inquiries that the Supreme Court requires the District Courts to make ( § 7[a], infra) include a
determination of the scope and content of the prior art which is pertinent to the subject matter of the patent in
suit (§ 8, infra), and "pertinent" is now broadly construed in this connection to include any prior art reference
which could have assisted or enlightened the patentee in connection with his particular subject matter (§ 9[a], infra), even though he may have been unaware of that reference (§ 10, infra). A further factual inquiry required by
the Supreme Court to be made by the District Courts, as to the level of ordinary skill in the pertinent art, is usually resolved on the basis of inferences to be drawn from the scope and content of the prior art. A person "having
ordinary skill in the art" may be hypothesized from the evidence as to the nature and degree of sophistication of
the prior art, and he has been called a patent law reasonable man (§ 11[a], infra). In some cases, however, the
courts have been inclined to consider a particular person as exemplifying the level of "ordinary skill" in the art (
§ 11[b], infra).
As the United States Supreme Court has done by evaluation of technical facts in its decisions under the Patent Act of 1952, holding two patents in one case invalid and the patent in another case valid (§ 12, infra), the
lower federal courts have done their best to discover indicia of the obviousness or nonobviousness of an invention from such technical factors as are available. Thus, prior art suggesting that a particular result was not obtainable is indicative of nonobviousness of an invention attaining that result (§ 13, infra), as is the absence from
prior art of references suggesting that result (§ 16, infra). Related to these as indicia of nonobviousness is evidence that experts did not believe the inventor's particular result possible before he achieved it (§ 14, infra), and
that after he did, they greeted his result with acclaim (§ 15, infra).
Except for a few rather ambivalent technical matters referred to in some cases (§ 19, infra), the only other
general consideration bearing directly on a technical evaluation of the nonobviousness of an invention is the
achievement, by a combination of elements old in the art, of a result that exceeds the sum of its component parts
(§ 17, infra). Such a result has been considered unusual or surprising or unexpected, in view of the well-known
elements comprising it, and so to be a valid indication of nonobviousness. However, unusual or unexpected results are most often said to be a valid indication of nonobviousness in cases in which the absence of such results
served to show the obviousness of the subject matter of the patent at issue (§ 18, infra).
Judges are ill-fitted to make a subjective determination from technical facts as to what was obvious or not
obvious to those of ordinary skill in a technical field, and the Supreme Court has given its blessing to various
"objective" factors relating to the commercial aspects of an invention, to which a District Court can turn (§ 20,
infra). The Supreme Court has not relied on the secondary considerations in its decisions under the Patent Act of
1952, but the lower federal courts have often referred to one or more of them in holding the subject matter of a
patent nonobvious (§ 20, infra). Thus, they have considered that the failure of other inventors to have achieved
the patentee's successful result was indicative of its nonobviousness (§ 21, infra), and contrariwise, that the success of others in achieving that result at the same time was indicative of obviousness (§ 26, infra).
23 A.L.R. Fed. 326
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Another secondary subtest is wide commercial acceptance of the practical embodiment of the patentee's invention in the market place, which has been said to show nonobviousness ( § 22, infra), as has its acceptance
through licensing within the pertinent industry (§ 24, infra). A long-felt need within a particular field that went
unfilled until the patentee presented his patented solution has been held indicative of the nonobviousness of the
subject matter (§ 23, infra). And the fact that an alleged infringer copied the patentee's invention has likewise
been said to show that it was not obvious (§ 25, infra).
In seeing what "would have been obvious" under the statute, the United States Supreme Court and the Patent Office seem often to have looked through different glasses, the court pointedly noting in Graham v John
Deere Co. (1966) 383 US 1, 15 L Ed 545, 86 S Ct 684, a notorious difference between the standards applied by
the Patent Office and the courts. Clearly, the Supreme Court does not understand "invention" to include the exercise of "Yankee ingenuity" in a basement workshop, nor the mere application of scientific training in a company laboratory for the improvement of the company product. The patenting of gadgets by the Patent Office has
been condemned (Great Atlantic & Pacific Tea Co. v Supermarket Equipment Corp. (1950) 340 US 147, 95 L
Ed 162, 71 S Ct 127, reh den 340 US 918, 95 L Ed 663, 71 S Ct 349), and despite the presumed validity of patents that have been granted by the Patent Office ( § 3[b], infra), the Supreme Court has not hesitated to strike
them down as a matter of law (§§ 3[a] and 12, infra) when they failed to meet the constitutional standard of promoting progress in the "useful Arts" (§ 3[c], infra).
Proposals for reform of the patent laws have been made,[5] because procedures in patent litigation have not
kept pace with the competitive evolution of the economy. However, while the United States Supreme Court has
approved obviousness in the 1952 statute as a test of patentability within the constitutional framework (§ 4, infra), the court is clearly placing reliance upon the constitutional standard of patentability (§ 3[c], infra), against
which it will measure any congressional changes in the patent laws calculated to relax its demanding standards
of patentability to meet those acceptable to the Patent Office.
A patent gives a monopoly to its owner, albeit limited to 17 years. Properly applied in patent law, the monopoly gives force to the Supreme Court's requirement that persons granted the benefit of a patent monopoly have
added to the sum of useful knowledge, lest the effect of the grant be to subtract from former resources freely
available to skillful men (Great Atlantic & Pacific Tea Co. v Supermarket Equipment Corp. (1950) 340 US 147,
95 L Ed 162, 71 S Ct 127, infra § 3[a], reh den 340 US 918, 95 L Ed 663, 71 S Ct 349). The public is a silent but
important party in interest in all patent litigation, and a device which is new and useful but which falls short of
revealing more than mechanical skill has not established its right to a private grant on the public domain (Caldwell v Kirk Mfg. Co. (1959, CA8 Neb) 269 F2d 506, cert den 361 US 915, 4 L Ed 185, 80 S Ct 260).
CUMULATIVE SUPPLEMENT
Cases:
Factors considered in determining obviousness of patent claim are: (1) the scope and content of the prior art;
(2) differences between the prior art and the claims; (3) the level of ordinary skill in the pertinent art; and (4) objective evidence of nonobviousness. 35 U.S.C.A. § 103(a). Bushnell, Inc. v. Brunton Co., 673 F. Supp. 2d 1241
(D. Kan. 2009).
An obviousness analysis under patent law is based on several factual inquiries: a court must examine the
scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of
ordinary skill in the pertinent art; then, at that point, a court may consider secondary objective evidence of
23 A.L.R. Fed. 326
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nonobviousness, such as commercial success, long felt but unsolved need, failure of others, and the like. 35
U.S.C.A. § 103(a). Media Technologies Licensing, LLC v. Upper Deck Co., 596 F.3d 1334, 93 U.S.P.Q.2d 1911
(Fed. Cir. 2010).
Verdict of obviousness in a patent case must be supported by facts of (1) the scope and content of the prior
art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art,
and (4) any objective indicia such as commercial success or long-felt need. Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 92 U.S.P.Q.2d 1163 (Fed. Cir. 2009).
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[END OF SUPPLEMENT]
§ 2[b] Summary and comment—Practice pointers
If it appears that a client might have a patentable idea, a competent patent search at the outset is a must, and
the client should be referred to a patent specialist.
A different approach is possible for the general legal practitioner whose client is involved with an issued
patent, and seeks legal advice when he receives notice of infringement of the patent by something he uses or
does in his own business. Often such assertions are more sound than substance, and because it is recognized that
the Patent Office has often issued patents on gadgets which are promptly struck down by the courts (§ 3[b], infra), may not be seriously pressed by the patent owner. At this point an attorney can help his client by simply
gathering pertinent facts: Where did he get the allegedly infringing device or method; how long has he used it;
what are the differences between the client's device and the allegedly infringed device; why are there similarities? Such factual inquiries should demonstrate, without getting into the technicalities of a patent search of prior
art or the intricacies of defending a patent infringement action, how good the client's position may be. For example, if the method or device is one that his father developed 40 years ago, no court will say that because a patent was more recently issued on a mere improvement or variation of the same idea, the client's device infringes
because it falls within the scope of the patent's monopoly. More likely a court would hold the patent invalid for
obviousness in light of the prior use, and of course, there can be no action against the client for infringement of
an invalid patent. (Am. Jur. 2d, Patents § 446) But if the facts show that the client recently saw the allegedly infringed method or device in use, and recognized it as valuable to copy for use in his own business, the chances
are that it was already patented when he saw it, and quite a different situation is presented (see § 25, infra).
These are extremes, but gathering the basic facts will enable the attorney who does not specialize in patent law
to advise his client whether to wait, or to consult a patent attorney at once.
In the foreseeable future there is not likely to be any dramatic lowering of the high standards of patentability
required by most courts in terms of nonobvious subject matter (§ 6[b], infra). Rather, the attorney may look for
increasing difficulty in, and decreasing likelihood of, his client's obtaining a patent at all upon the sort of device
or idea that the attorney is apt to be confronted with. This is not to suggest that the client who fancies himself an
"inventor" may not have a patentable idea, but to suggest the attorney's duty to discuss and weigh with him the
time and expense involved in trying to obtain a patent, and in thereafter asserting and defending it if obtained,
against the likelihood of its making an acceptable financial return—or of its furnishing sufficient personal satisfaction to the client in terms of owning United States Letters Patent.
23 A.L.R. Fed. 326
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Cases:
Characteristics or result of patent not claimed in application may not form basis for finding of nonobviousness. Stanley Works v McKinney Mfg. Co. (1981, DC Del) 520 F Supp 1101, 216 USPQ 298, affd without op
(CA3 Del) 681 F2d 809.
Findings of fact and conclusions of law drafted by plaintiff's counsel and adopted by trial judge with minor
modifications, must be subjected to "paintstaking review" on appeal. Mattel, Inc. v Hyatt (1981, CA9 Cal) 664
F2d 757, 212 USPQ 808.
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[END OF SUPPLEMENT]
§ 3[a] Background—Early leading cases
The Patent Act of 1952 which established nonobviousness of subject matter as a condition of patentability
(see § 4, infra) merely codified existing judicial precedents (see § 6[a], infra). Consequently, many "old" cases
are still cited by the courts in decisions applying the statute to particular facts. A few of these most often referred to by the courts, and perhaps basic to a proper understanding and application of the statute, are presented
here.
Hotchkiss v Greenwood (1850) 52 US 248, 13 L Ed 683, was unquestionably the landmark case to establish
guidelines for determining "patentable invention," and the principle announced there by the United States Supreme Court in 1851 was embraced in 35 U.S.C.A. § 103 (infra § 4). In that case, the patent issued for "a new
and useful improvement" in making door and other knobs of potter's clay was before the court. It held the patent
invalid, saying that the test was that if no more ingenuity and skill was necessary to construct the new knob than
was possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of
skill and ingenuity which constitute essential elements of every invention. The court concluded that as to these
knobs the improvement was the work of the skilful mechanic, not that of the inventor.
In Hollister v Benedict & Burnham Mfg. Co. (1885) 113 US 59, 28 L Ed 901, 5 S Ct 717, denying validity
to the patent on a stamp for whisky barrels, the court noted that as soon as frauds upon the government in removing and reusing such stamps became apparent and the remedy was seriously and systematically studied by
those competent to deal with the subject, the regulation requiring the stamps was promptly suggested and adopted, just as a skilled mechanic, witnessing the performance of a machine inadequate by reason of some defect to
accomplish the object for which it had been designed, by the application of his common knowledge and experience, perceives the reason of the failure and supplies what is obviously wanting. The idea here of detaching a
portion of the stamp, with the double effect of destroying the stamp by mutilation and preserving the evidence of
the identity of the package on which it had first been placed in use, did not spring from that intuitive faculty of
the mind put forth in the search for new results or new methods, creating what had not before existed, or bringing to light what lay hidden from vision, the court said, but, on the other hand, was the suggestion of that common experience which arose spontaneously and by necessity of human reasoning in the minds of those who had
become acquainted with the circumstances with which they had to deal. This stamp, the court concluded, was
but the display of the expected skill of the calling, and involved only the exercise of the ordinary faculties of
reasoning upon the materials supplied by a special knowledge; it was in no sense the creative work of that inventive faculty which it was the purpose of the Constitution and the patent laws to encourage and reward.
In Cuno Engineering Corp. v Automatic Devices Corp. (1941) 314 US 84, 86 L Ed 58, 62 S Ct 37, the
claims of the patent in question were for cigar and cigarette lighters commonly used in automobiles. The court
23 A.L.R. Fed. 326
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found that the patentee's addition to the existing cordless lighters, of a thermostatic control which, after the plug
was set "on" and the heating coil had reached the proper temperature, automatically returned the plug to its "off"
position, was not invention but a mere exercise of the skill of the calling, and an advance plainly indicated by
the prior art. The court conceded that the functions performed by the patentee's combination were new and useful, but said that this did not necessarily make the device patentable, for it must not only be "new and useful," it
must also be an "invention" or "discovery," and a new device, however useful it may be, must reveal the flash of
creative genius, not merely the skill of the calling. Tested by that principle, the court concluded, this device was
not patentable because the patentee's skill in making this contribution did not reach the level of inventive genius
which the Constitution authorizes Congress to reward, stiff application of that test being necessary lest in the
constant demand for new appliances, the heavy hand of tribute be laid on each slight technological advance in an
art.
In Goodyear Tire & Rubber Co. v Ray-O-Vac Co. (1944) 321 US 275, 88 L Ed 721, 64 S Ct 593, the patent
for a leakproof dry-cell flashlight battery was held to be valid and infringed, where the patentee had placed
around the conventional elements of a dry-cell battery an insulating material and an outside protecting metal
sheath which inclosed the insulated sidewalls of the zinc container and tightly embraced both upper and lower
closures to prevent leakage. Viewed after the event, the court said, the means that the patentee adopted seemed
simple and such as should have been obvious to those who worked in the field, but this was not enough to negative invention; during a period of half a century, in which the use of flashlight batteries increased enormously
and the manufacturers of flashlight cells were conscious of the defects in them, no one had devised a method of
curing such defects, but once the method was discovered it commended itself to the public, as evidenced by
marked commercial success. These factors, the court pointed out, were entitled to weight in determining whether
the improvement amounted to invention, and should, in a close case, tip the scales in favor of patentability.
In Great Atlantic & Pacific Tea Co. v Supermarket Equipment Corp. (1950) 340 US 147, 95 L Ed 162, 71 S
Ct 127, reh den 340 US 918, 95 L Ed 663, 71 S Ct 349, the patent granted for a cashier's counter equipped with
a three-sided frame with no top or bottom, which, when pushed or pulled, moved groceries deposited within it
by a customer to the checking clerk and left them there when it was pushed back to repeat the operation, was
held invalid. Conceding that the resultant device worked as claimed, speeded the customer on his way, reduced
checking costs for the merchant, and had been widely adopted and successfully used, the court held that the District Court's finding of fact—that while each element in the device was known to prior art, "the conception of a
counter with an extension to receive a bottomless self-unloading tray" with which to push the contents of the
tray in front of the cashier was a decidedly novel feature and constituted a new and useful combination—could
not stand as a matter of law. The defect in this judgment, the court said, was that a standard of invention appeared to have been used that was less exacting than that required where a combination was made up entirely of
old components. The conjunction or concert of known elements must contribute something, the court continued,
and only when the whole in some way exceeded the sum of its parts was the accumulation of old devices patentable. The function of a patent, the court emphasized, was to add to the sum of useful knowledge: patents
could not be sustained when, on the contrary, their effect was to substract from former resources freely available
to skilled artisans, and a patent for a combination which only united old elements, with no change in their respective functions, obviously withdrew what already was known into the field of its monopoly, and diminished
the resources available to skilful men.
§ 3[b] Background—Presumption of patent validity
Synopsis
23 A.L.R. Fed. 326
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The courts invariably look behind the statutory presumption of validity attaching to an issued patent to determine whether the facts support the Patent Office's conclusion of nonobviousness of the subject matter.
By statute, 35 U.S.C.A. § 282, a patent "shall be presumed valid," as well as each claim of a patent whether
in dependent or independent form, and the "burden of establishing invalidity of a patent or any claim thereof
shall rest on the party asserting it." Substantially these provisions were first inserted in the Patent Act of 1952 to
codify existing judicial precedents. (Reviser's Note to 35 U.S.C.A. § 282) This presumption of validity of a patent in reality amounts to a presumption of "invention," that is, of nonobviousness of the subject matter.
Thus, in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, the court emphasized
that the primary responsibility for sifting out unpatentable material lay in the Patent Office, but that it had "observed a notorious difference between the standards applied by the Patent Office and by the courts," saying that
while many reasons could be adduced to explain the discrepancy, one might well be the free rein often exercised
by Examiners in their use of the concept of "invention." The backlog of applications for patents is itself a compelling reason for the Commissioner to strictly adhere to the 1952 Act as interpreted here, the court went on, and
this would not only expedite disposition but would bring about a closer concurrence between administrative and
judicial precedent.
While the courts recognize Patent Office expertise in technical determinations (for example, National Distillers & Chemical Corp. v Brenner (1967) 128 App DC 386, 389 F2d 927, in which it was said that a Patent Office determination of nonobviousness is entitled to great weight), they generally have not been satisfied to resolve the threshold question of obviousness vel non solely on that basis, but regularly conduct their own inquiry
to determine whether the differences between the subject matter patented and the prior art at the time the patent
issued "would have been obvious" to a person having ordinary skill in that art. The presumption that the differences were not obvious, which should attach to the issuance of a patent, has been largely dissipated by a general
recognition among the courts of an asserted loose application by the Patent Office of the standards of patentability.
Clearly the presumption is rebuttable by evidence of obviousness of the subject matter for which the patent
issued, as the court concluded in holding invalid the patent in the Graham Case, supra. The lower federal courts
have often held their decisions not to be controlled by the presumption.
On similar reasoning, the court treated the strength of the presumption of a patent's validity as minimal, in
Dale Electronics, Inc. v R. C. L. Electronics, Inc. (1973, CA1 NH) 488 F2d 382, since the evidence showed that
the application for this patent required almost 5 years of siege before the Patent Examiner yielded, and finally,
the Examiner, while rejecting all of the patentee's structural claims, allowed it on the basis of a description of
performance of the structure which he had steadily been rejecting. The court said that it was at a loss to explain
his allowance on the basis of such a distinction.
For example, the court stated that the presumption never usurps the court's ultimate province to declare
compliance or noncompliance with the statutory standards of patentability, in Atlas Copco Aktiebolag v Ingersoll-Rand Co. (1967, DC NJ) 279 F Supp 783, adding that while the patent grant by the Patent Office still gave
rise to a presumption of validity, the effective force of that presumption had been substantially weakened by the
plethora of decisions recognizing "the notorious difference" between the loose standards applied by patent examiners in approving patents for unpatentables, and the standards applied by the courts in dispatching them.
And the court observed in Monroe Auto Equipment Co. v Heckethorn Mfg. & Supply Co. (1964, CA6
Tenn) 332 F2d 406, cert den 379 US 888, 13 L Ed 2d 93, 85 S Ct 160, that the presumption of validity attaching
to a patent once it has been issued by the Patent Office, under 35 U.S.C.A. § 282, was only proper because of
the complexities of patent law and the expertise of the Patent Office, but added that the large number of patents
declared invalid by the courts bore telling witness to the fact that this presumption was in no way conclusive.
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A case exemplifying the reason why a court will be slow to accept any presumption of nonobviousness
arising from Patent Office expertise in issuing a patent is Crown Machine & Tool Co. v K V P-Sutherland Paper
Co. (1967, DC Cal) 297 F Supp 542, affd (CA9 Ariz) 409 F2d 1307, cert den 396 US 824, 24 L Ed 2d 75, 90 S
Ct 66, in which the court held invalid as obvious the patent issued on an apparatus and method for making
plastic containers from expandable polystyrene beads, noting that the Patent Office Examiner had held them unpatentable and that the file wrapper history showed that initially the Patent Office Board of Appeals affirmed the
decision of the Examiner, finding that "the application of suction to draw the material into the mold cavity" was
taught by a patent in the prior art. Later, the Board reversed itself on the basis of the specific material treated by
that prior art patent (a relatively moist powdered material) vis-a-vis this patentee's dry, lightweight particles and
the purpose and specific mode of utilization of vacuum by him. The court said that it was at a loss to explain the
Board's allowance on the basis of this distinction, for whether a vacuum was used to move a fine dust with approximately 10 percent moisture into a mold cavity, or used to move dry lightweight particles into a mold cavity, was a distinction without a difference.
A court may, of course, find that the facts support a finding of nonobviousness of the subject matter of a
patent, and when they do, they often rule in terms of the presumption, that is, they hold the evidence presented
in opposition not strong enough to rebut the presumption of validity.
Thus, in United States Gypsum Co. v Dale Industries, Inc. (1967, CA6 Mich) 383 F2d 497, the court found
the patentee's method of noise suppression in "dry wall" construction nonobvious, and held that the evidence
was insufficient "to upset the statutory presumption" of the validity of this patent.
And in Woodstream Corp. v Herter's, Inc. (1971, CA8 Minn) 446 F2d 1143, the court, in holding valid the
patent on a swing frame trap for small animals which it found nonobvious, stated that the plaintiff succeeded in
this infringement action primarily because the defendants failed to rebut the statutory presumption of validity attaching to the plaintiff's patent.
While many courts simply look at the facts as to obviousness in a case to determine whether application of
the presumption is warranted at all, other courts have concerned themselves with the degree of proof necessary
to rebut it, but with no unanimity of expression.
As pointed out in Hobbs v United States Atomic Energy Com. (1971, CA5) 451 F2d 849, the courts have
not distinguished themselves for consistency in their determination of the quantum of proof necessary to rebut
the presumption, the court noting in that case the varying statements of the necessary quantum of proof as reflected in a number of its own decisions. It declined to resolve the apparent inconsistency, stating, rather, that the
presumption of patent validity may be rebutted only by a quantum of proof, whether it is called clear and convincing or beyond a reasonable doubt, which was greater than a mere preponderance of the evidence, and that
one seeking to rebut the presumption bore a heavy burden.
Also recognizing that introduction of pertinent prior art not considered by patent office does not weaken or
destroy presumption of validity but rather helps challenger meet burden of persuasion:Federal Circuit
W.L. Gore & Associates, Inc. v Garlock, Inc. (1983, CA FC) 721 F2d 1540, 220 USPQ 303, cert den
(US) 83 L Ed 2d 107, 105 S Ct 172 (Teflon laminates and tubes)
Medtronic, Inc. v Cardiac Pacemakers, Inc. (1983, CA FC) 721 F2d 1563, 220 USPQ 97
Cases:
Patent's presumption of validity was slightly weakened by fact that patent office had failed to consider certain prior art patents. Oxy Metal Industries Corp. v Roper Corp. (1984, DC Md) 579 F Supp 664, 222 USPQ 33.
23 A.L.R. Fed. 326
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In action challenging validity of patent, there is presumption under 35 U.S.C.A. § 282 that patent is valid,
and burden of demonstrating invalidity by clear and convincing proof rests on party asserting it. Dow Chemical
Co. v American Cyanamid Co. (1985, ED La) 615 F Supp 471, 229 USPQ 171, affd (CA FC) 2 USPQ2d 1350,
cert den (US) 98 L Ed 2d 105.
See USM Corp. v Detroit Plastic Molding Co. (1982, ED Mich) 536 F Supp 902, 214 USPQ 603, § 8.
Presumption of patent validity is statutory procedural device and is not augmented by earlier adjudication of
patent "validity." Shelcore, Inc. v Durham Industries, Inc. (1984, CA FC) 745 F2d 621, 223 USPQ 584, 16 Fed
Rules Evid Serv 1270.
Design patent for microwave oven door was entitled to same statutory presumption of validity as utility patent pursuant to § 282. Litton Systems, Inc. v Whirlpool Corp. (1984, CA FC) 728 F2d 1423, 221 USPQ 97.
Introduction of evidence of pertinent and relevant prior art unconsidered by Patent and Trademark Office
does not change presumption of validity or burden of proof but merely constitutes means of meeting challenger's
burden of proof. Connell v Sears, Roebuck & Co. (1983, CA FC) 722 F2d 1542, 220 USPQ 193.
In patent infringement action, it was error for trial court to shift burden of proof to patent holder, requiring
him to prove facts necessary to conclusion of nonobviousness. Richdel, Inc. v Sunspool Corp. (1983, CA FC)
714 F2d 1573, 219 USPQ 8.
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§ 3[c] Background—Constitutional standard of patentability; "advance in the art"
Synopsis
The Constitution authorizes Congress to "promote" the useful arts, and the courts have construed this to mean
the promotion "of advances in the useful arts," so that any legislation seeking to secure exclusive rights to inventors must recognize this requirement of an advancement. This constitutional standard is reflected in the patent statute requirements of utility, novelty, and nonobviousness (see § 1[c], supra), and is not a separate condition of patentability.
While the test of "obviousness" of the subject matter sought to be patented is based on statute, correct application of that test requires consideration of the constitutional standard against which the statute is measured,
that is, the United States Constitution, Article I, § 8, cl 8, which provides that the Congress shall have power "To
promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
At the time the Constitution was drafted, the word "science" meant knowledge or learning, and was intended
to refer to the "copyright" provision. (Lutz, Patents and Science: A clarification of the Patent Clause of the
United States Constitution, 18 George Washington L Rev 50). Consequently, for present purposes the pertinent
part of clause 8 reads, "To promote the Progress of. . . useful Arts, by securing for limited Times to. . . Inventors
the exclusive Right to their. . . Discoveries."
The statutory test of obviousness comports with this constitutional standard ( § 4, infra), but the Supreme
Court has, in answer to those who would lower the standard of patentability (infra § 6[a]), made it plain that any
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statute which might be enacted in relation to patents must recognize only the promotion of advances in the useful arts.
At the outset, the court said in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, it
must be remembered that the federal patent power stems from a specific constitutional provision which authorizes the Congress "To promote the Progress of. . . useful Arts," and the clause is both a grant of power and a limitation, this qualified authority, unlike the power often exercised in the Sixteenth and Seventeenth Centuries by
the English Crown, being limited to the promotion of advances in the "useful Arts." The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose, the court
stated, nor may it enlarge the patent monopoly without regard to the innovation, advancement, or social benefit
gained thereby. Moreover, the court went on, Congress may not authorize the issuance of patents whose effects
are to remove existent knowledge from the public domain or to restrict free access to materials already available,
for innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a
patent system which by constitutional command must promote the progress of useful arts; this is the standard expressed in the Constitution and it may not be ignored. Within the limits of the constitutional grant, the court added, the Congress may, implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim, and it is the duty of the Commissioner of Patents and of the courts
in the administration of the patent system to give effect to the constitutional standard by appropriate application,
in each case, of the statutory scheme of the Congress.
More recently, in Anderson's-Black Rock, Inc. v Pavement Salvage Co. (1969) 396 US 57, 24 L Ed 2d 258,
90 S Ct 305, the Supreme Court reiterated its view that the "patent standard is basically constitutional," and that
Congress may not enlarge the patent monopoly without regard to the innovation, advancement, or social benefit
gained thereby.
"Advance in the art" referred to by the Supreme Court is not a separate condition of the patentability of particular subject matter, as is sometimes asserted, but is simply the basic standard of patentability. When it has
been argued that "advancement" is an added condition of patentability, the courts have generally held that the
three statutory conditions of utility, novelty, and nonobviousness were simply the indicia of advancement in the
art.
And see Carson v Bland (1968, CA10 Okla) 398 F2d 423, in which the court said that the device before it,
an assemblage of elements previously known and used, would be entitled to patent protection only if it would
"promote the progress of Science and useful Arts" as required by Article 1, § 8, of the Constitution, and held that
it would not do so under the standards of patentability particularized by Congress in requiring that an invention
be endowed with qualities of novelty, utility, and nonobviousness.
Thus, in Commissioner of Patents v Deutsche Gold-Und-Silber-Scheidianstalt Vormals Roessls (1968) 130
App DC 95, 397 F2d 656, where the Commissioner of Patents argued that "advance in the art" was a fourth condition of patentability required by 35 U.S.C.A. § 103 and the Graham Case, supra, and that the courts must first
look into the art to find what the real merit of the alleged discovery or invention was, and whether it had advanced the art substantially, the court determined that if advance in a useful art was the necessary standard to
sustain patentability, the logical view was that the three independent statutory conditions were not separate from
advancement but were the very indicia of it, in particular the condition of nonobviousness, and said that while
Graham admonished the Commissioner to tighten up on applications and mildly rebuked him for leniency in applying the conditions of § 103, this was not the creation of a new requirement of patentability. The court said
that the requirement of advancement was an illusory one, focusing on something incapable of precise definition,
that other than an implication that advancement was the equivalent of "progress" as used in the constitutional
phrase, the court in Graham made no effort to define what constituted an advancement, and that, similarly, the
opinion did not tell how to determine whether an advancement had been made, although it did state more than
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once that an advancement in the constitutional sense was tied in with the statutory condition of nonobviousness.
Indeed, the court said, Graham drew a close parallel between the determination of nonobviousness and advancement to the extent that the inquiry into nonobviousness "comports with the constitutional strictures." Similarly,
the court continued, it was clear that the pivotal condition discussed in Graham, nonobviousness, which was added to the patent statute in 1952, strongly equated itself with the judicial condition of "invention" previously so
long used, both formulations, "invention" and nonobviousness, placing emphasis on the pertinent art existing at
the time invention was made, and both being implicitly tied to advances in that art.
Cases:
Patent claim is invalid for obviousness if its differences over prior art are not sufficient to warrant patent
grant. 35 U.S.C.A. § 103(a). Freedman Seating Co. v. American Seating Co., 420 F.3d 1350 (Fed. Cir. 2005).
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II. General considerations
§ 4. Statutory requirement of nonobvious subject matter constitutionality
There was no statutory provision corresponding to the first sentence of 35 U.S.C.A. § 103 (see § 1[c], supra)
relating to obviousness of the subject matter, before the Patent Act of 1952 was enacted, but the refusal of patents by the Patent Office, and the holding of the invalidity of patents by the courts, on the ground of lack of "invention" or lack of patentable novelty, had been followed since at least as early as 1850. This paragraph was added, the Reviser's Note to the statute states, "with the view that an explicit statement in the statute may have
some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be
worked out." As to the last sentence of § 103 on the manner of invention, see § 6[c], infra.
The statutory condition of nonobviousness established by 35 U.S.C.A. § 103 comports with the standard expressed in the Constitution.
In Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, the United States Supreme
Court noted that the Patent Act of 1952 set out the conditions of patentability in three sections, and that analysis
of them indicated that patentability was dependent upon three explicit conditions: novelty and utility as articulated and defined in 35 U.S.C.A. §§ 101 and 102, the "new and useful" tests which have always existed in the
statutory scheme; and nonobviousness, the new statutory formulation set out in 35 U.S.C.A. § 103 which, the
court said, was strongly reminiscent of the language in Hotchkiss v Greenwood (1851) 52 US 248, 13 L Ed 683,
supra § 3[a], both formulations placing emphasis on the pertinent art existing at the time the invention was made
and both implicitly being tied to advances in that art. The major distinction which the court found was that Congress had emphasized "nonobviousness" as the operative test of the section, rather than the less definite "invention" language of Hotchkiss that Congress thought had led to "a large variety" of expressions in decisions and
writings. Noting that both the Senate and House Reports (SR No. 1979, 82nd Cong 2d Sess (1952); HR No.
1923, 82nd Cong 2d Sess (1952)) stated that the first sentence of the section "paraphrases language which has
often been used in decisions of the courts, and the section is added to the statute for uniformity and definite-
23 A.L.R. Fed. 326
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ness," the court said that this legislative history, as well as other sources, showed that the revision was a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into
the obviousness of the subject matter sought to be patented were a prerequisite to patentability. Approached in
this light, the court concluded, the emphasis on nonobviousness is one of inquiry, not quality, and as such, comports with the constitutional strictures.
Cases:
Constitution requires that there be some "invention" to be entitled to patent protection; and unless more ingenuity and skill are required than are possessed by ordinary mechanic acquainted with business, there is absence of degree of skill and ingenuity that constitute essential elements of every invention, so that patent on barn
water flush system for cow manure is invalid for obviousness. Sakraida v Ag Pro, Inc., 425 US 273, 47 L. Ed. 2d
784, 96 S Ct 1532, reh den 426 US 955, 49 L. Ed. 2d 1194, 96 S Ct 3182.
In order to determine invalidity of patent for obviousness, four factual inquiries must be made concerning:
(1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of nonobviousness, which in case law is
often said to include commercial success, long-felt but unresolved need, failure of others, copying, and unexpected results. 35 U.S.C.A. § 103(a). On-Line Technologies, Inc. v. Perkin-Elmer Corp., 428 F. Supp. 2d 67 (D.
Conn. 2006).
Obviousness of a patent is determined by looking at (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the art; objective indications of nonobviousness are also considered. 35 U.S.C.A. § 103. Fuji Photo Film Co. Ltd. v. Jazz Photo Corp.
Inc., 173 F. Supp. 2d 268 (D.N.J. 2001).
An obviousness analysis is based on four underlying factual inquiries: (1) the scope and content of the prior
art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art;
and (4) secondary considerations, if any, of nonobviousness of the patent. 35 U.S.C.A. § 103(a). McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 60 U.S.P.Q.2d (BNA) 1001 (Fed. Cir. 2001).
Under 35 U.S.C.A. § 103, patent will not be granted where invention, when compared to prior art, is considered to have been obvious to person having ordinary skill in the art at time invention was made. Re Johnson
(1984, CA FC) 747 F2d 1456, 223 USPQ 1260.
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§ 5[a] As presenting questions of fact and law—Generally
From early days, the patent profession had considered patent validity to be a question of fact, and the United
States Supreme Court seemed generally to agree. (For example, see United States v Esnault-Pelterie (1938) 303
US 26, 82 L Ed 625, 58 S Ct 412.)[6] However, it now has unequivocally determined that the ultimate question
of patent validity is one of law. The threshold question of obviousness is, therefore, essentially also one of law
(see § 5[c], infra), with the answer based upon a proper evaluation of the answers to factual inquiries that must
be made (see § 7[a], infra).
The court in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, said that while the
23 A.L.R. Fed. 326
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ultimate question of patent validity was one of law, the condition in 35 U.S.C.A. § 103 lent itself to several basic
factual inquiries: the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Against this background, the obviousness or nonobviousness of the subject matter is to be determined, the court went on, but this is not to say that there will not be difficulties in applying the nonobviousness test, for what is obvious is not a question upon which there is likely to be
uniformity of thought in every given factual context. The difficulties, however, the court added, are comparable
to those encountered daily by the courts in such frames of reference as negligence and scienter, and should be
amenable to a case-by-case development.
The holding in the Graham Case, supra, that the question of patent validity is one of law, has been relied
upon by several lower courts with respect to granting judgment against a patentee notwithstanding a jury verdict
favorable to him.
In Allen Industries, Inc. v National Sponge Cushion, Inc. (1967, DC NJ) 292 F Supp 504, affd (CA3 NJ)
403 F2d 717, cert den 394 US 920, 22 L Ed 2d 453, 89 S Ct 1194, reh den 394 US 1025, 23 L Ed 2d 50, 89 S Ct
1627, where defendant patent holder, in an action for a declaratory judgment seeking to have the claims of its
patent declared invalid, insisted upon exercising its right to a jury trial and the jury returned a verdict in its favor, finding the claims of the patent valid, the plaintiff then filed a motion for judgment nowithstanding the verdict. The motion was granted, the court saying that in dealing with the motion it was well aware of the delicate
balance that must be maintained in the allocation of functions between the judge and the jury, but that the ultimate question of patent validity was one of law, and that it was required to hold as a matter of law that the patent
was invalid for failure to meet the test of nonobviousness.
And in Bentley v Sunset House Distributing Corp. (1966, CA9 Cal) 359 F2d 140, where a jury returned a
general verdict for the patentee of a meatball mold but the District Court granted the alleged infringer's motion
for judgment notwithstanding the verdict, the patentee asserted on appeal that the grant of judgment n.o.v. effectively deprived him of the jury trial to which the Constitution entitled him. However, the court said that debate over the appropriate accommodation of the constitutional guaranty of jury trial and the necessity of insuring
that the constitutional and statutory standards of patentability were met in particular cases had been foreclosed
by the Graham Case, where it was held that the ultimate question of patentability was one of law. If patents are
invalid as a matter of law, the court said, the District Court not only had the power, but it was its duty, to grant
the motion for judgment n.o.v.
Cases:
Ultimate test of patent validity is one of law, but resolution of issue of obviousness necessarily entails basic
factual inquiries to determine (1) scope and content of prior art, (2) differences between prior art and claims at
issue, and (3) level of ordinary skill in pertinent art. Sakraida v Ag Pro, Inc., 425 US 273, 47 L. Ed. 2d 784, 96 S
Ct 1532, reh den 426 US 955, 49 L. Ed. 2d 1194, 96 S Ct 3182.
Question of obviousness vel non is essentially one of fact, and appellate court will not reverse District
Court's application of correct legal principle unless clearly erroneous. Rosen v Lawson-Hemphill, Inc. (CA1 RI)
549 F2d 205, 193 USPQ 193.
Determination of obviousness, although within limits question of law, is essentially one of fact. International Tel. & Tel. Corp. v Raychem Corp. (CA1 Mass) 538 F2d 453, cert den 429 US 886, 50 L. Ed. 2d 167, 97 S Ct
238.
On a claim of patent invalidity based on obviousness, the scope and content of the prior art are factual questions to be determined by the jury. 35 U.S.C.A. § 103. NewRiver, Inc. v. Newkirk Products, Inc., 674 F. Supp.
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2d 320 (D. Mass. 2009).
Under patent law, an obviousness determination is a legal conclusion based on factual evidence. 35
U.S.C.A. § 103(a). Insight Technology Inc. v. SureFire, LLC, 447 F. Supp. 2d 120, 2004 DNH 120 (D.N.H.
2006).
Ultimate determination of obviousness is a question of law but determining the scope and content of the prior art, differences between the prior art and the claimed invention, the level of ordinary skill in the art, and objective evidence of secondary considerations are questions of fact. 35 U.S.C.A. § 103(a). Mangosoft, Inc. v. Oracle Corp., 421 F. Supp. 2d 392, 2006 DNH 30 (D.N.H. 2006).
To determine obviousness within meaning of 35 U.S.C.A. § 103, appellate court examines scope and content of prior art, differences between prior art and claims at issue, level of ordinary skill in pertinent art, and recognizes that validity is question of law and District Court's findings of fact will not be disturbed unless clearly
erroneous, and as based on undisputed facts or documentary evidence, appellate court can substitute own inferences and conclusions for those of trial court. U. S. Philips Corp. v National Micronetics, Inc. (CA2 NY) 550
F2d 716, 193 USPQ 65, cert den 434 US 859, 54 L. Ed. 2d 131, 98 S Ct 183.
Obviousness of a patent is a question of law based on underlying factual inquiries including: (1) the scope
and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the prior art and
the claimed invention, and (4) extent of any objective indicia of non-obviousness. 35 U.S.C.A. § 103(a). Sears
Ecological Applications Co., LLC v. MLI Associates, LLC, 652 F. Supp. 2d 244 (N.D. N.Y. 2009).
A court's obviousness inquiry should be guided by four factors: (1) the scope and content of the prior art; (2)
the differences between the claimed invention and the prior art; (3) the level of ordinary skill contained in the
prior art; and (4) secondary considerations that give light to the circumstances surrounding the origin of the subject matter sought to be patented. 35 U.S.C.A. § 103(a). Alloc, Inc. v. Norman D. Lifton Co., 653 F. Supp. 2d
469 (S.D. N.Y. 2009).
In determining whether a patent is invalid as obvious, court considers factors such as (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, and (3) the level of ordinary skill in
the pertinent art. 35 U.S.C.A. § 103. Papyrus Technology Corp. v. New York Stock Exchange, LLC, 653 F.
Supp. 2d 402 (S.D. N.Y. 2009).
Patent obviousness is ultimately a question of law that is based on underlying facts. 35 U.S.C.A. § 103(a).
Scanner Technologies Corp. v. Icos Vision Systems Corp., N.V., 486 F. Supp. 2d 330 (S.D. N.Y. 2007).
Patent obviousness is a question of law, which depends on several underlying factual inquiries: the scope
and content of the prior art are to be determined; differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art resolved. 35 U.S.C.A. § 103(a). In re '318 Patent Infringement Litigation, 578 F. Supp. 2d 711 (D. Del. 2008).
Obviousness inquiry requires a determination of whether the claimed invention would have been obvious as
a legal matter, based on underlying factual inquiries including: (1) the scope and content of the prior art, (2) the
level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) secondary considerations of nonobviousness. Ampex Corp. v. Eastman Kodak Co., 461 F. Supp. 2d 232 (D. Del.
2006).
Patent obviousness determination is question of law which is based factual inquiry into: (1) scope and content of prior art; (2) differences between claims and prior art; (3) level of ordinary skill in pertinent art; and (4)
any secondary considerations of nonobviousness such as commercial success, long felt but unsolved need, failure of others, and acquiescence of others in industry that patent is valid. 35 U.S.C.A. § 103. Merck & Co., Inc.
v. TEVA Pharmaceuticals USA, Inc., 228 F. Supp. 2d 480 (D. Del. 2002).
Question of patent's obviousness turns on four factual inquiries: (1) scope and content of prior art; (2) level
of ordinary skill in art; (3) differences between claimed invention and prior art; and (4) any objective indicators
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of non–obviousness, such as commercial success. 35 U.S.C.A. § 103(a). Scimed Life Systems, Inc. v. Johnson &
Johnson, 225 F. Supp. 2d 422 (D. Del. 2002).
The question of whether a patent is obvious is a legal question, based on the underlying factual determinations. 35 U.S.C.A. § 103(a). Everett Laboratories, Inc. v. Breckenridge Pharmaceutical, Inc., 573 F. Supp. 2d
855 (D.N.J. 2008).
While question of obviousness is ultimately one of law, it involves underlying questions of fact. Tights, Inc.
v Acme-McCrary Corp. (CA4 NC) 541 F2d 1047, cert den 429 US 980, 50 L. Ed. 2d 589, 97 S Ct 493.
District Court's decision that patent is not invalid for obviousness is determination as matter of law that infringer has not met burden of proof, and obviousness determination is question of law based on factual background and is subject to review on appeal. Deering Milliken Research Corp. v Beaunit Corp. (CA4) 189 USPQ
565.
While ultimate question of patent validity is one of law, application of nonobviousness test depends upon
factual inquiries. Reed Tool Co. v Dresser Industries, Inc. (1982, CA5 Tex) 672 F2d 523, 214 USPQ 501.
Obviousness is ultimate question of law, but resolution requires factual determinations of scope and content
of prior art, differences from prior art, and level or ordinary skill in art, and factual determinations of trial court
are binding on appellate court unless clearly erroneous. Parker v Motorola, Inc. (CA5 Fla) 524 F2d 518, reh den
(CA5 Fla) 526 F2d 1407 and cert den 425 US 975, 48 L. Ed. 2d 799, 96 S Ct 2175, reh den 427 US 908, 49 L.
Ed. 2d 1200, 96 S Ct 3194.
Issue of obviousness-nonobviousness is ultimately determined as conclusion of law, involving as it does,
consideration of subject matter of invention as whole and consideration of legal ghost called "person having ordinary skill in the arts"; novelty and utility, on other had, are determinable as issues of fact; thus, obviousness of
invention intended to furnish gas and electric service to individual mobile home is ultimately question of law
despite presence of several basic factual inquiries. Nickola v Peterson (CA6 Mich) 580 F2d 898, cert den 440
US 961, 59 L. Ed. 2d 774, 99 S Ct 1504.
Ultimate determination of patent validity and obviousness is question of law based on factual determinations and although findings of fact are binding upon appeal unless clearly erroneous, appellate court can disagree
with ultimate legal determination of obviousness. Reynolds Metals Co. v Acorn Bldg. Components, Inc. (CA6
Mich) 548 F2d 155, 192 USPQ 737.
Obviousness is a question of law; thus, trial court committed reversible error in instructing jury to determine
ultimate legal question of obviousness of socket wrench with quick-release feature. Roberts v Sears, Roebuck &
Co. (1983, CA7 Ill) 723 F2d 1324, 221 USPQ 504.
Question of patent validity is ultimately one of law which appellate court must review after examining facts
to determine whether standards of obviousness under 35 U.S.C.A. § 103 have been met. St. Regis Paper Co. v
Bemis Co. (CA7 Ill) 549 F2d 833, 193 USPQ 8, cert den 434 US 833, 54 L. Ed. 2d 94, 98 S Ct 119.
Obviousness is question of law based on determinations of fact, and because obviousness is question of law,
District Court is not bound by expert testimony or jury verdict on validity, and trial court's evaluation of evidence and finding of invalidity for obviousness is affirmed. Pederson v Stewart-Warner Corp. (CA7 Ill) 536 F2d
1179, 192 USPQ 20, cert den 429 US 985, 50 L. Ed. 2d 597, 97 S Ct 505.
Obviousness raises question of law reviewable on appeal, but where record supports trial judge's finding of
invalidity for obviousness of rotary seal assembly from successful prior art device, invalidity judgment is affirmed. Chicago Rawhide Mfg. Co. v Crane Packing Co. (CA7 Ill) 523 F2d 452, cert den 423 US 1091, 47 L.
Ed. 2d 103, 96 S Ct 887.
Determination of obviousness is matter of law made in light of factual inquiries including scope and content
of prior art, differences between prior art and claims, and level of ordinary skill in pertinent art. Gettelman Mfg.,
Inc. v Lawn 'N' Sport Power Mower Sales & Services, Inc. (CA7 Wis) 517 F2d 1194, 186 USPQ 376.
23 A.L.R. Fed. 326
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Patent obviousness is a question of law based on underlying findings of fact, which include: (1) the scope
and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the art at the time the invention was made, and (4) objective evidence of nonobviousness, if any.
35 U.S.C.A. § 103(a). Eli Lilly and Co. v. Teva Pharmaceuticals USA, Inc., 609 F. Supp. 2d 786 (S.D. Ind.
2009).
The "obviousness" analysis for patent invalidity is an objective one and requires a district court to consider:
(1) the scope and content of the prior art, (2) differences between the prior art and the claims at issue, and (3) the
level of ordinary skill in the pertinent art. 35 U.S.C.A. § 103(a). General Elec. Co. v. SonoSite, Inc., 641 F.
Supp. 2d 793 (W.D. Wis. 2009).
Although question of patent obviousness is issue of law, its determination is dependent on a series of factual
inquiries into: (1) scope and content of prior art; (2) differences between prior art and claims at issue; (3) level
of ordinary skill in the art; and (4) objective evidence of obviousness or nonobviousness. 35 U.S.C.A. § 103.
Haberman v. Playtex Products, Inc., 403 F. Supp. 2d 708 (W.D. Wis. 2005).
Issue of whether patents on designs for retaining wall blocks were invalid as obvious based on prior art
blocks was question for jury in patentee's infringement action against competitors. 35 U.S.C.A. § 103(a). Anchor
Wall Systems v. Rockwood Retaining Walls, Inc., 610 F. Supp. 2d 998 (D. Minn. 2009).
Although issues of fact are presented, they are not issues of "material" fact so that summary judgment of invalidity of patent for obviousness from related art is affirmed because court can consider art and patent claims
for simple invention without aid of expert opinion. Grayson v McGowan (CA9 Cal) 543 F2d 79, 192 USPQ 571.
Patent obviousness ultimately is a legal question, based on underlying factual determinations which are (1)
the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) evidence of secondary factors, also known as objective indicia of
non-obviousness. 35 U.S.C.A. § 103. Ormco Corp. v. Align Technology, Inc., 653 F. Supp. 2d 1016 (C.D. Cal.
2009).
The determination of obviousness is a question of law based on underlying factual considerations, including
(1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the
level of ordinary skill in the art; and (4) any secondary considerations, such as whether the inventor was responding to long felt but unsolved needs, the failures of others, and the commercial success of the invention. 35
U.S.C.A. § 103. Synvasive Corp. v. Stryker Corp., 478 F. Supp. 2d 1193 (E.D. Cal. 2007).
The question of patent obviousness is a question of law premised on underlying findings of fact. 35
U.S.C.A. § 282. Seiko Epson Corp. v. Coretronic Corp., 633 F. Supp. 2d 931 (N.D. Cal. 2009).
Underlying factual determinations used in determining whether a patented invention is invalid as obvious
include: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue;
(3) the level of ordinary skill in the art; and, if necessary, (4) secondary evidence of nonobviousness. Therasense, Inc. v. Becton, Dickinson and Co., 560 F. Supp. 2d 835 (N.D. Cal. 2008), reconsideration denied in part,
2008 WL 2037732 (N.D. Cal. 2008).
The legal conclusion as to obviousness of a patent is based on underlying factual determinations, including:
(1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) the extent of any proffered objective indicia of nonobviousness,
sometimes termed secondary considerations, such as commercial success, long felt but unresolved needs, and
failures of others. 35 U.S.C.A. § 103(a). Bally Gaming, Inc. v. IGT, 623 F. Supp. 2d 1213 (D. Nev. 2008).
Legal conclusion as to obviousness of patent is based on underlying factual determinations, including: (1)
the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) the extent of any proffered objective indicia of nonobviousness,
sometimes termed secondary considerations, such as commercial success, long felt but unresolved needs, and
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failures of others. 35 U.S.C.A. § 103(a). Shuffle Master, Inc. v. MP Games LLC, 553 F. Supp. 2d 1202 (D. Nev.
2008).
Appellate court accepts trial court's findings of fact as to elements combined in patent and scope and content
of prior art, but is not bound by conclusion of law as to obviousness and finds patent invalid as obvious to one
skilled in art. Rutter v Williams (CA10 Okla) 541 F2d 878, 193 USPQ 760.
Obviousness becomes question of law after consideration of scope and content of prior art, differences
between prior art and claims of patent in suit, and level of ordinary skill in pertinent art, and explicit findings on
such criteria are to be made in every case. Price v Lake Sales Supply R. M., Inc. (CA10 Colo) 510 F2d 388, 183
USPQ 519.
The factual determinations underpinning the legal conclusion of obviousness under patent law include: (1)
the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) evidence of secondary factors, also known as objective indicia of
non-obviousness. 35 U.S.C.A. § 103(a). Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 648 F.
Supp. 2d 1294 (M.D. Fla. 2009).
Whether the invention was obvious is a legal conclusion based on certain factual inquiries, including: (1)
the level of ordinary skill in the art; (2) the scope and content of the prior art; (3) the differences between the
claimed invention and the prior art; and (4) secondary, objective considerations of non-obviousness including
long-felt need, commercial success, or the failure of others. 35 U.S.C.A. § 103. Levenger Co. v. Feldman, 516 F.
Supp. 2d 1272 (S.D. Fla. 2007).
The obviousness of a patent is a question of law, resolved based upon four underlying factual questions: (1)
the scope and content of the prior art; (2) the differences between the prior art and the subject matter of the patent at issue; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations which bear on
the issue of nonobviousness. 35 U.S.C.A. § 103(a). In re Dippin' Dots Patent Litigation, 249 F. Supp. 2d 1346
(N.D. Ga. 2003).
Obviousness is question of law with underpinning factual findings; accordingly, court need not defer to obviousness determination of Patent and Trademark Office (PTO), and is instead free to make independent determination as to legal conclusions and inferences to be drawn from facts. 35 U.S.C.A. § 103(a). Hitachi Koki Co.,
Ltd. v. Doll, 620 F. Supp. 2d 4 (D.D.C. 2009).
Although obviousness in a patent infringement case is a question of law, it is based on factual underpinnings. i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 93 U.S.P.Q.2d 1943 (Fed. Cir. 2010).
Although obviousness in a patent infringement case is a question of law, it is based on factual underpinnings. i4i Ltd. Partnership v. Microsoft Corp., 589 F.3d 1246, 93 U.S.P.Q.2d 1161 (Fed. Cir. 2009).
Obviousness under patent law is a question of law based on underlying findings of fact; the factual determinations for obviousness include: (1) the scope and content of the prior art, (2) the characteristics and understanding of an individual of ordinary skill in the relevant field of art at the time of invention, (3) the differences
between the claimed invention and the prior art, and (4) the evidence of secondary factors, also known as objective indicia of non-obviousness. Source Search Technologies, LLC v. LendingTree, LLC, 588 F.3d 1063, 92
U.S.P.Q.2d 1907 (Fed. Cir. 2009).
Obviousness is a legal question reviewed de novo by the Court of Appeals to determine whether the subject
matter of the claimed invention would have been obvious at the time the invention was made to a person of ordinary skill in the art to which the subject matter of the invention pertains; underpinning that legal issue are factual questions relating to the scope and content of the prior art, the differences between the prior art and the
claimed invention, the level of ordinary skill in the art, and any relevant secondary considerations, such as commercial success, long-felt need, and the failure of others. 35 U.S.C.A. § 103(a). Lucent Technologies, Inc. v.
Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009).
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The factual determinations that form the basis of the legal conclusion of obviousness in a patent infringement case include (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary factors, known as objective indicia of non-obviousness. Altana Pharma AG v. Teva Pharmaceuticals USA, Inc., 566 F.3d 999 (Fed.
Cir. 2009).
The determination of obviousness of a patent is a matter of law based on findings of underlying fact,
wherein the Graham factors guide the inquiry. Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir.
2008).
Ultimate determination of whether an invention would have been obvious in light of prior art is a legal conclusion based on underlying findings of fact. 35 U.S.C.A. § 103(a). In re Kahn, 441 F.3d 977 (Fed. Cir. 2006).
Whether a prior art reference anticipates a claimed invention is a question of fact in the patent context.
Seachange Intern., Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005).
In the patent context, obviousness is a question of law based on underlying facts. Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297 (Fed. Cir. 2005), reh'g denied, (June 13, 2005).
Obviousness of patented invention is question of law based on underlying facts, including factual questions
of scope and content of prior art, differences between claimed invention and prior art, level of ordinary skill in
field of invention, and any objective evidence of unobviousness. Fromson v. Anitec Printing Plates, Inc., 132
F.3d 1437, 45 U.S.P.Q.2d (BNA) 1269, 48 Fed. R. Evid. Serv. (LCP) 611 (Fed. Cir. 1997), reh'g denied, in banc
suggestion declined, (Feb. 23, 1998) and (abrogated by, Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448,
46 U.S.P.Q.2d (BNA) 1169 (Fed. Cir. 1998)) and petition for cert. filed, 66 U.S.L.W. 3783, 67 U.S.L.W. 3013
(U.S. May 26, 1998).
Obviousness for purposes of 35 U.S.C.A. § 103 is determined as question of law based on series of factual
determinations, including (1) scope and content of prior art, (2) differences between art and claims at issue, (3)
level of ordinary skill in art, and (4) any other objective evidence; factual determinations of United States International Trade Commission are reviewed under substantial evidence standard, and legal conclusion regarding
obviousness is then reviewed de novo. Texas Instruments, Inc. v United States Int'l Trade Comm'n (1993, CA
FC) 988 F2d 1165, 93 Daily Journal DAR 8738, 14 BNA Intl Trade Rep 2481, 26 USPQ2d 1018.
In applying obviousness standard mandated by 35 U.S.C.A. § 103 in actions determining validity of patents,
while ultimate determination is legal conclusion, it rests on factual determinations required by § 103, and review
of underlying factual findings is limited to determining whether they were clearly erroneous in light of evidence.
Kimberly-Clark Corp. v Johnson & Johnson (1984, CA FC) 745 F2d 1437, 223 USPQ 603.
Fact that plaintiff presented expert opinion of nonobviousness and defendant did not present expert opinion
of obviousness did not preclude grant of summary judgment against plaintiff notwithstanding that obviousness
of design is assessed by eyes of ordinary designer rather than ordinary observer or reasonable man. Petersen
Mfg. Co. v Central Purchasing, Inc. (1984, CA FC) 740 F2d 1541, 222 USPQ 562.
Submission of question of obviousness to jury, accompanied by detailed special interrogatories and appropriate instructions, is not error. Connell v Sears, Roebuck & Co. (1983, CA FC) 722 F2d 1542, 220 USPQ 193.
Underlying factual inquiries to determine if a patent is invalid for obviousness are: (1) the scope and content
of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention
and the prior art; and (4) any objective evidence of nonobviousness, such as long felt need, commercial success,
the failure of others, or copying. 35 U.S.C.A. § 103(a). Chemical Separation Technology, Inc. v. U.S., 51 Fed.
Cl. 771 (2002).
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§ 5[b] As presenting questions of fact and law—Application of "clearly erroneous" standard; findings of
fact
Rule 52(a) of the Federal Rules of Civil Procedure provides, inter alia, that in actions tried upon the facts
without a jury, the court shall find the facts specially, and that the findings of fact "shall not be set aside unless
clearly erroneous," with due regard to the opportunity of the trial court to judge the credibility of the witnesses.
Since the condition of nonobviousness in 35 U.S.C.A. § 103 "lends itself to several basic factual inquiries,"
(supra, § 5[a]), the question has arisen as to the effect of Rule 52(a) on review of a District Court's findings of
fact in patent cases. It has been held in a number of cases that the appellate court is to be governed by the
"clearly erroneous" standard of Rule 52(a) in reviewing the lower court's findings of fact on the issue of obviousness.
Affirming denial of validity to a patent, the court in Mahaffy & Harder Engineering Co. v Standard Packaging Corp. (1968, CA4 Va) 389 F2d 525, said that since statutory obviousness was a question of fact, it could
reverse the district judge's finding in the case before it only if it were convinced that it was clearly erroneous.
Thus, in Porter-Cable Machine Co. v Black & Decker Mfg. Co. (1968, CA4 Md) 402 F2d 517, cert den 393
US 1063, 21 L Ed 2d 706, 89 S Ct 716, the court observed that determination of the controversy over this patent
called for resolution of factual issues, and that while the ultimate question of patent validity was one of law, the
condition of nonobviousness in 35 U.S.C.A. § 103 lent itself to several basic factual inquiries. Literally, therefore, the court said, decisions upon these issues came within the provision of Rule 52(a) of the Federal Rules of
Civil Procedure that findings of fact "shall not be set aside unless clearly erroneous," and here the rule was significantly nerved and inspirited by the judicial scrutiny and deliberation from which the findings evolved, the
pattern for decision prescribed in the Graham Case having been pursued almost ad verbum and the primary inquiries there directed having been exhausted by the district judge who arrayed and measured the evidence on
each. Resolution of the issues in the case required and received painstaking study, the court said, and from these
foundation facts, patentability of the device in suit soundly followed as a conclusion of law.
Where the District Court held that the incorporation of the features of two later patents in combination as
supplements to the original patented device on which the patent had expired was obvious, and that the patent in
suit lacked "invention" under 35 U.S.C.A. § 103, the "findings of fact" of the District Court in Bendix Corp. v
Freeland Gauge Co. (1969, CA6 Mich) 407 F2d 1293, were held to require affirmance of its holding of invalidity, under Rule 52(a), Federal Rules of Civil Procedure, since its findings were not clearly erroneous.
In Novo Industrial Corp. v Standard Screw Co. (1967, CA7 Ill) 374 F2d 824, cert den 389 US 823, 19 L Ed
2d 75, 88 S Ct 51, it was pointed out that the trial court heard the testimony of expert witnesses with respect to
the elements, operational functions, and characteristics of the patent in suit, and the scope and content of prior
art disclosures, and considered it from the standpoint of whether the construction of the patent would have been
obvious to one skilled in the art at the time of the making of the claimed invention, before holding the patent invalid. Rule 52(a) of the Federal Rules of Civil Procedure, therefore, applies to review of the trial court's factual
findings relating to such matters, the Court of Appeals said, and where, as here, there was substantial evidentiary
support for those findings, the reviewing court was precluded from rejecting any of the critical factual findings
relevant to the issue of lack of invention, or "obviousness".
Under Rule 52(a), Federal Rules of Civil Procedure, the court said in Greening Nursery Co. v J & R Tool &
Mfg. Co. (1967, CA8 Iowa) 376 F2d 738, it had traditionally given considerable weight to a District Court's determination that a particular modification of prior art was one which might have been developed by a mechanic
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in the art, even though the ultimate issue of "obviousness" must be considered a matter of law, and that where
there was nothing in the facts presented to lead to a different result the District Court's judgment must be affirmed.
In Eimco Corp. v Peterson Filters & Engineering Co. (1968, CA10 Utah) 406 F2d 431, cert den 395 US
963, 23 L Ed 2d 749, 89 S Ct 2105, where the trial court's "complete and careful findings" disclosed that for the
purpose of ascertaining whether this device would be obvious to a person having ordinary skill in the art, it
measured the device with the prior art together with the record as a whole, the Court of Appeals held that the
finding of nonobviousness here was amply supported by substantial evidence. It said that obviousness "to a person having ordinary skill in the art" was an elusive factual subject to be determined in the trial court, and that
while the ultimate question of validity was one of law, obviousness as referred to in 35 U.S.C.A. § 103 was a
question of fact for the trial court, whose determination should not be set aside in the absence of clear error.
The trial court properly addressed itself to the issue of obviousness by considering this patent on a method
of treating bodies of water in terms of the prior art, and distinguished the differences between that art and the
claims here at issue, the Court of Appeals pointed out in Hinde v Hot Sulphur Springs (1973, CA10 Colo) 482
F2d 829. It said that while the question of patent validity was one of law for the court to decide, the issue of obviousness must be resolved on the basis of factual inquiries, and that here the findings of nonobviousness and
conclusion of validity by the trial court must stand since they were not clearly erroneous.
Although reversal of a lower court's determination that the subject matter in suit was or was not obvious is
ordinarily rested on the ground that patent validity is a question of law, and that the lower court committed error
in applying the law (see § 5[c], infra), reversal may, of course, be rested simply on the ground that, in applying
Rule 52(a), Federal Rules of Civil Procedure, the lower court's findings as to the facts were clearly erroneous.
Such reasoning appears to have been at the back of the court's reversal of the lower court's denial of validity
to the patent involved in Shaw v E. B. & A. C. Whiting Co. (1969, CA2 Vt) 417 F2d 1097, cert den 397 US
1076, 25 L Ed 2d 811, 90 S Ct 1518, reh den 398 US 954, 26 L Ed 2d 298, 90 S Ct 1866. In that case, the court
said that it was mindful that it might not upset a district judge's findings of fact unless the findings were clearly
erroneous, under Rule 52(a), Federal Rules of Civil Procedure, but that in this case it was left, upon reviewing
the record as a whole, with the definite and firm conviction that a mistake had been committed.
Cases:
See Scott Paper Co. v Moore Business Forms, Inc. (1984, DC Del) 594 F Supp 1051, 224 USPQ 11, later
op, motion den (DC Del) 604 F Supp 835, 224 USPQ 565, § 5[c].
Findings of fact made by District Court in resolving question of obviousness in deciding patent validity are
binding upon appellate court unless findings are clearly erroneous. American Seating Co. v National Seating Co.
(CA6 Ohio) 586 F2d 611, cert den 441 US 907, 60 L. Ed. 2d 377, 99 S Ct 1999.
Unobviousness of patent is question of law based on determination of underlying facts, and jury verdict of
patent validity based on reasonable evidence is affirmed as not clearly erroneous. Dual Mfg. & Engineering, Inc.
v Burris Industries, Inc. (CA7) 202 USPQ 708, revd on other grounds, en banc (CA7 Ill) 619 F2d 660, 205 USPQ 1157, cert den 449 US 870, 66 L. Ed. 2d 90, 101 S Ct 208, 207 USPQ 1064, reh den 449 US 1027, 66 L. Ed.
2d 490, 101 S Ct 599.
Court considers documentary evidence before trial court in finding design patent invalid for obvious similarity in appearance to prior art loaders and otherwise reviews evidence to find unobviousness conclusions of trial court not clearly erroneous relative to utility patents on loader. Clark Equipment Co. v Keller (CA8 ND) 570
F2d 778, 197 USPQ 209, cert den (US) 58 L. Ed. 2d 118, 99 S Ct 96.
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Trial court's application of proper obviousness test relative to scope of prior art, important distinctions from
all prior art suggestions, and proper finding of level and skill in art are not clearly erroneous so that nonobviousness and validity of patent is affirmed. Austin v Marco Dental Products, Inc. (CA9 Or) 560 F2d 966, 195 USPQ
529, cert den 435 US 918, 55 L. Ed. 2d 511, 98 S Ct 1477.
Tenth Circuit treats ultimate issue of obviousness as question of fact subject to clearly erroneous standard.
Plastic Container Corp. v Continental Plastics of Oklahoma, Inc. (1983, CA10 Okla) 708 F2d 1554, 219 USPQ
26.
Trial court findings not expressed in exact terms of Graham criteria nevertheless afford adequate basis for
factual determination of obviousness of design patent on boat and are affirmed as not clearly erroneous.
Sidewinder Marine, Inc. v Starbuck Kustom Boats & Products, Inc. (CA10) 202 USPQ 356.
See Pentec, Inc. v Graphic Controls Corp. (1985, CA FC) 776 F2d 309, 227 USPQ 766, § 5[c].
See Kimberly-Clark Corp. v Johnson & Johnson (1984, CA FC) 745 F2d 1437, 223 USPQ 603, § 5[a].
Notwithstanding that district court used inappropriate "flash of genius" language in its opinion, reviewing
court was still bound by district court's factual findings unless clearly erroneous and was free to arrive at own
conclusion on issue of obviousness based upon those findings. Vandenberg v Dairy Equipment Co., Div. of DEC
International, Inc. (1984, CA FC) 740 F2d 1560, 224 USPQ 195.
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§ 5[c] As presenting questions of fact and law—Conclusion of law
Although the determination of obviousness lends itself to basic factual inquiries the results of which, as
findings of fact, are subject to reversal on appeal only if clearly erroneous (§ 5[b], supra), many appellate courts
have recognized that they are not embarrassed by any previous findings of fact, in making the ultimate determination whether the correct legal test of nonobviousness has been properly applied to those facts by the lower
court.
For example, in reversing the trial court's holding that an invention was nonobvious, the court in Preuss v
General Electric Co. (1968, CA2 NY) 392 F2d 29, cert den 393 US 834, 21 L Ed 2d 104, 89 S Ct 105, said that
it was aware of the dangers of slipping into the use of hindsight and of reading into the prior art the teachings of
the invention, but that the question of patentability was one of law, and that while it considered the Patent Office's determination and the trial judge's conclusion, nevertheless it found that the invention here would have
been evident to an engineer of ordinary skill in this particular field at the time of invention.
In Kaiser Industries Corp. v McLouth Steel Corp. (1968, CA6 Mich) 400 F2d 36, cert den 393 US 1119, 22
L Ed 2d 124, 89 S Ct 992, the court said that the ultimate distinction between inventive experimentation, and
mere developmental know-how, was one of law because it amounted to a determination of obviousness or
nonobviousness, and that, contrary to the holding below, the improvement in this case was obvious in light of
the prior art.
And in Gass v Montgomery Ward & Co. (1967, CA7 Ill) 387 F2d 129, reversing the District Court and
holding the patent in suit void, the court stated that while the District Court's findings on conflicting testimony
involved the determination of credibility, the weighing of evidence, and the drawing of inferences which ordinarily rendered trial court findings impregnable on review, nevertheless it concluded as a matter of law and from
the entire record that the subject matter was obvious.
In some cases, the courts have expressly stated that on the ultimate question of obviousness or nonobvious-
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ness, as a matter of law, the scope of their review cannot be restricted by the "clearly erroneous" standard of
Rule 52(a), Federal Rules of Civil Procedure.
Thus, the court in Monroe Auto Equipment Co. v Heckethorn Mfg. & Supply Co. (1964, CA6 Tenn) 332
F2d 406, cert den 379 US 888, 13 L Ed 2d 93, 85 S Ct 160, observing that the test of 35 U.S.C.A. § 103 was
whether the device would have been obvious to one skilled in the art, said that in a patent case there were three
steps: first, a determination of what the prior art was, this involving factual questions; secondly, a determination
of what, if any, improvement the patentee has made over the prior art, this usually turning on expert testimony
and therefore being a question of fact; and the final step, a determination whether the improvement would have
been obvious to one skilled in the art, this requiring application of legal criteria and therefore being a question of
law, fully reviewable by an appellate court. The essential point is that regardless of how important factual issues
are in a particular case, the appellate court should be free to give effect to the general legislative standard, the
court went on, and the scope of appellate review would be restricted if invention, that is, obviousness, were
treated as a question of fact.
After reviewing the decisions of the United States Supreme Court, the court concluded in Flour City Architectural Metals v Alpana Aluminum Products, Inc. (1972, CA8 Minn) 454 F2d 98, that the Supreme Court had
rejected the clearly erroneous standard for reviewing determinations of obviousness, and that it was constrained
to review the ultimate question of obviousness vel non as a matter of law, not fact. Of course, the court continued, several basic factual inquiries underlie the ultimate determination whether an invention is obvious or not,
and these "factual inquiries" are subject to the constraint of Rule 52(a), Federal Rules of Civil Procedure, upon
review, but it is against this factual background that the obviousness or nonobviousness of the subject matter is
determined, and that determination is made as a matter of law.
In Payne Metal Enterprises, Ltd. v McPhee (1967, CA9 Cal) 382 F2d 541, where the patentee contended
that since the trial court had made factual findings to the effect that the device in suit would not have been obvious to a person ordinarily skilled in the art, the reviewing court could not reject these findings unless they were
"clearly erroneous", the latter did not agree. The obviousness or nonobviousness of the subject matter of a patent
presents a question of law, the court said, and therefore although the trial court labeled its determination as to
the obviousness of the patent as a finding of fact, for purposes of review it was still considered a question of law
not subject to the limitations on review of the "clearly erroneous" standard.
Comment
Reversal of a lower court's conclusion as to the obviousness or nonobviousness of the subject matter in suit is
more often rested on the ground of error in applying the law to the facts than on holding the factual findings
clearly erroneous; affirmance, however, is usually rested on the ground that the findings of fact were not clearly
erroneous, supporting the legal conclusion reached. (See § 5[b], supra.)
Cases:
Obviousness under § 103 is conclusion of law based on underlying factual inquiries. American Cyanamid
Co. v United States Surgical Corp. (1992, DC Conn) 833 F Supp 92, app dismd without op (CA FC) 9 F3d 977.
Ultimate determination of patent validity is conclusion of law reviewable for error and based on factual
findings reviewable under clearly erroneous standard, and appellate court makes independent judgment on ultimate conclusion of obviousness. Tokyo Shibaura Electric Co. v Zenith Radio Corp. (CA3 Del) 548 F2d 88, 193
USPQ 73.
23 A.L.R. Fed. 326
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Appellate court will not substitute its independent judgment for determination of trial court and affirms
finding of invalidity for obviousness as proper application of law and not clearly erroneous. ADM Corp. v
Speedmaster Packaging Corp. (CA3) 188 USPQ 546.
For purposes of patent invalidity, obviousness is a question of law that is predicated upon several factual inquiries. 35 U.S.C.A. § 103. Alza Corp. v. Andrx Pharmaceuticals, LLC, 607 F. Supp. 2d 614 (D. Del. 2009).
Ultimate determination of patent obviousness is question of law based on underlying factual inquiries into
such issues as (1) scope and content of prior art, (2) differences between prior art and claims at issue, (3) level of
ordinary skill in pertinent art, and (4) secondary evidence of nonobviousness, such as long–felt but unsolved
need, failure of others, and commercial success. 35 U.S.C.A. § 103(a). Philips Electronics North America Corp.
v. Contec Corp., 312 F. Supp. 2d 632 (D. Del. 2004).
Obviousness under 35 U.S.C.A. § 103 is conclusion of law based upon fact determinations that involve
scope and content of prior art, differences between prior art and claimed invention, level of ordinary skill in pertinent art, and additional evidence that may serve as indicia of non-obviousness. Scott Paper Co. v Moore Business Forms, Inc. (1984, DC Del) 594 F Supp 1051, 224 USPQ 11, later op, motion den (DC Del) 604 F Supp
835, 224 USPQ 565.
Where the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are
not in dispute, the question of whether a patent is obvious can be decided as a matter of law. Muniauction, Inc.
v. Thomson Corp., 502 F. Supp. 2d 477 (W.D. Pa. 2007).
Ultimate determination of obviousness is conclusion of law with which appellate court may disagree on established findings of fact. American Seating Co. v National Seating Co. (CA6 Ohio) 586 F2d 611, cert den 441
US 907, 60 L. Ed. 2d 377, 99 S Ct 1999.
Obviousness is ultimate question of law reviewable by appellate court. Nickola v Peterson (CA6 Mich) 580
F2d 898, 198 USPQ 385, cert den (US) 59 L. Ed. 2d 774, 99 S Ct 1504.
Reviewing court may make independent judgment as to whether factual determinations of trial court support
legal conclusion as to obviousness. Wolens v F.W. Woolworth Co. (1983, CA7 Ill) 703 F2d 983, 218 USPQ 100
.
"Clearly erroneous" standard of review does not apply to determinations of obviousness under 35 U.S.C.A.
§ 103 because ultimate question of obviousness is matter of law, although based on factual inquiries such as
scope and content of prior art, differences from prior art and level of ordinary skill. Airlite Plastics Co. v
Plastilite Corp. (CA8 Neb) 526 F2d 1078, cert den 425 US 938, 48 L. Ed. 2d 179, 96 S Ct 1671.
Whether patent is invalid for obviousness is legal determination that depends on four factual findings: (1)
scope and content of prior art; (2) differences between claimed invention and prior art; (3) level of ordinary skill
in art; and (4) secondary considerations of nonobviousness, such as commercial success, long–felt but unresolved need, failure of others, and so on. 35 U.S.C.A. § 103(a). Toro Co. v. Scag Power Equipment, Inc., 241 F.
Supp. 2d 1057 (D. Neb. 2003).
Ultimate determination of whether patented invention would have been obvious is legal conclusion based on
totality of evidence, including underlying factual inquiries such as: (1) scope and content of prior art; (2) level of
ordinary skill in the prior art; (3) differences between claimed invention and prior art; and (4) objective evidence
of nonobviousness, such as commercial success, long-felt but unresolved needs, failure of others, skepticism before invention, copying, praise, unexpected results, and industry acceptance. 35 U.S.C.A. § 103(a). Visto Corp.
v. Sproqit Technologies, Inc., 413 F. Supp. 2d 1073 (N.D. Cal. 2006).
Court reviews findings relative to obviousness to determine whether findings are supported by record as a
whole, or are clearly erroneous, although ultimate question of patent validity is one of law. C M I Corp. v Metropolitan Enterprises, Inc. (CA10) 189 USPQ 770.
Determination of patented invention's obviousness is legal conclusion involving underlying factual inquiries
23 A.L.R. Fed. 326
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into: (1) scope and content of prior art; (2) level of ordinary skill in art; (3) differences between claimed invention and prior art; and (4) secondary considerations of nonobviousness, such as commercial success, long–felt
but unsolved need, failure of others, and copying. 35 U.S.C.A. § 103. Golight, Inc. v. Wal-Mart Stores, Inc., 216
F. Supp. 2d 1175 (D. Colo. 2002).
Obviousness of invention is conclusion of law, but it rests on factual findings such as scope and content of
prior art, differences between prior art and claimed invention, and level of skill in art. 35 U.S.C.A. § 103(a).
Morphosys AG v. Cambridge Antibody Technology Ltd., 158 F. Supp. 2d 84 (D.D.C. 2001).
Obviousness of a patent claim is a legal conclusion based on underlying findings of fact. In re Mettke, 570
F.3d 1356 (Fed. Cir. 2009).
When reviewing a district court's decision to deny judgment as a matter of law as to obviousness in a patent
infringement case, an appellate court reviews a jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence; such underlying factual questions include the scope and content of the prior art, the differences between
the prior art and the claims at issue, and the level of ordinary skill in the art. 35 U.S.C.A. § 103. Monolithic
Power Systems, Inc. v. O2 Micro Intern. Ltd., 558 F.3d 1341, 90 U.S.P.Q.2d 1001 (Fed. Cir. 2009).
The ultimate determination of whether an invention would have been obvious is a legal conclusion based on
underlying findings of fact. 35 U.S.C.A. § 103(a). In re DBC, 545 F.3d 1373 (Fed. Cir. 2008).
Determination of patent obviousness is a legal conclusion based on underlying facts. 35 U.S.C.A. § 103. In
re Translogic Technology, Inc., 504 F.3d 1249 (Fed. Cir. 2007).
Ultimate obviousness determination under 35 U.S.C.A. § 103 is conclusion of law, not subject to clearly erroneous standard. Pentec, Inc. v Graphic Controls Corp. (1985, CA FC) 776 F2d 309, 227 USPQ 766.
Court of Appeals reviews ultimate conclusion of obviousness, within meaning of 35 U.S.C.A. § 103 as one
of law on which it must exercise independent judgment. Ashland Oil, Inc. v Delta Resins & Refractories, Inc.
(1985, CA FC) 776 F2d 281, 227 USPQ 657, cert den (US) 89 L Ed 2d 315, 106 S Ct 1201.
See Kimberly-Clark Corp. v Johnson & Johnson (1984, CA FC) 745 F2d 1437, 223 USPQ 603, § 5[a].
Conclusion of obviousness is not reviewed under clearly erroneous standard but rather is reviewed for correctness or error as matter of law. Re De Blauwe (1984, CA FC) 736 F2d 699, 222 USPQ 191.
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§ 6[a] Purpose and effect of statute—Judicial precedents codified
Synopsis
Addition to the Patent Act of 1952 of the new requirement of nonobvious subject matter did not, despite arguments to the contrary, lower the standards of patentability previously required by the case law.
Following enactment of the Patent Act of 1952, it was commonly urged, [7] and a number of courts, particularly in the Second Circuit, concluded, that the new Patent Act, and more particularly 35 U.S.C.A. § 103, was intended to reverse an asserted trend toward raising the standard of patentability in cases decided since Hotchkiss
v Greenwood (1851) 52 US 248, 13 L Ed 683, supra § 3[a], in which the United States Supreme Court had
simply required the display of more ingenuity than that of an ordinary mechanic acquainted with the business.
Thus, in speaking for the Court of Appeals for the Second Circuit in 1955, Judge Learned Hand in Lyon v
23 A.L.R. Fed. 326
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Bausch & Lomb Optical Co. (1955, CA2 NY) 224 F2d 530, cert den 350 US 911, 100 L Ed 799, 76 S Ct 193,
reh den 350 US 955, 100 L Ed 831, 76 S Ct 341, concluded that the Patent Act of 1952 restored the original
gloss of the Hotchkiss Case to "invention." Holding valid certain of the claims of a patent for coated lenses, he
said that the question was whether the patentee's contribution, his added step, was enough to support a patent. It
certainly would have done so 20 or 30 years ago, he pointed out, for the most competent workers in the field had
for at least 10 years been seeking a tenacious coating to prevent reflection; there had been a number of attempts,
none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. The court
did not see, he said, how any combination of evidence could more completely demonstrate that, simple as it was,
the change had not been obvious "to a person having ordinary skill in the art," as required by 35 U.S.C.A. § 103
On the other hand, he went on, it must be conceded that had the case come up for decision within 20 or 25 years
before the Patent Act of 1952 went into effect, it was almost certain that the claims would have been held invalid, for the Courts of Appeals have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply—indefinite it was true, but indubitably stricter
than that defined in § 103. He pointed out that Congress had never tried to define the statutory standard for "invention" other than that the discovery should be "new and useful," but left it to the courts to develop the definition by precedent, and this the Supreme Court did in Hotchkiss v Greenwood, where it imposed an authoritative
gloss in the following words: "Unless more ingenuity and skill in applying the old method" were necessary than
were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of
skill and ingenuity which constituted the essential elements of every invention. This became the standard rubric
and was applied in many cases, he continued, but the variations were numberless and "invention" became perhaps the most baffling concept in the whole catalog of judicial efforts to provide postulates for indefinitely varying occasions. Section 103 restores the original gloss, he concluded, substantially in ipsissimis verbis, which has
never been overruled, and although it may have ceased in practice to be followed, and come to enjoy no more
than lip service, there never has been the slightest intimation of any definite substitute, nothing more than an unexpressed and unacknowledged misgiving about the increased facility with which patents were being granted.
And in Reiner v I. Leon Co. (1960, CA2 NY) 285 F2d 501, cert den 366 US 929, 6 L Ed 2d 388, 81 S Ct
1649, reh den 366 US 978, 6 L Ed 2d 1268, 81 S Ct 1918, the court said that there could be no doubt that the
Patent Act of 1952 meant to change the slow but steady drift of judicial decision that had been hostile to patents
while the test laid down in Hotchkiss v Greenwood still had a nominal authority, of which little remained in actual application, and that it could not escape the conclusion that Congress deliberately meant to restore the old
definition, to raise it from a judicial gloss to a statutory command.
This view, that the Patent Act of 1952 established a more lenient standard of patentability, was followed to
some extent in other Circuits, but received a rude jolt in the patent cases decided by the United States Supreme
Court in 1966, in which that court concluded that the Patent Act of 1952, making nonobviousness a condition of
patentability, was intended to codify judicial precedents, and that while the clear language of 35 U.S.C.A. § 103
placed emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remained the same.
Thus, in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, the Supreme Court said
that it was undisputed that 35 U.S.C.A. § 103 was, for the first time, a statutory expression of an additional requirement for patentability originally expressed in Hotchkiss v Greenwood, but that it was contended that the
section was intended to sweep away judicial precedents and to lower the level of patentability. The Reviser's
Note to this section, the court pointed out, indicated that the section was inserted because it might have some
stabilizing effect, and also might serve as a basis for the addition at a later time of some criteria to be worked
out, and this legislative history, as well as other sources, showed that the revision was not intended by Congress
23 A.L.R. Fed. 326
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to change the general level of patentable invention, but was intended merely as a codification of judicial precedents embracing the Hotchkiss condition. Although the court concluded here, it was said, that the inquiry which
the Patent Office and the courts must make as to patentability must be beamed with greater intensity on the requirements of § 103, it bears repeating that the court has found no change in the general strictness with which
the overall test is to be applied; this court has been urged to find in § 103 a relaxed standard, supposedly a congressional reaction to the "increased standard" applied by this court in its decisions over the last 20 or 30 years,
but the standard has remained invariable in this court.
The Court again emphasized in Anderson's-Black Rock, Inc. v Pavement Salvage Co. (1969) 396 US 57, 24
L Ed 2d 258, 90 S Ct 305, that the question of patentability of a combination of old elements turns on the meaning of 35 U.S.C.A. § 103 which was not intended by Congress to change the general level of patentable invention, but was intended merely as a codification of judicial precedents.
Even prior to the Graham Case, courts in several Circuits had, in various terms, rejected the argument that
the Patent Act of 1952 reflected a more lenient standard of patentability, and held that 35 U.S.C.A. § 103 codified the strict standards reflected in existing judicial precedents.
For example, in General Motors Corp. v Estate Stove Co. (1953, CA6 Ohio) 203 F2d 912, a petition for rehearing of the decision of the court, on the grounds that the appeal was governed by the new Patent Act of 1952
which had not been considered by the court in deciding the case, was denied. The argument was that by statute
the burden was now upon a party attacking the validity of a patent to establish that the subject matter as a whole
would have been obvious, that the test was not, subjectively, what the court might believe would have been obvious, and that the issue was now, objectively, whether a defendant had established his case and succeeded in
overturning the statutory presumption of validity. The court pointed out that there was no basis upon which the
conclusion could be drawn that the Patent Act of 1952 provided a new test of patentability with respect to combination patents, the legislative history affording no support to the patentee's view that a "new test as to obviousness" had been embodied in the Act. It would appear, said the court, that the new Act has done no more in this
respect than to adopt the test of so-called "obviousness" which has, in the past, been enunciated by the courts,
and that it did not provide a new test differing from that which had generally been followed in the adjudication
of patent cases.
And in John Blue Co. v Dempster Mill Mfg. Co. (1960, CA8 Neb) 275 F2d 668, the court said that in applying 35 U.S.C.A. § 103, it followed the standards of patentability set out by the United States Supreme Court in
Great Atlantic & Pacific Tea Co. v Supermarket Equipment Corp. (1950) 340 US 147, 95 L Ed 162, 71 S Ct 127
, reh den 340 US 918, 95 L Ed 663, 71 S Ct 349, supra § 3[a], in which it was said that courts should scrutinize
combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an
assembly of old elements, that the function of a patent was to add to the sum of useful knowledge, and that patents could not be sustained when, on the contrary, their effect was to subtract from former resources freely available to skilled artisans. It concluded that a patent for a combination which only united old elements with no
change in their respective functions, such as was presented by the patent in suit before it, obviously withdrew
what was already known into the field of its monopoly and diminished the resources available to skilful men.
The court pointed out that 35 U.S.C.A. § 103 codified existing law, and held that the patent in suit was invalid by statutory mandate of § 103, in Griffith Rubber Mills v Hoffar (1963, CA9 Or) 313 F2d 1. It said that the
purpose of the limitation on patentability expressed in the statute were to insure that patents were issued not for
private benefit but for the public good, granting a monopoly for a limited period as an incentive to the disclosure
of innovations which in the end would add to the fund of freely available knowledge. However, the court went
on, the public was entitled to benefit, without granting special concessions from such advances as normally
flowed from the application of the ordinary skills of one in the trade to the existing fund of public knowledge.
Post-Graham Cases have, of course, recognized in accordance with that decision that 35 U.S.C.A. § 103
23 A.L.R. Fed. 326
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merely codified the case law.
In American Infra-Red Radiant Co. v Lambert Industries, Inc. (1966, CA8 Minn) 360 F2d 977, cert den 385
US 920, 17 L Ed 2d 144, 87 S Ct 233, the court observed that the statutes have always demanded that a patent be
novel, but in addition the courts for over a hundred years have demanded of all patents an additional requirement
of "invention," and that while the exact definition of invention has varied from time to time and from court to
court, it was generally agreed that a mere improvement over prior art which involved nothing more than what
would have been obvious to a person skilled in the art, and which required nothing more than the application of
mechanical skill, could not be considered as "invention." The Patent Act of 1952, 35 U.S.C.A. § 103, codified
this general judicial requirement as the third statutory requirement of patentability, the court went on, and the
necessary level of innovation previously demanded by the courts has not been changed by the statute, but Graham demands that the "test of obviousness" as set out in the statute is to be applied as the sole test for the third
element of patentability.
For example, in Skee-Trainer, Inc. v Garelick Mfg. Co. (1966, CA8 Minn) 361 F2d 895, the patent on a
device to aid people who were learning to water ski was held invalid, the court relying upon Graham for the conclusion that Congress by the revision of the patent laws in 35 U.S.C.A. § 103 did not intend to change the general level of patentable invention, and that the standard of invention as enunciated over 100 years ago remained
the same and had not been altered either by intervening judicial interpretation or the congressional enactment of
§ 103. One striking aspect of that decision, the court said, was the Supreme Court's total rejection of the suggestion that, prior to Graham, it had been imposing supposedly stricter standards of patentability; it was unequivocal in stating that the standard as to patentability had "remained invariable in this court," but it explained that
"technology, however, has advanced".
Cases:
35 U.S.C.A. § 103 codifies the judicially developed nonobviousness requirement that, even if a particular
combination of elements is "novel" in the literal sense of the term, the combination will not qualify for federal
patent protection if the combination's contours are so traced by the existing technology in the field that the improvement is the work of the skillful mechanic, not that of the inventor; the nonobviousness requirement extends
the field of unpatentable material beyond that which is known to the public, under the novelty requirements of
35 U.S.C.A. § 102, to include that which could readily be deduced from publicly available material by a person
of ordinary skill in the pertinent field of endeavor; taken together, the novelty and nonobviousness requirements
express a congressional determination that the purposes behind the Federal Constitution's patent clause (Art I, §
8, cl 8) are best served by free competition and exploitation of that which (1) is either already available to the
public, or (2) may be readily discerned from publicly available material. Bonito Boats, Inc. v. Thunder Craft
Boats, Inc., 489 U.S. 141, 109 S. Ct. 971, 103 L. Ed. 2d 118, 9 U.S.P.Q.2d (BNA) 1847 (1989).
Obviousness inquiry assesses differences between subject matter sought to be patented and prior art to ascertain whether subject matter as a whole would have been obvious at time invention was made to person having
ordinary skill in art to which said subject matter pertains. 35 U.S.C.A. § 103(a). Beckson Marine, Inc. v. NFM,
Inc., 292 F.3d 718, 63 U.S.P.Q.2d (BNA) 1031 (Fed. Cir. 2002).
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§ 6[b] Purpose and effect of statute—Demanding standard imposed
It is a "demanding standard of invention" (Lear, Inc. v Adkins (1969) 395 US 653, 23 L Ed 2d 610, 89 S Ct
1902) that the United States Supreme Court finds required by the Constitution and reflected in 35 U.S.C.A. §
103, in which the emphasis on nonobviousness is one of inquiry rather than quality, so that the general level of
innovation necessary to sustain patentability is not affected by the statute.
Thus, in denying validity to the patent granted upon a spring clamp hinged to permit a plow shank to rise
when it hit obstructions in the soil, the court in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86
S Ct 684, emphasized that 35 U.S.C.A. § 103 reflected no change in the general strictness with which the overall
test of patentability was to be applied, and that that standard had remained invariable with the court.[8] Technology, however, the court added, has advanced, and with remarkable rapidity in the last 50 years, and the ambit of
applicable art in given fields of science has widened by disciplines unheard of a half-century ago; it is but an
even-handed application to require that those persons granted the benefit of a patent monopoly be charged with
an awareness of these changed conditions, and the same is true of the less technical but still useful arts: he who
seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office.
The lower federal courts, too, have often recognized that high standards are to be applied in determining
whether a particular invention, despite issuance of a patent on it, would have been obvious to a person of ordinary skill in the art at the time of invention.
For example, the court stated in Hadco Products, Inc. v Walter Kidde & Co. (1972, CA3 Pa) 462 F2d 1265,
cert den 409 US 1023, 34 L Ed 2d 315, 93 S Ct 464, that under 35 U.S.C.A. § 103 it must be determined that the
differences between the prior art and the subject matter of the patent are nonobvious to a worker of ordinary
skill, to justify the issuance of a patent, and that the courts are bound to a "strict observance" of this rigorous
standard.
A constitutional standard is to be applied through 35 U.S.C.A. § 103, and a strict one at that, the court said
in Blohm & Voss AG v Prudential-Grace Lines, Inc. (1973, CA4 Md) 489 F2d 231, cert den (US) 42 L Ed 2d
67, 95 S Ct 70, and while the court noted that it was not degrading the patentee's accomplishment, it held that
what he accomplished in his patent did not rise to the requisite level of inventiveness to entitle him to the monopoly jealously guarded by the Constitution.
§ 6[c] Purpose and effect of statute—"Flash of creative genius" eliminated
The second sentence of 35 U.S.C.A. § 103, supra § 1[c], provides: "Patentability shall not be negatived by
the manner in which the invention was made." The Reviser's Note explains that under this sentence of the statute, it is immaterial whether the invention resulted from long toil and experimentation, or from a flash of genius.
It seems apparent, the United States Supreme Court said in Graham v John Deere Co. (1966) 383 US 1, 15 L
Ed 2d 545, 86 S Ct 684, that Congress intended by this sentence of 35 U.S.C.A. § 103 to abolish the test that it
believed was announced in the controversial phrase "flash of creative genius" which, in context, was that "the
new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling," as stated by this court in Cuno Engineering Corp. v Automatic Devices Corp. (1941) 314 US 84, 86 L Ed
58, 62 S Ct 37. Rather than establishing a more exacting standard, the court pointed out, that language merely
rhetorically restated the requirement that the subject matter sought to be patented must be beyond the skill of the
calling, and that it was the device, not the invention, that had to reveal the "flash of creative genius."
Even in cases decided prior to the United States Supreme Court's explication in the Graham Case, it was recognized by the lower federal courts in a number of cases that while the "flash of genius" test had been eliminated by 35 U.S.C.A. § 103, the judicially established standards of patentability had not been changed.
23 A.L.R. Fed. 326
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For example, the argument was made in R. M. Palmer Co. v Luden's, Inc. (1956, CA3 Pa) 236 F2d 496, that
35 U.S.C.A. § 103 constituted a congressional change of direction to assertedly more lenient criteria, since the
statute rendered it immaterial whether the invention resulted from a "flash of genius." It was, the court said, perhaps rather strong language to say that the new Act changed the law of patentability, the choice of language in
the Act indicating, as the legislative history disclosed, an attempt to state what the law had been; as such, it was
a codification, and difficulty had always existed in the application of the law because to a large extent the standards had been indefinite and subjective. To what extent a change was wrought by the statute would seem to depend upon the pre-existing views of a tribunal as to the standard upon which it had determined patentability, the
court pointed out, but in the Act a stabilizing effect was sought to be achieved, and beyond this, the tribunal
faced with an issue of validity was left to the struggle to determine upon which side of a vague boundary line it
would place the alleged invention, even though there was no longer any doubt that the "flash of genius" test had
been laid to rest.
In Pacific Contact Laboratories, Inc. v Solex Laboratories, Inc. (1953, CA9 Cal) 209 F2d 529, cert den 348
US 816, 99 L Ed 643, 75 S Ct 26, where the alleged infringer argued that the corneal-type contact lens, the patent on which was at issue, lacked any "flash of creative genius," the court said that the Congress by enacting 35
U.S.C.A. § 103 showed its fear that the meaning of the phrase "flash of creative genius" as used by the Supreme
Court in the Cuno Case would result in excluding from patentability most if not all mechanical advances derived
from study and experimentation, but that it did not think that the phrase implied, or was intended to imply, that
patents or patentability sprang from inspiration at the cost of reason. The phrase was used more for emphasis
than as patent dogma, the court said, and the Supreme Court was emphasizing the principle that patentability implies more than mere mechanical skill and that a phase of discovery is necessary. The opinion in which the
phrase was used did not change the law, the court said, but should it be held otherwise, then the new law created
by it brought no change as to the instant case, for it was subject to the provisions of 35 U.S.C.A. § 103, which
made the phrase "flash of creative genius" wholly ineffective in determining the validity of patents.
In Blish, Mize & Silliman Hardware Co. v Time Saver Tools, Inc. (1956, CA10 Kan) 236 F2d 913, cert den
352 US 1004, 1 L Ed 2d 549, 77 S Ct 565, the court noted that, with immaterial qualifications, the patent statute
said that the inventor of any "new and useful" device might obtain a patent therefor unless the differences
between the subject matter and the prior art were such that the subject matter as a whole would have been obvious. It is agreed, the court went on, that the statutory standards for invention are but the codification of the common law, and whatever shade of meaning is given to the codified common law, the court knows that at least
since 1850, to be patentable, an improvement in the prior art must involve more ingenuity and skill than the
work of an ordinary mechanic in the art. Some have said that to involve more than mechanical skill, the improvement must display the "flash of creative genius," but the last line of 35 U.S.C.A. § 103 says that patentability shall "not be negatived by the manner in which the invention was made." It has been urged that the language
in the sentence was aimed directly at the "flash of genius," the court continued, and while it might well be that
Congress intended to roll back the philosophical standards of patentability typified in those cases, it could not
have intended to abandon the distinction between mere mechanical skill and "inventive genius," for that concept
is inherent in the constitutional standard.
Whatever doubts existed about the need for a "flash of genius" in achieving invention, the court said in New
Wrinkle, Inc. v Watson (1953) 92 App DC 137, 206 F2d 421, there could be none about the need of such a flash
to reconcile the applicant's colorable view that 35 U.S.C.A. § 103 had relaxed case law criteria for invention,
with the contrary view that took its hue from the exchanges on the floor of the Senate, in which it was stated that
the bill simply constituted "a restatement of the patent laws of the United States," and in answer to the specific
question whether the bill changed the law in any way or only codified the present patent laws, that it codified
"the present laws."
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The "flash of genius" test was found by the court to have been applied in violation of the statutory provision, in Jones Knitting Corp. v Morgan (1966, CA3 Pa) 361 F2d 451, reversing the District Court which had
held invalid a patent on fabric weaving. The court noted that the standard of invention was codified in 35
U.S.C.A. § 103, which was meant to codify prior case law, but that the "flash of genius" theory had no place in
the requirement of invention. Admittedly this patentee was not a skilled knitter and many of the steps and experiments he performed were necessitated by this lack of skill, the court continued, but regardless of the nature of
his struggles, it was the end product that mattered, and if this product advanced the art a significant step, there
was invention so long as that step was not obvious to those of ordinary skill in the art. The District Court had ignored the end product to concentrate on the inventor's technique, saying that "it is the means by which the idea is
reduced to practice which must contain the elements of inventiveness as distinguished from mechanical skill and
know-how," and this, the court concluded, "strikes too closely to the 'flash of genius' theory."
Cases:
Patentability of product does not depend upon its method of production; if product in produce-by-process
claim is same as or obvious from product of prior art, claim is unpatentable even though prior product was made
by different process. Re Thorpe (1985, CA FC) 777 F2d 695, 227 USPQ 964.
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§ 7[a] Procedure for determining obviousness—Factual inquiries to be made
"Non-obvious subject matter" is the statutory catch line for the operative test of 35 U.S.C.A. § 103, replacing the judicially developed concept of "invention" (supra, § 4). No attempt was made in the statute to define or
qualify nonobviousness as meaning other than what the statute seems to require in stating the test, but the § 103
condition lends itself to several basic factual inquiries which the United States Supreme Court first elucidated in
the Graham Case, supra, § 5[a], and these it has since reaffirmed.
Thus, in Anderson's-Black Rock, Inc. v Pavement Salvage Co. (1969) 396 US 57, 24 L Ed 2d 258, 90 S Ct
305, the court cited Graham to say that obviousness, as an issue, was resolved as follows: Under 35 U.S.C.A. §
103, the scope and content of the prior art are to be determined; the differences between the prior art and the
claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.
The court pointed out in Metaframe Corp. v Biozonics Corp. (1972, DC Mass) 352 F Supp 1006, that in the
decision of the factual issues primarily entrusted to a District Court, the application of the "nonobvious" test
must necessarily proceed on a case-by-case basis, with the continuous development of a body of jurisprudence.
Decisions of the lower federal courts, while reflecting some disparity in the severity of the standards to be
applied in determining patentability, have generally insisted upon strict observance of the Supreme Court's
teachings in resolving obviousness as an issue.Second Circuit
Nippon Electric Glass Co. v Sheldon (1982, SD NY) 539 F Supp 542, 217 USPQ 393
Interconnect Planning Corp. v Feil (1982, SD NY) 543 F Supp 610, 215 USPQ 734
Dielectric Laboratories, Inc. v American Technical Ceramics (1982, ED NY) 545 F Supp 292, 217 US-
23 A.L.R. Fed. 326
Page 83
PQ 1122
Third Circuit
Omark Industries, Inc. v Colonial Tool Co. (1982, CA3 NJ) 672 F2d 362, 217 USPQ 13
L.D. Schreiber Cheese Co. v Clearfield Cheese Co. (1982, WD Pa) 540 F Supp 1128, 214 USPQ 285
Lang v Prescon Corp. (1982, DC Del) 545 F Supp 933, 217 USPQ 839
Tyco Indus. v Tiny Love, Ltd. (1996, DC NJ) 914 F Supp 1068
Fourth Circuit
Kabushiki Kaisha Audio-Technica v Atlantis Sound, Inc. (1980, CA4 Va) 629 F2d 978, 207 USPQ 809
Fifth Circuit
Whitley v Road Corp. (1980, CA5 Fla) 624 F2d 698, 207 USPQ 369 (disagreed with Rengo Co. v
Molins Machine Co. (CA3 NJ) 657 F2d 535, 211 USPQ 303, 60 A.L.R. Fed. 534, cert den Molins Machine Co. v Rengo Co. (1981) 454 US 1055, 70 L Ed 2d 591, 102 S Ct 600)
Reed Tool Co. v Dresser Industries, Inc. (1982, CA5 Tex) 672 F2d 523, 214 USPQ 501
Ebeling v Pak-Mor Mfg. Co. (1982, CA5 Tex) 683 F2d 909, 216 USPQ 563
Courtesy Communications Corp. v C-Five, Inc. (ND Tex) 455 F Supp 1183
Sixth Circuit
Smith v ACME General Corp. (1980, CA6 Ohio) 614 F2d 1086, 204 USPQ 1060; (disagreed with General Motors Corp. v Toyota Motor Co. (1981, CA6 Ohio) 667 F2d 504, 212 USPQ 659, cert den Toyota
Motor Co. v General Motors Corp. (1982) 456 US 937, 72 L Ed 2d 457, 102 S Ct 1994, 215 USPQ 95)
General Motors Corp. v Toyota Motor Co. (1981, CA6 Ohio) 667 F2d 504, 212 USPQ 659, cert den
(1982) 456 US 937, 72 L. Ed. 2d 457, 102 S Ct 1994, 215 USPQ 95
Minnesota Mining & Mfg. Co. v Blume (1982, CA6 Ohio) 684 F2d 1166, 215 USPQ 585, cert den (US)
75 L. Ed. 2d 803, 103 S Ct 1449
Seventh Circuit
Shemitz v Deere & Co. (1980, CA7 Ill) 623 F2d 1180, 208 USPQ 866, cert den 449 US 921, 66 L. Ed.
2d 149, 101 S Ct 320
Wolens v F.W. Woolworth Co. (1983, CA7 Ill) 703 F2d 983, 218 USPQ 100
Bontrager v Steury Corp. (ND Ind) 457 F Supp 526
Eighth Circuit
Span-Deck, Inc. v Fab-Con, Inc. (1982, CA8 Minn) 677 F2d 1237, 215 USPQ 835, cert den (US) 74 L.
Ed. 2d 294, 103 S Ct 318
Black & Decker Mfg. Co. v Ever-Ready Appliance Mfg. Co. (1982, CA8 Mo) 684 F2d 546, 215 USPQ
97
Medtronic, Inc. v Catalyst Research Corp. (1982, DC Minn) 547 F Supp 401, 216 USPQ 687
Ninth Circuit
Hammerquist v Clarke's Sheet Metal, Inc. (1981, CA9 Or) 658 F2d 1319, 212 USPQ 481, on reh (CA9
23 A.L.R. Fed. 326
Page 84
Or) 688 F2d 647
Bristol Locknut Co. v SPS Technologies, Inc. (1982, CA9 Cal) 677 F2d 1277, 216 USPQ 867
Sarkisian v Winn-Proof Corp. (1982, CA9 Or) 688 F2d 647, on remand Sarkisian v Winn-Proof Corp.
(1983, CA9 Or) 697 F2d 1313 and cert den Carsonite International Corp. v Carson Mfg. Co. (1983, US)
75 L Ed 2d 930, 103 S Ct 1499
Omark Industries, Inc. v Carlton Co. (DC Or) 458 F Supp 449, 201 USPQ 825, affd (CA9 Or) 652 F2d
783, 212 USPQ 413
Tenth Circuit
Lam, Inc. v Johns-Manville Corp. (1982, CA10 Colo) 668 F2d 462, 213 USPQ 1061, cert den (1982)
456 US 1007, 73 L. Ed. 2d 1302, 102 S Ct 2298
Eleventh Circuit
Ramos v. Biomet, Inc., 828 F. Supp. 1570 (S.D. Fla. 1993), aff'd in part, rev'd in part, 69 F.3d 553 (Fed.
Cir. 1995), reh'g denied, in banc suggestion declined, (Oct. 24, 1995) (hip prosthesis)
Ct Cl
Kistler Instrumente Ag v United States (1980) 224 Ct Cl 370, 628 F2d 1303, 211 USPQ 920
Thus, the grant of summary judgment holding invalid the patent on easily separable postcards linked in one
unfolded sheet, carrying an advertising panel at one end with a hole for hanging, was held to be error in Colourpicture Publishers, Inc. v Mike Roberts Color Productions, Inc. (1968, CA1 Mass) 394 F2d 431, cert den 393
US 848, 21 L Ed 2d 118, 89 S Ct 134, the court saying that, having in mind the criteria set forth in Graham, the
basic factual inquiries upon the issue of nonobviousness were not addressed by the District Court, that court's
conclusory comments as to "lack of invention" falling short of that "strict observance" of the Supreme Court's
emphasis on an inquiry beamed with greater intensity on the requirements of 35 U.S.C.A. § 103 The advantages
claimed here over the prior art were many, the court said, and while the alleged advance over the prior art may
have fallen short in the public mind of a successful heart transplant, its effect in the market appeared from the
affidavits to have been impressive, but the District Court made no inquiry into the existence of the subtests
which, while secondary, might have relevance in determining obviousness of the subject matter (see § 20, infra).
Chiding the District Court for repeatedly using the old "invention" language, the court cited the rule of Graham
that under § 103, the scope and content of the prior art were to be determined, differences between the prior art
and the claims at issue were to be ascertained, and the level of ordinary skill in the pertinent art resolved. The
court stated that where obviousness was the issue, Graham increased the hazards of using summary judgment as
the route to decision, although this was not to say that even the issue of obviousness could not in a proper case
be decided by summary judgment, but that to the extent that scrutiny, comparison, and evaluation of the prior art
beyond that revealed in patent claims were involved, there was need for great caution in granting summary judgment.
In Borden Co. v Clearfield Cheese Co. (1966, CA3 Pa) 369 F2d 96, the grant of an alleged infringer's motion for summary judgment was reversed, the court holding that it could not say with the degree of certainty requisite therefor under a motion for summary judgment that by mere visual examination of the existing prior art,
the patent in suit would be obvious to the ordinary worker skilled in the art at the time of the invention. The appellate court pointed out that in this case the District Court spoke of the lack of "novelty" and nowhere spoke of
the obviousness or nonobviousness of the patent, and the appellate court held that the determination by a court
of the question of patentability, that is, its validity or invalidity, should follow the rigid requirements of the Graham Case.
23 A.L.R. Fed. 326
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Reversing summary judgment for the defendant in a patent infringement action, the court in Buzzelli v Minnesota Mining & Mfg. Co. (1973, CA6 Mich) 480 F2d 541, pointed out that several factual inquiries must be
made under 35 U.S.C.A. § 103, but that in this instance, upon the basis of conflicting affidavits, the District
Court resolved factual issues relating to obviousness. The determination of this issue calls for a factual inquiry
regarding the experience of those skilled in the art, the court continued, and the affidavits were in conflict on
this crucial factual question, creating a genuine issue of material fact which precluded summary judgment.
In Cloud v Standard Packaging Corp. (1967, CA7 Ill) 376 F2d 384, the cause was remanded to the District
Court for further proceedings where the alleged infringer had averred that the differences between the subject
matter sought to be patented and the prior art were such that the subject matter would have been obvious to a
person having ordinary skill in the art, under 35 U.S.C.A. § 103, and had offered expert testimony and a number
of patents tending to establish prior art, but the District Court did not define in its findings or conclusions what it
considered the invention which was the subject matter of any of the patents in suit, and made no finding describing the prior art nor determining that the subject matter was or was not obvious to a person having ordinary skill
in the art. The District Court did find that a number of patents relied upon by the infringer "did not anticipate"
the claims in suit, but the court noted that there was no finding nor conclusion touching upon obviousness except
as might be implied by the conclusion that the patents were presumed to be valid and that the infringer had not
met the burden of proving invalidity. The analytical steps which a court must take in order to determine the issue
of validity under § 103 had been clearly described by the Supreme Court in Graham, the court continued, and it
was sounder procedure for the initial determination to be made in the trial court.
The District Court's judgment of validity of a patent was reversed in Gass v Montgomery Ward & Co.
(1967, CA7 Ill) 387 F2d 129, the Court of Appeals noting that the lower court had not spelled out in its opinion,
findings, and conclusions the steps prescribed by Graham for determining validity under 35 U.S.C.A. § 103, but
had merely, in its conclusions, characterized the subject matter as a "new, original and nonobvious combination." The court said that while it was generally sounder procedure to remand the issue of obviousness to the trial court for determination, the present record made it sufficiently clear that the subject matter was obvious for
the upper court to make the determination itself, and held the patent void after closely applying the "analytical
steps which a court must take in determining the issue of validity under § 103."
However, strict observance of the Supreme Court's teachings in resolving obviousness as an issue does not
require a formulistic approach, as the court recognized in Rockwell v Midland-Ross Corp. (1971, CA7 Ill) 438
F2d 645. Here, the patentees argued that the District Court, in holding their invention relating to vehicle power
brake units invalid, erred because its findings failed to expressly enunciate the scope and content of the prior art,
the structural and operational differences between the prior art valves and the grommet valves of this invention,
and the level of ordinary skill in the applicable art, and that therefore its conclusion of obviousness did not comply with the dictates of the Graham Case. The upper court said that the patentees were subverting the substance
of the ultimate findings to their form. The Supreme Court established the matters to be considered in a conclusion of obviousness, the court pointed out, not the words the findings should use, and it was sufficient if the
findings demonstrated that the trial court had considered the issues set forth in Graham, which it clearly had in
this case in arriving at its ultimate findings of fact as to the prior art, the differences between it and the claims at
issue, and the level of ordinary skill in the art.
Where the District Court described the prior art in great detail, but omitted any specific reference to the differences between the claims of plaintiff's patent and the prior art in holding a patent on biodegradable detergents
valid and infringed, the Court of Appeals in Continental Oil Co. v Witco Chemical Corp. (1973, CA7 Ill) 484
F2d 777, reversed. It said that it was imperative under 35 U.S.C.A. § 103 as interpreted in Graham that the differences between the new product, as a whole, and the prior art be identified and evaluated as of the date of the
invention, and that since the findings contained no express delineation of such differences, they could not shed
23 A.L.R. Fed. 326
Page 86
any light on the trial court's evaluation of the differences which it regarded as demonstrating that the subject
matter was not obvious. Without such delineation and evaluation of differences, the court concluded, the District
Court's findings of fact did not adequately support its ultimate conclusion of patent validity, and required the upper court to evaluate these differences and their significance, which it did, and found them to have rendered the
invention obvious.
In Payne Metal Enterprises, Ltd. v McPhee (1967, CA9 Cal) 382 F2d 541, the court held invalid for obviousness the design patent issued upon a liquid pourer, saying that the standard of invention required for design
patents was the same as that for mechanical patents, and that the legislative expression of the standard of invention set out in 35 U.S.C.A. § 103 was not intended to establish a new standard, but merely codified the standard
to emphasize nonobviousness as the operative test of the section. The court said that the legal question revolving
around the obviousness of a particular patent must be determined against a factual background, with particular
emphasis on the three relevant considerations which must be taken into account in applying § 103, as set forth in
the Graham Case, so that the ultimate question to be decided here was whether the changes over the prior art resulted in an appearance of the design as a whole which would not have been obvious to a person of ordinary skill
in the art.
Resolution of the facts shedding light on obviousness of the subject matter of a patent at issue, in accordance with the dictates of the Graham Case, requires careful discussion and close attention to detail. As a result,
most patent cases are lengthy and complex because of the courts' efforts toward strict observance of the Supreme
Court's teachings in resolving obviousness as an issue. A few examples, in very abbreviated form, will suffice to
demonstrate judicial analysis in practice.
The District Court properly applied the primary tests of the Graham Case and its findings of fact were not
clearly erroneous, the court said, in affirming a judgment of invalidity of a patent on an anchor-type wall fastener composed of nylon and a cylindrical expanding member commonly described as a screw-nail, in U. S. Expansion Bolt Co. v Jordan Industries, Inc. (1973, CA3 Pa) 488 F2d 566, 23 ALR Fed 316. The patentee contended
that there were three significant differences between the screw-nail expander described in its patent, and the anchor expanders taught in the prior art. The first difference related to the patentee's adaptation of the advantages
of the hammer-driven screw-nail for use in an expansion anchor, but the District Court found, after detailing the
prior art, that this improvement would be obvious to one skilled in the art, and the Court of Appeals noted that
there was nothing in the prior art to indicate that these advantages would not automatically accrue to the use of
the screw-nail in combination with a nylon expansion anchor. A second difference claimed by the patentee of
using a screw-nail having a nontapered, nonthreaded shank at its lower end was concededly shown nowhere in
the prior art, but the Court of Appeals pointed out that the use of a cylindrical screw-nail which would not only
create greater wedging action but also preserve a distinct advantage of a screw-nail in general would have been
obvious to one skilled in the art to maximize the utility of the nylon fastener. The final difference claimed by the
patentee was the rounding of the screw threads which achieved an effect not achieved in the prior art because,
unlike the sharp threaded screw-nail, the round threaded screw-nail did not ream the inner wall of the nylon anchor but instead the inner wall of the nylon anchor "cold-flowed" around the rounded threads. The court found,
however, that the nylon anchor's property of cold-flow was well established in the prior art, and concluded that
plaintiff's maximization of the advantages of this property by rounding the threads would be obvious to one
skilled in the art.
The test of nonobviousness involves a threefold inquiry, the court said in Allen Industries, Inc. v National
Sponge Cushion, Inc. (1967, DC NJ) 292 F Supp 504, affd (CA3 NJ) 403 F2d 717, cert den 394 US 920, 22 L
Ed 2d 453, 89 S Ct 1194, reh den 394 US 1025, 23 L Ed 2d 50, 89 S Ct 1627: (1) The scope and content of the
prior art at the time of the claimed invention must be ascertained; (2) the differences between the subject matter
of the claimed invention and the prior art must be defined; and (3) it must be determined whether the differences
23 A.L.R. Fed. 326
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defined would have been obvious at the time of the claimed invention to a person having ordinary skill in the art
to which the subject matter pertains. In declaring invalid a patent relating to a method of bonding woven fabric
backing to a waffled sponge rubber, the court divided its discussion into "The prior art," "The advancement
made by the patent in suit," and the "Obviousness of the advancement over the prior art." A review in detail of
the relevant prior art led the court to the conclusion that the means employed by the patent in suit, carefully outlined by the court, to adhere the fabric backing to the waffled sponge, were essentially the same as had been
used in the prior art to adhere fabric to flat sponge. The question thus presented, the court continued, was whether the difference between the problems encountered when using a waffled sponge and those presented in the use
of flat sponge was so great that the invention in issue would not have been obvious to one having ordinary skill
in the art. After considering the testimony of the experts for both parties, the court held that the problems of adhering a fabric to a waffled sponge were not significantly different from those which had been experienced in
the use of flat sponge, and that the advancement made by the patent in suit over the prior art would have been
obvious to a person of ordinary skill in the art.
The patent on a device used primarily for cleaning automobiles by the selective application of soap, rinse
water, solvent, and compressed air through a nozzle controlled by the operator, the "heart" of which was a solenoid restricter valve in the water line which had a narrow bypass drilled through it so that when the valve was
closed a relatively small quantity of water passed through it and the pump, being "starved," pulled soap concentrate from a tank through a connecting conduit and mixed it with the water, was held invalid in L & A Products,
Inc. v Britt Tech Corp. (1966, CA8 Minn) 365 F2d 83. Following the teachings of Graham as to the several basic factual inquiries to be made, the court found in the prior art a patent which utilized a diluted soap solution
and a three-way valve, the practical difference between that patent and the one in suit being that it utilized previously diluted soap solution, whereas the patent at issue utilized soap concentrate and water from separate
sources, which it mixed. The court also noted another patent in the prior art which utilized soap concentrate and
mixed it with water from an independent source to provide a solution at the intake of the pump, pointing out that
this device had no valve which permitted the operator to control the water flow other than by some device extrinsic to the machine. These patents and the patent in suit all possessed the same function and all were aimed at
the same need, the court pointed out, for each provided through a pump and nozzle a soap solution upon a surface to be cleaned, and while one of the patents in the prior art might, by valve control, regulate the supply of
water, the difference between it and the patent in suit was in the nature of the valve itself. There was no magic in
the mixing process as such, the court said, or in the principle of pump starvation and the bypass apperture in this
patented device. The court concluded that the development of soap concentrates and their wide utilization in the
30 years since the first of the earlier patents was issued, the presence of both those patents in the confined washing and cleaning art with which the present patent was concerned, and the long-existent knowledge of the principle of hydraulic suction, set the stage for the development of such advances as this patent embraced, by any
person having ordinary skill in the art, when the particular result was desired.
In Ohio Citizens Trust Co. v Lear Jet Corp. (1968, CA10 Kan) 403 F2d 956, cert den 394 US 960, 22 L Ed
2d 561, 89 S Ct 1308, the patent on a single-reel, endless-magnetic-tape cartridge used for sound reproduction
was held invalid, the court noting that the patented device was a novel combination of old elements which produced an old result, sound reproduction, in a facile, economical, and efficient manner, and whose commercial
acceptance showed its utility. However, the court said, the crux of the case was the standard of nonobviousness,
and this was dependent on the facts in a particular case, as noted in Graham the standard in 35 U.S.C.A. § 103 of
nonobviousness lending itself to several basic factual inquiries relating to the scope and content of the prior art,
the differences between the prior art and the claims in issue, and the level of ordinary skill in the art. Turning to
the facts bearing on these inquiries, the court found that the controversy narrowed to whether the use of an endless coil of tape on a freely rotating reel was a patentable device, both the endless coil and the freely rotating
23 A.L.R. Fed. 326
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reel being within the scope and content of the prior art. The significant difference between the prior patent and
this one was that this patentee placed the endless coil on a reel, the court concluded, and the skill required to
make this change was mechanical.
Cases:
The underlying factual inquiries in an obviousness analysis include (1) the scope and content of the prior
art, (2) the level of ordinary skill in the prior art, (3) the differences between the claimed invention and the prior
art, and (4) objective evidence of non-obviousness. 35 U.S.C.A. § 103. Printguard, Inc. v. Anti-Marking Systems, Inc., 535 F. Supp. 2d 189 (D. Mass. 2008).
While question of patent's obviousness is one of law, its determination rests on factual inquiries regarding:
(1) scope and content of prior art; (2) differences between claims and prior art; (3) level of ordinary skill in the
pertinent art; and (4) secondary considerations, if any, of nonobviousness. 35 U.S.C.A. § 103(a). Omegaflex,
Inc. v. Parker Hannifin Corp., 425 F. Supp. 2d 171 (D. Mass. 2006).
Issue of patent obviousness is question of law, informed by court's factual determinations of: (1) scope and
content of the prior art; (2) level of ordinary skill in the art; (3) differences between claimed invention and prior
art; and (4) secondary considerations of nonobviousness, such as commercial success, long-felt but unresolved
need, failure of others, copying, and unexpected results. 35 U.S.C.A. § 103(a). R.H. Murphy Co., Inc. v. Illinois
Tool Works, Inc., 409 F. Supp. 2d 53 (D. Mass. 2006).
Obviousness is determined based on four factual considerations and a set of secondary objective considerations; factual considerations that are important are (1) the content of the prior art and its scope; (2) the differences that exist between the claimed invention and the prior art; (3) the level of skill in the prior art (as opposed
to that in the claimed invention); and (4) the objective indicia of non-obviousness. 35 U.S.C.A. § 103. Amgen,
Inc. v. Hoechst Marion Roussel, Inc., 339 F. Supp. 2d 202 (D. Mass. 2004).
Patent obviousness is legal conclusion based on underlying factual inquiries, including: (1) scope and content of prior art; (2) level of ordinary skill in art; (3) differences between claimed invention and prior art; and (4)
objective evidence of nonobviousness. 35 U.S.C.A. § 103(a). Inverness Medical Switzerland GmbH v. Acon
Laboratories, Inc., 323 F. Supp. 2d 227 (D. Mass. 2004).
Whether a patent claim is obvious depends on at least four underlying factual issues: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in
the pertinent art; and (4) evaluation of any relevant secondary considerations. 35 U.S.C.A. § 103(a). Mangosoft,
Inc. v. Oracle Corp., 421 F. Supp. 2d 392, 2006 DNH 30 (D.N.H. 2006).
In order to determine obviousness of patent claim as a legal matter, four factual inquiries must be made concerning: 1) the scope and content of the prior art; 2) the level of ordinary skill in the art; 3) the differences
between the claimed invention and the prior art; and 4) secondary considerations of nonobviousness, which in
case law is often said to include commercial success, long felt but unresolved need, failure of others, copying,
and unexpected results. 35 U.S.C.A. § 103(a). Omega Engineering, Inc. v. Cole-Parmer Instrument Co., 198 F.
Supp. 2d 152 (D. Conn. 2002).
In order to determine obviousness as legal matter, factual inquiries must be made concerning: (1) scope and
content of prior art; (2) level of ordinary skill in art; (3) differences between claimed invention and prior art; and
(4) secondary considerations of nonobviousness. 35 U.S.C.A. § 103(a). Neato, LLC v. Rocky Mountain Traders,
138 F. Supp. 2d 245 (D. Conn. 2001).
When conducting an obviousness analysis of patent comprised of multiple elements, courts should identify a
reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the
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way the claimed new invention does; this necessarily may require an examination of interrelated teachings of
multiple patents, the effects of demands experienced by the designed community or existing in the marketplace,
and the background knowledge of a person with ordinary skill in the art. 35 U.S.C.A. § 103(a). Pass & Seymour,
Inc. v. Hubbell Inc., 532 F. Supp. 2d 418 (N.D. N.Y. 2007).
Finding of patented invention's "obviousness" depends on factual findings as to state of prior art, differences
between prior art and patent claims, and amount of skill that constitutes ordinary skill in the art. 35 U.S.C.A. §
103. Leighton Technologies LLC v. Oberthur Card Systems, S.A., 423 F. Supp. 2d 425 (S.D. N.Y. 2006).
Factual underpinnings to determination of patent obviousness are: (1) scope and content of prior art, (2)
level of ordinary skill in the art, (3) differences between prior art and claimed invention, and (4) objective indicia of non-obviousness. 35 U.S.C.A. § 103(a). Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc.,
417 F. Supp. 2d 341 (S.D. N.Y. 2006), judgment entered, 2006 WL 618424 (S.D. N.Y. 2006).
Ultimate determination of patent obviousness is legal conclusion based on underlying factual inquiries into:
(1) scope and content of prior art; (2) level of ordinary skill in the prior art; (3) differences between claimed invention and prior art; and (4) objective evidence of non-obviousness. 35 U.S.C.A. § 103(a). Medinol Ltd. v.
Guidant Corp., 412 F. Supp. 2d 301 (S.D. N.Y. 2005).
In determining whether a patent is invalid for obviousness, fact finder must consider from the perspective of
a person with ordinary skill in the relevant art: (1) the scope and content of the prior art; (2) the differences
between the prior art devices and the claimed invention; (3) the level of ordinary skill in the art; and (4) objective considerations, such as commercial success, long felt need, failure of others, and copying. 35 U.S.C.A. §
103(a). Kwik Products, Inc. v. National Exp., Inc., 356 F. Supp. 2d 303 (S.D. N.Y. 2005).
Factual inquiries relevant to determining whether patent is invalid for obviousness include: (1) scope and
content of prior art; (2) level of ordinary skill in art; (3) differences between claimed invention and prior art; and
(4) secondary, objective considerations of nonobviousness including long–felt need, commercial success, or failure of others. 35 U.S.C.A. § 103. Astra Aktiebolag v. Andrx Pharmaceuticals, Inc., 222 F. Supp. 2d 423 (S.D.
N.Y. 2002).
In determining whether invention for which patent is sought is obvious, court must consider (1) scope and
content of prior art, (2) difference between prior art devices and claimed invention, (3) level of ordinary skill in
art, and (4) objective considerations such as commercial success, long-felt need, failure of others, and copying;
if invention is combination of previously invented components, court must consider whether combination was
obvious. Liberty Leather Prods. Co. v VT Int'l (1995, SD NY) 894 F Supp 136.
In action in which pharmaceutical manufacturer alleged that competitor had infringed its patent on topical
treatment for male pattern baldness, court granted injunction against competitor where differences between prior
art and manufacturer's product were so significant and substantial as to preclude, as matter of law, invalidity for
obviousness, and competitor failed to present relevant evidence tending to show that development of manufacturer's product was obvious. Upjohn Co. v Medtron Laboratories, Inc. (1992, SD NY) 800 F Supp 1181, 1992-2
CCH Trade Cases ¶69988.
Although ultimate question of patent validity is one of law, obviousness or lack of obviousness of subject
matter is to be determined against factual background. Dennison Mfg. Co. v Ben Clements & Sons, Inc. (SD
NY) 467 F Supp 391.
In determining whether patent claim is obvious, trier of fact must consider: (1) scope and content of prior
art; (2) differences between claimed subject matter and prior art; (3) level of ordinary skill in the art; and (4)
secondary considerations of non-obviousness such as commercial success, long felt but unsolved need, failure of
others, and acquiescence of others in industry that patent is valid, and unexpected results. 35 U.S.C.A. § 103.
Telcordia Technologies, Inc. v. Cisco Systems, Inc., 592 F. Supp. 2d 727 (D. Del. 2009).
On a claim of obviousness, secondary considerations such as commercial success, long felt but unsolved
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Page 90
needs, failure of others, et cetera, can be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented. 35 U.S.C.A. § 103(a). In re '318 Patent Infringement Litigation, 578 F.
Supp. 2d 711 (D. Del. 2008).
Party seeking to have patent declared invalid on obviousness grounds must identify some reason that would
have prompted person of ordinary skill in relevant field to combine elements described in prior art to yield
claimed invention, and must demonstrate that such person would have had reasonable expectation of success in
doing so. 35 U.S.C.A. § 103(a). Bayer AG v. Dr. Reddy's Laboratories, Ltd., 518 F. Supp. 2d 617 (D. Del. 2007)
.
The question of obviousness turns on four factual inquiries: (1) the scope and content of the prior art; (2) the
level of ordinary skill in the art; (3) the differences between the claimed patented invention and the prior art; and
(4) objective indicators of non-obviousness, more commonly termed secondary considerations. 35 U.S.C.A. §
103(a). LP Matthews LLC v. Bath & Body Works, Inc., 458 F. Supp. 2d 198 (D. Del. 2006).
In determining whether an invention is obvious, the court should consider: (1) the scope and content of the
prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior
art; and (4) objective indicia of nonobviousness. 35 U.S.C.A. § 103(a). Novozymes A/S v. Genencor Intern.,
Inc., 446 F. Supp. 2d 297 (D. Del. 2006).
Patent obviousness is question of law which is predicated upon factual inquiries into: (1) scope and content
of prior art; (2) level of ordinary skill in art; (3) differences between claimed subject matter and prior art; and (4)
secondary considerations of non-obviousness, such as commercial success, long felt but unsolved need, failure
of others, and acquiescence of others in industry that patent is valid. 35 U.S.C.A. § 103. Pfizer Inc. v. Ranbaxy
Laboratories Ltd., 405 F. Supp. 2d 495 (D. Del. 2005).
Question of patent obviousness turns on four factual inquiries: (1) scope and content of prior art; (2) level of
ordinary skill in the art; (3) differences between claimed invention and prior art; and (4) any objective indicators
of non-obviousness. 35 U.S.C.A. § 103. IMX, Inc. v. LendingTree, LLC, 405 F. Supp. 2d 479 (D. Del. 2005).
Under patent law, a finding of obviousness requires that each element of the claimed invention exists in the
prior art and a motivation to combine the various prior art references exists. Syngenta Seeds, Inc. v. Monsanto
Co., 404 F. Supp. 2d 594 (D. Del. 2005).
Patent obviousness is question of law that is predicated upon factual inquiries into: (1) scope and content of
prior art; (2) level of ordinary skill in the art; (3) differences between claimed subject matter and prior art; and
(4) secondary considerations of non-obviousness, such as commercial success, long felt but unsolved need, failure of others, and acquiescence of others in industry that patent is valid. 35 U.S.C.A. § 103. Corning Inc. v. SRU
Biosystems, 400 F. Supp. 2d 653 (D. Del. 2005).
With respect to patents, an obviousness inquiry requires a determination of whether the claimed invention
would have been obvious as a legal matter, based on underlying factual inquiries including: (1) the scope and
content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) secondary considerations of nonobviousness. Oxford Gene Technology Ltd. v.
Mergen Ltd., 345 F. Supp. 2d 431 (D. Del. 2004).
In determining whether patent is invalid as obvious court must consider: (1) scope and content of prior art;
(2) differences between prior art devices and claimed invention; (3) level of ordinary skill in art; and (4) secondary considerations, such as commercial success, long-felt need, failure of others, and copying. 35 U.S.C.A. §
103. Honeywell Intern., Inc. v. Universal Avionics Systems Corp., 343 F. Supp. 2d 272 (D. Del. 2004).
In determining whether patent is invalid as obvious in light of prior art, trier of fact must consider: (1) scope
and content of prior art; (2) level of ordinary skill in art; (3) differences between claimed subject matter and prior art; and (4) secondary considerations of non-obviousness, such as commercial success, long felt but unsolved
need, failure of others, and acquiescence of others in industry that patent is valid. 35 U.S.C.A. § 103(a). Impax
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Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 333 F. Supp. 2d 265 (D. Del. 2004).
Question of obviousness of a patent claim turns on four factual inquiries: (1) the scope and content of the
prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior
art; and (4) any objective indicators of non–obviousness, more commonly termed secondary considerations. 35
U.S.C.A. § 103. Eaton Corp. v. Parker-Hannifin Corp., 292 F. Supp. 2d 555 (D. Del. 2003).
Factors to be considered in obviousness inquiry include: (1) scope and content of prior art; (2) ordinary
level of skill of people working in field; (3) differences between patented invention and what already existed in
prior art; and (4) secondary considerations of nonobviousness. 35 U.S.C.A. § 103(a). Ade Corp. v. KLA-Tencor
Corp., 220 F. Supp. 2d 303 (D. Del. 2002).
Factors considered in determining whether patent is invalid as obvious are: (1) scope and content of prior
art; (2) level of ordinary skill in prior art; (3) differences between claimed invention and prior art; and (4) objective evidence of nonobviousness. 35 U.S.C.A. § 103(a). Applera Corp. v. Micromass UK Ltd., 204 F. Supp.
2d 724 (D. Del. 2002).
To determine question of obviousness, court should look to: (1) scope and content of prior art; (2) differences between prior art and claims; (3) level of ordinary skill in art; and (4) objective evidence of nonobviousness; secondary considerations, such as commercial success, long felt but unsolved needs, and failure of others
to invent are also relevant. 35 U.S.C.A. § 103(a). Honeywell Intern., Inc. v. Hamilton Sundstrand Corp., 166 F.
Supp. 2d 1008 (D. Del. 2001).
Patents are directed not at general public, but at those skilled in art; issue is whether patent discloses matter
obvious to one skilled in art. GNB Battery Technologies v Exide Corp. (1995, DC Del) 876 F Supp 605.
In patent infringement action in which defendant failed to establish invalidity of patents as obvious to person with ordinary skill in the art at time of invention, court stated that determination of obviousness required
resolution of scope and content of prior art, differences between prior art and claims at issue, level of ordinary
skill in pertinent prior art, commercial success of patent, long–felt but unresolved needs in the art, and failure of
others to solve problem. Solarex Corp. v Arco Solar, Inc. (1992, DC Del) 805 F Supp 252.
Test of obviousness under 35 U.S.C.A. § 103 is whether differences between subject matter sought to be
patented and prior art are such that subject matter as whole would have been obvious at time invention was
made to person having ordinary skill in art to which subject matter pertains, and in making that determination,
factual inquiries are to be made as to scope and content of prior art, differences between prior art and claims at
issue, and level of ordinary skill in pertinent art; secondary considerations, including commercial success, and
long felt but unsolved needs, may also be taken into account. Moleculon Research Corp. v CBS, Inc. (1984, DC
Del) 594 F Supp 1420, 224 USPQ 595, affd in part and vacated in part on other gnds (CA FC) 793 F2d 1261,
229 USPQ 805, cert den 479 US 1030, 93 L. Ed. 2d 829, 107 S Ct 875 and on remand (DC Del) 666 F Supp 661,
4 USPQ2d 1312.
In evaluating the obviousness of a patent, courts look to the totality of the circumstances, including: (1) the
scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the
level of ordinary skill in the art; and (4) objective indicia of non-obviousness, i.e., secondary considerations
such as commercial success, long-felt need, the failure of others, copying, respect by the industry via commercial acquiescence, acclaim, and unexpected results. 35 U.S.C.A. § 103(a). Everett Laboratories, Inc. v. Breckenridge Pharmaceutical, Inc., 573 F. Supp. 2d 855 (D.N.J. 2008).
Factual determinations that are relevant to the inquiry into the obviousness of a patented invention are: (1)
the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the
level of ordinary skill in the art; and (4) secondary considerations or objective indicia of non-obviousness.
Altana Pharma AG v. Teva Pharmaceuticals USA, Inc., 532 F. Supp. 2d 666 (D.N.J. 2007).
In determining patent's obviousness, court looks at scope and content of prior art, differences between prior
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art and claims at issue, and level of ordinary skill in the pertinent art. 35 U.S.C.A. § 103(a). Grayzel v. St. Jude
Medical, Inc., 345 F. Supp. 2d 466 (D.N.J. 2004).
Obviousness of patent is a question of law that involves four factual inquiries: level of ordinary skill in pertinent art, scope and content of prior art, differences between claims and prior art, and secondary considerations,
if any, of nonobviousness; secondary considerations include evidence of factors tending to show nonobviousness, such as commercial success of invention, satisfying long-felt need, failure of others to find solution to
problem at hand, and copying of invention by others. 35 U.S.C.A. § 103(a). Boehringer Ingelheim Animal
Health, Inc. v. Schering-Plough Corp., 984 F. Supp. 239 (D.N.J. 1997).
A legal conclusion that a claim is obvious based on the prior art depends on four underlying factual issues:
(1) the scope and context of the prior art; (2) the differences between the prior art and the claims at issue; (3) the
level of ordinary skill in the pertinent art; and (4) the evaluation of any relevant secondary considerations, such
as commercial success, long felt but unresolved needs, failure of others, et cetera. Agrizap, Inc. v. Woodstream
Corp., 431 F. Supp. 2d 518 (E.D. Pa. 2006).
In action for infringement of patent for watering system for chickens, court would enter judgment for
plaintiff, despite defendant–infringer's contention, among others, that plaintiff's invention was "obvious" within
meaning of § 103, where sole source of defendant's evidence of obviousness came from defendant's long–time
patent attorney–expert witness, and court concluded that he was not credible, did not support his opinion of obviousness with factual basis, failed to establish how secondary references upon which he relied taught use of ball
value and valve actuator with concave head in nipple drinker for chickens, and that evidence in support of secondary considerations overwhelmingly supported conclusion of non–obviousness. Ziggity Systems, Inc. v Val
Watering Systems (1990, ED Pa) 769 F Supp 752.
Factors court considers in determining whether patent is invalid as obvious are: (1) scope and content of prior art; (2) level of ordinary skill in art; (3) differences between claimed invention and prior art; and (4) any objective indicia of non–obviousness. 35 U.S.C.A. § 103(a). Emergency Fuel, LLC v. Pennzoil-Quaker State Co.,
293 F. Supp. 2d 569 (D. Md. 2003).
In order to determine obviousness as a legal matter, four factual inquiries must be made concerning: (1) the
scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of nonobviousness, which in case law is
often said to include commercial success, long felt but unresolved need, failure of others, copying, and unexpected results. 35 U.S.C.A. § 103(a). Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 185 F.
Supp. 2d 588 (D. Md. 2002).
In making determination on obviousness within meaning of 35 U.S.C.A. § 103, several factual inquiries
must be made, including scope and content of prior art, differences between that art and claimed subject matter,
and level or ordinary skill in subject art; secondary considerations such as commercial success, and long-felt
need, should also be considered as indicia of obviousness or nonobviousness. Beloit Corp. v J.M. Voith, GmbH
(1986, ED Va) 626 F Supp 991, 228 USPQ 785, affd without op (CA FC) 802 F2d 471.
Patent obviousness inquiry is question of law that requires specific factual findings, including scope and
content of prior art, level of ordinary skill in the field of invention, differences between claimed invention and
prior art, and any objective evidence of non-obviousness. 35 U.S.C.A. § 103(a). Alza Corp. v. Mylan Laboratories, Inc., 388 F. Supp. 2d 717 (N.D. W. Va. 2005).
Patent obviousness inquiry is question of law that requires specific factual findings as to scope and content
of prior art, level of ordinary skill in field of invention, differences between claimed invention and prior art, and
any objective evidence of non-obviousness. 35 U.S.C.A. § 103(a). Ortho-McNeil Pharmaceutical, Inc. v. Mylan
Laboratories, Inc., 348 F. Supp. 2d 713 (N.D. W. Va. 2004).
Court considers state of prior art of inflatable aircraft escape chutes, differences between patents on chutes
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and prior art suggestions, level of skill and knowledge of workers in art, and evidence of commercial success not
directly related to patented features in affirming trial court's finding of invalidity of patents for obviousness.
Garrett Corp. v American Safety Flight Systems, Inc. (CA5 Fla) 502 F2d 9, 183 USPQ 386.
Four facts must be determined to establish the "obviousness" of a patented device: (1) what is shown or disclosed by the pertinent prior art must be determined; (2) the differences between the claimed invention and the
prior art must be identified; (3) there must be an assessment as to the level of ordinary skill in the art to which
the invention related at the time the invention was made; and (4) the circumstances that surround the historical
origins of the claimed invention and its effect on the industry must be considered. 35 U.S.C.A. § 103. Neutrino
Development Corp. v. Sonosite, Inc., 410 F. Supp. 2d 529 (S.D. Tex. 2006).
Test of obviousness under 35 U.S.C.A. § 103 is whether "the claimed invention as a whole, in light of all
the teachings of the references in their entireties, would have been obvious to one of ordinary skill in the art at
the time the invention was made." Whitehall Corp v Western Geophysical Co. (1986, SD Tex) 664 F Supp 1056.
Although determination of obviousness of patent is ultimately a legal conclusion, it rests on underlying factual determinations, including (1) the scope and content of the prior art, (2) the difference between the prior art
and the claims at issue, (3) the level of ordinary skill in the pertinent art, and (4) objective or secondary considerations, such as whether there was a long-felt but unresolved need for the claimed invention, the failure of others, and whether the invention has enjoyed commercial success. Verve, L.L.C. v. Crane Cams, Inc., 395 F. Supp.
2d 558 (E.D. Mich. 2005).
Patent obviousness is legal determination based on underlying factual inquiries into: (1) scope and content
of prior art; (2) level of ordinary skill in the art; (3) differences between claimed invention and prior art; and (4)
secondary considerations of nonobviousness, such as commercial success, long-felt but unresolved need, failure
of others, copying, and unexpected results. 35 U.S.C.A. § 103(a). Automotive Technologies Intern. v. BMW of
North America, Inc., 378 F. Supp. 2d 780 (E.D. Mich. 2005).
Determination of whether patent is invalid for obviousness is a matter of law, but involves, several factual
issues, including: (1) the scope and content of the prior art; (2) the differences, if any, between the patented
claims and the prior art; (3) the level of ordinary skill in the art; and (4) secondary considerations of nonobviousness. 35 U.S.C.A. § 103. Rogers v. Desa Intern., Inc., 166 F. Supp. 2d 1202 (E.D. Mich. 2001).
Under 35 U.S.C.A. § 103, patent is invalid if differences between subject matter sought to be patented and
prior art are such that subject matter as whole would have been obvious to person having ordinary skill in art at
time invention was made; thus court must examine scope and content of prior art, claims at issue, and level of
ordinary skill in prior art; secondary consideration such as commercial success, long-felt but unsolved needs,
and commercial acquiescence can also be relevant. Rolls-Royce, Ltd. v GTE Valeron Corp. (1985, ED Mich)
625 F Supp 343, 228 USPQ 489, affd (CA FC) 800 F2d 1101, 231 USPQ 185.
Whether patent is invalid as obvious is question of law based on several underlying factual inquiries, including: (1) scope and content of prior art; (2) level of ordinary skill in art; (3) differences between prior art and
claimed invention; and (4) extent of any objective indicia of nonobviousness. 35 U.S.C.A. § 103(a). Emerson
Elec. Co. v. Spartan Tool, LLC, 223 F. Supp. 2d 856 (N.D. Ohio 2002).
In action for infringement of patent for medical event reminder device court found plaintiff's patent valid, in
spite of defendant's contention that plaintiff's device was void for obviousness, where defendants failed to determine scope and content of prior art, to assess differences between prior art and claims in issue, and to establish level of ordinary skill in pertinent art at time invention was made; having failed to establish that background, there could not have been showing of obviousness. Sadlar-Cisar, Inc. v Commercial Sales Network, Inc.
(1991, ND Ohio) 786 F Supp 1287.
Obviousness test applies to state of art at time invention was made; synergistic effect of combined elements
is not proper test of obviousness under 35 U.S.C.A. § 103 as prescribed by Graham v John Deere, and synergy is
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not additional or necessary test for obviousness. Republic Industries, Inc. v Schlage Lock Co. (CA7 Ill) 592 F2d
963, 200 USPQ 769.
Discovery by others of possibility for using "Velcro" for dart game is considered in finding patent invalid as
obvious. Centsable Products, Inc. v Lemelson (CA7 Ill) 591 F2d 400, 201 USPQ 655, cert den 444 US 840, 62
L. Ed. 2d 52, 100 S Ct 79.
Just as patentee cannot enlarge scope of monopoly by asserting infringement over products only covered by
rejected patent claims, obviousness evaluation of patent is based on features added to claims after rejection for
obviousness. Burland v Trippe Mfg. Co. (CA7 Ill) 543 F2d 588, 191 USPQ 667.
On an obviousness inquiry, every patent claim limitation of the invention at issue must be found to exist in
the prior art references, and then a court will determine whether there was a teaching, motivation, or suggestion
to combine those limitations found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art, because a patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the prior art. 35 U.S.C.A. § 103(a). Abbott
Laboratories v. Sandoz, Inc., 529 F. Supp. 2d 893 (N.D. Ill. 2007).
Determination of patent's obviousness should be based on: (1) scope and content of prior art; (2) differences
between prior art and claims; (3) level of ordinary skill in art; and (4) objective evidence of nonobviousness. 35
U.S.C.A. § 103. Spinmaster, Ltd. v. Overbreak LLC, 404 F. Supp. 2d 1097 (N.D. Ill. 2005).
Factors considered by court when reviewing patent obviousness challenge are: (1) scope and content of prior art; (2) differences between prior art and claims at issue; (3) level of ordinary skill in the pertinent art; and (4)
secondary considerations of nonobviousness, such as commercial success, long felt but unsolved need for invention, failure of others, and copying of claimed invention. 35 U.S.C.A. § 103(a). Techtronic Industries Co., Ltd.
v. Chervon Holdings, Ltd., 395 F. Supp. 2d 720 (N.D. Ill. 2005).
In determining that design patent for interproximal tooth brush was not invalid for obviousness within
meaning of 35 U.S.C.A. § 103, court considered scope and content of prior art, differences between prior art and
claims at issue, and level of ordinary skill in art. John O. Butler Co. v Block Drug Co. (1985, ND Ill) 620 F
Supp 771, 226 USPQ 855.
Preceding determination of legal issue of obviousness within meaning of 35 U.S.C.A. § 103, scope and content of prior act is to be determined, differences between prior art and claims at issue are to be ascertained, and
level or ordinary skill in pertinent art is to be resolved; though secondary considerations may also be utilized,
they need not be resorted to if issue of obviousness can be clearly determined from primary factors. A.B. Dick
Co. v Burroughs Corp. (1985, ND Ill) 617 F Supp 1382, 228 USPQ 65, affd, in part (CA FC) 798 F2d 1392, 230
USPQ 849.
In patent infringement actions, legal conclusion of non-obviousness must be based on factual considerations, including scope and content of prior art, differences between prior art and claimed invention, level of ordinary skill in pertinent art at time invention was made, and whatever objective evidence may be present as indicia of obviousness or non-obviousness. Glaros v H.H. Robertson Co. (1985, ND Ill) 615 F Supp 186, 227 USPQ
448.
Ultimate question in determining obviousness is whether hypothetical person having ordinary skill in art
would have readily found same solution when addressing himself to same problem. Freeman v Hammond Corp.
(ND Ill) 464 F Supp 404.
Factual inquiries court must make in determining whether patent is invalid as obvious are: (1) scope and
content of prior art, (2) level of ordinary skill in invention's field, (3) differences between claimed invention and
prior art, and (4) any objective evidence of non-obviousness, such as long-felt need, commercial success, failure
of others, or evidence of copying. 35 U.S.C.A. § 103(a). Indiana Mills & Mfg., Inc. v. Dorel Industries Inc., 458
F. Supp. 2d 890 (S.D. Ind. 2006).
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Patent obviousness is conclusion of law based on following factual determinations: (1) scope and content of
prior art, (2) differences between prior art and claimed subject matter as a whole, (3) level of skill in the art, and
(4) where relevant, objective evidence of nonobviousness. 35 U.S.C.A. § 103(a). Eli Lilly and Co. v. Zenith
Goldline Pharmaceuticals, Inc., 364 F. Supp. 2d 820 (S.D. Ind. 2005).
With respect to patents, factual inquiries for obviousness are 1) the scope and content of the prior art, 2) the
level of ordinary skill in the field of the invention, 3) the differences between the claimed invention and the prior art, and 4) any objective evidence of nonobviousness, such as long–felt need, commercial success, the failure
of others, or evidence of copying. 35 U.S.C.A. § 103(a). Roche Diagnostics Corp. v. Selfcare Inc., 233 F. Supp.
2d 1038 (S.D. Ind. 2002).
In a patent "obviousness" analysis, secondary considerations such as commercial success, long felt but unsolved needs, failure of others, et cetera, may be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. 35 U.S.C.A. § 103(a). Procter & Gamble Co. v. McNeil-PPC,
Inc., 615 F. Supp. 2d 832 (W.D. Wis. 2009).
To determine whether subject-matter of patent is obvious within meaning of 35 U.S.C.A. § 103, scope and
content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained,
and level of ordinary skill in pertinent art resolved; secondary considerations are commercial success, long felt
but unsolved needs, and failure of others, may be relevant and thus utilized to give light to circumstances surrounding origin of subject-matter sought to be patented. Moore v Stewart (1985, WD Ark) 600 F Supp 655, 225
USPQ 313.
Under § 103, court must determine scope and content of prior art, ascertain differences between prior art
and claims at issue, and resolve level of ordinary skill in pertinent art; secondary considerations are commercial
success of invention, its satisfaction of recognized but unsolved needs, and failure of others to create claimed invention. Maxwell v J. Baker, Inc. (1993, DC Minn) 820 F Supp 444, 27 USPQ2d 1628.
See AIR-vend, Inc. v Thorne Industries, Inc. (1985, DC Minn) 625 F Supp 1123, 229 USPQ 505, § 7[c].
To determine whether a patent is "obvious," and thus invalid, the court must examine: (1) the scope and the
content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) the objective evidence of nonobviousness. 35 U.S.C.A. § 103(a). Medtronic Vascular Inc. v. Abbott Cardiovascular Systems, Inc., 614 F. Supp. 2d 1006 (N.D. Cal. 2009), amended on reconsideration, 2009 WL 1764749 (N.D. Cal. 2009).
In evaluating question of obviousness in patent action, prior art's scope and content are to be determined,
differences between prior art and claims at issue are to be ascertained, and level of person having ordinary skill
in art is to be resolved and, after such analysis, secondary considerations such as commercial success and failure
of others may be considered as indicia of obviousness or nonobviousness. 35 U.S.C.A. § 103. Geo M. Martin
Co. v. Alliance Mach. Systems Intern., LLC, 634 F. Supp. 2d 1024 (N.D. Cal. 2008).
The fact questions in the analysis as to whether a patent was obvious are: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art;
and (4) secondary evidence of nonobviousness. 35 U.S.C.A. § 103(a). Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 563 F. Supp. 2d 1016 (N.D. Cal. 2008).
Obviousness of a patent, as required to prove that patented invention is invalid, is a question of law
premised on underlying findings of fact, including: (1) the scope and content of the prior art, (2) differences
between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and, if necessary, (4) secondary evidence of nonobviousness. Semiconductor Energy Laboratory Co. Ltd. v. Chi Mei Optoelectronics
Corp., 531 F. Supp. 2d 1084 (N.D. Cal. 2007).
To determine if patent is invalid for obviousness, court must consider scope and content of prior art, differences between patented invention and prior art, and level of skill in the art. 35 U.S.C.A. § 103(a). O2 Micro In-
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tern. Ltd. v. Monolithic Power Systems, Inc., 420 F. Supp. 2d 1070 (N.D. Cal. 2006).
Whether patent is invalid as obvious is legal conclusion involving factual inquiries into: (1) scope and content of prior art; (2) differences between claims and prior art; (3) level of ordinary skill in pertinent art, and (4)
evidence of nonobviousness, such as commercial success of invention, satisfying long–felt need, failure of others to solve same problem, and copying of invention rather than prior art by others. 35 U.S.C.A. § 103. Old
Town Canoe Co. v. Glenwa, Inc., 229 F. Supp. 2d 1151 (D. Or. 2002).
Factors relevant to patent obviousness inquiry are: (1) scope and content of prior art; (2) level of ordinary
skill in the prior art at time of invention; (3) differences, if any, between claimed invention and prior art; and (4)
objective considerations of nonobviousness, such as commercial success, long-felt need, failure of others, and
unexpected results. 35 U.S.C.A. § 103(a). Hildebrand v. Steck Mfg. Co., Inc., 395 F. Supp. 2d 1036 (D. Colo.
2005).
Issues to be considered when validity of patent is challenged on obviousness grounds are scope and content
of prior art, level of ordinary skill in art, differences between claimed invention and prior art, and objective evidence of nonobviousness. 35 U.S.C.A. § 103. Laser Technology, Inc. v. Nikon, Inc., 215 F. Supp. 2d 1135 (D.
Colo. 2002).
The factual determinations underpinning the legal conclusion of patent obviousness include the scope and
content of the prior art, the level of ordinary skill in the art, the differences between the claimed invention and
the prior art, and evidence of secondary factors, also known as objective indicia of non-obviousness. 35
U.S.C.A. § 103(a). Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 634 F. Supp. 2d 1293 (M.D.
Fla. 2008).
Four factual inquiries are involved in the determination of patent obviousness: (1) the scope and content of
the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in
the art; and (4) objective evidence of nonobviousness, such as commercial success, long–felt but unsolved need,
failure of others, copying, and unexpected results. Dow Chemical Co. v. Mee Industries, 264 F. Supp. 2d 1018,
65 U.S.P.Q.2d (BNA) 1876 (M.D. Fla. 2002).
Factual determinations underpinning the legal conclusion of patent invalidity due to obviousness include:
(1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) evidence of secondary factors, also known as objective indicia of
non-obviousness, which include, among other things, commercial success, long-felt but unresolved need, failure
of others, copying, and unexpected results. 35 U.S.C.A. § 103(a). Sensormatic Electronics Corp. v. TAG Co.
US, LLC, 632 F. Supp. 2d 1147 (S.D. Fla. 2008).
In actions to determine validity of patents, test for obviousness under 35 U.S.C.A. § 103, requires inquiry
into scope and content of prior art, differences between prior art and claims at issue, level of ordinary skill in
pertinent art, and secondary considerations such as commercial success. Bowles Fluidics Corp. v Mossinghoff
(1985, DC Dist Col) 620 F Supp 1297, 228 USPQ 512.
Obviousness of a patent is a question of law based on underlying findings of fact; the underlying factual inquiries are: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at
issue, (3) the level of ordinary skill in the pertinent art, and (4) secondary considerations of nonobviousness.
Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 92 U.S.P.Q.2d 1849 (Fed. Cir. 2009).
Differences between prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation. 35 U.S.C.A. §§ 102, 103(a). Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 88
U.S.P.Q.2d 1751 (Fed. Cir. 2008).
While the ultimate question of patent validity is a question of law, with respect to obviousness challenges,
the proper resolution of that ultimate question typically turns on underlying factual inquiries, including the scope
and content of the prior art and the differences between the prior art and the claims at issue. Commonwealth Sci-
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entific and Indus. Research Organisation v. Buffalo Technology (USA), Inc., 542 F.3d 1363 (Fed. Cir. 2008).
Ultimate determination of patent's obviousness is legal conclusion based on factual findings as: (1) scope
and content of prior art; (2) level of ordinary skill in the prior art; and (3) differences between claimed invention
and prior art. 35 U.S.C.A. § 103(a). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir. 2006).
Test for patent invalidity on ground of obviousness requires court to examine: (1) scope and content of prior
art; (2) level of ordinary skill in art; (3) differences between claimed invention and prior art; and (4) objective
evidence of nonobviousness. 35 U.S.C.A. § 103. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317
(Fed. Cir. 2004).
Whether the prior art provides the suggestion or motivation or teaching to select from prior knowledge and
combine it in a way that would produce the invention at issue is a question of fact. Cardiac Pacemakers, Inc. v.
St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004).
Patent obviousness is legal conclusion based on factual inquiries into: (1) scope and content of prior art; (2)
differences between claims and prior art; (3) level of ordinary skill in pertinent art; and (4) secondary considerations, if any, of non–obviousness. 35 U.S.C.A. § 103. Golight, Inc. v. Wal Mart Stores, Inc., 355 F.3d 1327, 69
U.S.P.Q.2d (BNA) 1481 (Fed. Cir. 2004).
Obviousness of a patent claim is a legal conclusion based on certain factual inquiries: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the
pertinent art; and (4) secondary considerations, if any, of nonobviousness. McNeil-PPC, Inc. v. L. Perrigo Co.,
337 F.3d 1362 (Fed. Cir. 2003).
In patent law, obviousness is a question of law premised on underlying factual determinations. Bowers v.
Baystate Technologies, Inc., 302 F.3d 1334 (Fed. Cir. 2002).
Obviousness of device or method claimed in a patent is a legal conclusion based on underlying facts of four
general types, all of which must be considered by the trier of fact: (1) the scope and content of the prior art, (2)
the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4)
any objective indicia of nonobviousness. Crown Operations Intern., Ltd. v. Solutia Inc., 289 F.3d 1367 (Fed.
Cir. 2002).
The underlying factual inquiries of whether a claimed invention is unpatentable as obvious include: (1) the
scope and content of the prior art; (2) the level of ordinary skill in the prior art; and (3) the differences between
the claimed invention and the prior art. 35 U.S.C.A. § 103. Okajima v. Bourdeau, 261 F.3d 1350, 59 U.S.P.Q.2d
(BNA) 1795 (Fed. Cir. 2001), reh'g and reh'g en banc denied, (Sept. 17, 2001).
Obviousness is a legal question based on underlying factual determinations including: (1) the scope and
content of the prior art, including what that prior art teaches explicitly and inherently; (2) the level of ordinary
skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. 35 U.S.C.A. § 103(a). In re Zurko, 258 F.3d 1379, 59 U.S.P.Q.2d (BNA) 1693 (Fed.
Cir. 2001).
The ultimate determination of whether an invention is or is not obvious is a legal conclusion based on underlying factual inquiries including: (1) the scope and content of the prior art; (2) the level of ordinary skill in
the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of
nonobviousness. 35 U.S.C.A. § 103. Tapco Intern. Corp. v. Van Mark Products Corp., 18 Fed. Appx. 865 (Fed.
Cir. 2001).
To establish invalidity of patent as obvious, underlying factual determinations must be made before the legal conclusion on obviousness can be reached, including: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) objective
evidence of nonobviousness, such as commercial success, long felt but unsolved need, failure of others, copying,
and unexpected results. 35 U.S.C.A. § 103. Lencco Racing Co., Inc. v. Jolliffe, 10 Fed. Appx. 865 (Fed. Cir.
23 A.L.R. Fed. 326
Page 98
2001).
Factual issues underlying ultimate decision as to whether patent is obvious include scope and content of prior art, differences between claimed invention and prior art, level of ordinary skill in the art, and certain secondary considerations. 35 U.S.C.A. § 103. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 44 U.S.P.Q.2d
(BNA) 1181 (Fed. Cir. 1997), reh'g denied, in banc suggestion declined, (Nov. 21, 1997).
Japanese prior art reference was sufficiently enabling to support finding that reference rendered obvious patent claims relating to field of digital wireless telephony, as reference itself provided block diagrams at level of
detail similar to those contained in patent, and expert testified extensively about his understanding of reference,
from which jury could have concluded that one skilled in the art understood reference in sufficient detail to practice it. Motorola, Inc. v. Interdigital Technology Corp., 121 F.3d 1461, 43 U.S.P.Q.2d (BNA) 1481 (Fed. Cir.
1997).
Decision as to obviousness of patent is made not from viewpoint of inventor, but from viewpoint of person
of ordinary skill in field of invention. 35 U.S.C.A. § 103. Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d
953, 43 U.S.P.Q.2d (BNA) 1294 (Fed. Cir. 1997), reh'g denied, in banc suggestion declined, (Sept. 11, 1997).
As part of burden to make prima facie case of obviousness, Patents and Trademarks Office had burden of
establishing absence of novel, nonobvious function. In re Lowry (1994, CA FC) 32 F3d 1579, 32 USPQ2d 1031.
In patent infringement action, court, in determining obviousness within meaning of § 103, will consider
scope and content of prior art, differences between prior art and claims at issue, level of ordinary skill in art
when invention was made, and secondary indicia, such as commercial success and copying. Avia Group International, Inc. v L.A. Gear California, Inc. (1988, CA FC) 853 F2d 1557, 7 USPQ2d 1548.
Trial court properly ruled that invention, providing means for safely shipping rolls of web material from
manufacturer to user on pallet, was not "obvious," within meaning of 35 U.S.C.A. § 103, and thus was valid,
since evidence showed that claimed subject-matter would not have been obvious to one of ordinary skill in the
art at time invention was made: problem solved by invention, and advantages gained, were peculiar to product
used in invention, and were achieved by incorporating recesses in side portions of indentations in foam support,
structure not shown or suggested by prior art. Great Northern Corp. v Davis Core & Pad Co. (1986, CA FC) 782
F2d 159, 228 USPQ 356.
Trial court erred in holding patent invalid for obviousness under 35 U.S.C.A. § 103, since in determining
obviousness courts are required to make factual findings as to scope and content of prior art, differences
between prior art and claims at issue, level of ordinary skill in art, and objective evidence of secondary considerations, and in present action, trial court failed to make those findings. Loctite Corp. v Ultraseal, Ltd. (1985, CA
FC) 781 F2d 861, 228 USPQ 90, 1986-1 CCH Trade Cases ¶66941.
In patent infringement action, trial court erred in concluding that process was invalid under 35 U.S.C.A. §
103 as being "obvious" since there is no basis in law for treating combinations of old elements differently in determining patentability, and critical inquiry was whether there was something in prior art as whole to suggest desirability and thus obviousness of making combination of old elements, and there was nothing of record to indicate that it would have been obvious to combine previously separate things into one process. Fromson v Advance
Offset Plate, Inc. (1985, CA FC) 755 F2d 1549, 225 USPQ 26.
In order to determine whether invention would have been obvious within meaning of patent statute, 35
U.S.C.A. § 103, courts are to examine facts relating to scope and content of prior art, differences between prior
art and claims at issue, and level of ordinary skill in pertinent art; other relevant factual considerations include
commercial success, long-felt but unsolved need, and failure of others. Cooper v Ford Motor Co. (1984, CA FC)
748 F2d 677, 223 USPQ 1286.
Appropriate question to be answered by district court on infringer's motion for judgement n.o.v was whether
jury's presumed finding supported conclusion of nonobviousness encompassed in jury's verdict of validity. Per-
23 A.L.R. Fed. 326
Page 99
kin-Elmer Corp. v Computervision Corp. (1984, CA FC) 732 F2d 888, 221 USPQ 669, cert den (US) 83 L Ed 2d
120, 105 S Ct 187, 225 USPQ 792.
See Connell v Sears, Roebuck & Co. (1983, CA FC) 722 F2d 1542, 220 USPQ 193, § 5[a].
Obviousness test does not include consideration of what "one might contemplate" or whether invention was
"quite sophisticated," but mentioning such considerations is not reversible error when record on other grounds
supports conclusion of invalidity. Medtronic, Inc. v Cardiac Pacemakers, Inc. (1983, CA FC) 721 F2d 1563, 220
USPQ 97.
Obviousness is legal conclusion based on factual determinations and not factual determination itself; and
once factual determination of admission of prior art is clear, unobviousness of patent on headbox for papermaking machine is determined as matter of law. Aktiebolaget Karlstads Mekaniska Werkstad v United States International Trade Com. (1983, CA FC) 705 F2d 1565, 217 USPQ 865.
Conclusion that a patent is invalid based on obviousness is based on the totality of the evidence and informed vel non by four underlying factual inquiries: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) any objective evidence of nonobviousness, such as long felt need, commercial success, the failure of others, or copying. 35 U.S.C.A. § 103(a). The Boeing Co. v. U.S., 69 Fed. Cl. 397 (2006).
In an obviousness analysis of patent validity, objective evidence of nonobviousness must be considered if
present; such evidence includes the commercial success of the patented invention, whether the invention meets
long felt but unsolved needs, and the failure of others to produce alternatives to the patented claims. Chemical
Separation Technology, Inc. v. U.S., 51 Fed. Cl. 771 (2002).
In patent infringement action, defendant's expert failed to persuade court that invention would have been obvious to person of ordinary skill at time it was made where, when considering whether invention would have
been obvious, court was required to ascertain scope and content of prior art, level of ordinary skill in art, and
differences between prior art and claims at issue, also examining secondary considerations, and prior art revealed in some form all elements comprising invention and taught certain combinations in those elements, but
did not teach combination of all, and where hindsight influenced defendant's expert's testimony. UMC Electronics Co v United States (1985) 8 Cl Ct 604, 228 USPQ 396, affd in part and revd in part on other gnds, vacated,
in part on other gnds (CA FC) 816 F2d 647, 2 USPQ2d 1465, cert den 484 US 1025, 98 L. Ed. 2d 761, 108 S Ct
748.
Defendant did not carry its burden of establishing invalidity through obviousness of invention of gyroscope
device, where defendant did not: (1) present any prior art more relevant than that before Patent Office; (2) establish prima facie case of obviousness; (3) present testimony by its sole expert on issue of obviousness; (4) not address obviousness issue in its post-trial brief regarding liability issues; and (5) propose any findings of fact regarding obviousness. Barnett v United States (1984) 6 Cl Ct 631.
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§ 7[b] Procedure for determining obviousness—"Subject matter as a whole" to be considered
The statute provides that if the differences between the subject matter sought to be patented and the prior art
"are such that the subject matter as a whole would have been obvious," a patent may not be obtained. (35
U.S.C.A. § 103, supra, § 4.) This seems to refer to the subject matter of the whole invention, but in the United
States Supreme Court's interpretation of the phrase, each element of the invention must, apparently, be con-
23 A.L.R. Fed. 326
Page 100
sidered by itself in determining obviousness.
Thus, in Calmar, Inc. v Cook Chemical Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, where the Court
of Appeals, in upholding a patent on an insect sprayer, found that while individual elements were not novel per
se, nothing in the prior art suggested the patentee's "unique combination of these old features" to solve a problem that had long beset the insecticide industry, it was argued to the Supreme Court that the invention must be
viewed as the overall combination, or in the language of the statute, that the court must consider the subject matter sought to be patented taken as a whole. Reversing, the Supreme Court said that with this position taken in the
abstract, there was, of course, no quibble, but that the history of the patent application in the Patent Office revealed a substantial divergence in the patentee's position before the court. The Supreme Court then outlined that
history, showing that the patentee's 15 original claims had been rejected, and that after a series of resubmissions
and rejections, only one new claim on a sealing feature was allowed as a patentable difference in his combination. The court concluded that the patentee's "combination" lay solely in the sealing arrangement of his sprayer,
and this it found obvious in the light of an item of prior art.
The lower federal courts have in some cases analyzed the requirement as to the "subject matter as a whole"
in determining whether an invention would have been obvious at the time it was made to a person having ordinary skill in the pertinent art.
Finding the particular problem which the patentee seeks to resolve in the prior art has been referred to as
part of the subject matter as a whole. So, in Application of Aufhauser (1968) 55 Cust & Pat App 1477, 399 F2d
275, the court said that in considering what constituted the applicant's "invention as a whole" within the context
of 35 U.S.C.A. § 103, one was required to consider first that which the applicant discovered as the causes of the
trouble which persisted despite the prior art, and then to consider the applicant's remedy. Viewed after the event,
his invention might appear to have been simple, and as such, obvious to those of ordinary skills in this art, but
this was not a basis upon which to reject the claims, the court went on, and where the invention for which a patent was sought solved a problem which had persisted in the art, one had to look to the problem as well as to its
solution in order to properly appraise what was done, and to evaluate it against what would be obvious to one
having the ordinary skills of the art.
Thus, in holding invalid for obviousness the patentee's "rotary letterpress ink fountain," the court in Worthington v Southern New Jersey Newspapers, Inc. (1970, DC NY) 323 F Supp 443, noted plaintiff's argument
that, "taken as a whole," his invention was not obvious even though all of the functional elements were old.
However, the court said, the "whole" must give something new, not merely aggregate the old, to be patentable,
and what the "whole" achieved in this patent was clean ink under a blade and uniform wetting of the roller, but
these were not new results; they had been achieved before separately.
However, the "subject matter as a whole" may have a synergistic effect (see § 17, infra) and so sustain patentability, as in Trio Process Corp. v L. Goldstein's Sons, Inc. (1972, CA3 Pa) 461 F2d 66, cert den 409 US 997,
34 L Ed 2d 262, 93 S Ct 319. Here, the alleged infringer argued that the method patent before the court of removing organic insulation from scrap wire without melting the wire was obvious at the time the invention was
made, because each of the steps described in the patentee's claims was well known in the prior art, but the court
pointed out that it was the subject matter as a whole which must be considered in determining obviousness. The
essence of the invention in this case did not lie in the individual steps, the court said, but rather, consisted of
combining the steps in an unsuggested manner into a process that would achieve a substantially different function and result from the other processes of which the individual stages were a part, and where such occurs, the
invention of a process may be patentable despite the fact that the individual phases were known in the art.
23 A.L.R. Fed. 326
Page 101
Cases:
Analysis of what is patentable subject matter under § 101 of Patent Act (35 U.S.C.A. § 101) should proceed
by considering subject matter as whole, even though § 103 of Act, which expressly requires that determination
of obviousness must be made by considering "the subject matter as a whole," does not necessarily require such
analysis under § 101. Parker v Flook, 437 US 584, 57 L. Ed. 2d 451, 98 S Ct 2522.
To render invention obvious and unpatentable, differences between subject matter claimed and prior art
must be such that subject matter as whole would be obvious to ordinary person skilled in art; in determining obviousness, significant factors include scope and content of prior art, differences between prior art and claims at
issue, level of ordinary skill in prior art, and evidence of secondary considerations. Rogers Corp. v Arlon, Inc.
(1994, DC Conn) 855 F Supp 560.
Test for patent invalidity on ground of obviousness is whether combined teachings of prior art, taken as a
whole, would have rendered claimed invention obvious to one of ordinary skill in the art. 35 U.S.C.A. § 103.
Cargill, Inc. v. Sears Petroleum & Transport Corp., 388 F. Supp. 2d 37 (N.D. N.Y. 2005), Appeal Filed,
(Fed.Cir. 05-1613)(Sept. 30, 2005).
Mere identification in prior art of each element is insufficient to defeat patentability of combined subject
matter as whole; rather, party alleging invalidity due to obviousness must articulate reasons one of ordinary skill
in art would have been motivated to select references and to combine them. 35 U.S.C.A. § 103. Sanofi-Synthelabo v. Apotex Inc., 488 F. Supp. 2d 317 (S.D. N.Y. 2006), aff'd, 470 F.3d 1368, 81 U.S.P.Q.2d 1097 (Fed.
Cir. 2006).
When assessing differences between prior art and claimed invention, court conducting patent obviousness
inquiry must consider invention as a whole. 35 U.S.C.A. § 103(a). Medinol Ltd. v. Guidant Corp., 412 F. Supp.
2d 301 (S.D. N.Y. 2005).
In determining question of obviousness, test is not substantiality of differences between claimed device and
prior art, but obviousness of invention as whole. Louis Marx & Co. v Buddy L Corp. (SD NY) 453 F Supp 392.
Even though manner of producing drug cephalexin, synthesized by modifying existing drug cephaloglycin,
was readily predictable and performable, and thus obvious in light of prior art, real advancement of cephalexin
was its 100 percent absorption rate, which was totally unanticipated characteristic; hence, taken as whole, drug
was nonobvious advancement over prior art. Eli Lilly & Co. v Premo Pharmaceutical Laboratories, Inc. (1980,
CA3 NJ) 630 F2d 120, 207 USPQ 719, cert den 449 US 1014, 66 L Ed 2d 473, 101 S Ct 573, 208 USPQ 88.
References to prior art cited to demonstrate obviousness of patent must be considered in their entirety; if
references do not suggest combination, there should be no finding of obviousness. GNB Battery Techs v Exide
Corp. (1995, DC Del) 876 F Supp 582, motion for new trial denied (DC Del) 876 F Supp 605.
See Moelculon Research Corp. v CBS, Inc. (1984, DC Del) 594 F Supp 1420, 224 USPQ 595, affd in part
and vacated in part on other gnds (CA FC) 793 F2d 1261, 229 USPQ 805 cert den (US) 93 L. Ed. 2d 829, 107 S
Ct 875 and on remand (DC Del) 666 F Supp 661, 4 USPQ2d 1312, § 7[a].
A patent claim is invalid if the differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the time invention was made to a person
having ordinary skill in the art. 35 U.S.C.A. §§ 102, 103. Applied Material, Inc. v. Tokyo Seimitsu, Co., Ltd.,
446 F. Supp. 2d 538 (E.D. Va. 2006).
See Whitehall Corp v Western Geophysical Co. (1986, SD Tex) 664 F Supp 1056 § 7[a].
In order to establish patent invalidity on obviousness grounds, a defendant must show that the differences
between the subject matter sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having ordinary skill in the art to which
subject matter pertains. 35 U.S.C.A. § 103(a). Henrob Ltd. v. Böllhoff Systemtechnick GmbH & Co., 625 F.
23 A.L.R. Fed. 326
Page 102
Supp. 2d 524 (E.D. Mich. 2008).
In patent infringement action involving process for commercial production of fiberglass insulation,
plaintiff's fiberizing concept was not obvious when prior art was reviewed as whole, including unworkable previous patent and warning against its success, rendering unsuccessful defendants' attempt to prove obviousness
by fragmenting prior art rather than reviewing it collectively as is required. Johns-Manville Corp. v Guardian Industries Corp. (1983, ED Mich) 586 F Supp 1034, 221 USPQ 319, amd (ED Mich) 223 USPQ 974 and affd
without op (CA FC) 770 F2d 178 and motion den (ED Mich) 116 FRD 97, 4 USPQ2d 1723, app dismd (CA FC)
835 F2d 871, later proceeding (ED Mich) 718 F Supp 1310, 13 USPQ2d 1684.
A patent is invalid for obviousness if the difference between the prior art and the claimed invention is such
that the subject matter as a whole would have been obvious at the time to a person skilled in the art. 35 U.S.C.A.
§ 103. Old Reliable Wholesale, Inc. v. Cornell Corp., 609 F. Supp. 2d 742 (N.D. Ohio 2009).
To render invention invalid as obvious under 35 U.S.C.A. § 103, element of prior art does not have to precisely duplicate patented invention, but it is sufficient that subject matter of patented article taken as whole has
been disclosed by prior art. Alco Standard Corp. v Tennessee Valley Authority (1984, WD Tenn) 597 F Supp
133, 224 USPQ 577.
Where subject matter of patent and prior art are easily understandable, determination of level of ordinary
skill in art is unnecessary. 35 U.S.C.A. §§ 103(a), 282. For Your Ease Only, Inc. v. Natural Science Industries,
Inc., 233 F. Supp. 2d 988 (N.D. Ill. 2002).
Mere existence of individual elements of invention at time of origination does not render patented combination of elements obvious as matter of law. Remcor Prods. Co. v Scotsman Group (1994, ND Ill) 860 F Supp 568,
partial summary judgment gr, in part (ND Ill) 860 F Supp 575 and ops combined at (ND Ill) 32 USPQ2d 1273.
A patent is considered obvious if the differences between it and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the
art. Patent Category Corp. v. Target Corp., 567 F. Supp. 2d 1171 (C.D. Cal. 2008).
Patent obviousness is assessed based on whether a hypothetical person having ordinary skill in the art with
all prior art references would regard the subject matter of the invention as obvious. 35 U.S.C.A. § 103. ACCO
Brands, Inc. v. PC Guardian Anti-Theft Products, Inc., 592 F. Supp. 2d 1208 (N.D. Cal. 2008).
Presumption of validity of patent for sunglasses-hanging rack was undermined by findings against validity
of parent and grandparent patents based on obviousness. Al-Site Corp. v Cable Car Sunglasses (1994, ND Cal)
911 F Supp 410.
To find a patent claim "obvious," the court must find that the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35
U.S.C.A. § 103(a). Abbott Laboratories v. Dey, L.P., 287 F.3d 1097, 62 U.S.P.Q.2d (BNA) 1545 (Fed. Cir.
2002).
35 U.S.C.A. § 103 requires that obviousness be determined with respect to invention as whole. Interconnect
Planning Corp. v Feil (1985, CA FC) 774 F2d 1132, 227 USPQ 543.
In patent infringement action, trial court erred in ruling patent valid since invention would have been obvious to hypothetical person of ordinary skill postulated by 35 U.S.C.A. § 103 inasmuch as evidence showed that
inventor has done no more than apply presumed knowledge of prior art to provide obvious solution to simple
problem and presumed knowledge was available to all, and since trial court disregarded clear teaching of prior
patent due to fact that trial court found "significant differences" between prior patented invention and subject invention; reference to prior art must be considered for everything it teaches by way of technology and is not limited to particular invention it is describing and attempting to protect. EWP Corp. v Reliance Universal, Inc.
(1985, CA FC) 755 F2d 898, 225 USPQ 20, cert den (US) 88 L Ed 2d 108, 106 S Ct 131.
23 A.L.R. Fed. 326
Page 103
Trial court erred in frequently restricting its consideration to "thrust of the invention," "inventive concept,"
and percentage per second of stretch rate when claimed subject matter as a whole should have been considered,
and in determining obviousness there is no legally recognizable or protected "essential," "jist," or "heart" of the
invention. W.L. Gore & Associates, Inc. v Garlock, Inc. (1983, CA FC) 721 F2d 1540, 220 USPQ 303.
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§ 7[c] Procedure for determining obviousness—"Hindsight" to be avoided
The obviousness or nonobviousness of a patent's subject matter is to be determined as of "the time the invention was made," according to the statute (supra, § 1[c]), and this requires looking at the inventor's contribution in terms of the prior art and the level of skill therein, rather than viewing the prior art in light of his invention. Although it is not possible to define precisely what is impermissible hindsight in evaluating the obviousness of inventions, the courts have uniformly recognized that they may not read into the prior art the teachings
of the invention in issue in determining whether it would have been obvious at the time the invention was made
to a person having ordinary skill in the pertinent art.
For example, in Shaw v E. B. & A. C. Whiting Co. (1969, CA2 Vt) 417 F2d 1097, cert den 397 US 1076, 25
L Ed 2d 811, 90 S Ct 1518, reh den 398 US 954, 26 L Ed 2d 298, 90 S Ct 1866, the court observed, in reversing
the District Court, that the latter might have used the benefit of hindsight when it stated that the patentee did not
obtain an unexpected result, for the issue was not what the patentee expected to produce, but what a hypothetical
person having ordinary skill in the art would have expected to develop if he had thought about the problem. In
resolving the question of obviousness, the court stated, the judicial view must not include the knowledge contributed by the patentee, for the teachings of his patent were irrelevant in determining what "would have been
obvious" to one skilled in the prior art before he created his "manufacture."
The criteria stated in 35 U.S.C.A. § 103 is that the subject matter as a whole would have been obvious "at
the time" the invention was made, the court stated in Maschinenfabrik Rieter v Greenwood Mills (1972, DC SC)
340 F Supp 1103, and thus the scope and content of the prior art must be viewed with foresight at a time immediately prior to the invention, and not by reconstruction of the art after the invention and its commercial acceptance.
The court held valid as not obvious an automatic latching, spring-loaded trailer hitch, in Antici v KBH
Corp. (1971, DC Miss) 324 F Supp 236, affd (CA5 Miss) 455 F2d 607, noting that most of the devices in the
prior art were simple spring-cushioned hitches for absorbing shocks, and that the more complicated and ingenious devices were directed to the solution of specific, narrow problems such as keeping hayracks level or log
trailers free from strain. These were totally unrelated to the hitching problem this patentee sought to solve, the
court said, and should be compared with the patent in suit only with great caution to avoid hindsight, since it
would take substantial modification of the prior inventors' conceptions to envision using their principles in
totally different ways to achieve the totally different results sought by this patentee.
In holding valid the patent on a slotted wiring duct where its obviousness was testified to by two experts,
the court said in Panduit Corp. v Stahlin Bros. Fibre Works, Inc. (1969, DC Mich) 298 F Supp 435, affd (CA6
Mich) 430 F2d 221, cert den 401 US 939, 28 L Ed 2d 218, 91 S Ct 932, that the actions of these two witnesses at
the critical time belied their conclusions of obviousness stated in court, with this patentee's devices before them.
What seemed obvious to them now was clearly not obvious to them at the time, the court noted, one of the experts testifying that he tried the slit idea but rejected it out of hand, neither recognizing any of its great advant-
23 A.L.R. Fed. 326
Page 104
ages nor noting its solution to the nagging problems in the electrical control-panel field, and the other expert
permitting his company to revert to the completely closed-hole construction, and only when their customers demanded a duct similar to this patentee's did they return to a duct with any openings to the top of the side wall. In
short, the court said, this invention was so unobvious that even when that expert was on the brink of discovering
it he had no idea of what he was on the brink of, or what its advantages might be. This improvement which
seemed simple and obvious by hindsight, the court held, was not obvious at the point in time just prior to when
the patented device was made.
In Walt Disney Productions v Fred A. Niles Communications Center, Inc. (1966, CA7 Ill) 369 F2d 230, the
holding of the District Court that the patent on a panoramic motion-picture camera arrangement was invalid for
obviousness under 35 U.S.C.A. § 103 was reversed, the court emphasizing that the question of obviousness was
to be decided as of the time the invention was made, and concluding that the experts at the trial used hindsight.
The court said that the steps described for the skilled artisan in following the various patents in the prior art were
logical enough when taken in reverse order, but that the skilled artisan's choice of a camera and a mirror arrangement of the cinerama type was not obvious at the time of the invention, and that there was nothing in the
prior art which would suggest that the arrangement could be used to produce a 360-degree motion picture that
would not have the drawbacks of those first produced.
By looking backward after an invention has been conceived and put to practical test, the inventive-level
concept may appear simple and capable of easy realization by those who are skilled in the art, the court said in
National Dairy Products Corp. v Borden Co. (1968, CA7 Wis) 394 F2d 887, cert den 393 US 953, 21 L Ed 2d
364, 89 S Ct 378, and yet in this case those who combined teachings in the prior art, skilled as they were, did not
hit upon the idea which was central to this patentee's method, and even this patentee and his co-workers, despite
their skill in the art, conceived their idea only after months of experimentation. The court added that the fact that
the solution to a problem is simple, or appears simple, when viewed in retrospect, does not mean that the solution was obvious when it was made, and courts must guard against the exercise of hindsight in assessing the obviousness of a given improvement in the art.
In Monroe Auto Equipment Co. v Superior Industries, Inc. (1964, CA9 Cal) 332 F2d 473, cert den 379 US
901, 13 L Ed 2d 175, 85 S Ct 190, the court noted that merely to label, as did this patentee, the trial court's determination that the subject matter was obvious to one having ordinary skill in the art as "subjective hindsight"
did not determine the issue. The court said that it thoroughly agreed that subjective hindsight was not a proper
test, and that the simplicity of a device did not negate an invention, but that, having said that much, the question
was whether subjective hindsight was applied in this case to a very simple device, and held that it was not.
Cases:
Obviousness of a patent is not determined as if the designer had hindsight knowledge of the patented design.
35 U.S.C.A. § 103. Yamanouchi Pharmaceutical Co. v. Danbury Pharmacal, Inc., 21 F. Supp. 2d 366, 48
U.S.P.Q.2d (BNA) 1741 (S.D.N.Y. 1998).
Patent obviousness inquiry requires that invention must be judged not only as a whole, but from perspective
of one of ordinary skill in art, and must be assessed as of time of invention. 35 U.S.C.A. § 103. Honeywell Intern., Inc. v. Universal Avionics Systems Corp., 343 F. Supp. 2d 272 (D. Del. 2004).
In determining whether a patent is obvious, hindsight reconstruction and/or the blueprint drawn by the inventor may not be used to pick and choose among isolated disclosures in the prior art to deprecate the claimed
invention. 35 U.S.C.A. § 103. Discovision Associates v. Disc Mfg., Inc., 25 F. Supp. 2d 301 (D. Del. 1998).
When performing obviousness analysis of patent validity, court may not, with 20-20 hindsight, utilize
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claims as a template and reconstruct invention willy-nilly by picking and choosing elements at will from prior
art; critical question is whether invention as whole would have been obvious to one of ordinary skill in art at
time it was made. 35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade Brands, Inc., 989 F. Supp. 547
(D. Del. 1997).
Evidence partly derived from astonishing advances in polymer chemistry during last 30 years tending to
make distinctions from art of patented polymer process look obvious are improper uses of hind-sight, and from
more primitive art at time invention was made, distinctions are unobvious and patent is valid. Studiengesellschaft Kohle mbH v Dart Industries, Inc. (1982, DC Del) 549 F Supp 716, 216 USPQ 381.
In considering obviousness of patent, court must conduct its inquiry as if it were to step backward in time
and into shoes worn by person of ordinary skill in the art when invention was unknown and just before it was
made. 35 U.S.C.A. § 103(a). Boehringer Ingelheim Animal Health, Inc. v. Schering-Plough Corp., 984 F. Supp.
239 (D.N.J. 1997).
Obviousness of patent must be considered without benefit of hindsight. Tyco Indus. v Tiny Love, Ltd.
(1996, DC NJ) 914 F Supp 1068.
A finding of obviousness may not be based on the hindsight combination of components selectively culled
from the prior art to fit the parameters of the patented invention; rather, there must be a teaching or suggestion
within the prior art, within the nature of the problem to be solved, or within the general knowledge of a person
of ordinary skill in the field of the invention, to look to particular sources, to select particular elements, and to
combine them as combined by the inventor. 35 U.S.C.A. § 103. Contech Stormwater Solutions, Inc. v. Baysaver
Technologies, Inc., 534 F. Supp. 2d 616 (D. Md. 2008).
Hindsight reconstruction of the prior art by picking and choosing features from existing art and/or patents is
impermissible, absent some teaching or suggestion supporting the combination. Weatherchem Corp. v. J.L.
Clark, Inc.(1996, ND Ohio) 937 F Supp 1262.
Patent claim is invalid for obviousness where differences between subject matter patented and prior art are
such that subject matter as a whole would have been obvious to person having ordinary skill in art at time invention was made. 35 U.S.C.A. § 103. Glaxo Group Ltd. v. Apotex, Inc., 268 F. Supp. 2d 1013 (N.D. Ill. 2003).
Experts' testimony as to invention's similarity to particular combination of elements from prior patents constituted improper use of hindsight where experts had based their opinions on experience possessed as of time of
trial. National Business Systems, Inc. v AM International, Inc. (1982, ND Ill) 546 F Supp 340, 217 USPQ 235.
While court must guard against reliance on hindsight, nevertheless, after determining contents of prior art of
which craftsman is presumed to have knowledge, it is proper procedure to picture craftsman as having all prior
art displayed before him while he is working on development. Bontrager v Steury Corp. (ND Ind) 457 F Supp
526.
In patent infringement actions, hindsight is improper in resolving question of obviousness within meaning
of 35 U.S.C.A. § 103; test is what combined teachings of references would have suggested to those of ordinary
skill in art at time invention was made. AIR-vend, Inc. v Thorne Industries, Inc. (1985, DC Minn) 625 F Supp
1123, 229 USPQ 505, affd without op (CA FC) 831 F2d 306.
In order to prevent a hindsight-based obviousness analysis in patent case, the relevant inquiry for determining the scope and content of the prior art is whether there is a reason, suggestion, or motivation in the prior art or
elsewhere that would have led one of ordinary skill in the art to combine the references; such a suggestion or
motivation to combine may come from the prior art references themselves, from knowledge of one skilled in the
art, or, in some cases, from the nature of the problem to be solved. 35 U.S.C.A. § 103(a). Freeman v. Gerber
Products Co., 450 F. Supp. 2d 1248 (D. Kan. 2006).
Measuring a claimed invention for obviousness requires the oft-difficult but critical step of casting the mind
back to the time of invention, to consider the thinking of one of ordinary skill in the art, guided only by the prior
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art references and the then-accepted wisdom in the field. 35 U.S.C.A. § 103(a). In re Dembiczak, 175 F.3d 994,
50 U.S.P.Q.2d (BNA) 1614 (Fed. Cir. 1999).
Obviousness of invention claimed in patent can not be established by hindsight combination to produce the
claimed invention. 35 U.S.C.A. § 103. In re Dance, 160 F.3d 1339, 48 U.S.P.Q.2d (BNA) 1635 (Fed. Cir. 1998).
Determination of obviousness cannot be based on the hindsight combination of components selectively
culled from the prior art to fit the parameters of the patented invention; rather, there must be a teaching or suggestion within the prior art, or within the general knowledge of a person of ordinary skill in the field of the invention, to look to particular sources of information, to select particular elements, and to combine them in the
way they were combined by the inventor. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 48 U.S.P.Q.2d (BNA) 1321
(Fed. Cir. 1998).
District court erred in using hindsight knowledge derived from patentee and evaluating obviousness of invention with post invention information in mind, rather than considering whether invention would have been obvious to person of ordinary skill in art at time invention was made. Panduit Corp. v Dennison Mfg. Co. (1985,
CA FC) 774 F2d 1082, 227 USPQ 337.
District court erred as matter of law in concluding claimed invention would have been obvious or that determination had been based on hindsight reconstruction of invention by combining teachings of prior art and
where prior art of record failed to provide suggestion or incentive to supporting combination. ACS Hospital Systems, Inc. v Montefiore Hospital (1984, CA FC) 732 F2d 1572, 221 USPQ 929.
See W.L. Gore & Associates, Inc. v Garlock, Inc. (1983, CA FC) 721 F2d 1540, 220 USPQ 303, cert den
(US) 83 L Ed 2d 107, 105 S Ct 172, § 13.
See UMC Electronics Co. v United States (1985) 8 Cl Ct 604, 228 USPQ 396, affd in part an revd in part on
other gnds, vacated, in part on other gnds (CA FC) 816 F2d 647, 2 USPQ2d 1465, cert den 484 US 1025, 98 L.
Ed. 2d 761, 108 S Ct 748, § 7[a].
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[END OF SUPPLEMENT]
§ 8. Teachings of prior art, generally
The requirement of novelty of subject matter spelled out in 35 U.S.C.A. § 102 (supra, § 1[c]) requires consideration of the prior art to determine whether the particular patent was "anticipated." (See 60 Am Jur 2d, Patents §§ 23, 53.) Anticipation relates only to novelty, and requires a showing of virtual identity in the prior art before a patent will be held invalid on that ground. A showing of such specificity in prior art teachings is not requisite to the establishment of obviousness, however. As to a patent in a particular area, obviousness may be
found from the teachings of all prior art references, and these teachings may include a broad scope of art in related fields that must be deemed pertinent.
The United States Supreme Court pointed out in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d
545, 86 S Ct 684, that the ambit of applicable art in given fields of science has widened by disciplines unheard
of a half century ago, and that it is but an even-handed application to require that those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions.
The basic controversy between the parties in Metaframe Corp. v Biozonics Corp. (1972, DC Mass) 352 F
Supp 1006, was in the definition of the "art" to which 35 U.S.C.A. § 103 referred. The court noted that while the
jurisprudence did not explicitly develop a definition of "prior art, " it was clear by extrapolation that the pertinent art was the functional, conceptual or generic art, not the knowledge of artisans in the separate commercial
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areas wherein diverse products were sold. Further, the court said, the term "art" in § 103 extends not only to the
pertinent art, but also to knowledge from other arts reasonably pertinent to an inventor's particular problem. The
court concluded that the § 103 test of obviousness was not an application to persons working in a particular
field, but that the test applied to persons having ordinary skill in the basic mechanical or scientific fields.
The word "art," the court said in Geo. J. Meyer Mfg. Co. v San Marino Electronic Corp. (1970, CA9 Cal)
422 F2d 1285, today includes not only the knowledge accumulated with respect to a problem in a particular industry, but that accumulated in those scientific fields the techniques of which have been commonly employed to
solve problems of a similar kind in the particular and closely related fields.
It has been recognized by the courts in a number of cases that it is the teachings of the whole of the prior art
that must be looked at to determine whether the differences between the subject matter of the patent at issue, and
the prior art, were such that it would have been obvious from a consideration of all of those references, to a person having ordinary skill in the art.
Thus, in connection with the court's consideration of two prior art patents on shears, in Keiser v J. Wiss &
Sons Co. (1972, DC NJ) 340 F Supp 41, where the patentee contended that since neither patent disclosed his
particular inventive concept for shears, or his specific combination for providing a "push-cut" action, it was improper to combine the two patents, the court said that this would only be true if in fact neither patent made any
pertinent disclosures. However, on the issue of obviousness, the court pointed out, it was not necessary that all
elements of a claimed invention be found in any one prior art patent, and it was permissible to combine the elements found in several prior art patents.
In Diversified Products Corp. v Sports Stores, Inc. (1968, DC Md) 294 F Supp 375, where the defendants
cited the same prior art in support of their 35 U.S.C.A. § 103 defense as they had unsuccessfully urged in claiming that the patent was invalid under 35 U.S.C.A. § 102, the court noted that whereas § 102 required a showing
of anticipation by a single prior art device, it could, in determining the question of obviousness, look at the
whole of the prior art considered together, for all that it taught.
A prior device may not be substantially identical to the patented device, and therefore cannot anticipate, the
court pointed out in Monroe Auto Equipment Co. v Heckethorn Mfg. & Supply Co. (1964, CA6 Tenn) 332 F2d
406, cert den 379 US 888, 13 L Ed 2d 93, 85 S Ct 160, but it may be that in the light of this prior device the patented device would have been obvious. The patentee here made much of the fact that an earlier applicant for a
patent had abandoned his device, and the court said that it was doubtless true that by his course in respect to his
discovery he had abandoned any claim as against the public for a patent, but that this was very different from
saying that it was abandoned as against a subsequent discoverer or patentee, for while an abandoned patent application could not be used in itself to anticipate, it could, as in this case, be used as evidence of the prior device,
in resolving the issue whether the invention would have been obvious in view of prior art teaching.
In Cleveland Fabricating Co. v Adsure, Inc. (1968, DC Ohio) 298 F Supp 1275, the court said that in determining the question of obviousness, references may be combined and such combination was a logical necessity; that each reference was important for what it contributed to the combination, and in determining the obviousness of a combination of references, a suggestion in the prior art to make the combination was relevant.
Evidence of obviousness was indicated where references performed in the combination as they did outside it, the
court said, and a prior art development was relevant on the question of obviousness even if such prior development did not qualify as a public use or sale.
It was held in Selmix Dispensers, Inc. v Multiplex Faucet Co. (1960, CA8 Mo) 277 F2d 884, that the District Court, in passing upon the validity of the patent in suit, followed the proper legal principles in concluding
that even if the entire combination of the claims of the patent in suit were not present in any single patent in the
prior art, the claims were invalid because the differences were such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having ordinary skill in the pertinent art, un-
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der 35 U.S.C.A. § 103
The basic issue, assuming novelty and utility to be established, concerns "obviousness" under 35 U.S.C.A. §
103, the court said in National Connector Corp. v Malco Mfg. Co. (1968, CA8 Minn) 392 F2d 766, cert den 393
US 923, 21 L Ed 2d 259, 89 S Ct 254, and this patentee's claim must rest upon his asserted claim of a combination of old elements in a new way which produced multicontact terminals for electrical connectors in a more efficient and cheaper way. However, the court went on, such an argument overlooks the fact that obvious attributes of the prior art necessitate exploration as well as the prior art itself, and a change in the form of any element
of a prior patent must result in more than a useful natural phenomenon which man has accumulated through
common knowledge. Thus, even though the use of this new device greatly improved the field and provided great
utility, the court concluded, these features could not sustain patentability where there was involved only an extended application of obvious attributes from the prior art, and this patentee could only claim to simply being
first with a good idea which, of course, was not alone a basis for patentability.
In Canadian Ingersoll-Rand Co. v Peterson Products of San Mateo, Inc. (1963, DC Cal) 223 F Supp 803, affd in part and revd in part on other grounds (CA9 Cal) 350 F2d 18, the court said that, assuming that this patent
is construed to teach and claim something novel in method for apparatus over the prior art references, and assuming therefore, that, these prior art references did not read upon and did not strictly anticipate the teaching
and disclosure of this prior art remained, nevertheless, pertinent on the issue of obviousness and invention, and
the combining of two or more references for the purpose of showing obviousness was not only allowable but
quite common.
The court pointed out in International Glass Co. v United States (1969) 187 Ct Cl 376, 408 F2d 395, that
while the alleged infringer had failed to make out a defense under 35 U.S.C.A. § 102, within the rule that an invention is deemed abandoned if no steps are taken to make the invention publicly known, this activity, though
not part of the statutory prior art under 35 U.S.C.A. § 102, might be evidence under § 103 of the level of ordinary skill in the art at the time the invention was made.
Cases:
Test for obviousness of invention to person of ordinary skill in applicable art includes review of scope and
content of prior art, differences between prior art and claims at issue, and level of ordinary skill in art; mere existence of differences between prior art and invention does not establish nonobviousness, and data processing
system for bank is obvious from prior art. Dann v Johnston, 425 US 219, 47 L. Ed. 2d 692, 96 S Ct 1393.
Patent on plastic envelope for data card laminating is invalid as obvious from similar prior art envelopes
collectively having similar features. Avant, Inc. v Polaroid Corp. (CA1 Mass) 572 F2d 889, 197 USPQ 593, cert
den (US) 58 L. Ed. 2d 132, 99 S Ct 120.
Limited circulation of technical bulletin does not disqualify bulletin as prior art relative to patent held invalid for obviousness on chain belt for high speed printing. Potter Instrument Co. v Odec Computer Systems, Inc.
(CA1 RI) 499 F2d 209, 182 USPQ 386.
Under the "teaching, suggestion, or motivation" (TSM) test to streamline analysis of patent invalidity based
on obviousness, a patent claim is only proven obvious if the prior art, the problem's nature, or the knowledge of
a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings. 35 U.S.C.A. § 103. NewRiver, Inc. v. Newkirk Products, Inc., 674 F. Supp. 2d 320 (D. Mass. 2009).
Where prior art manifests all elements of a challenged invention, the court, in determining obviousness,
must also consider: (1) whether the prior art would have suggested to those of ordinary skill in the art that they
should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art
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would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success. 35 U.S.C.A. § 103(a). Diomed, Inc. v. AngioDynamics, Inc., 450 F. Supp. 2d 130 (D.
Mass. 2006).
Where all elements of patented invention can be found in combination of prior art references, court conducting obviousness inquiry must consider whether: (1) prior art would have suggested to those of ordinary skill in
the art that they should make claimed device; and (2) prior art would also have revealed that in so making, those
of ordinary skill would have reasonable expectation of success. 35 U.S.C.A. § 103(a). Omegaflex, Inc. v. Parker
Hannifin Corp., 425 F. Supp. 2d 171 (D. Mass. 2006).
Motivation to combine prior art, for purpose of determining patent's obviousness, need not be found in prior
art references themselves; motivation can be implicit in knowledge generally available to one of ordinary skill in
the art. 35 U.S.C.A. § 103(a). R.H. Murphy Co., Inc. v. Illinois Tool Works, Inc., 409 F. Supp. 2d 53 (D. Mass.
2006).
Factors to consider in determining whether patent would have been obvious at time invention was made to
person having ordinary skill in art are: (1) scope and content of prior art; (2) differences between claimed invention and prior art; (3) level of ordinary skill in art; and (4) objective evidence of non–obviousness, such as commercial success, long–felt but unsolved need, or failure of others. 35 U.S.C.A. § 103(a). Trustees of Columbia
University in City of New York v. Roche Diagnostics GmbH, 272 F. Supp. 2d 90 (D. Mass. 2002).
Dye laser patent was rendered obvious by teachings of prior art regarding filters to remove contaminants
from dye solution. Candela Laser Corp. v Cynosure, Inc. (1994, DC Mass) 862 F Supp 632, 32 USPQ2d 1433.
On a claim of obviousness in a patent case, the determination of what a prior art reference teaches is a question of fact. 35 U.S.C.A. § 103(a). Insight Technology Inc. v. SureFire, LLC, 447 F. Supp. 2d 120, 2004 DNH
120 (D.N.H. 2006).
Patent on toy piano is obvious from prior art patents suggesting each allegedly patentable element although
not specifically combining such elements, because a toy designer of ordinary skill could have derived the basic
concepts and devised a similar structure by considering the prior art. Lerner v Child Guidance Products, Inc.
(CA2 NY) 547 F2d 29, 193 USPQ 329.
Reducing heated portion of sock to conserve power, and heating only toe portion of sock are both within
knowledge of persons in art so that patent on heating sock toe with small battery in pouch at top of sock is invalid for obviousness. Timely Products Corp. v Arron (CA2 Conn) 523 F2d 288, 187 USPQ 257.
Obviousness under § 103 cannot be established by combining teachings of prior art to produce claimed invention, absent some teaching or suggestion supporting combination; in determining whether subject matter of
claim was obvious in light of prior art, court will hypothesize inventor working in shop with prior art references,
which he is presumed to know, hanging on walls. American Cyanamid Co. v United States Surgical Corp. (1992,
DC Conn) 833 F Supp 92, app dismd without op (CA FC) 9 F3d 977.
When determining whether a patent would have been obvious, a court must consider questions of fact of
whether the prior art would have suggested to those of ordinary skill in the art that they should carry out the
claimed process and whether the prior art would also have revealed that in so making or carrying out, those of
ordinary skill would have a reasonable expectation of success. Infosint, S.A. v. H. Lundbeck A/S,, 612 F. Supp.
2d 405 (S.D. N.Y. 2009).
Issues of what a reference teaches to a person of ordinary skill in the art and whether it would have been obvious for a skilled person who knew of the prior art to combine the elements from the prior art to make the patented invention are issues of fact for the jury. 35 U.S.C.A. § 103(a). U.S. Philips Corp. v. Iwasaki Elec. Co.,
Ltd., 607 F. Supp. 2d 470 (S.D. N.Y. 2009).
Mere identification in the prior art of each element is insufficient to defeat the patentability of the combined
subject matter as a whole; rather, a party alleging invalidity due to obviousness must articulate the reasons one
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of ordinary skill in the art would have been motivated to select the references and to combine them. 35 U.S.C.A.
§ 103. Sanofi-Synthelabo v. Apotex Inc., 492 F. Supp. 2d 353 (S.D. N.Y. 2007).
Prior art teaches away from invention, for purpose of obviousness analysis, when it suggests that developments flowing from its disclosures are unlikely to produce objective of applicant's invention. 35 U.S.C.A. §
103(a). Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc., 417 F. Supp. 2d 341 (S.D. N.Y. 2006),
judgment entered, 2006 WL 618424 (S.D. N.Y. 2006).
"Prior art," for purpose of patent obviousness inquiry, is that reasonably pertinent to particular problem with
which inventor was involved. 35 U.S.C.A. § 103(a). Medinol Ltd. v. Guidant Corp., 412 F. Supp. 2d 301 (S.D.
N.Y. 2005).
For a patent to be obvious in light of the prior art teachings, the party challenging patent validity must show
some motivation or suggestion to combine the various references; the motivation to combine prior art references
need not be explicit but may be inferred from the nature of the problem to be solved, the teachings of the prior
art, or the knowledge of persons of ordinary skill in the art. 35 U.S.C.A. § 103(a). Kwik Products, Inc. v. National Exp., Inc., 356 F. Supp. 2d 303 (S.D. N.Y. 2005).
If an inventor takes steps that the prior art suggests cannot be made, it is probative of non-obviousness of a
patent. 35 U.S.C.A. § 103. Yamanouchi Pharmaceutical Co. v. Danbury Pharmacal, Inc., 21 F. Supp. 2d 366, 48
U.S.P.Q.2d (BNA) 1741 (S.D.N.Y. 1998).
In deciding issue of obviousness of invention from prior art, court must determine whether hypothetical person, having all prior art at hand, would have found same solution as plaintiff when addressing himself to same
problem. American Permahedge v Barcana, Inc. (1994, SD NY) 857 F Supp 308, 32 USPQ2d 1801.
For purposes of determining obviousness of patent, issue open for resolution is not whether prior art fully
discloses precise invention claimed, but rather whether, in light of this prior art, claimed invention would be obvious to one skilled in art. Interconnect Planning Corp. v Feil (1982, SD NY) 543 F Supp 610, 215 USPQ 734.
Obviousness is a legal determination, based on findings concerning the so–called Graham factors: (1) the
scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of nonobviousness. Alza Corp. v. Mylan
Laboratories, Inc., 310 F. Supp. 2d 610 (D. Vt. 2004).
Removal of outer skin from molded ceiling beam to facilitate gluing beam in place is obvious from evidence
that skin removal from molded beams is expedient known in prior art, so that claims are invalid as anticipated.
Paeco, Inc. v Applied Moldings, Inc. (CA3 Pa) 562 F2d 870, 194 USPQ 353.
Improvement in color TV tube by changing geometry of phosphor dots relative to shadow mass is obvious
advance from prior art suggestions relative to phosphor size and beam landing areas, and obviousness finding is
not based on unwarranted or farfetched inferences or hindsight, so that patent is invalid. Tokyo Shibaura Electric
Co. v Zenith Radio Corp. (CA3 Del) 548 F2d 88, 193 USPQ 73.
When prior art provides the means of making an invention and predicts the results, and the patentee merely
verifies the expectation through routine testing, the patent's claims are obvious and therefore invalid. 35
U.S.C.A. § 103(a). Purdue Pharma Products L.P. v. Par Pharmaceutical, Inc., 642 F. Supp. 2d 329 (D. Del.
2009).
In addition to the existence of each element of a claim in the prior art, to support finding of obviousness,
there must also be a reason, suggestion, or motivation in the prior art that would lead one of ordinary skill in the
art to combine the references, and that would also suggest a reasonable likelihood of success. Ampex Corp. v.
Eastman Kodak Co., 461 F. Supp. 2d 232 (D. Del. 2006).
The existence of each limitation of a patent claim in the prior art does not, by itself, demonstrate obviousness; instead, there must be a reason, suggestion, or motivation in the prior art that would lead one of ordinary
skill in the art to combine the references, and that would also suggest a reasonable likelihood of success. 35
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U.S.C.A. § 103(a). LP Matthews LLC v. Bath & Body Works, Inc., 458 F. Supp. 2d 198 (D. Del. 2006).
When multiple prior art references are being considered in determining patent obviousness, court must consider whether prior art would have suggested to those of ordinary skill in the art that they should make claimed
composition or device, or carry out claimed process. 35 U.S.C.A. § 103. Corning Inc. v. SRU Biosystems, 400
F. Supp. 2d 653 (D. Del. 2005).
Existence of each element of patent claim somewhere in scattered prior art references does not, by itself,
demonstrate obviousness; rather, there must be reason, suggestion, or motivation in prior art that would lead one
of ordinary skill in art to combine references, and that would also suggest reasonable likelihood of success. 35
U.S.C.A. § 103(a). Advanced Medical Optics, Inc. v. Alcon, Inc., 361 F. Supp. 2d 404 (D. Del. 2005).
Existence of each element of a claim in the prior art does not demonstrate obviousness of patented invention; instead, there must be a reason, suggestion, or motivation in the prior art that would lead one of ordinary
skill in the art to combine the references, and that would also suggest a reasonable likelihood of success. Oxford
Gene Technology Ltd. v. Mergen Ltd., 345 F. Supp. 2d 431 (D. Del. 2004).
of non-obviousness. 35 U.S.C.A. § 103. Kao Corp. v. Unilever U.S., Inc., 334 F. Supp. 2d 527 (D. Del. 2004).
Although patent obviousness is legal question, its resolution is dependent on underlying factual inquiries into: (1) scope and content of prior art; (2) differences between claims of patent at issue and prior art; (3) level of
skill in art; and (4) relevant secondary considerations. 35 U.S.C.A. § 103. Tristrata Technology, Inc. v. ICN
Pharmaceuticals, Inc., 313 F. Supp. 2d 405 (D. Del. 2004).
Question of whether patent is obvious and thus invalid, turns on four factual inquiries: (1) the scope and
content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) any objective indicators of non–obviousness, more commonly termed secondary
considerations. 35 U.S.C.A. § 103. Matsushita Elec. Indus. Co., Ltd. v. Cinram Intern., Inc., 299 F. Supp. 2d 348
(D. Del. 2004).
Factors to be considered in determining whether patent is invalid as obvious include: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; and (3) the level of ordinary skill in
the pertinent art. 35 U.S.C.A. § 103(a). Honeywell Intern., Inc. v. Universal Avionics Systems Corp., 288 F.
Supp. 2d 638 (D. Del. 2003).
The underlying factual inquiries in obviousness determination require consideration of: (1) the scope and
content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in
the pertinent art; and (4) any secondary considerations of nonobviousness such as commercial success, long felt
but unsolved need, failure of others, and acquiescence of others in the industry that the patent is valid. 35
U.S.C.A. § 103. Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 288 F. Supp. 2d 601 (D. Del. 2003).
To determine the question of obviousness in patent case, the court should consider: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims; (3) the level of ordinary skill in the
art; and (4) objective evidence of non–obviousness. 35 U.S.C.A. § 103(a). Fisher-Price, Inc. v. Safety 1st, Inc.,
279 F. Supp. 2d 530, 51 U.C.C. Rep. Serv. 2d 341 (D. Del. 2003).
Essential question when determining issue of patent obviousness is whether prior art would have suggested
to one of ordinary skill in art that claimed process should be carried out and would have reasonable likelihood of
success. 35 U.S.C.A. § 103. Isco Intern., Inc. v. Conductus, Inc., 279 F. Supp. 2d 489 (D. Del. 2003).
In considering obviousness of patent, fact finder must consider prior art which teaches away from invention,
as well as other objective indicia of nonobviousness, such as commercial success of patented product, long–felt
need for invention, and unexpectedness of results. 35 U.S.C.A. § 103(a). Applera Corp. v. Micromass UK Ltd.,
204 F. Supp. 2d 724 (D. Del. 2002).
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In determining whether a patent is obvious in view of prior art, the question is whether there is something in
the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination. 35
U.S.C.A. § 103. Discovision Associates v. Disc Mfg., Inc., 25 F. Supp. 2d 301 (D. Del. 1998).
Cervical collar patent was not obvious, as prior art did not disclose chin brace supported along entire length
by upper edge of front portion of neck encircling band. California Medical Prods. v Tecnol Medical Prods.
(1995, DC Del) 921 F Supp 1219.
Standard for determining obviousness under § 103 is whether prior art would have suggested to one of ordinary skill in the art that process should be carried out and would have reasonable likelihood of success, viewed
in light of prior art; both suggestion and expectation of success must be founded in prior art—not in applicant's
disclosures. Joy Technologies, Inc. v Flakt, Inc. (1993, DC Del) 820 F Supp 802, 27 USPQ2d 1766.
In patent infringement action court ruled that patent for plaintiff's claimed invention of beta blocker drug
was invalid under § 103 where, in light of explicit teachings of prior art as to functional, structural, and utility
aspects of beta blocker class of compounds, structural similarities between plaintiff's invention and prior art,
suggestion in prior art as to techniques to make modifications necessary to obtain plaintiff's invention, plaintiff's
invention's lack of unexpected properties and advantages over prior art beta blockers in treatment of hypertension, lack of nexus between commercial success of defendant's invention, and merits of plaintiff's claimed invention, plaintiff's invention would have been obvious to one of ordinary skill in the art when plaintiff's invention was made. Imperial Chemical Industries, PLC v Danbury Pharmacal, Inc. (1991, DC Del) 777 F Supp 330.
In action alleging infringement of patent for metallic bone implant coated with porous metal layer, court
would rule that defendants had carried their burden of proof establishing obviousness of plaintiff's claimed invention where evidence demonstrated that since more than one person had created or conceived of applying porous metal layer to metallic bone implants, invention of plaintiff's patent was obvious solution to long–felt need
to overcome problem of adequate fixation; it was evident from record that person of ordinary skill in art during
relevant time would have looked into cardiovascular implant field, in which physician had used plasma flame
spraying to apply porous coating to solid metal substrate for fixation through tissue ingrowth. American Standard, Inc. v Pfizer, Inc. (1989, DC Del) 722 F Supp 86.
Fact that all individual elements of patent are contained in prior art will not in and of itself invalidate it unless combination of these elements would have been obvious to ordinary skilled worker in art; precise combination of elements must have appeared in art in order to establish obviousness. Lang v Prescon Corp. (1982, DC
Del) 545 F Supp 933, 217 USPQ 839.
In determining whether new compound meets "non-obvious" requirement of Section 103, court should consider all of compound's properties—including its structure, uses, and other traits—and compare those properties
with their counterparts in prior art. If new compound, although structurally obvious, exhibits new uses or traits
that, at time of their discovery were not predictable to persons skilled in prior art, such differences indicate that
new compound is nonobvious for purposes of § 103. Imperial Chemical Industries, PLC v Henkel Corp. (1982,
DC Del) 545 F Supp 635, 215 USPQ 314.
Patent for impact polystyrene was held invalid for obviousness where pertinent art was commercial production of high impact polystyrene and development of improved forms thereof and where one of ordinary skill in
art would see, in resilience and low temparature characteristics of high cis, low vinyl polybutadiene, indication
that one could make polystyrene with significantly improved impact strength and that such improvement would
be particularly marked in low temperature applications. Cosden Oil & Chemical Co. v American Hoechst Corp.
(1982, DC Del) 543 F Supp 522, 214 USPQ 244.
Even where a patent overcomes an invalidity challenge based on anticipation, it may still be invalidated if
the differences between the invention and the prior art are so small that the invention would have been obvious
to one of ordinary skill in the art. 35 U.S.C.A. § 103. AstraZeneca LP v. Apotex, Inc., 623 F. Supp. 2d 579
23 A.L.R. Fed. 326
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(D.N.J. 2009), opinion supplemented, 623 F. Supp. 2d 615 (D.N.J. 2009).
Patent claim is invalid if the differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C.A. § 103(a). Daiichi Pharmaceutical Co., Ltd. v. Apotex, Inc., 380 F. Supp. 2d 478 (D.N.J. 2005).
In applying test for patent obviousness, claimed invention must be considered as a whole, and every limitation of relevant claims must be suggested in prior art. 35 U.S.C.A. § 103(a). Warner-Lambert Co. v. Teva Pharmaceuticals USA, 289 F. Supp. 2d 515 (D.N.J. 2003).
To determine whether patent is anticipated by prior art and is thus invalid, court must undertake three-step
analysis: first step is construction of patent claims to determine their meaning in light of specification and prosecution history; second step requires court to compare properly construed claims with subject matter described
in prior art reference and identify corresponding elements disclosed in allegedly anticipating reference; third
step requires court to determine whether prior art reference is enabling, thereby placing allegedly disclosed matter in possession of public. 35 U.S.C.A. § 102(b). General Elec. Co. v. Nintendo Co., Ltd., 983 F. Supp. 512
(D.N.J. 1997).
Determination of whether a patent claim would have been obvious in light of prior art is a legal conclusion
based upon four factual inquiries: (1) the scope and content of the prior art; (2) the level of ordinary skill in the
art; (3) the differences between the claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, which in case law is often said to include commercial success, long-felt but unresolved need,
failure of others, copying, and unexpected results. 35 U.S.C.A. § 103(a). PBI Performance Products, Inc. v. NorFab Corp., 514 F. Supp. 2d 732 (E.D. Pa. 2007).
To establish obviousness, party asserting patent's invalidity must make showing of some teaching, suggestion, or reason in prior art that would lead one of ordinary skill in art to combine various prior art references. 35
U.S.C.A. § 103(a). Astrazeneca AB v. Mutual Pharmaceutical Co., Inc., 278 F. Supp. 2d 491 (E.D. Pa. 2003).
To hold invention obvious in view of combination of prior art references, there must be some suggestion,
motivation, or teaching in prior art that would have led person of ordinary skill in art to select references and
combine them in way that would produce claimed invention. 35 U.S.C.A. § 103(a). McNeil-PPC, Inc. v. L. Perrigo Co., 207 F. Supp. 2d 356, 63 U.S.P.Q.2d (BNA) 1493 (E.D. Pa. 2002).
A patent is invalid as being obvious in light of the prior art when the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole would have been obvious as
the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Judkins v. HT Window Fashions Corp., 624 F. Supp. 2d 427 (W.D. Pa. 2009).
Trial court finding that stub shaft hinges and channel-shaped reinforcing members on packer panels was
well known for rear loading refuse trucks making patent invalid for obviousness is affirmed as not clearly erroneous. Perfection-Cobey Co. v City Tank Corp. (CA4) 202 USPQ 161.
In determining whether patent is invalid for obviousness, court should examine (1) scope and content of prior art; (2) level of ordinary skill in field of invention; (3) differences between claimed invention and prior art;
and (4) any objective evidence of non–obviousness. 35 U.S.C.A. § 103. Leviton Mfg. Co., Inc. v. Universal Sec.
Instruments, Inc., 304 F. Supp. 2d 726 (D. Md. 2004).
Finding of patent invalidity for obviousness may not be based on hindsight combination of components selectively culled from prior art to fit parameters of patented invention; rather, there must be teaching or suggestion within prior art, within nature of problem to be solved, or within general knowledge of person of ordinary
skill in field of invention, to look to particular sources, to select particular elements, and to combine them as
combined by inventor. 35 U.S.C.A. § 103(a). Emergency Fuel, LLC v. Pennzoil-Quaker State Co., 293 F. Supp.
2d 569 (D. Md. 2003).
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In action brought by chemical manufacturer against another chemical company, based on infringement of
patent for making chemical bisphenol-A, court properly found nonobviousness based on fact that this was first
acidized cation exchange resin catalyzed reaction known to science which required that resin be substantially
free of water. Union Carbide Corp. v Dow Chemical Co. (1982, CA5 Tex) 682 F2d 1136, 217 USPQ 1195.
Nonobviousness requirement for plant patent is met by plant being "inventive" in sense of having substantial and advantageous distinctions from pre-existing plants, rather than merely minor variations. Yoder Bros.,
Inc. v California-Florida Plant Corp. (CA5 Fla) 537 F2d 1347, 193 USPQ 264, 1976-2 CCH Trade Cases ¶
61047, cert den 429 US 1094, 51 L. Ed. 2d 540, 97 S Ct 1108, 200 USPQ 128.
To determine whether prior art rendered patented invention obvious, court must first examine scope and
content of prior art, differences between prior art and claimed invention, and level of skill in the art, and then
consider secondary issues such as long felt but unresolved need, failure of others, and copying. 35 U.S.C.A. §
103. Southwestern Bell Telephone, L.P. v. Arthur Collins, Inc., 464 F. Supp. 2d 588 (N.D. Tex. 2006).
If it is necessary to reach beyond boundaries of single prior art reference to provide missing disclosure of
claimed invention, proper ground for asserting patent invalidity is not anticipation, but obviousness. 35 U.S.C.A.
§§ 102(b), 103. Neutrino Development Corp. v. Sonosite, Inc., 337 F. Supp. 2d 942 (S.D. Tex. 2004).
Court of Appeals considers distinctions found by District Court between prior art and patented thread
rolling die and considers several additional unobvious differences between dies in affirming finding of patent
validity. National Rolled Thread Die Co. v E. W. Ferry Screw Products, Inc. (CA6 Ohio) 541 F2d 593, 192 USPQ 358.
When claim of patent's obviousness is based on teachings found in multiple prior art references, claimant
must establish some suggestion, teaching, or motivation that would lead person of ordinary skill in the art to
combine relevant prior art teachings in manner claimed; such suggestion may be found in (1) prior art references
themselves, (2) knowledge of those with ordinary skill in the art that certain references, or disclosures, are of
special interest or importance in field, or (3) from nature of problem to be solved. 35 U.S.C.A. § 103(a). Automotive Technologies Intern. v. BMW of North America, Inc., 378 F. Supp. 2d 780 (E.D. Mich. 2005).
Prior art invalidates patent for obviousness when subject matter sought to be patented and prior art are such
that subject matter as a whole would have been obvious at time invention was made to person having ordinary
skill in art to which subject matter pertains. 35 U.S.C.A. § 103. Lacks Industries, Inc. v. McKechnie Vehicle
Components USA, Inc., 55 F. Supp. 2d 702 (E.D. Mich. 1999).
Invention can be deemed obvious either over single relevant prior art reference or in view of what several
references fairly teach in combination, and claimed structure may be obvious because it is suggested by prior art,
even though a particular benefit of structure is not expressly disclosed in prior art. Indian Head Indus. v Ted
Smith Equip. Co. (1994, ED Mich) 859 F Supp 1095.
Determination of weight to be given to statutory presumption of validity is three step process. First, art
which constitutes "prior" art, must be identified. Second, prior art, which was not considered by Patent Office,
must be identified. Third, pertinence of newly cited prior art must be compared to pertinence of prior art that
was actually considered. USM Corp. v Detroit Plastic Molding Co. (1982, ED Mich) 536 F Supp 902, 214 USPQ 603.
See Sadlar-Cisar, Inc. v Commercial Sales Network, Inc. (1991, ND Ohio) 786 F Supp 1287, § 7[a].
Substitution of artificial "Velcro" material for dart game for prior art suggestion of thistleburr and fur for
dart game is obvious, making patent invalid. Centsable Products, Inc. v Lemelson (CA7 Ill) 591 F2d 400, 201
USPQ 655, cert den 444 US 840, 62 L. Ed. 2d 52, 100 S Ct 79.
Vehicle accessory support bar having T-shaped slots and fittings is invalid and is obvious from prior art
suggestions for similar features. Burland v Trippe Mfg. Co. (CA7 Ill) 543 F2d 588, 191 USPQ 667.
Under teaching, suggestion, or motivation (TSM) test used in determining whether patent is invalid for ob-
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viousness, suggestion or motivation to combine prior art generally arises in the references themselves, but may
also be inferred from the nature of the problem or occasionally from the knowledge of those of ordinary skill in
the art. 35 U.S.C.A. § 103(a). Se-Kure Controls, Inc. v. Diam USA, Inc., 662 F. Supp. 2d 1006 (N.D. Ill. 2009).
Claimed invention is unpatentable if the differences between it and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill
in the art. 35 U.S.C.A. § 103(a). Black & Decker Inc. v. Robert Bosch Tool Corp., 476 F. Supp. 2d 887 (N.D.
Ill. 2007).
Patent is invalid for obviousness if teachings of patent would have been obvious to person having ordinary
skill in relevant art, given existence of prior art. 35 U.S.C.A. § 103. Depuy Inc. v. Zimmer Holdings, Inc., 343 F.
Supp. 2d 675 (N.D. Ill. 2004).
Patent obviousness analysis requires court's assessment of, (1) scope and content of prior art, (2) level of ordinary skill in art, (3) differences between prior art and claimed invention, and (4) objective indicia of obviousness. Glaxo Group Ltd. v. Apotex, Inc., 268 F. Supp. 2d 1013 (N.D. Ill. 2003).
To establish obviousness under 35 U.S.C.A. § 103, and thus invalidity of patent, prior art must contain more
than merely individual features of claimed invention; it must suggest desirability and thus obviousness of making combination of features. Glaros v H.H. Robertson Co. (1984, ND Ill) 600 F Supp 342, 224 USPQ 1037, later
proceeding (ND Ill) 615 F Supp 186, 227 USPQ 448, affd (CA FC) 797 F2d 1564, 230 USPQ 393, cert dismd
479 US 1072, 94 L Ed 2d 124, 107 S Ct 1262, 1987 US 2.
Patent for sanitary napkin with fastening system utilizing two narrow lines of adhesive penetrating through
to and sealing cover was invalid for obviousness where prior art demonstrated use of one wide band, two narrow
bands, and band that penetrated and sealed cover. Kimberly-Clark Corp. v Johnson & Johnson (1983, ND Ill)
573 F Supp 1179, 219 USPQ 217, revd, in part, vacated, in part (CA FC) 745 F2d 1437, 223 USPQ 603.
Where prior art teaches away from claimed invention rather than motivating person of ordinary skill in the
art to do what patentee has done, claimed invention is nonobvious. 35 U.S.C.A. § 103(a). Eli Lilly and Co. v.
Zenith Goldline Pharmaceuticals, Inc., 364 F. Supp. 2d 820 (S.D. Ind. 2005).
On a claim that a patent was obvious, a reference is said to teach away when a person of ordinary skill in the
art, upon reading the reference, would be discouraged from the path set out in the prior art or led in a direction
divergent from the path taken by the applicant. Fisher-Barton Blades, Inc. v. Blount, Inc., 584 F. Supp. 2d 1126
(E.D. Wis. 2008).
Conical crusher with hydraulic apparatus for tramp release, clearing, and creating abutting relationship
between upper and lower frames was obvious because other crushers had used hydraulic equipment for such purposes, although not all in one machine, and another had used pneumatic equipment for all three purposes. Nordberg Inc. v Telsmith, Inc. (1995, ED Wis) 881 F Supp 1252.
There is no per se rule that making something in one piece that was formerly made in two or more pieces
renders it obvious; rather, court must look beyond mere fact of unitary construction to determine what improvement results from one piece construction and whether improvement or construction itself was obvious from prior
art. Mooney v Brunswick Corp. (1980, ED Wis) 489 F Supp 544, 206 USPQ 121, affd (CA7 Wis) 663 F2d 724,
212 USPQ 401.
Party claiming that combination of prior art references renders patented invention obvious has burden to establish some motivation in prior art for one of ordinary skill in the art to make combination. 35 U.S.C.A. § 103.
Haberman v. Playtex Products, Inc., 403 F. Supp. 2d 708 (W.D. Wis. 2005).
When patent obviousness argument is based on combination of prior art references, relevant inquiry is
whether there is reason, suggestion, or motivation in prior art that would lead one of ordinary skill in the art to
combine references, and that would also suggest reasonable likelihood of success. 35 U.S.C.A. § 103. Briggs &
Stratton Corp. v. Kohler Co., 398 F. Supp. 2d 925 (W.D. Wis. 2005), on reconsideration in part, 398 F. Supp. 2d
23 A.L.R. Fed. 326
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974 (W.D. Wis. 2005).
Although obviousness is a legal conclusion, it requires underlying factual inquiries that include: (1) the
scope and content of the prior art; (2) the differences between the prior art and the patent claims at issue; (3) the
level of ordinary skill in the art at the time the invention was made; and (4) any objective evidence of nonobviousness. 35 U.S.C.A. § 102(b). Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005).
Salt-impregnated fishing lure was obvious under § 103 in light of level of awareness that salt is attractive to
fish. Arkie Lures v Gene Larew Tackle (1996, WD Ark) 912 F Supp 422, 38 USPQ2d 1300.
Patent obviousness is ultimately question of law that rests on underlying factual inquiries into: (1) scope and
content of prior art; (2) level of ordinary skill in the art; (3) differences between claimed invention and prior art;
and (4) objective considerations of nonobviousness, such as commercial success, long felt need, failure of others, and copying. 35 U.S.C.A. § 103(a). Kemin Foods, L.C. v. Pigmentos Vegetables del Centro S.A. de C.V.,
357 F. Supp. 2d 1105 (S.D. Iowa 2005).
Patent is invalid for obviousness if its subject matter as a whole would have been obvious to person skilled
in the art, at time of patenting, without aid of patent. 35 U.S.C.A. § 103. Devon Distributing Corp. v. Miner, 331
F. Supp. 2d 791 (S.D. Iowa 2004).
Patent claim is obvious if the differences between the subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill
in the art to which said subject matter pertains. 35 U.S.C.A. § 103(a). Iridex Corp. v. Synergetics, Inc., 478 F.
Supp. 2d 1146 (E.D. Mo. 2007).
in art; and (4) secondary considerations of nonobviousness, such as commercial success, long felt but unresolved
need, failure of others, and so on. 35 U.S.C.A. § 103(a). Toro Co. v. SCAG Power Equipment, Inc., 256 F. Supp.
2d 1009 (D. Neb. 2003).
See Palmer v Orthokinetics, Inc. (1980, CA9) 204 USPQ 893, § 22.
Trial court properly construed claims of patent relative to disclosure of specification in comparing claims
with prior art to find patents on electronic video analyzer for color film negatives to be unobvious and valid.
Photo Electronics Corp. v England (CA9 Cal) 581 F2d 772, 199 USPQ 710.
Patent on tie strips formed of wire embedded in plastic is invalid as obvious from prior art tie strips having
wire similarly embedded in plastic, and other prior art tie strips suggesting cementitious coating on wire. St. Regis Paper Co. v Royal Industries (CA9 Cal) 552 F2d 309, 194 USPQ 52, cert den (US) 54 L. Ed. 2d 490, 98 S Ct
633.
The "teaching, suggestion, or motivation test (TSM test)," under which a patent claim is only proved obvious, and thus invalid, if the prior art, the problem's nature, or knowledge of a person having ordinary skill in the
art reveals some motivation or suggestion to combine the prior teachings, should be applied as a "general principle" to aid courts in determining obviousness. 35 U.S.C.A. § 103(a). Tokyo Keiso Co., Ltd. v. SMC Corp., 533
F. Supp. 2d 1047 (C.D. Cal. 2007).
In determining whether patent is invalid for obviousness, court considers (1) scope and content of prior art,
(2) level of ordinary skill in the art, (3) differences between claimed invention and prior art, and (4) objective
evidence of obviousness. 35 U.S.C.A. § 103. Rosen Entm't Sys, LP v. Icon Enters, Inc., 359 F. Supp. 2d 902
(C.D. Cal. 2005).
In determining patent's obviousness, court must ascertain whether prior art would have suggested to one of
ordinary skill in art that claimed invention should be carried out and would have reasonable likelihood of success. 35 U.S.C.A. § 103(a). Wesley Jessen Corp. v. Coopervision, Inc., 207 F. Supp. 2d 1103 (C.D. Cal. 2002).
Where prior art provides some teaching, suggestion, or incentive to make combination, prior art anticipates
23 A.L.R. Fed. 326
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combination and renders it obvious. Ecolochem, Inc. v Southern Cal. Edison Co. (1994, CD Cal) 863 F Supp
1165.
Patent on antibiotic doxycyclyne would not be invalid as obvious from same drug company's prior art relative to their patent held for methacycline, antibiotic with similar double carbon bond. Pfizer, Inc. v International
Rectifier Corp. (1980, CD Cal) 545 F Supp 486, affd (CA9 Cal) 685 F2d 357, 217 USPQ 39, cert den (US) 74 L
Ed 2d 1016, 103 S Ct 818.
Determination of patent's obviousness is question of law based on underlying factual considerations, including: (1) scope and content of prior art; (2) differences between prior art and claims at issue; (3) level of ordinary
skill in art; and (4) any "secondary considerations," such as whether inventor was responding to long felt but unsolved needs, failures of others, and commercial success of invention. 35 U.S.C.A. § 103(a). Chiron Corp. v.
Genentech, Inc., 268 F. Supp. 2d 1126 (E.D. Cal. 2002).
In order to render a claimed apparatus or method obvious, the prior art must enable one skilled in the art to
make and use the apparatus or method. Teknowledge Corp. v. Cellco Partnership, 626 F. Supp. 2d 1027 (N.D.
Cal. 2009).
Unlike anticipation, prior art references may be combined to establish invalidity for obviousness; however,
there must be some motivation to combine the references, which may be found in the prior art itself, in the
knowledge of one of ordinary skill in the art, or in the nature of the problem to be solved. 35 U.S.C.A. § 103(a).
Depomed, Inc. v. Ivax Corp., 532 F. Supp. 2d 1170 (N.D. Cal. 2007).
The factual determinations underlying the question of obviousness in a patent infringement action include:
(1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the
level of ordinary skill in the art; and, if necessary, (4) secondary evidence of nonobviousness. 35 U.S.C.A. §
103(a). Semiconductor Energy Laboratory Co. Ltd. v. Chi Mei Optoelectronics Corp., 485 F. Supp. 2d 1089
(N.D. Cal. 2007).
To determine if patent is invalid for obviousness, court must consider scope and content of prior art, difference between patented invention and prior art, and level of skill in art. 35 U.S.C.A. § 103(a). Monolithic Power
Systems, Inc. v. O2 Micro Intern. Ltd., 476 F. Supp. 2d 1143 (N.D. Cal. 2007), clarified on denial of reconsideration, 2007 WL 1108615 (N.D. Cal. 2007).
Test for patent obviousness is whether prior art would have suggested to one of ordinary skill in the art that
claimed process should be carried out and would have reasonable likelihood of success. 35 U.S.C.A. § 103(a).
Visto Corp. v. Sproqit Technologies, Inc., 413 F. Supp. 2d 1073 (N.D. Cal. 2006).
In assessing patent's obviousness, court should consider: (1) scope and content of prior art; (2) differences
between prior art and claims at issue; (3) level of ordinary skill in the art; and, if necessary, (4) secondary evidence of nonobviousness. 35 U.S.C.A. § 103. Network Appliance, Inc. v. Bluearc Corp., 374 F. Supp. 2d 825
(N.D. Cal. 2005).
Product-by-process claims on wig are invalid because end result is indistinguishable from prior art wigs except by alleged differences that are not disclosed in specification or claims, and such claims cannot depend for
validity upon novel features of process. Clairol, Inc. v Brentwood Industries, Inc. (DC Cal) 193 USPQ 683.
Determination of whether subject matter of patent claim would have been obvious involves factual findings
with respect to: (1) scope and content of prior art; (2) level of ordinary skill in art; (3) differences between
claimed subject matter and prior art; and (4) where relevant, objective evidence of nonobviousness, e.g.,
long–felt need, commercial success, failure of others, copying, or unexpected results. 35 U.S.C.A. § 103. Vectra
Fitness, Inc. v. Icon Health & Fitness, Inc., 288 F. Supp. 2d 1155 (W.D. Wash. 2003).
In deciding question of obviousness, court must consider scope and content of prior art, differences between
prior art and claims at issue, and level of skill and pertinent art, and court finds patent on process of slug feed of
asphalt hotmix not invalid for obviousness. C M I Corp. v Metropolitan Enterprises, Inc. (CA10) 189 USPQ 770
23 A.L.R. Fed. 326
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.
"Relevant prior art," for purpose of patent obviousness inquiry, consists of those references reasonably pertinent to particular problem with which inventor was involved. 35 U.S.C.A. § 103(a). Hildebrand v. Steck Mfg.
Co., Inc., 395 F. Supp. 2d 1036 (D. Colo. 2005).
Obviousness is a question of law in patent case to be determined based on the following factual considerations: (1) scope of the prior art; (2) differences between the prior art and the claims at issue, and (3) level of ordinary skill in the pertinent art. 35 U.S.C.A. § 103(a). Storage Technology Corp. v. Quantum Corp., 370 F.
Supp. 2d 1116 (D. Colo. 2005).
Filtration system which enabled recalibration of dialysis machine flow sensors during dialysis procedure
was obvious; similar technology had been developed previously. Gambro Lundia AB v Baxter Healthcare Corp.
(1995, DC Colo) 896 F Supp 1522.
According to the motivation-suggesting-teaching test for determining whether a patent is obvious, a court
must ask whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the
combination recited in the claims. 35 U.S.C.A. § 103(a). Freeman v. Gerber Products Co., 506 F. Supp. 2d 529
(D. Kan. 2007), appeal dismissed, 227 Fed. Appx. 915 (Fed. Cir. 2007).
Obviousness is established when features distinguishing patented device from closest prior art reference are
disclosed in analogous structures in which features perform identical function. Connell v Sears, Roebuck & Co.
(1983, ND Ala) 559 F Supp 229, 218 USPQ 31, affd in part and mod in part, vacated, in part on other grounds
(1983, CA FC) 220 USPQ 193, 722 F2d 1542.
Claimed invention is unpatentable if differences between it and prior art are such that subject matter as a
whole would have been obvious at time that invention was made to person having ordinary skill in art. 35
U.S.C.A. § 103(a). Hamilton Products, Inc. v. O'Neill, 492 F. Supp. 2d 1328 (M.D. Fla. 2007).
Whether subject matter of patent is obvious, rendering patent invalid, is determined against background of
scope and content of prior art, differences between prior art and claims at issue, and level of ordinary skill in
pertinent art; such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to circumstances surrounding origin of subject matter sought to be patented. 35 U.S.C.A. § 103(a). Flexiteek Americas, Inc. v. Plasteak, Inc., 641 F. Supp. 2d 1297 (S.D. Fla. 2009), reconsideration denied in part, (July 3, 2009).
Rotary drum gatherer-stitching machine used in bookbinding was obvious, and therefore not patentable, as
prior art disclosed all necessary elements of machine and suggested that elements could be combined. Ferag AG
v Grapha-Holding AG (1996, DC Dist Col) 935 F Supp 1238.
Determining obviousness under patent law requires considering whether two or more pieces of prior art
could be combined, or a single piece of prior art could be modified, to produce the claimed invention; this analysis typically invokes the familiar teaching-suggestion-motivation (TSM) test, asking whether a person having
ordinary skill in the art would have found some teaching, suggestion, or motivation to combine or modify the
prior art references. 35 U.S.C.A. § 103. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 93 U.S.P.Q.2d 1873 (Fed.
Cir. 2010).
On an obviousness analysis, a court must examine the scope and content of the prior art, the differences
between the prior art and the patent claims at issue, and the level of ordinary skill in the pertinent art, then a
court may consider secondary objective evidence of non-obviousness, such as commercial success, long felt but
unsolved need, failure of others, and the like. 35 U.S.C.A. § 103. Bayer Schering Pharma AG v. Barr Laboratories, Inc., 575 F.3d 1341, 91 U.S.P.Q.2d 1569 (Fed. Cir. 2009).
For patent infringement purposes, a reference may be said to "teach away" when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out in the reference, or would be
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led in a direction divergent from the path that was taken by the applicant. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 90 U.S.P.Q.2d 1865 (Fed. Cir. 2009).
When a contention is made that the patents in suit are invalid for obviousness based on a combination of
several prior art references, the burden falls on the patent challenger to show by clear and convincing evidence
that a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or
carry out the claimed process, and would have had a reasonable expectation of success in doing so. 35 U.S.C.A.
§ 103(a). PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 83 U.S.P.Q.2d 1289 (Fed. Cir. 2007).
A suggestion, teaching, or motivation to combine the relevant prior art teachings to achieve the claimed invention does not have to be found explicitly in the prior art references sought to be combined, but rather may be
found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the
problem itself. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 82 U.S.P.Q.2d 1321 (Fed. Cir. 2007).
The factual underpinnings on the issue of whether a patent was obvious in light of prior art are: (1) the
scope and content of the prior art, (2) the differences between the prior art and the claimed invention at the time
of invention, (3) the level of ordinary skill in the art, and (4) the objective indicia of nonobviousness. 35
U.S.C.A. § 103. Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 471 F.3d 1369, 81 U.S.P.Q.2d 1324
(Fed. Cir. 2006).
In challenging a patent as invalid for obviousness, it is insufficient to merely identify each element in the
prior art to establish unpatentability of the combined subject matter as a whole; instead, a party alleging such invalidity must articulate the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious. Sanofi-Synthelabo v. Apotex, Inc., 470
F.3d 1368, 81 U.S.P.Q.2d 1097 (Fed. Cir. 2006).
A suggestion, teaching, or motivation to combine the relevant prior art teachings to the claimed invention
does not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may be implicit
from the prior art as a whole, rather than expressly stated in the references; test for an implicit showing is what
the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art. Ormco Corp. v. Align Technology, Inc.,
463 F.3d 1299, 79 U.S.P.Q.2d 1931 (Fed. Cir. 2006).
Evidence of motivation to combine prior art references to create claimed invention, such as would render
patent for invention invalid for obviousness, may flow from prior art references themselves, knowledge of one
of ordinary skill in the art, or, in some cases, from nature of problem to be solved. 35 U.S.C.A. § 103(a). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir. 2006).
When determining patent obviousness, suggestion or motivation to combine prior art references does not
have to be stated expressly; rather it may be shown by reference to prior art itself, to nature of problem solved
by claimed invention, or to knowledge of one of ordinary skill in the art. 35 U.S.C.A. § 103. In re Johnston, 435
F.3d 1381 (Fed. Cir. 2006).
Test for implicit teaching from combination of prior art references, for purpose of determining whether patent is invalid as obvious, is what combined references, knowledge of one of ordinary skill in the art, and nature
of problem to be solved as a whole would have suggested to those of ordinary skill in the art at time of invention. 35 U.S.C.A. § 103. Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed.
Cir. 2005).
Although published subject matter is "prior art" for all that it discloses, to render an invention unpatentable
for obviousness, prior art must enable a person of ordinary skill to make and use the invention. In re Kumar, 418
F.3d 1361 (Fed. Cir. 2005).
Legal conclusion, that patent claim is obvious, depends on at least four underlying factual issues: (1) scope
and content of prior art; (2) differences between prior art and claims at issue; (3) level of ordinary skill in pertin-
23 A.L.R. Fed. 326
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ent art; and (4) evaluation of any relevant secondary considerations. 35 U.S.C.A. § 103. Princeton Biochemicals,
Inc. v. Beckman Coulter, Inc., 411 F.3d 1332 (Fed. Cir. 2005).
Factual determinations relevant to patent obviousness inquiry include: (1) scope and content of prior art; (2)
differences between claimed invention and prior art; (3) level of ordinary skill in the art; and (4) secondary considerations, if any, such as commercial success, unexpected results, copying, long-felt but unresolved need, and
failure of others to develop invention. 35 U.S.C.A. § 103. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371
(Fed. Cir. 2005), reh'g denied, (June 13, 2005).
Factual determinations underlying finding of patent invalidity on ground of obviousness include (1) scope
and content of prior art, (2) level of ordinary skill in the art, (3) differences between claimed invention and prior
art, and (4) objective indicia of nonobviousness. 35 U.S.C.A. § 103. Merck & Co., Inc. v. Teva Pharmaceuticals
USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005).
When patent's alleged obviousness depends on combination of prior art references, there must be some
teaching, suggestion, or motivation to combine references, i.e., prior art as a whole must suggest desirability of
combination. 35 U.S.C.A. § 103(a). In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004).
Ultimate determination of whether invention is unpatentable as obvious is legal conclusion based on underlying factual inquiries into: (1) scope and content of prior art; (2) level of ordinary skill in prior art; and (3) differences between claimed invention and prior art. 35 U.S.C.A. § 103(a). Velander v. Garner, 348 F.3d 1359, 68
U.S.P.Q.2d (BNA) 1769 (Fed. Cir. 2003).
Whether patent claim is invalid for obviousness is legal conclusion that is based on underlying factual inquiries into scope and content of prior art, differences between claimed invention and prior art, level of ordinary
skill in art, and objective evidence of nonobviousness, including commercial success, copying, and long–felt
need. 35 U.S.C.A. § 103. State Contracting & Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057 (Fed.
Cir. 2003).
Prior art product that sometimes, but not always, embodies claimed method teaches that aspect of invention,
for purpose of determining whether patent claim is invalid as obvious. 35 U.S.C.A. § 103. Hewlett-Packard Co.
v. Mustek Systems, Inc., 340 F.3d 1314, 67 U.S.P.Q.2d (BNA) 1825 (Fed. Cir. 2003).
To establish obviousness, the Board of Patent Appeals and Interferences must do more than identify the elements in the prior art, as there must also be some objective teaching in the prior art or knowledge generally
available to one of ordinary skill in the art that would lead the individual to combine the relevant teachings of
the references; such motivation, suggestion, or teaching may come explicitly from statements in the prior art, the
knowledge of one of ordinary skill in the art, or, in some cases, the nature of the problem to be solved. 35
U.S.C.A. § 103(a). In re Huston, 308 F.3d 1267 (Fed. Cir. 2002).
To establish a prima facie case of obviousness, the Board of Patent Appeals and Interferences must, inter
alia, show some objective teaching in the prior art or that knowledge generally available to one of ordinary skill
in the art would lead that individual to combine the relevant teachings of the references, and the motivation, suggestion, or teaching may come explicitly from statements in the prior art, the knowledge of one of ordinary skill
in the art, or, in some cases the nature of the problem to be solved. 35 U.S.C.A. § 103. In re Thrift, 298 F.3d
1357 (Fed. Cir. 2002).
Underlying factual inquiries, when patent's validity is challenged on ground of obviousness, are: (1) scope
and content of prior art; (2) level of ordinary skill in prior art; (3) differences between claimed invention and prior art; and (4) objective evidence of nonobviousness. 35 U.S.C.A. § 103(a). Beckson Marine, Inc. v. NFM, Inc.,
292 F.3d 718, 63 U.S.P.Q.2d (BNA) 1031 (Fed. Cir. 2002).
The teachings of prior art references, their relatedness to the field of the patent applicant's endeavor, and the
knowledge of persons of ordinary skill in the field of the invention, are all relevant considerations in determining whether claimed invention was obvious. 35 U.S.C.A. § 103. In re Dance, 160 F.3d 1339, 48 U.S.P.Q.2d
23 A.L.R. Fed. 326
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(BNA) 1635 (Fed. Cir. 1998).
That inventor has probed strengths and weaknesses of prior art and discovered improvement that escaped
those who came before is indicative of unobviousness, not obviousness. Fromson v. Anitec Printing Plates, Inc.,
132 F.3d 1437, 45 U.S.P.Q.2d (BNA) 1269, 48 Fed. R. Evid. Serv. (LCP) 611 (Fed. Cir. 1997), reh'g denied, in
banc suggestion declined, (Feb. 23, 1998) and (abrogated on other grounds by, Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 46 U.S.P.Q.2d (BNA) 1169 (Fed. Cir. 1998)) and petition for cert. filed, 66 U.S.L.W.
3783, 67 U.S.L.W. 3013 (U.S. May 26, 1998).
Scope of prior art, for purpose of determining whether design patent is obvious, is not universe of abstract
design and artistic creativity, but designs of same article of manufacture or of articles sufficiently similar that
person of ordinary skill would look to such articles for their designs. Hupp v. Siroflex of America, Inc., 122
F.3d 1456, 43 U.S.P.Q.2d (BNA) 1887 (Fed. Cir. 1997).
Where prior art reference failed to disclose four particular synchronization functions included in patent
claim relating to field of digital wireless telephony, and no combination of prior art references described four
particular functions recited in claim, claim was neither anticipated nor obvious. Motorola, Inc. v. Interdigital
Technology Corp., 121 F.3d 1461, 43 U.S.P.Q.2d (BNA) 1481 (Fed. Cir. 1997).
Patents for drying machine used in making paper were invalid for obviousness under § 103; patents' use of
two consecutive pluralities of drying cylinders was configuration that was obvious in view of competitor's use of
drying cylinder group with two substantially parallel rows of cylinders, and patents' use of suction rolls, in close
proximity to cylinders, was obvious in view of competitor's patent, which showed use of vacuum, and third
party's application for foreign patent, indicating use of individual suction sources placed close to cylinders, regardless of fact that third party never obtained foreign patent. Valmet Paper Machinery, Inc. v. Beloit Corp., 105
F.3d 1409, 41 U.S.P.Q.2d 1619 (Fed. Cir. 1997), opinion amended on reh'g, 112 F.3d 1169 (Fed. Cir. 1997).
Prior art including separate uses of partially fried potatoes and waffle-shaped fried potatoes made obvious
their combination in parfried waffle-cut potatoes. Lamb-Weston, Inc. v McCain Foods (1996, CA FC) 78 F3d
540, 37 USPQ2d 1856.
Published paper disclosing use of disks of varying thickness in maintenance of aircraft brakes rendered obvious and invalid patented aircraft brake assembly consisting of thick and thin carbon disks that allowed replacement of only half of disks at each maintenance interval. B.F. Goodrich Co. v Aircraft Braking Sys. Corp. (1996,
CA FC) 72 F3d 1577, 37 USPQ2d 1314.
Use of one-piece frame with converging areas at top of grip in conversion kit for expanding ammunition capacity of semiautomatic handguns was obvious for purposes of patent validity under § 103. Para-Ordnance Mfg.
v SGS Importers Int'l (1995, CA FC) 73 F3d 1085, 37 USPQ2d 1237 and cert den (US) 136 L Ed 2d 38, 117 S
Ct 80.
Level of skill in art, one of underlying factual findings in support of obviousness rejection, is to be measured as of time invention was made; here, because there was no suggestion that earlier time should be used, relevant time was when patent application was filed. In re Epstein (1994, CA FC) 32 F3d 1559, 31 USPQ2d 1817.
In determining whether prior art is analogous under § 103, two criteria are relevant: (1) whether art is from
same field of endeavor, regardless of problem addressed; and (2) if art is not within same field of endeavor,
whether it is still reasonably pertinent to particular problem to be solved. Wang Lab., Inc. v Toshiba Corp.
(1993, CA FC) 993 F2d 858, 93 Daily Journal DAR 9496, 26 USPQ2d 1767, related proceeding (CD Cal) 29
USPQ2d 1481.
Holding of obviousness for purposes of 35 U.S.C.A. § 103 requires that there be some teaching or suggestion whereby it would have been obvious to designer of ordinary skill to make particular selection and combination made by patentee; not only individual elements, but ornamental quality of combination must be suggested
in prior art. L.A. Gear, Inc. v Tom McAn Shoe Co. (1993, CA FC) 988 F2d 1117, 25 USPQ2d 1913 and cert den
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(US) 126 L Ed 2d 240, 114 S Ct 291.
Decision of trial court, authorizing issuance of patent, would be reversed since subject-matter of patent
would have been obvious, within meaning of 35 U.S.C.A. § 103, from knowledge disclosed in prior reference,
inasmuch as proportions of alloys in prior reference were so close to those in instant application that one skilled
in art would have expected them to have same properties. Titanium Metals Corp. v Banner (1985, CA FC) 778
F2d 775, 227 USPQ 773.
Trial court erred in entering order authorizing Commissioner of Patents and Trademarks to issue to corporation patent for titanium alloy, since evidence supported conclusion that subject-matter would have been obvious
at time invention was made from knowledge disclosed in reference: two existing alloys had proportions so close
that prima facie one skilled in art would have expected them to have same properties, and corporation produced
no evidence to rebut prima facie case. Titanium Metals Corp. v Banner (1985, CA FC) 778 F2d 775, 227 USPQ
773.
Obviousness, within meaning of 35 U.S.C.A. § 103, is determined by examining scope and content of prior
art and ascertaining differences between prior art and claims at issue. Massachusetts Institute of Technology v
AB Fortia (1985, CA FC) 774 F2d 1104, 227 USPQ 428.
Decision of Patent and Trademark Office Board of Appeals, rejecting applicant's claims as non-patentable
under 35 U.S.C.A. § 103 for being obvious in view of prior art, would be affirmed since criterion was whether
claimed inventions were rendered obvious by teachings of prior art as a whole, and Board properly determined
from evidence that prior art disclosed all features of applicant's claim, overall result of prior art was same as that
of applicant's claim, and that claimed inventions would have been obvious in view of collective teachings of prior art. Re Etter (1985, CA FC) 756 F2d 852, 225 USPQ 1, cert den (US) 88 L Ed 2d 72, 106 S Ct 88.
In action involving validity of patent for method of drilling hole along inverted arcuate path beneath
obstacle and then installing pipeline in drilled hole, trial court properly ruled that patent was invalid for obviousness since same or similar problems are incurred in both vertical and horizontal directional drilling, following
liner used to enhance structural integrity of drill hole was nothing more than reapplication of known process and
drilling technique to new problem, and since nowhere in patent did plaintiff assert improved control and accuracy resulting from claimed invention. Reading & Bates Constr. Co. v Baker Energy Resources Corp. (1984, CA
FC) 748 F2d 645, 223 USPQ 1168.
In determining whether case of prima facie obviousness exists within meaning of 35 U.S.C.A. § 103, it is
necessary to ascertain whether prior art teachings appear to be sufficient to one of ordinary skill in art to suggest
making claimed substitution or other modification. Re Lalu (1984, CA FC) 747 F2d 703, 223 USPQ 1257.
See ACS Hospital Systems, Inc. v Montefiore Hospital (1984, CA FC) 732 F2d 1572, 221 USPQ 929, § 7[c]
.
In analyzing obviousness, the court in a patent infringement suit inquires into: (1) the scope and content of
the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of non–obviousness. 35 U.S.C.A. § 103(a). Paymaster Technologies, Inc. v. U.S., 61 Fed. Cl. 593 (2004).
In making determination of obviousness, scope and content of prior art are to be determined, differences
between prior art and patent claims at issue are to be ascertained, and level of ordinary skill in the pertinent art
resolved, and secondary considerations include commercial success of patented invention, whether claimed invention involved new and unexpected results or filled long-felt and unsatisfied need in the art, whether others in
the field had tried without success to address technological issue addressed by invention, and whether alleged infringer copied patented invention. 35 U.S.C.A. § 103. Pfund v. U.S., 40 Fed. Cl. 313 (1998), appeal dismissed,
1998 WL 385480 (Fed. Cir. 1998).
Patented radar camouflage screen was not rendered obvious and invalid by prior art that operated on inter-
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Page 123
ference principles and required multiple layers, where patented screen operated on absorption principle and required only single layer. Brunswick Corp. v United States (1995) 34 Fed Cl 532, judgment entered 36 Fed Cl
204.
Claim of patent for helicopter control device was invalid for, inter alia, obviousness where clear and convincing evidence showed that device consisted of relatively trivial modification of prior art, and that patentee was
aware of that prior art. Nor did patentee provide sufficient evidence of relationship between invention and objective evidence of commercial success and/or long-felt but unresolved needs for device. Messerschmidt v
United States (1993) 29 Fed Cl 1.
In action against United States for unauthorized use and manufacture of docking system used in Apollo
space mission which allegedly was covered by plaintiff's patent, combinations of claims taken as whole were not
unobvious within meaning of U.S.C. 103, where review of both previous patent and government report disclosed
each of elements of claims combined in same manner to achieve same purpose. Fogarty v United States (1984) 5
Cl Ct 402, 225 USPQ 298, affd without op (CA FC) 770 F2d 182.
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[END OF SUPPLEMENT]
§ 9[a] What constitutes pertinent prior art—Generally; particular references pertinent
References must be from prior art that is pertinent to the invention in suit, for inventors cannot be charged
with the teachings in all arts. (§ 9[b], infra.) But the fact that an inventor is not aware of certain pertinent references or uses is irrelevant in determining what was obvious in terms of prior art at the time of his invention (§
10, infra), for a person of ordinary skill in the art is expected to know all that it discloses. With this in mind, the
breadth and import of the prior art teachings to be evaluated in determining obviousness, considered in the preceding section, provide the background for discussion here of what, specifically, the courts have held to constitute pertinent prior art that must be considered in determining obviousness under 35 U.S.C.A. § 103
The United States Supreme Court considered the question of pertinency of prior art while holding invalid
the patent issued on a finger-operated pump sprayer for insecticide with a hold-down plastic overcap, in Calmar,
Inc. v Cook Chemical Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684. The court noted that the substitution
of a rib built into a collar presented no patentable difference from the prior art, it having been fully disclosed and
dedicated to the public in an earlier patent. The patentee argued that the earlier patent was not in the pertinent
prior art because it related to liquid containers having pouring spouts rather than to pump sprayers, but the court
said that so restrictive a view of the applicable prior art was not justified. The problems confronting the patentee
and the insecticide industry were not insecticide problems, the court said, but were mechanical closure problems, and closure devices in such a closely related art as pouring spouts for liquid containers were at the very
least pertinent references.
In a number of cases, the federal courts have held that particular prior art references presented to them were
pertinent, and were to be considered in determining the obviousness of the patentee's claims.
Thus, where the patentee of a stereotype mat relying on synthetic silicates as filler, and used in the casting
of metal cylindrical rolls for a printing press, argued in Burgess Cellulose Co. v Wood Flong Corp. (1970, CA2
NY) 431 F2d 505, that prior art on fillers used in paper-making was not pertinent, the court disagreed in holding
the patent invalid. The pertinent art is the art to which one can reasonably be expected to look for a solution of
the problem which the patented device attempts to solve, the court continued, and while the patentee contended
that the problems solved by the innovation were not paper-making problems but were mechanical molding and
23 A.L.R. Fed. 326
Page 124
metal-casting problems, and admittedly there was a difference between the purpose and function of fillers in
each separate paper product, yet one would expect the pulp and paper industry to have investigated the characteristics of various fillers. Therefore, the court concluded, one should be expected to look at the paper-making
art to find a solution to the problems presented in making a superior stereotype mat, and paper-making is a pertinent art.
Holding invalid for obviousness the patent on an apparatus for printing on corrugated paper board, in Novelart Mfg. Co. v Carlin Container Corp. (1973, DC NJ) 363 F Supp 58, the court pointed out that the pertinent
prior art in this case was not so severely limited as to include only the making of pictorial double-face board, but
rather included the art of machine design, and the machines and techniques practiced in the graphic and corrugating arts. Prior art in the 35 U.S.C.A. § 103 sense, the court stated, is not limited to a separate commercial field
or product such as suggested by plaintiff, but rather encompasses all the pertinent art of record having to do with
machinery related to the patent in suit, and a knowledge from other arts reasonably pertinent to the particular
problem.
Concluding that the patent in suit for a silo unloader did not satisfy the nonobviousness requirement of 35
U.S.C.A. § 103, the court in Leach v Rockwood & Co. (1967, DC Wis) 273 F Supp 779, affd (CA7 Wis) 404
F2d 652, said that in applying this statutory test it must first be determined what prior art should be considered,
that the court must look at all the prior art in the fields of silo unloading and analogous arts. Whether arts or uses
were analogous depended upon the similarity of their elements and purposes, the court noted, and if the elements
and purposes in one art were related and similar to those in another art, and because and by reason of that relation and similarity made an appeal to the mind of a person having mechanical skill and knowledge of the purposes of the other art, then such arts must be said to be analogous, and, if the converse were true, they were not
analogous arts. Even though it should be held that patents relied upon by an infringer as prior art were in a nonanalogous art, nevertheless their disclosures may not be ignored, the court continued, the trend of modern decisions being to widen the scope of prior art which can be considered pertinent. Therefore, the court concluded
that patents dealing with loaders would be a natural source of information for one trying to solve problems relating to unloading silos, and held that a certain patent showing means for picking up a substance and for conveying that substance vertically and laterally was relevant prior art.
The issue before the court in Skee-Trainer, Inc. v Garelick Mfg. Co. (1966, CA8 Minn) 361 F2d 895, concerned the trial court's interpretation of the words "prior art" found in 35 U.S.C.A. § 103, the trial court having
stated that "prior art," with respect to any simple mechanical device utilizing universally known principles,
might be thought to refer to the field of mechanics itself, and that regardless of the field in which he worked,
every prospective inventor was charged with knowledge of basic mechanical principles. This interpretation was
approved, the court concluding that Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684,
supra § 6[a] did not invalidate the meaning that the trial court gave to the words "prior art," that case emphasizing that technology had advanced with remarkable rapidity in the last 50 years. Thus, the court concluded, prior
art included not only earlier devices and publications, but also similar devices whether or not in related areas to
the patented device, and with respect to a simple mechanical device utilizing universally known principles, permitted referring to the field of mechanics itself.
In denying validity to the patent on a machine for inspecting empty bottles, the court in Geo. J. Meyer Mfg.
Co. v San Marino Electronic Corp. (1970, CA9 Cal) 422 F2d 1285, was confronted with the problem of what
was the art to which the subject matter pertained. The court rejected the patentee's approach that the relevant art
was the art of bottle inspection, finding that the nature of the art here was the detection of foreign objects in a
field of view by electro-optical techniques. The court pointed out that in the bottle inspection field the sciences
of optics and electronics had been widely used, and that as new electronic and optical techniques were developed in related fields such as missile and star tracking, they could be applied to detection of material such as
23 A.L.R. Fed. 326
Page 125
bottles moving on a conveyor. Since detection of the presence of objects moving on the ground involved problems of the kind presented by bottle inspection, the court concluded, those techniques became part of the relevant art.
In Canadian Ingersoll-Rand Co. v Peterson Products of San Mateo, Inc. (1963, DC Cal) 223 F Supp 803, affd in part and revd in part on other grounds (CA9 Cal) 350 F2d 18, where the patent was held invalid for obviousness, the patentee argued that certain of the prior art references, relied upon by the alleged infringer, disclosing the concept of simultaneously ejecting and spraying fibers and other materials with liquid binders before deposit upon a surface, all related to nonanalogous arts having no resemblance to the field of reinforced plastics in
which he claimed. The infringer relied on one, for example, involving a process of making stuffing material by
means of nonglass fibers, another involving a process of making interior decorative and acoustical surfaces by
means of nonglass fibers such as asbestos and wool, a third involving mixing sand with a binder of asphalt, and
others involving a process of applying a latex coating to shoes or mixing cork particles with a latex binder.
Whether prior art should be deemed nonanalogous and too remote in a particular case, the court pointed out, depended upon the similarity and purposes of the arts involved, in the sense that if the elements and purposes in
one art were so related and similar to those in another art that the relationship would appeal to the mind of a person having mechanical skill and knowledge of the purposes of the other art, then the arts would be said to be
analogous. While the court found no prior art references involving the identical field of this patent limited to the
deposit of fiber glass with a resin binder, it said that, regardless of the materials used in and the end purposes of
these prior arts not involving fiber glass, the essential idea was apparently well known and variously applied, of
simultaneously cutting, ejecting, and spraying fibers and other materials with binders, and would be reasonably
within the knowledge of and appeal to the mind of a person having mechanical skill in the reinforced-plastics
field.
The patent on a method and apparatus for holding work pieces such as gem stones by freezing them to a
work station for grinding and polishing was held invalid for obviousness in International Glass Co. v United
States (1969) 187 Ct Cl 376, 408 F2d 395. The court said that the prior art showed that plaintiff was not first to
come up with the idea, broadly speaking, of freezing a work piece to a work station with ice, for before his invention biological specimens to be sliced for microscopic examination were frozen by ice to a work platform,
and fish to be deskinned were frozen to conveyer belts preparatory to cutting the fish carcass from the skin.
The courts in a number of other cases, in determining what would have been obvious at the time of an invention to a person of ordinary skill in the art, have held that particular references were a part of the prior art
pertinent to—
—the patent on a method of striating plywood to prevent edge separation, where it was urged that striating
or grooving plywood in an earlier product was an abandoned experiment and thus not part of the prior art. Georgia-Pacific Corp. v United States Plywood Corp. (1958, CA2 NY) 258 F2d 124, cert den 358 US 884, 3 L Ed 2d
112, 79 S Ct 124.
—the patent on a data-plotting device for projecting on a screen the paths of aircraft and the like, where the
patentee sought to avoid the effect of an unworkable patent in the prior art, on the ground that it was a "paper
patent." Ling-Temco-Vought, Inc. v Kollsman Instrument Corp. (1967, CA2 NY) 372 F2d 263.
—the patent relating to a rotary latching action for wrap-around cartons of the "six-pack" type used for carriers of beer or soft-drink cans, where the patentee argued that patents in the prior art involving six-sided cartons
were not relevant to open-end cartons with automatic tightening as provided by his invention. Continental Can
Co. v Old Dominion Box Co. (1968, CA2 NY) 393 F2d 321.
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Page 126
—an invention relating to a means of conveniently packaging small uniform cylindrical electrical resisters
on a thin pliant strip with an adhesive coating, which was urged to be a development in the electronics industry
peculiarly adapted to meet the needs of that industry, and should therefore not be considered from the point of
view of the packaging art. Allen-Bradley Co. v Air Reduction Co. (1967, DC Pa) 273 F Supp 930, affd (CA3 Pa)
391 F2d 282.
—a design patent issued on a device to hold ornamental hand railings offset from their posts, the court noting that devices similar to it had long been used to secure railroad rails. Blumcraft of Pittsburgh v Citizens &
Southern Nat. Bank (1969, CA4 SC) 407 F2d 557, cert den 395 US 961, 23 L Ed 2d 747, 89 S Ct 2103, reh den
396 US 870, 24 L Ed 2d 125, 90 S Ct 39, reh den 396 US 949, 24 L Ed 2d 254, 90 S Ct 369.
—patented barbells in which metal weights were replaced by a plastic shell filled with concrete, where the
patentee argued that a similar device in the prior art was no more than a toy and should not properly be considered as prior art, and that a magazine article on a Marine Corps barbell made with cement poured into fruit
juice cans on the ends of rods should not be considered and the device itself disregarded as "home-made." Diversified Products Corp. v Sports Stores, Inc. (1968, DC Md) 294 F Supp 375.
—a patent for a process consisting of the removal of erroneously encoded magnetic ink characters on
checks, by application of a solvent for magnetic ink, where the patentee maintained that the prior art problem
which he sought to solve was a data-processing problem and not a mere chemical problem of finding a solvent
for magnetic ink. MICR-Shield Co. v First Nat. Bank (1968, CA5 Fla) 404 F2d 157, cert den 394 US 960, 22 L
Ed 2d 561, 89 S Ct 1308.
—a patent on a press-in clip for weather-stripping home window frames, where the alleged infringer relied
on a prior art patent which disclosed a clip for mounting weather strip on automobile doors. Zegers v Zegers,
Inc. (1966, CA7 Ill) 365 F2d 156, cert den 385 US 948, 17 L Ed 2d 226, 87 S Ct 320.
—a patent on a tooth positioner, where the alleged infringer relied upon four learned articles discussing correction of irregular teeth. T. P. Laboratories, Inc. v Huge (1966, CA7 Wis) 371 F2d 231.
—one of the claims of the patent upon a freight car bulkhead involving bars extending the length of the
bulkhead, pinioned and connected in such a way that operating one handle moved the link bars which in turn
moved the opposite handle, where this cross-link device was shown in the patent for a hand brake for small railcars used in mines, in a somewhat different form in a patent for a boxcar door, and in a related link construction
in a patent for a bulkhead gate. Unarco Industries, Inc. v Evans Products Co. (1966, DC Ill) 275 F Supp 331, affd (CA7 Ill) 385 F2d 834.
—a patent issued on a printing ribbon consisting of two layers, the court noting that a German patent disclosed this feature. Filmon Process Corp. v Spellright Corp. (1967, DC Dist Col) 274 F Supp 312, affd 131 App
DC 374, 404 F2d 1351.
—a patent on a stationary structure consisting of a cantilever truss having utility in supporting building
roofs and the like, where the alleged infringer introduced various examples of prior art structures utilizing a suspended cantilever member, among which were disclosures relating to bridges, hangars, and airplane wings. Erwin-Newman Co. v United States (1968) 183 Ct Cl 822, 393 F2d 819, cert den 393 US 844, 21 L Ed 2d 114, 89
S Ct 125.
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Cases:
In action for infringement of combination patent on barn water flush system for cow manure, evidence is
sufficient to support District Court's finding that each of component parts of patent were old and well known
throughout dairy industry prior to application for patent in question, where scope of prior art is shown by prior
patents, prior art publication, affidavits of people having knowledge of prior flush systems analogous to patent
in question, and testimony of dairy operator with 22 years experience who described flush systems seen in visits
to dairy farms throughout country. Sakraida v Ag Pro, Inc., 425 US 273, 47 L. Ed. 2d 784, 96 S Ct 1532, reh den
426 US 955, 49 L. Ed. 2d 1194, 96 S Ct 3182.
Computer system for checking account records for banks to furnish customer with subtotals for transaction
categories is unpatentable as obvious from state of art and from previous patent on similar data processing system. Dann v Johnston, 425 US 219, 47 L. Ed. 2d 692, 96 S Ct 1393.
Art relative to broadly disclosed self-checking monitoring system includes control devices for many purposes and is not limited to burner control for which patented device is used. Scully Signal Co. v Electronics
Corp. of America (CA1 Mass) 570 F2d 355, 196 USPQ 657, cert den 436 US 945, 56 L. Ed. 2d 787, 98 S Ct
2848.
As a general rule, the filing date of an application will determine the scope of the prior art that an examiner
will consider in evaluating whether an application should be rejected on grounds of anticipation or obviousness.
35 U.S.C.A. § 102(b). Arrow Intern., Inc. v. Spire Biomedical, Inc., 635 F. Supp. 2d 46 (D. Mass. 2009).
In determining scope of relevant prior art presumed to be familiar to ordinarily skilled person, court considers training of patentee and novel qualities of claimed invention to determine arts that patentee could reasonably expect to consult and finds that patent on digital processing system for racetrack betting encompasses data
processing art generally and art is not restricted to racetrack betting devices. Digitronics Corp. v New York Racing Asso. (CA2 NY) 553 F2d 740, 193 USPQ 577, cert den 434 US 860, 54 L. Ed. 2d 133, 98 S Ct 187.
Scope and content of prior art may be shown by prior patents, publications describing prior art, and by affidavits or testimony of persons having knowledge of prior art. Dielectric Laboratories, Inc. v American Technical
Ceramics (1982, ED NY) 545 F Supp 292, 217 USPQ 1122.
To ascertain scope of prior art, court resolving question of patent's obviousness examines field of inventor's
endeavor, and problem with which inventor was involved, at time invention was made. 35 U.S.C.A. § 103(a).
Medinol Ltd. v. Guidant Corp., 412 F. Supp. 2d 301 (S.D. N.Y. 2005).
In patent validity and infringement actions, pertinent prior art is plastic molding art and attaching or fastening art where patented claims at issue in action involve plastic molded attachments used in marking operations
in retail merchandising; and, although workable prior patent or publication is part or pertinent prior art, is unworkability bears on what it teaches and on what would be obvious from it. Dennison Mfg. Co. v Ben Clements
& Sons, Inc. (SD NY) 467 F Supp 391.
Tamperproof plastic milk bottle closure was obvious in light of prior art, where designers of plastic bottle
closures had been aware of tamperproofing function of bottles with ratchet-toothed necks and caps connected to
rings for at least 20 years and improvement in method by which cap could be screwed onto bottle without breaking connection was trivial refinement obvious to person with ordinary skill in art of manufacturing closures.
Northern Engineering & Plastics Corp. v Eddy (1981, CA3 Pa) 652 F2d 333, 210 USPQ 784, cert den 454 US
1146, 71 L Ed 2d 299, 102 S Ct 1009, 213 USPQ 1136.
Prior art relative to patent on body exercising apparatus is neither art of weight lifting nor mechanical engineering, but is art of exercising apparatus design, which fails to show obviousness of patented improvement. Uni-
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versal Athletic Sales Co. v American Gym, Recreational & Athletic Equipment Corp. (CA3 Pa) 546 F2d 530,
192 USPQ 193, cert den 430 US 984, 52 L. Ed. 2d 378, 97 S Ct 1681.
Patents on products and methods of bonding railroad rails with epoxy resins are invalid as obvious from prior art suggestions for gluing railroad rails together. Allegheny Drop Forge Co. v Portec, Inc. (CA3 Pa) 541 F2d
383, 191 USPQ 541.
Trial court erred in determining level of skill in tomato slicing art as that of tomato slicer rather than mechanical problem solver familiar with design of food slicing equipment, and considering uncontradicted evidence,
patent on tomato slicer is invalid for obviousness as matter of law as derivable from known pushers, holders,
and blade assemblies suggested by prior art food slicers. Systematic Tool & Machine Co. v Walter Kidde & Co.
(CA3) 193 USPQ 587.
In appropriate circumstances, a single prior art reference can render a patent claim obvious; however, there
must be a showing of a suggestion or motivation to modify the teachings of that reference to the claimed invention in order to support the obviousness conclusion. 35 U.S.C.A. § 103(a). IGT v. Bally Gaming Intern., Inc.,
610 F. Supp. 2d 288 (D. Del. 2009).
Existence of each patent claim limitation in prior art references does not, by itself, demonstrate obviousness;
instead, there must be reason, suggestion, or motivation in prior art that would lead one of ordinary skill in the
art to combine references, and that would also suggest reasonable likelihood of success. 35 U.S.C.A. § 103.
IMX, Inc. v. LendingTree, LLC, 405 F. Supp. 2d 479 (D. Del. 2005).
In order for multiple prior art references to collectively render patent invalid as obvious, there must be reason, suggestion, or motivation in prior art that would lead one of ordinary skill in art to combine references, and
that would also suggest reasonable likelihood of success. 35 U.S.C.A. § 103(a). Oxford Gene Technology Ltd. v.
Mergen Ltd., 345 F. Supp. 2d 444 (D. Del. 2004).
Claim of diaper patent reciting values for width and thickness parameters and absorbency efficiency index
(AEI) was invalid for obviousness in light of prior patent which disclosed diaper containing each of limitations
present in claim except thickness dimension, expressing preference for diapers which were thinner; it would
have been obvious to person of ordinary skill in art to add absorbent material to increase thickness of impact
zone to dimension specified in claim. 35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade Brands, Inc.,
989 F. Supp. 547 (D. Del. 1997).
"Prior art" for purposes of obviousness claim includes earlier publications, anything previously in public use
or on sale in United States, anything publicly known or used by others in United States before date of invention,
and anything made or built or any process used in United States by another person before date of invention,
where thing or process was not abandoned, suppressed, or concealed. Johns Hopkins Univ. v CellPro (1995, DC
Del) 894 F Supp 819.
In action for infringement of patent of electrical connector, relief was denied where connector was obvious
and in public domain at time of alleged invention, notwithstanding that connector performed substantially same
function in same way as patented device. Thomas & Betts Corp. v Winchester Electronics Div. etc. (1981, DC
Del) 519 F Supp 1191, 213 USPQ 943.
Competitor established prima facie case that patent on pain-relief drug, which combined tramadol and acetaminophen in weight ratio of "about 1:5," was obvious in light of prior art, and thus invalid, on evidence that
prior art references disclosed administering tramadol and acetaminophen together to treat pain, dosing ranges inherently disclosed all weight ratios that could have been created by combining two sets of doses, and weight ratios described in prior art differed from "about 1:5" claimed range, i.e., 1:3.6 to 1:7.1, in minor ways. 35
U.S.C.A. § 103(a). Ortho-McNeil Pharmaceutical, Inc. v. Kali Laboratories, Inc., 482 F. Supp. 2d 478 (D.N.J.
2007).
For purposes of obviousness inquiry, scope and content of the prior art is limited to art that is analogous to
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the claimed invention; "analogous art" is that which is from the same field of endeavor or, if not within the field
of endeavor, is still reasonably pertinent to the particular problem with which the inventor is involved. 35
U.S.C.A. § 103(a). Pfizer Inc. v. Teva Pharmaceuticals USA, Inc., 482 F. Supp. 2d 390 (D.N.J. 2007).
When a prior art reference is alleged to make the claimed invention obvious, the prior art must be analogous
to the claimed invention to which it is being compared; analogous art is essentially that which a person having
ordinary skill in the art would reasonably have consulted in solving the problem addressed by the claimed invention. 35 U.S.C.A. § 103(a). PBI Performance Products, Inc. v. NorFab Corp., 514 F. Supp. 2d 732 (E.D. Pa.
2007).
In patent infringement action involving patent for process used to separate and stack cheese slices, prior art
would not be limited to cheese industry or to sliced food manufacturing and packaging industry; rather, common
properties of flexible slices and similar problems encountered in their separation and stacking makes art of
stacking flexible materials reasonable area of inquiry for person of ordinary skill in cheese art. L. D. Schreiber
Cheese Co. v Clearfield Cheese Co. (1982, WD Pa) 540 F Supp 1128, 214 USPQ 285.
Lug and hole latches in boxes and containers outside of egg carton art are pertinent as showing prior art
knowledge of lug and hole type latches and showing obviousness of egg carton patent differing from prior art
only in use of lug and hole latch. Diamond International Corp. v Maryland Fresh Eggs, Inc. (CA4 Md) 523 F2d
113, 187 USPQ 193, cert den 424 US 914, 47 L. Ed. 2d 319, 96 S Ct 1113.
A "person with the ordinary level of skill in the art" is presumed to know all of the relevant prior art. 35
U.S.C.A. § 103(a). Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 185 F. Supp. 2d 588 (D.
Md. 2002).
In action for infringement of patent and for obtaining and utilizing trade secrets in producing anchor winch,
patent was held to be invalid and void as matter of law where subject matter would have been obvious from prior art to person having ordinary skill in art, and alleged invention had been embodied in winches known to and
used by alleged inventor for at least ten years. Eudy v Motor-Guide, Herschede Hall Clock Co. (1981, CA5
Miss) 651 F2d 299, 211 USPQ 921.
Prior art relevant to cathodic protection of undersea pipes extends not only to field of galavanic anodes but
to similar devices in analogous arts using similar mechanical principles, and considering broader relevant art,
patent is invalid as obvious; level of ordinary skill in art of anodic protection of underwater pipes extends to
mechanical skills of analagous arts and is adequate so that mechanical improvements of patent are obvious.
Cathodic Protection Service v American Smelting & Refining Co. (CA5 Tex) 594 F2d 499, 203 USPQ 102, cert
den 444 US 965, 62 L. Ed. 2d 378, 100 S Ct 453.
Belgian patent is not limited to explicit claims and represents prior art available to person of ordinary skill
for all it discloses, and it contributes concepts to chair making art sufficient to invalidate chair patent for obviousness. Steelcase, Inc. v Delwood Furniture Co. (CA5 Ala) 578 F2d 74.
Patented process of packaging sausage meat in air permeable containers immediately after slaughter while
meat is still warm is obvious from prior art suggestions for rapid processing of sausage meat while warm, and
for packaging sausage in air permeable containers. Bird Provision Co. v Owens Country Sausage, Inc. (CA5
Tex) 568 F2d 369, 197 USPQ 134.
Prior art suggestions for several steps in patented process of dyeing yarn, including application of process
steps to continuous filament yarns, is considered by court in combination with prior art knowledge of "edge
crimping" by running yarn over edge to find patent invalid for obviousness. Fred Whitaker Co. v E. T. Barwick
Industries, Inc. (CA5 Ga) 551 F2d 622, 194 USPQ 113.
When defendant challenging patent as obvious is required to show a teaching, suggestion, or motivation to
combine the prior art references at the time the invention was made, such as through the prior art references
themselves, the knowledge of ordinarily skilled artisans, or the nature of the problem to be solved, the teaching,
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suggestion, or motivation to combine the references may be implicit or explicit. 35 U.S.C.A. § 103. Minton v.
National Ass'n of Securities Dealers, Inc., 226 F. Supp. 2d 845 (E.D. Tex. 2002).
Prior art in analogous fields is pertinent to obviousness. Wentworth v Gulton Industries, Inc. (1982, ND
Tex) 578 F Supp 508, 216 USPQ 488, affd (CA5 Tex) 722 F2d 1253.
When claim of patent's obviousness is based on teachings found in multiple prior art references, claimant
must establish some suggestion, teaching, or motivation that would lead person of ordinary skill in the art to
combine relevant prior art teachings in manner claimed; such suggestion may be found in (1) prior art references
themselves, (2) knowledge of those with ordinary skill in the art that certain references, or disclosures, are of
special interest or importance in field, or (3) from nature of problem to be solved. 35 U.S.C.A. § 103(a). Automotive Technologies Intern. v. BMW of North America, Inc., 378 F. Supp. 2d 780 (E.D. Mich. 2005).
Patent related to an automotive fuel control device was invalid as obvious in light of prior art; one prior patent taught that open throttle fuel cut is desirable whenever engine is overrunning in order to save fuel, just as
claimed by patent in issue, foreign patent application included throttle opening detector, engine RPM detector
and vehicle speed detector like that in patented device, and it would be obvious to those skilled in relevant to art
to combine them. 35 U.S.C.A. § 103. Semmler v. American Honda Co., Inc., 990 F. Supp. 967, 44 U.S.P.Q.2d
(BNA) 1553 (S.D. Ohio 1997), motion denied, 124 F.3d 225 (Fed. Cir. 1997).
Scope of pertinent art is defined by problem which patent in suit allegedly solves rather than by type of
product which patent in suit describes, thus, if inventor of patent in suit could reasonably have been expected to
look to reference to solve problem which patent in suit allegedly solves, that reference is pertinent art; reference
which described different type of product than is described by patent in suit is nevertheless analogous art and
therefore within scope of pertinent art if it attempts to solve same problem which patent in suit allegedly solves;
pertinent art which was not invented until after invention of patent in suit, pertinent art which was available to
public before invention of patent in suit, and art which was invented before invention of patent in suit but not
publicly disclosed until after invention of patent in suit may constitute pertinent prior art; pertinent concept
which is disclosed to public through patent, printed publication, use, or piece of information before invention of
concept embodied in patent in suit always constitutes pertinent prior art. General Motors Corp. v Toyota Motor
Co. (SD Ohio) 467 F Supp 1142, 205 USPQ 158, affd in part and revd in part on other grounds (CA6 Ohio) 667
F2d 504, 212 USPQ 659, cert den Toyota Motor Co. v General Motors Corp. (1982, US) 72 L Ed 2d 457, 102 S
Ct 1994, 215 USPQ 95.
Patent on bicycle wheel reflector was properly found invalid for obviousness where not only had each of its
structural components been disclosed in prior art, but also where Bureau of Product Safety had indicated that
wider operative range was needed for class A cube-corner spoke-mounted reflector, and, under such circumstance, it would have been obvious even to layperson to substitute combination wideangle lense, which had
greater operative range. Beatrice Foods Co. v Tsuyama Mfg. Co. (1979, CA7 Ill) 619 F2d 3.
For purposes of 35 U.S.C.A. § 103, requiring nonobviousness of subject in patent claims, prior art relevant
to plaintiff's heating and ventilation ducts included machines and methods for producing metal duct, whatever
intended use of such products may have been. Manufacturers Systems, Inc. v ADM Industries, Inc. (1979, CA7
Ind) 615 F2d 741, 20 USPQ 879.
Issue of anticipation by prior art is not determined by insubstantial distinctions between purported invention
and prior art, and purported invention is anticipated by prior art if general aspects are same and difference in
minor matters is only such as would suggest itself to one of ordinary skill in art; thus, where aluminum can manufacturer had developed special method of coldworking aluminum cans, subsequent patenting of similar process
was invalid for lack of novelty where dimensional differences in patented work and prior work would indeed
suggest themselves to one with ordinary skill in art. Reynolds Metals Co. v Aluminum Co. of America (CA7
Ind) 609 F2d 1218.
23 A.L.R. Fed. 326
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Art of fire door closers using hydraulic systems extends to known operation of hydraulic valves usable in
such door closers, so that patent achieving additional feature by using known hydraulic valve in fire door closer
is invalid as obvious. Republic Industries, Inc. v Schlage Lock Co. (CA7 Ill) 592 F2d 963, 200 USPQ 769.
Fact that prior art patent on bag suggested bag manufacturing method that was unworkable is irrelevant to
standing of patent as prior art for suggesting bag, regardless of any manufacturing method. St. Regis Paper Co. v
Bemis Co. (CA7 Ill) 549 F2d 833, 193 USPQ 8, cert den 434 US 833, 54 L. Ed. 2d 94, 98 S Ct 119.
Prior art relevant to obviousness is defined by nature of problem confronting inventor, and art relative to
cranes, demolition machines, and machines for manipulating tools within chambers from above are appropriately considered relative to problem of demolition machine for cleaning hard residue from soaking pit of steel
mill. Louis A. Grant, Inc. v Keibler Industries, Inc. (CA7) 191 USPQ 424.
It is impermissible, when making patent obviousness determination, to pick and choose from any one prior
art reference only so much of it as will support given position, to exclusion of other parts necessary to full appreciation of what such reference fairly suggests to one of ordinary skill in the art. 35 U.S.C.A. § 103(a). Eli
Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 364 F. Supp. 2d 820 (S.D. Ind. 2005).
Prior art may include not only earlier devices and publications, but also similar devices, whether or not in
related areas to patented device, and, with respect to simple mechanical device, utilizing universally known principles permits referring to field of mechanics itself. Black & Decker Mfg. Co. v Ever-Ready Appliance Mfg. Co.
(1982, CA8 Mo) 684 F2d 546, 215 USPQ 97.
Prior art construction of automobile seat pads is relevant to patent claims on steering wheel cover and is
considered in finding patent invalid for obviousness. Kamei-Autokomfort v Eurasian Automotive Products (CA9
Cal) 553 F2d 603, 194 USPQ 362, cert den 434 US 860, 54 L. Ed. 2d 133, 98 S Ct 186.
Doctoral dissertation was prior art to professor who supervised it, where dissertation was presented to university five years before filing of patent application. Baxter Diagnostics v AVL Scientific Corp. (1996, CD Cal)
924 F Supp 994, mod, reconsideration gr (CD Cal) 954 F Supp 199.
Unlike patent anticipation, obviousness can occur based on a single prior art reference or a combination of
references. 35 U.S.C.A. §§ 102(b), 103. Smith & Nephew, Inc. v. Arthrex, Inc., 511 F. Supp. 2d 1046 (D. Or.
2007).
Prior art of forming crawler treads and other articles of metal is pertinent to art of forming rail anchors and
shows that patented method is obvious to workers skilled in art. True Temper Corp. v CF & I Steel Corp.
(CA10) 202 USPQ 412.
Prior art relevant to obviousness of design patent is art available to ordinary designer rather than ordinary
observer or ordinary intelligent man. Sidewinder Marine, Inc. v Starbuck Kustom Boats & Products, Inc.
(CA10) 202 USPQ 356.
Sources of prior art most often relied on to show obviousness under § 103 are prior knowledge or use, prior
patents, and prior publications; also pertinent are descriptions in prior patent applications by others ultimately
granted patents, derivations from others, and prior inventions; these sources are examined to determine what
they teach to person of ordinary skill in pertinent art as to obviousness of invention. Innovative Scuba Concepts,
Inc. v Feder Indus., Inc. (1993, DC Colo) 819 F Supp 1487, 27 USPQ2d 1254.
In patent infringement action, reissue patent involving container and double closure with parts interfitted to
make opening of container difficult for children was invalid where thumb-pushing function, which was only
basis on which claim had been allowed, was disclosed in prior art and claimed container-closure assembly was
obvious to one having ordinary skill in art. Plastic Container Corp. v Continental Plastics of Oklahoma, Inc.
(1980, WD Okla) 515 F Supp 834, 214 USPQ 530, 534.
"Analogous prior art" is that which is relevant to a consideration of obviousness under patent law; two criteria are relevant in determining whether prior art is "analogous": (1) whether the art is from the same field of
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endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is
involved. 35 U.S.C.A. § 103. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 93 U.S.P.Q.2d 1873 (Fed. Cir.
2010).
Patent claims relating to a splash resistant commode pan were properly rejected as obvious over the prior
art, since the suggestion to combine prior art references, resulting in a commode configured with a rectangular
opening, flowed from the ordinary knowledge of one skilled in the art. 35 U.S.C.A. § 103. In re Battiston, 139
Fed. Appx. 281 (Fed. Cir. 2005).
Evidence supported finding that prior art shoe sole patterns suggested desirability of combining layout and
hexagonal stud limitations claimed in patent application, and thus that such combination was unpatentable as obvious; prior patent, which described same stud pattern as application but used differently shaped studs, also suggested possibility of using other shapes, and persons of skill in the art would have recognized that hexagonal
studs known from other prior art were particularly well suited to prior patent's purposes. 35 U.S.C.A. § 103(a).
In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004).
Field of endeavor test for analogous art, for purposes of obviousness determination with respect to patent
claims, does not make the assessment of the field of endeavor a wholly subjective call for the examiner; rather,
examiner, and Board of Patent Appeals, must have a basis in the application and its claimed invention for limiting or expanding the scope of the field of endeavor, and must consider the "circumstances" of the application—the full disclosure—and weigh those circumstances from the vantage point of the common sense likely to
be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. 35 U.S.C.A. § 102. In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004).
"Primary reference" approach to determining whether design patent is obvious is to ascertain whether, upon
application of Graham factors to invention viewed as whole, same or substantially similar article of manufacture
is known to have design characteristics of which design of article as shown in claim is obvious variant; obviousness, in turn, is determined by ascertaining whether applicable prior art contains any suggestion or motivation
for making modifications in design of prior art article in order to produce claimed design. Hupp v. Siroflex of
America, Inc., 122 F.3d 1456, 43 U.S.P.Q.2d (BNA) 1887 (Fed. Cir. 1997).
Japanese prior art reference was sufficiently enabling to support finding that reference rendered obvious patent claims relating to field of digital wireless telephony, as reference itself provided block diagrams at level of
detail similar to those contained in patent, and expert testified extensively about his understanding of reference,
from which jury could have concluded that one skilled in the art understood reference in sufficient detail to practice it. Motorola, Inc. v. Interdigital Technology Corp., 121 F.3d 1461, 43 U.S.P.Q.2d (BNA) 1481 (Fed. Cir.
1997).
Relevant prior art for determination of obviousness includes analagous arts; therefore, secondary references
involving ventilation systems preventing air flows between two environments, even though they were not directed at asbestos removal projects, were pertinent to claimed invention to prevent airborne asbestos particles from
escaping sealed work area. In re GPAC Inc. (CA FC, 1995) 57 F3d 1573, 35 USPQ2d 1116.
Earlier design of balcony railing used in connection with construction of building constituted public use,
which qualified as "prior art" under 35 U.S.C.A. § 103 Concrete Unlimited, Inc. v Cementcraft, Inc. (1985, CA
FC) 776 F2d 1537, 227 USPQ 784, cert den Cementcraft, Inc. v Concrete Unlimited, Inc. (1986, US) 93 L Ed 2d
35, 107 S Ct 80.
See Re Sovish (1985, CA FC) 769 F2d 738, 226 USPQ 771, § 13.
Proper test for determining scope of prior art is whether such references, taken as a whole, would suggest
invention at issue to one of ordinary skill in the art. Medtronic, Inc. v Cardiac Pacemakers, Inc. (1983, CA FC)
721 F2d 1563, 220 USPQ 97.
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To embue one of ordinary skill in art with knowledge of invention in suit, when no prior art references suggest that knowledge, is to fall victim to insidious effect of hindsight syndrome wherein that which only the inventor taught is used against its teacher; and decision maker must forget knowledge of invention and go back to
knowledge of skilled workers in art when invention was made to determine non-obviousness. W.L. Gore & Associates, Inc. v Garlock, Inc. (1983, CA FC) 721 F2d 1540, 220 USPQ 303.
There was sufficient disclosure in prior art to render obvious variation of ratio between chemicals and preparation of range of chemicals relating to interpolymers of ethylene and propylene formed by use of catalysts
created by mixing certain compounds. In re Baxter, 656 F.2d 679, 210 U.S.P.Q. 795 (C.C.P.A. 1981).
Claimed invention of structure for producing images was rejected where functional characteristics were inherent in structure previously disclosed by other inventor. In re Hallman, 655 F.2d 212, 210 U.S.P.Q. 609
(C.C.P.A. 1981).
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[END OF SUPPLEMENT]
§ 9[b] What constitutes pertinent prior art—Particular references not pertinent
It has been held or recognized in several cases that references from an art that is remote from that of the invention in suit do not serve to show that the invention would have been obvious under 35 U.S.C.A. § 103 to one
having ordinary skill in the field of his own invention.
Thus, where the District Court had found the patents on an apparatus and a method for mechanically defeathering poultry invalid solely on the ground of obviousness in the light of earlier patents, the judgment of invalidity was reversed in Honolulu Oil Corp. v Shelby Poultry Co. (1961, CA4 NC) 293 F2d 127. The patents
which led to the District Court's conclusion were for an apparatus for dehairing and polishing the carcasses of
hogs, an apparatus for removing the scales of fish, and a grating machine to remove the rinds of aciduous fruits.
The court pointed out that no one had suggested that the machines of either of these three earlier patents could
successfully defeather chickens, and that at most, they disclosed a housing designed to bring or keep objects
placed within them in contact with a rotating device designed to operate upon the surface of the objects to be
processed. The District Court thought it was an obvious advance to thus inclose the mechanism for defeathering
chickens, the court said, but this advance was not obvious to the people in the industry, as was clearly demonstrated in the record; for many years those using the earlier defeathering device had used human hands to make
certain that each portion of the body of the bird was presented to the defeathering fingers, and until this patentee
did it, apparently no one thought that this purpose could be accomplished by inclosing the defeathering device in
an outer shell. There was no evidence that any of these three other machines were ever built in accordance with
the patents thereon or successfully operated, the court added, and it was not for the court to say that because of
paper patents in some other field, it would have been obvious to any expert that the impossible was easily accomplished.
In holding valid the patent upon the design of a small boat high-speed planing hull, the court in Hunt Industries, Inc. v Fibra Boats, Inc. (1969, DC Fla) 299 F Supp 1145, in discussing obviousness, found that five patents
on seaplane floats or pontoons which were submitted by the alleged infringer as evidence of prior art were not
pertinent for a variety of reasons, but primarily because their function was entirely different from that of a highspeed planing boat hull: the pontoons merely softened the impact of the plane in landing or floating on the water, stability was provided by two pontoons or outriggers, and the plane depended on its wings for lift rather than
the planing of the pontoons.
23 A.L.R. Fed. 326
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The court held valid a patent on automatic car-washing equipment in Malsbary Mfg. Co. v Ald, Inc. (1971,
CA7 Ill) 447 F2d 809, noting among the prior art references alleged to show obviousness of the patentee's invention devices used to blow lint off of textile-making machinery. The Court of Appeals said that the trial court had
correctly characterized these patents as "non-analogous," because they were not pertinent at all.
The District Court's holding of invalidity of a patent on a mowing machine whose inventive feature was the
angle at which the cutting tips were bent to allow a self-cleaning effect was reversed in Mott Corp. v Sunflower
Industries, Inc. (1963, CA10 Kan) 314 F2d 872, where the prior art included a British patent on a stationary machine "for cutting sugar cane and the like," a patent relating to a cultivator designed to "uniformly break up" the
ground, and a patent for cutting grass from railroad tracks whose blades were similar to those of the patent in
suit, but which did not "embrace any teaching of the self-cleaning blade principle" as found in the patent in suit.
The trial court had expressly found the claims of this patent invalid for lack of invention and for want of novelty
over the blade disclosed in the prior British patent, on the ground that the latter was not so far divorced from
mowing machines as to be in a nonanalogous art, but the upper court said that whether arts or uses were analogous or nonanalogous depended upon the similarity of their elements and purposes, and held that this invention
was nonobvious under 35 U.S.C.A. § 103, as well as novel. It did not agree with the District Court's conclusion
that the prior art was analogous, noting that the British patent disclosed nothing that would lead to the use of the
blades for the mowing of grass or weeds, since it was a stationary machine, and that the angle of the blades
could not be said to be critical. Further, the court said, in the British patent there was no suggestion of any necessity for self-cleaning of the cutting parts, and that patent could not be said to teach any solution for the bladecleaning problem found in the cutting of grass, as disclosed in the patent in suit.
Cases:
Ashtray design that is novel, original, has genuine artistic merit, and demonstrates creative skill surpassing
routine is not obvious, and design patent on ashtray is valid even though prior art shows ashtrays using some
elements of patented ashtray. Lancaster Colony Corp. v Aldon Accessories, Ltd. (CA2 NY) 506 F2d 1197, 184
USPQ 193.
Diaper patent describing leakage-resistant seal between barrier leg cuff (BLC) material and backsheet at
either proximal or side edge of diaper, with liquid pervious topsheet terminated inside of that seal, was not obvious in light of prior patent disclosing absorbent body fixed to liquid impervious backsheet, with lateral ends of
backsheet folded around absorbent core to form side flaps; prior patent itself neither provided any teaching regarding problem of wicking in unitary, dual-cuffed diaper, nor proposed solution adopted by present patent, and
did not provide any suggestion to person of ordinary skill in the art that it could be combined with other patents.
35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade Brands, Inc., 989 F. Supp. 547 (D. Del. 1997).
Insider knowledge cannot be attributed to public at large, for purpose of determining whether prior art
renders invention obvious. 35 U.S.C.A. § 103. Warner-Lambert Co. v. Teva Pharmaceuticals USA, 289 F. Supp.
2d 515 (D.N.J. 2003).
Art that is not accessible to public generally is not recognized as prior art, for purposes of obviousness inquiry. 35 U.S.C.A. § 103(a). National Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 254 F. Supp. 2d 527 (E.D.
Pa. 2003).
Test of obviousness does not require disclosure of claimed invention in single reference. Rather, obviousness is determined by what prior art as whole would suggest to those with ordinary skill in art. Cardiac Pacemakers, Inc. v Coratomic, Inc. (1982, DC Minn) 535 F Supp 280, 215 USPQ 685, affd (CA8 Minn) 702 F2d 671
.
23 A.L.R. Fed. 326
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Army report having limited distribution to government agencies is not "public information" for prior art purposes. Globe Linings, Inc. v Corvallis (CA9 Or) 555 F2d 727, 194 USPQ 415, cert den 434 US 985, 54 L. Ed.
2d 479, 98 S Ct 611, reh den (US) 54 L. Ed. 2d 805, 98 S Ct 904.
Unpublished documents or private discussions not of common knowledge do not constitute "prior art," for
purpose of patent obviousness determination. 35 U.S.C.A. § 103(a). Chiron Corp. v. Genentech, Inc., 268 F.
Supp. 2d 1126 (E.D. Cal. 2002).
Unlike anticipation, where a single reference must disclose all claim elements, a party asserting obviousness
may rely on the prior art as a whole. Lucent Technologies, Inc. v. Microsoft Corp., 544 F. Supp. 2d 1080 (S.D.
Cal. 2008).
A patent for a device used for cleaning and filling fish aquariums was not invalid for obviousness; even if
prior art had identified various elements of device, elements had never been combined in configuration specified
in patent, device was not obvious to persons of ordinary skill in the art, device was sufficiently differentiated
from prior art, and device was commercial success. Lee's Aquarium & Pet Products, Inc. v Python Pet Products,
Inc. (1997, SD Cal) 951 F Supp 1469.
Claim, in patent for bowling lane maintenance machine, which described transfer means including means
for selectively and independently shifting each of several wicks between two positions was not rendered obvious
by two prior art machines, in view of significant differences between claimed invention and prior art with respect to positioning of solenoids and wicks. 35 U.S.C.A. § 103. Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d
1420, 44 U.S.P.Q.2d (BNA) 1123 (Fed. Cir. 1997).
Process to prepare sulfoalkylated polystrenedivinylbenzene resins was not prima facie obvious, even though
prior art references taught related generic chemical reaction, as mere possibility that modification of reaction
would lead to claimed resins did not make process obvious. In re Brouwer (1996, CA FC) 77 F3d 422, 37 USPQ2d 1663.
Disclosure in prior art of protein's amino acid sequence does not necessarily render particular DNA coding
for protein obvious because genetic code hypothetically permits enormous number of DNA coding sequences for
protein. In re Deuel (1995, CA FC) 51 F3d 1552, 34 USPQ2d 1210.
United States Patent and Trademark Office, Board of Patent Appeals and Interferences, erred in rejecting, as
obvious, claims for process for storing refined liquid hydrocarbon product in storage tanks having dead volume
between tank bottom and its outlet port, which process involved preparing solution that gels after it is placed in
tank's dead volume prior art was not within same field of endeavor as present patent claim and person having ordinary skill in the art would not reasonably have expected to solve problem of dead volume in tanks for storing
refined petroleum by considering reference dealing with plugging underground formation anomalies; prior art
taught use of gel in unconfined and irregular volumes within generally underground natural oil–bearing formations to channel flow in desired direction, while process in question taught introduction of gel to confined dead
volume of man–made storage tank; prior art operated in extreme conditions with petroleum formation temperatures as high as 115 degrees centigrade, while subject patented process operated at ambient temperature and atmospheric pressure; prior art involved extraction of crude petroleum, while subject patented process involved
storage of refined liquid hydrocarbons. Re Clay (1992, CA FC) 966 F2d 656, 23 USPQ2d 1058.
In patent-infringement suit involving protective, wraparound, nonprescription glasses with toric lenses for
athletic wear, previous art asserted to make glasses obvious was not pertinent, as previous art involved prescription and nontoric lenses. Gargoyles, Inc. v United States (1994) 32 Fed Cl 157.
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23 A.L.R. Fed. 326
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§ 10. Effect of ignorance of prior art
An inventor's ignorance of pertinent prior art that might have made short the long path he took to his invention is of no help to him later in defending his independent exercise of the inventive faculty, even though a patent has been issued to him through oversight of that prior art by the Patent Office (supra § 3[c]), when that prior
art is discovered and cited against his invention.[9] In several cases, the courts have considered the fact that a
patentee may not have known of pertinent references as not relevant in determining whether his advance was
evident from the prior art as it stood at the time of invention.
Thus, in Calmar, Inc. v Cook Chemical Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, where a patent
in a related art was not before the Patent Office Examiner—and presumably was unknown to the patentee at the
time of his invention since it was not until later that he adopted it himself—but was discovered after the patent
in suit issued and litigation arose, the court found that the patent in suit rested upon exceedingly small and quite
nontechnical mechanical differences in a device which was old in the art, at the latest rendered apparent by the
appearance of this prior patent in a related art, and said that it was irrelevant that no one apparently chose to
avail himself of knowledge stored in the Patent Office and readily available by the simple expedient of conducting a patent search.
And in Preuss v General Electric Co. (1968, CA2 NY) 392 F2d 29, cert den 393 US 834, 21 L Ed 2d 104,
89 S Ct 105, the court conceded that the patentee did not know of the prior art in FM stereo systems which it
held he had merely updated and upgraded, but ignored this as a factor in holding that the invention "would have
been evident to an engineer of ordinary skill in the radio field" at the time of invention.
In Leach v Rockwood & Co. (1967, DC Wis) 273 F Supp 779, affd (CA7 Wis) 404 F2d 652, it was argued
that a prior patent had never been commercially exploited and was abandoned, and so could not have served to
render obvious the patentee's invention at the time it was made, but the court said that a patent may have lain for
years unheeded and still be as effective to invalidate a new patent as though it had entered the life blood of industry; that, given relevant prior art at the time of invention, it was enough to defeat a patent if from one or more
related prior art patents, one having ordinary skill in the art would find the claimed invention obvious. In applying this test, the court pointed out, it was irrelevant that the inventor might not have been aware of some of the
prior art.
Comment
On the issue of obviousness, the question is not what was or was not obvious to a particular person possessed of
more or less limited knowledge of the prior art, but what would have been obvious to a hypothetical person who
did have knowledge of the prior art. Indiana General Corp. v Krystinel Corp. (1970, CA2 NY) 421 F2d 1023,
cert den 398 US 928, 26 L Ed 2d 91, 90 S Ct 1820.
In other cases determining what would have been obvious to an inventor in light of the prior art, the courts
have held or recognized that the inventor was expected or presumed to know, or was chargeable with knowledge
of, all that the prior art disclosed.
Thus, even the fact that an inventor could not have known, during the processing of his patent, of another
patent application pending, because of Patent Office secrecy requirements, he was still subject to having it cited
against his invention as "prior art" on the issue of obviousness, when that patent issued before his did, the court
held in Hazeltine Research, Inc. v Brenner (1965) 382 US 252, 15 L Ed 2d 304, 86 S Ct 335, reh den 382 US
1000, 15 L Ed 2d 489, 86 S Ct 527, saying that there was no reason to read into 35 U.S.C.A. § 103 a restricted
definition of "prior art" which would lower standards of patentability to such an extent that there might exist two
23 A.L.R. Fed. 326
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patents where Congress had plainly directed that there should be only one.
In holding obvious in the light of the prior art teachings a combination patent on an aquarium filter with
magnetic drive couplings, the court in Metaframe Corp. v Biozonics Corp. (1972, DC Mass) 352 F Supp 1006,
noted that the patentee was charged with knowledge in the pertinent art. The court found that the adaptation of a
magnetic coupling to an aquarium pump would have seemed elementary to one with ordinary skill in the field of
fluid dynamics, and said that the fact that the patentee here had no experience or training in that area did not restrict the test of obviousness which presumed that the inventor would have the ability to select and utilize knowledge from other arts reasonably pertinent to his particular problem.
The plaintiff contended in Sutter Products Co. v Pettibone Mulliken Corp. (1970, CA7 Ill) 428 F2d 639, that
under 35 U.S.C.A. § 103, "prior art" must be confined to matters of public knowledge, but the court disagreed in
holding his invention obvious in light of the prior art. The patentee's argument was that since he had invented his
machine before the filing date of the patent application on a similar machine, he could have had no knowledge
of this other patent applicant's work, and therefore it could not be considered prior art, but the court said that under § 103, an objective standard was to be applied equally to prior art as to the person having ordinary skill in
the art.
In holding obvious the differences between the patent in suit and a reference in the prior art in the form of a
magazine article, the court in Walker v General Motors Corp. (1966, CA9 Cal) 362 F2d 56, pointed out that this
patentee was charged with knowledge of all that the prior art disclosed at the time of his alleged invention, irrespective of whether persons of ordinary skill in the field, or he himself, or anyone else, actually possessed such
all-encompassing familiarity with prior disclosures.
In General Tire & Rubber Co. v Brenner (1967) 127 App DC 102, 381 F2d 270, the court said that it was
elementary that in determining obviousness, information or products publicly available were presumed to have
come to the attention of one skilled in the art. Here, the court went on, where the evidence showed that processes
for utilizing the substance in question had been published prior to the year in which the original patent application was filed, in several scientific journals available to those in the field, the same presumption should prevail.
Proceeding in ignorance of prior art to produce a product which substantially duplicates a patented product
has been recognized as indicating the obviousness of that which was patented.
Thus, in Custom Paper Products Co. v Atlantic Paper Box Co. (1972, CA1 Mass) 469 F2d 178, the court
held invalid the patent on a machine which flared one edge of a cardboard strip. The court agreed with the patentee that the facts that the infringer made its machine without knowledge of the patent, and did so in a relatively short time after it perceived a demand for a flared strip, was not conclusive, but said that on the matter of
obviousness, these circumstances were not irrelevant.
Cases:
Classified military documents, although not prior art because not "public," are evidence of skill possessed
by others in art and show obviousness of patent on target bearing flares for towing behind aircraft. Del Mar Engineering Laboratories v. U. S., 207 Ct. Cl. 815, 524 F.2d 1178, 187 U.S.P.Q. 656 (1975).
Inventor unfamiliar with ethylene oxide sterilizers who was able to study humidity control problems of art
and devise better humidity regulating system applied obvious skill to task and had invalid patent. American Sterilizer Co. v Sybron Corp. (1980, CA3) 205 USPQ 97.
Information preexisting patent that was not available to persons of ordinary skill in the art could not be used
to support claim that patent was obvious. 35 U.S.C.A. § 103. Callaway Golf Co. v. Acushnet Co., 585 F. Supp.
2d 600 (D. Del. 2008).
23 A.L.R. Fed. 326
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Inventor is presumed to know of all applicable prior art, including prior art in analogous fields. Medtronic,
Inc. v Cardiac Pacemakers, Inc. (1983, DC Minn) 555 F Supp 1214, 217 USPQ 885, affd in part and mod in part
on other grounds (CA FC) 721 F2d 1563, 220 USPQ 97.
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§ 11[a] Who is "a person having ordinary skill in the art"—Generally
Since passage of the Patent Act of 1952 denying patentability if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter would have been obvious "to a person
having ordinary skill in the art" to which the subject matter pertains, the United States Supreme Court has not
spoken on the questions of who such a person is, or what constitutes ordinary skill in the art, although requiring
that "the level of ordinary skill in the pertinent art" be resolved in determining obviousness under 35 U.S.C.A. §
103 (§ 7[a], supra). Nor is the level of skill applied by the Supreme Court objectively discernible in its decisions
rendered since enactment of § 103. See § 12, infra.
Nevertheless, a clue as to who such a person is may be found in references by the Supreme Court phrased in
terms of "obvious to a person reasonably skilled" in the art (Calmar, Inc. v Cook Chemical Co. (1966) 383 US 1,
15 L Ed 2d 545, 86 S Ct 684), and of what might be expected of "a person reasonably skilled in the prior art" to
have achieved invention (United States v Adams (1966) 383 US 39, 15 L Ed 2d 572, 86 S Ct 708), or of failure
where "the combination was reasonably obvious" to one with ordinary skill in the art. (Anderson's-Black Rock,
Inc. v Pavement Salvage Co. (1969) 396 US 57, 24 L Ed 2d 258, 90 S Ct 305). A specialized "reasonable man"
emerges, and the level of his skill may usually be inferred by reviewing the prior art, as the Supreme Court has
done in its decisions on obviousness under 35 U.S.C.A. § 103
In several cases, the courts have resolved the question of who might be a person of ordinary skill in the pertinent art, to whom an invention would or would not have been obvious, by an analysis of the evidence of scope
and content of the prior art from which the skill level of this "reasonable man" in the pertinent art may be deduced.
The court pointed out in Formal Fashions, Inc. v Braiman Bows, Inc. (1966, CA2 NY) 369 F2d 536, denying validity to a patent on a universal-size cummerbund depending upon hooks at the ends of the material and
slits for holding them, that the key to the solution of this patent case lay in further definition and application of
the rules for proving the issue of obviousness, the statute itself setting out what might be considered a specialized reasonable man test for obviousness, and the host of decisions construing 35 U.S.C.A. § 103 having further
filled out the characteristics of "a person having ordinary skill in the art to which said subject matter pertains."
The proof on this issue, the court went on, should tend to show what would be obvious to a hypothetical mechanic who, among other things, has the prior art in mind when he endeavors to solve the problem for which the
patent was obtained, the test being objective, not subjective.
Thus, in holding invalid a patent which taught a technique for full-fidelity FM stereo radio which was
monophonically compatible, the court in Preuss v General Electric Co. (1968, CA2 NY) 392 F2d 29, cert den
393 US 834, 21 L Ed 2d 104, 89 S Ct 105, found that the patentee merely updated and upgraded the presently
existing FM stereo systems by adding the already-developed AM sum-and-difference matrixing as disclosed in
the prior art. The statute provides a specialized reasonable man test for obviousness, the court pointed out, and
in the determination of the level of ordinary skill in the art, this reasonable man follows a fortiori from the definition of the scope of the prior art: he is the man with ordinary skill in radio communication. Thus, the court said,
23 A.L.R. Fed. 326
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the question here is what would have been "obvious to a reasonable radio engineer" who, among other things,
had the prior patents in mind when he endeavored to solve the problem of how to achieve monophonic compatibility on FM stereo radio, and held that this patentee's combination of known radio features would have been
obvious.
Objection was made by the patentee in Pullman, Inc. v ACF Industries, Inc. (1968, CA2 NY) 393 F2d 83,
that the District Court, which had held invalid his patent on a freight-car coupler with cushioning effects, had
failed to make a finding as to the level of skill that the person "reasonably skilled in the art" was deemed to
have, arguing that since the patent law used a "specialized reasonable man test for obviousness," an explicit
definition of this man's level of skill was a necessary foundation to a determination of obviousness, but the court
said that while this might be true in some cases, the District Court was correct in concluding that manifestly this
"hypothetical mechanic" would be familiar with the principles of cushioning and with the application of cushioning devices to the protection of the car and its lading.
In a few cases, the courts have relied upon specific persons as exemplifying a person who might be deemed
to have ordinary skill in the pertinent art, in determining whether a particular invention would have been obvious to him.
The patent on a trench-shoring machine which could be used to eliminate the repeated construction of retaining and shoring walls when digging a trench was involved in Shields-Jetco, Inc. v Torti (1970, DC RI) 314 F
Supp 1292, affd (CA1 RI) 436 F2d 1061. The court found in the record no pertinent evidence targeted to the disciplines of persons involved in the trench-shoring art, but said that the ambit of applicable art was certainly limited in this area, and that it was fair to assume that the indicia were the background of the patentee himself, that
is, experience by reason of exposure rather than formalized education. What was accomplished by the patentee
was not a refined difference, the court pointed out, but in his field and setting it was an accomplishment of magnitude that should be so recognized, and the court held the patent valid.
Since the level of "ordinary skill" in a particular art has not usually been defined in writing, the court pointed out in Malsbary Mfg. Co. v Ald, Inc. (1971, CA7 Ill) 447 F2d 809, the usual way of determining such level
is by referring to the subjective reaction of a person thoroughly familiar with the particular art, and if possible,
one who practiced the art at the crucial time in question. The court then noted that the patentee's witness was
thoroughly conversant with the car-wash art with which this patent was involved and had been issued some
dozen patents himself relating to car-washing machinery, whereas the alleged infringer's witness showed his
complete lack of experience in the car-wash art. The testimony of the patentee's witness as to nonobviousness
was entitled to greater weight than that accorded the contrary opinion of the infringer's witness, the court concluded, holding the patent valid.
In Illinois Tool Works, Inc. v Continental Can Co. (1967, DC Ill) 273 F Supp 94, affd (CA7 Ill) 397 F2d
517, the alleged infringer cited as prior art, to prove the obviousness of the plastic cup in suit, its own extensive
developmental activity in plastic container and cup designs conducted by its own engineer for many years. To
the alleged infringer's argument that on the basis of its various developmental activities it was quite apparent
that a person skilled in the art, such as its engineer, would recognize the option of forming a stacker ring as did
this patentee, the court said that the short answer was that the infringer's engineer did not take this step at the
time, leading to the conclusion, in light of his subsequent actions and of his admission that he switched to the
patented design to correct "the one mistake" in his earlier designs, that the step was not apparent to him. Taking
this engineer as a standard for measuring the ordinary skill in the art, the court said, it must be concluded that
this invention was not obvious at the time, and therefore that the patent was not invalid under 35 U.S.C.A. § 103
23 A.L.R. Fed. 326
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Cases:
If an invention is obvious to a layperson, the invention is necessarily obvious to a person of ordinary skill in
the art. 35 U.S.C.A. § 103. Golf Tech, LLC v. Edens Technologies, LLC, 592 F. Supp. 2d 167 (D. Me. 2009).
To determine ordinary skill in the pertinent art, court conducting obviousness analysis may consider the following factors: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art
solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology;
and (6) educational level of active workers in the field. 35 U.S.C.A. § 103. Papyrus Technology Corp. v. New
York Stock Exchange, LLC, 653 F. Supp. 2d 402 (S.D. N.Y. 2009).
In determining what constitutes "ordinary skill in art," court analyzing question of patent obviousness may
consider: (1) types of problems encountered in art; (2) prior art solutions to those problems; (3) rapidity with
which innovations are made; (4) sophistication of technology; and (5) educational level of active workers in
field. 35 U.S.C.A. § 103(a). Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc., 417 F. Supp. 2d 341
(S.D. N.Y. 2006), judgment entered, 2006 WL 618424 (S.D. N.Y. 2006).
Hypothetical "person having ordinary skill in art," for purpose of patent obviousness inquiry, is incapable of
thinking outside of conventional wisdom in art, as it stood at time of claimed invention. 35 U.S.C.A. § 103(a).
Medinol Ltd. v. Guidant Corp., 412 F. Supp. 2d 301 (S.D. N.Y. 2005).
Formal finding of level of skill that person reasonably adept in art would possess is not absolute prerequisite
to ruling patent void for obviousness. Nippon Electric Glass Co. v Sheldon (1982, SD NY) 539 F Supp 542, 217
USPQ 393.
Obviousness is a legal determination, based on findings concerning the so-called Graham factors: (1) the
Hypothetical person having ordinary skill in art refers to problem solver rather than user of solution, and relative to tomato slicing, refers to mechanic familiar with food slicing equipment, rather than to person familiar
with manual tomato slicing, and considering relevant art, patent on tomato slicer is invalid for obviousness. Systematic Tool & Machine Co. v Walter Kidde & Co. (CA3) 193 USPQ 587.
"Person of ordinary skill in art" is theoretical construct used in determining patent validity, and is not descriptive of some particular individual. eSpeed, Inc. v. Brokertec USA, L.L.C., 404 F. Supp. 2d 575, 77
U.S.P.Q.2d (BNA) 1538 (D. Del. 2005).
Ultimate determination of patent obviousness is question of law based on underlying factual inquiries into:
pertinent art; and (4) objective evidence of nonobviousness such as long-felt but unsolved need which invention
addresses, failure of others to formulate invention, and commercial success of invention. 35 U.S.C.A. § 103(a).
Advanced Medical Optics, Inc. v. Alcon, Inc., 361 F. Supp. 2d 404 (D. Del. 2005).
Multiple prior art references do not render patent obvious if they merely pique interest of one of ordinary
23 A.L.R. Fed. 326
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skill in art and make invention obvious to try; rather, to be invalidating, they must suggest to those of ordinary
skill in art that they should make claimed composition or device, or carry out claimed process, and reveal that in
so making or carrying out, those of ordinary skill would have reasonable expectation of success. 35 U.S.C.A. §
103(a). Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 333 F. Supp. 2d 265 (D. Del. 2004).
One of skill in art is presumed to be aware of all prior art in field of invention, for purpose of determining
whether patent is invalid as obvious. 35 U.S.C.A. § 103(a). Applera Corp. v. Micromass UK Ltd., 204 F. Supp.
2d 724 (D. Del. 2002).
When performing analysis of patent validity, decision on issue of obviousness is made from viewpoint of
person of ordinary skill in field of invention; "person of ordinary skill in the art" is hypothetical individual who
is presumed to be aware of all of relevant prior art. 35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade
Brands, Inc., 989 F. Supp. 547 (D. Del. 1997).
It is hypothetical worker in industry who is attempting to solve problems inventor addressed by means of
patented device who determines level of ordinary skill in art. Austin Powder Co. v Atlas Powder Co. (1983, DC
Del) 568 F Supp 1294, 219 USPQ 707, later op (DC Del) 593 F Supp 208, 224 USPQ 159.
In determining level of ordinary skill in art, court must look to hypothetical worker in industry who is attempting to solve problems inventor addressed by means of patented device. General Battery Corp. v Gould, Inc.
(1982, DC Del) 545 F Supp 731, 215 USPQ 1007.
Hypothetical "person of ordinary skill in art," for purposes of patent obviousness analysis, is someone aware
of all pertinent prior art. 35 U.S.C.A. § 103(a). National Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 254 F.
Supp. 2d 527 (E.D. Pa. 2003).
See Ziggity Systems, Inc. v Val Watering Systems (1990, ED Pa) 769 F Supp 752, § 7[a].
In litigation concerning patent for electronic circuit board connector, absence of evidence as to relevant
level of skill in pertinent art precluded summary judgment for defendant on ground that connector was obvious.
AMP, Inc. v Fujitsu Microelectronics (1994, MD Pa) 853 F Supp 808, 31 USPQ2d 1705, digest op at (MD Pa)
17 PLW 264.
Patent obviousness, which is question of law based on underlying factual underpinnings, is determined from
perspective of person of ordinary skill in relevant field; this hypothetical person is presumed to have knowledge
of all relevant prior art. Geneva Pharmaceuticals, Inc. v. Glaxosmithkline PLC., 213 F. Supp. 2d 597 (E.D. Va.
2002).
Improvements in drill placement and drilling techniques in forming "raises" are within skill of mining engineer and obvious from similar prior art methods, so that patent is invalid; mining engineering degree and experience in art are standard for level of skill in art of boring "raises" so that patent differing in minor mechanical
ways from prior art is invalid as obvious. Robbins Co. v Dresser Industries, Inc. (CA5 Tex) 554 F2d 1289, 194
USPQ 409.
See Sadlar-Cisar, Inc. v Commercial Sales Network, Inc. (1991, ND Ohio) 786 F Supp 1287, § 7[a].
Obviousness is measured not by determining what would have been obvious to actual artisans, but by con-
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sidering whether hypothetical person, possessing reasonable skills in pertinent art and knowledge of all prior art,
would have found same solution when addressing himself to same problem. Roberts v Sears, Roebuck & Co.
(1983, CA7 Ill) 723 F2d 1324, 221 USPQ 504.
Usual way of determining "level of ordinary skill" in particular art is by referring to subjective reaction of
person thoroughly familiar with particular art and, if possible, one who practiced art at crucial time in question.
Paper Converting Machine Co. v Magna-Graphics Corp. (1982, CA7 Wis) 680 F2d 483.
Trial court properly found that ordinary level of skill in art of machines for cleaning soaking pits for steel
mills involves mechanical engineering skill or experience in designing hydraulic equipment for cleaning soaking
pits, and court properly relied on testimony of mechanical engineering experts not specifically familiar with
soaking pits in finding patents invalid for obviousness. Louis A. Grant, Inc. v Keibler Industries, Inc. (CA7) 191
USPQ 424.
When examining the level of ordinary skill in the field of the invention, court, in making obviousness determination in patent case, looks at factors such as educational level of the inventor, educational level of those
who work in the industry which manufactures the invention, and the sophistication of the technology involved.
35 U.S.C.A. § 103(a). Zimmer Technology, Inc. v. Howmedica Osteonics Corp., 453 F. Supp. 2d 1030 (N.D.
Ind. 2006).
"Person of ordinary skill in art," for purpose of patent obviousness analysis, is objective legal construct who
is presumed to be aware of all relevant prior art; such person is not deemed to be innovator, but rather he is presumed to think along lines of conventional wisdom in art. 35 U.S.C.A. § 103(a). Eli Lilly and Co. v. Zenith
Goldline Pharmaceuticals, Inc., 364 F. Supp. 2d 820 (S.D. Ind. 2005).
Although obviousness is a legal conclusion, it requires underlying factual inquiries that include: (1) the
scope and content of the prior art; (2) the differences between the prior art and the patent claims at issue; (3) the
level of ordinary skill in the art at the time the invention was made; and (4) any objective evidence of nonobviousness. 35 U.S.C.A. § 102(b). Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005).
357 F. Supp. 2d 1105 (S.D. Iowa 2005).
2d 1009 (D. Neb. 2003).
(C.D. Cal. 2005).
One of ordinary skill in art, for purposes of obviousness inquiry, is presumed to know all pertinent prior art.
35 U.S.C.A. § 103(a). Wesley Jessen Corp. v. Coopervision, Inc., 207 F. Supp. 2d 1103 (C.D. Cal. 2002).
23 A.L.R. Fed. 326
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(N.D. Cal. 2005).
Obviousness is a question of law in patent case to be determined based on the following factual considerations: (1) scope of the prior art; (2) differences between the prior art and the claims at issue, and (3) level of ordinary skill in the pertinent art. 35 U.S.C.A. § 103(a). Storage Technology Corp. v. Quantum Corp., 370 F.
Supp. 2d 1116 (D. Colo. 2005).
and content of prior art; (2) differences between prior art and claims at issue; (3) level of ordinary skill in pertinent art; and (4) evaluation of any relevant secondary considerations. 35 U.S.C.A. § 103. Princeton Biochemicals,
USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005).
Ultimate determination of whether invention is unpatentable as obvious is legal conclusion based on underlying factual inquiries into: (1) scope and content of prior art; (2) level of ordinary skill in prior art; and (3) differences between claimed invention and prior art. 35 U.S.C.A. § 103(a). Velander v. Garner, 348 F.3d 1359, 68
U.S.P.Q.2d (BNA) 1769 (Fed. Cir. 2003).
Obviousness is determined entirely with reference to hypothetical "person having ordinary skill in the art,"
and actual skill of inventors or patentees is irrelevant while person of ordinary skill is presumed to be one who
thinks along lines of conventional wisdom in art and is not one who undertakes to innovate. Standard Oil Co. v
American Cyanamid Co. (1985, CA FC) 774 F2d 448, 227 USPQ 293.
Factors that may be considered in determining level of ordinary skill in art include educational level of inventor, type of problems encountered in art, prior art solutions to those problems, rapidity with which inovations
are made, sophistication of technology, and educational level of active workers in field. Environmental Designs,
Ltd. v Union Oil Co. (1983, CA FC) 713 F2d 693, 218 USPQ 865, cert den (US) 79 L Ed 2d 173, 104 S Ct 709.
Overruling holding in Application of Laverne (1966) 53 CCPA 1158, 356 F2d 1003, 148 USPQ 674
(disagreed with Sidewinder Marine, Inc. v Starbuck Kustom Boats & Products, Inc. (CA10 Colo) 597 F2d 201,
202 USPQ 356), that statutory language "one of ordinary skill in the art" was to be interpreted as meaning "ordinary intelligent man," court held that obviousness of designs over prior art must be tested from viewpoint of "ordinary designer." Re Nalbandian (1981, Cust & Pat App) 661 F2d 1214, 211 USPQ 782.
the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of non-obviousness. 35 U.S.C.A. § 103(a). Paymaster Technologies, Inc. v. U.S., 61 Fed. Cl. 593 (2004).
23 A.L.R. Fed. 326
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§ 11[b] Who is "a person having ordinary skill in the art"—Illustrative cases
In a number of cases, the courts have resolved the question of who might be deemed a person having ordinary skill in the pertinent art, to whom an "invention" would or would not have been obvious, by inferring the
general level of his skill from an analysis of the evidence as to scope and content of the prior art.
The patent on a stereotype mat used in the casting of the metal cylindrical rolls of a printing press was before the court in Burgess Cellulose Co. v Wood Flong Corp. (1970, CA2 NY) 431 F2d 505, the court finding
that the old diatomaceous earth-filled mats for presses and their deficiencies were well known in the art, as was
the fact that synthetic precipitated silicates possess superior qualities over diatomaceous earth in precisely those
characteristics which would yield a better stereotype mat. The inclusion of synthetic silicates with known superior qualities as a substitute for diatomaceous earth, in the well-known procedure for making sterotype mats, was
merely to conduct experimentation on the level of ordinary skill in the art, the court added, and did not meet the
stringent test of nonobviousness that was to be applied to patents on combinations of materials.
In considering patents relating to the lamination of a polyurethane foam to fabric by the use of flame heat,
the court in Reeves Bros., Inc. v U. S. Laminating Corp. (1968, DC NY) 282 F Supp 118, affd (CA2 NY) 417
F2d 869, said that it was necessary at the outset to determine in general what art was involved in the subject
matter of the patents, and the level of ordinary skill pertaining in that art. Because polyurethane foam was a
plastic material, the court continued, it was logical to assume that laminators of other plastic material would be
interested in developing a laminate of polyurethane foam and fabric, and that manufacturers of such foam and
plastic laminators would therefore be classified as persons skilled in the art. It was difficult to determine with
preciseness what was the level of ordinary skill pertinent to the art above defined at the time of invention, the
court went on, the art of laminating polyurethane foam having just come into existence, but the level of skill in
the art must be measured in the framework of reference to the art of plastic lamination and the manufacture of
polyurethane foam. Thus, the court said, a man of ordinary skill in the pertinent art would be a person with a scientific or engineering background and a practical knowledge of the chemical and physical properties of plastics,
including plastic lamination processes, and some elementary knowledge of thermodynamics and heat-transfer
principles, and while his knowledge of polyurethane foam might not be as extensive as his knowledge of other
plastics, he would have a working knowledge of its properties. Against this background, the court held the patent invalid for obviousness under 35 U.S.C.A. § 103, saying that there was no infallible blueprint for the purpose
of determining, ex post facto, whether an invention would have been obvious to the hypothetical person skilled
in the art, for one was required to look backward in order to look forward, and the concept here involved the
substitution of a new material with some different characteristics for old materials in the art of heat lamination
of thermoplastics, but that in this case one would conclude that a person skilled in the art would not have to call
upon his inventive facilities to make the simple experiment of attempting to flame-laminate polyurethane foam
to fabric, and thus to solve the problem.
Thus, in Blohm & Voss AG v Prudential-Grace Lines, Inc. (1973, CA4 Md) 489 F2d 231, cert den (US) 42
L Ed 2d 67, 95 S Ct 70, which involved the patent on a ship's cargo loading gear, the court noted that the Supreme Court had not resolved the issue of ordinary skill in its decisions nor had many lower court decisions, and
yet it was of the opinion that its discussion of the pertinent prior art had, perhaps by comparison, made the level
clear, the matter being one which did not otherwise easily lend itself to specific articulation, and being necessarily related to the inquiry of the scope and content of the prior art. The court stated that regardless of what the hy-
23 A.L.R. Fed. 326
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pothetical man skilled in the art was presumed to know, the evidence before the lower court revealed that the
level of ordinary skill in naval architecture was high, it being a recognized specialty in the field of design and
engineering, and that the field of naval architecture, which included the design of ship's cargo gear, was a specific area of engineering specialization in which a considerable degree of expertise was not uncommon. Consequently, the court concluded, this invention would have been obvious to one of ordinary skill in the art, and
the patent was invalid.
The court in Antici v KBH Corp. (1971, DC Miss) 324 F Supp 236, affd (CA5 Miss) 455 F2d 607, found
that the prior art in trailer hitches was not of a high level, in considering the patent on an automatic latching,
spring-loaded trailer hitch for mounting on the rear bumper of a towing vehicle. The prior art directly and narrowly pertinent to this patent was relatively limited in scope and content, thereby broadening the range open for
invention within that specific area, the court pointed out, and this fact indicated that the prior art, which consisted of some 11 patents, must have been created by persons of relatively limited mechanical training, such as
clever farmers or welders, rather than by professional, scientifically trained experts, such as might normally be
expected to invent a chemical process. The person of average skill in the art is neither a genius nor an expert, the
court stated, and he is not expected to think entirely in terms of theoretical, physical principles, but is much
more likely to be motivated by more mundane considerations, such as a practical, functional use of the prior art
devices, particularly in a field such as trailer hitches. Moreover, the court said, the level of skill of the average
mechanic should not be equated with that of the inventors of the prior art patents, for their skill, since it was
thought worthy of a patent, must be considered greater than that of the average mechanic in the field. The court
concluded that this patentee's combination would not have been obvious to an expert in the field, even less so to
a person of only ordinary skill in the art, and that the patent was valid.
The court in Eisele v St. Amour (1970, CA6 Mich) 423 F2d 135, pointed out that to any layman a "hole location and concentricity gauge" having a stationary dial was an intricate and sophisticated piece of equipment,
and was not by any means a device which would be termed "obvious" in the ordinary understanding of that term.
Thus, the court said, the term "obvious" has a distinctly special meaning in the patent law, where it means obvious "to a person having ordinary skill in the art," and this is of importance in determining what would have been
obvious in developing such a patent as this. After reviewing the prior art, the court found that the improvement
of this patent was a relatively simple change to make for an inventor in this field, when requested to eliminate
the problem in prior gauges, and held that it was obvious.
The court devoted particular attention to who was a hypothetical person having ordinary skill in the art with
which it was concerned, in Erie Technological Products, Inc. v Die Craft Metal Products, Inc. (1972, CA7 Ill)
461 F2d 5, and stated that in determining the level of ordinary skill in a particular case, it was appropriate to ask
first whether there was any substantial body of people who devoted regular and substantial effort to solving the
type of problem which the alleged invention solved, and if so, to determine the level of ordinary skill of the
people in that group. The court found from the evidence that there were a number of people in several commercial organizations who devoted their efforts to solving the type of problem with which this patent dealt, and that
such persons had bachelor's degrees in electrical or mechanical engineering, and practical experience of several
years. When such a person of ordinary skill was confronted with the problem which this patent solved, the court
concluded, it would have been obvious to him to apply the patentee's method to solve the problem.
In determining that the patentee's "thermal break" window and door frames were obvious within the purview
of 35 U.S.C.A. § 103, the court said in Flour City Architectural Metals v Alpana Aluminum Products, Inc.
(1972, CA8 Minn) 454 F2d 98, that it was called upon to measure the knowledge of one ordinarily skilled in the
art of making such frames. The court stated that it did not measure the knowledge of any particular person or of
any particular expert who might testify in the case, but rather, measured the knowledge of a hypothetical person
skilled in the art who had thought about the subject matter of the patented invention in the light of that art. It
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concluded that this inventor's changes over the prior art represented only matters of form or design without
change of functions, and that such changes represented no more than a choice of design which, in the absence of
any new or unobvious result, fell within the ken of one having ordinary skill in the art.
The court in Remington Arms Co. v Herter's, Inc. (1970, DC Minn) 324 F Supp 760, held invalid a patent
on a power piston wad for shotgun shells, finding it obvious in light of the prior art. The court noted that the
only evidence in the record concerning the level of skill in the art consisted of the qualifications of the experts
who testified at trial or were deposed, but found that this evidence was sufficient to show that the field of ballistics, more specifically the field of designing shotgun shell components, was quite sophisticated. The expert witnesses who testified at trial all showed a high degree of learning in all phases of ballistics, and the patentee
maintained a research department where staff personnel continuously worked on ballistics developments, the
court noted, concluding that the field of designing components for shotgun shells was a highly skilled art.
In design patent cases, the court said in Schwinn Bicycle Co. v Goodyear Tire & Rubber Co. (1970, CA9
Cal) 444 F2d 295, there has been some confusion as to the appropriate method of determining the level of ordinary skill in the art, this case involving infringement of a design patent on bicycle seats. The court found the
design obvious, basing its decision on the view that the pertinent inquiry in such cases was not the "expected
skill of a competent designer," but was a determination of "obviousness to the ordinary intelligent man."
A question has sometimes been raised as to the competence of the trial judge to have ascertained the level of
skill in the pertinent art without expert testimony or other evidence directed to the issue of who was a person
having ordinary skill in the pertinent art. In cases where the scope and content of the prior art were clear, such
evidence has been held unnecessary to a proper determination of what would have been obvious to such a person
at the time of invention.
Holding as a matter of law that the patent in suit was invalid for obviousness, the court in Ken Wire & Metal Products, Inc. v Columbia Broadcasting Systems, Inc. (1971, DC NY) 338 F Supp 624, affd (CA2 NY) 464
F2d 1393, said that in cases such as this where the patented device was quite simple and very easily understood,
the court did not need expert testimony in order to make the necessary findings as to the scope and content of the
prior art and the level of ordinary skill in the industry, and that summary judgment was an appropriate form of
relief.
Although the alleged infringer in Speakman Co. v Water Saver Faucet Co. (1973, DC Ill) 358 F Supp 1314,
affd (CA7 Ill) 497 F2d 410, did not prove obviousness or the state of the art by expert testimony or by any individual who was personally working in the field of the patent at the time of invention, the court nevertheless held
the patent invalid. It pointed out that plaintiff had not contended that any such affirmative evidence was necessary, and said that it saw no logical reason to require it so long as the prior art was a matter of public record and
published documents, as it was in this case. The patentee's device, the court said, when considered in light of the
prior art available to the court, was merely an obvious combination of old elements, the prior art not only teaching every feature in the claims but how to combine them to achieve the patentee's result. The court concluded
that, given the nature of the prior art, the plaintiff's device would have been obvious to a person having ordinary
skill in the art at the time the invention was made.
In Walker v General Motors Corp. (1966, CA9 Cal) 362 F2d 56, the court affirmed the grant of summary
judgment holding invalid the patent on a method for placing a gasoline tank in the fender of an automobile, rejecting the patentee's contention that the defense of obviousness under 35 U.S.C.A. § 103 could never be resolved against a patent on a motion for summary judgment, because obviousness was a factual matter. The court
noted that the patentee did not dispute the fact that a certain published article on a French design was prior art as
to his patent, and that the structure disclosed in another reference was simple, requiring no explanation, the only
difference relied upon by the patentee between the tank disclosed in that reference and his claims being that his
tank was separate from the fender. Thus, the court said, the only possible issue of fact was the level of ordinary
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skill of persons engaged in the art, for if this difference would have been obvious to a person of ordinary skill in
the art, summary judgment was proper without regard to whether other relevant prior art existed in addition to
this publication, but this was not a real issue, for it was not subject to serious doubt that if the ordinary skill possessed by persons engaged in the design of automobiles at the time of this patentee's "invention" was postulated
at the minimum conceivable level, his separate tank structure would have suggested itself as a possible solution
to a person possessing such skill who was given the French single-unit design and told to alter it in such a way
as to provide additional protection against possible puncture of the tank by stones striking the fender, and to
provide greater accessibility for repair.
Caution
A District Court judge is not a person having ordinary skill in the art, and he commits reversible error when he
states as the standard for determining obviousness that the patented subject matter was obvious to the court, and
that what was obvious to an ordinary person must have been obvious to a person having ordinary skill in the art.
Buzzelli v Minnesota Mining & Mfg. Co. (1973, CA6 Mich) 480 F2d 541.
Cases:
Evaluating obviousness of patent in terms of skill of designer of self-transit concrete mixers instead of skill
of ordinary mechanic familiar with design of concrete mixers was unduly restrictive and finding that patent on
forward delivery transit mixer was valid based on such evaluation would be reversed. Sims v. Mack Truck
Corp., 608 F.2d 87, 203 U.S.P.Q. (BNA) 961 (3d Cir. 1979).
In action brought to determine validity of patents for manufacturing automotive batteries, patent lawyer,
with no experience in battery manufacture, could not be considered person skilled in art for purposes of expert
testimony. General Battery Corp. v Gould, Inc. (1982, DC Del) 545 F Supp 731, 215 USPQ 1007.
Prolonged shelf life obtained from packaging sausage rapidly while meat is still warm is within skill of ordinary worker who can establish claimed time limits and temperatures from prior art suggestions for rapid processing of sausage. Bird Provision Co. v Owens Country Sausage, Inc. (CA5 Tex) 568 F2d 369, 197 USPQ 134.
For purposes of § 103 with respect to patent for balloon dilatation catheter used to treat coronary artery disease, person of ordinary skill in art was practicing interventional cardiologist rather than engineer or physician
skilled in design of dilatation catheters. Schneider (Europe) AG v. SciMed Life Systems, Inc., 852 F. Supp. 813
(D. Minn. 1994).
Person having ordinary level of skill in the art of flow meter design was hypothetical person with undergraduate degree in engineering that had minimum of three years of experience in and familiarity with such
design, for purpose of determining whether patent was invalid as obvious, in patent holders' action against competitors, alleging that competitors were selling infringing volume flow meter. 35 U.S.C.A. § 103(a). Tokyo
Keiso Co., Ltd. v. SMC Corp., 533 F. Supp. 2d 1047 (C.D. Cal. 2007).
For purposes of determining obviousness of patent claims disclosing a process for dyeing textile materials
with catalytically hydrogenated leuco indigo, person of ordinary skill in the art was a person designing an optimal textile dyeing process with some expertise in chemistry. 35 U.S.C.A. § 103(a). DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006).
In patent infringement action in which alleged infringer defended on ground that patented blasting agent
was invalid for obviousness within meaning of 35 U.S.C.A. § 103, which provides that patent should not issue if
differences between claimed invention and prior art are such that invention as whole would have been obvious
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to one of ordinary skill in art at time invention was made, trial court properly found that person of ordinary skill
in art would be one skilled in art of explosives formulation, having knowledge of and experience with chemical
and physical properties of explosives, should be chemist or chemical engineer with at least bachelor's degree and
several years of practical experience, and should also have working knowledge of principles of emulsion chemistry as applied to explosives formulation. Atlas Powder Co. v E. I. Du Pont de Nemours & Co. (1984, CA FC)
750 F2d 1569, 224 USPQ 409.
Proper test for obviousness of design is knowledge of ordinary designer and extends to contemporary
designs analogous to claimed coffee table of contemporary styling. In re Rosen, 673 F.2d 388, 213 U.S.P.Q.
(BNA) 347 (C.C.P.A. 1982).
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III. Particular indicia of nonobviousness
A. Technical considerations
§ 12. Generally; Supreme Court cases
The recent decisions of the United States Supreme Court dealing with obviousness in patent cases have been
based entirely upon the technical and technological nature of the invention in suit, rather than upon secondary
considerations (see §§ 20 et seq., infra) reflecting the economic and motivational factors surrounding the origin
of the subject matter of the invention.
In Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, the Supreme Court stated that
neither the Fifth Circuit, which had held the patent valid under its rule that when a combination produces an "old
result in a cheaper and otherwise more advantageous way," it was patentable, nor the Eighth Circuit, which had
held the patent invalid because there was no new result in the patented combination, had applied the correct test,
but that this patent on a combination of elements of prior art in a flexing plowshank was invalid on the ground of
obviousness under 35 U.S.C.A. § 103 The court found no nonobvious facets in the particular arrangement, and
held that the mere shifting of the wear point to the heel of the hinge plate from the stirrup of prior art—itself a
part of the hinge plate—presented no operative mechanical distinctions, much less nonobvious differences.
A similar technical determination of the obviousness of a combination patent was made in Calmar, Inc. v
Cook Chemical Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, where the court held invalid the patent on a
finger-operated pump sprayer with a hold-down plastic overcap, the Court of Appeals having affirmed a finding
of validity in the novel "marriage" of the sprayer with an insecticide container which took years in discovery,
and in "the immediate commercial success" which the device enjoyed, although noting that the individual elements of the invention were "not novel per se." The Supreme Court noted that after a series of rejections and
new submissions to the Patent Office the claim showed reliance entirely upon the sealing arrangement as the exclusive patentable difference in the combination, and that on the latter feature the Examiner allowed the claims,
but the court found itself at a loss to explain the Examiner's allowance on the basis of such a distinction. The
court noted the secondary indicia of invention, but concluded that these factors did not, in the circumstances of
this case, tip the scales of patentability in favor of the invention, as limited by the Patent Office and accepted by
the patentee, which rested upon exceedingly small and quite nontechnical mechanical differences in a device
which was old in the art, and that the claims in issue "must fall as not meeting the test of [35 U.S.C.A.] § 103,"
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since the differences between them and the pertinent prior art would have been obvious to a person reasonably
skilled in that art.
In the latest case in which the Supreme Court considered the statutory test of obviousness of subject matter
as affecting its patentability, Anderson's-Black Rock, Inc. v Pavement Salvage Co. (1969) 396 US 57, 24 L Ed
2d 258, 90 S Ct 305, it held invalid the patent issued upon a combination of prior art which produced the allegedly new and useful result of eliminating a "cold joint" in paving with bituminous concrete, commonly called
asphalt or "blacktop." This is often laid in strips and the first strip laid usually has cooled by the time the adjoining strip is to be laid, creating what is known as a cold joint which results in poor bonding between the strips.
The patentee in this case sought to solve the problem of the cold joint by combining on one chassis a radiant
heat burner for heating the exposed edge of the cold strip of pavement, a spreader for placing the bituminous
material, and a tamper and screed for shaping the newly placed material. The court pointed out that the use of a
radiant heat burner in working asphalt pavement dated back to a patent issued in 1905 and that the placement of
the radiant heat burner upon the side of a standard bituminous paver was the central feature of this patent, the
heater being used in this way for a continuous paving along a strip to prevent a cold joint, whereas previously
radiant heat burners had been used merely for patching limited areas of asphalt. The District Court found that all
that the patentee had done was to construct four elements known in the prior art on one chassis, and the Supreme
Court agreed, saying that this was relevant to commercial success, not to invention, and pointing out that the
claim of unobviousness was based largely on the testimony of two experts who were doubtful that radiant heat
would solve the problem of the cold joint. Radiant heat was old in the art, however, the court said, and the question of invention must turn on whether the combination supplied the key requirement, finding that the combination here was reasonably obvious to one with ordinary skill in the art. The convenience of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce "a
new or different function," within the test of validity of combination patents, the court said, and while a combination of elements may result in an effect greater than the sum of the several effects taken separately, no such
synergistic result was argued here, but it was fervently argued that the combination filled a long-felt want and
had enjoyed commercial success. Those matters without invention will not make patentability, the court pointed
out, holding that the combination here was useful but lacked novelty, and further that to those skilled in the art
the use of the old elements in combination was not an invention by the obvious-nonobvious standard, use of the
radiant burner in this field marking a successful venture, but more than that being needed for invention.
What technical considerations, then, may be indicia of nonobviousness of a combination patent in the Supreme Court's view? On the basis of the only case under the Patent Act of 1952 in which that court held the patent valid, it would appear that such indicia may be found, although certainly not exclusively, in prior art teaching away from the invention (§ 13, infra), in the skepticism of experts (§ 14, infra), in the recognition by experts
(§ 15, infra), and in a lack of prior art references to be cited against the invention (§ 16, infra).
Thus, in United States v Adams (1966) 383 US 39, 15 L Ed 2d 572, 86 S Ct 708, the Supreme Court held
valid and infringed the patent on a wet battery developed by the patentee in his home where his experiments
showed that when cuprous chloride and magnesium were used as electrodes in an electrolyte of either plain or
salt water, an improved battery resulted. Adams' invention, the court said, was the first practical, constant potential battery which could be fabricated and stored indefinitely without any fluid, but it was activated within 30
minutes merely by adding water, and once activated, the battery continued to deliver electricity at a voltage
which remained essentially constant regardless of the rate at which current was withdrawn, its capacity for generating current, furthermore, being exceptionally large in comparison to its size and weight. The court noted that
the application for a patent was filed in 1941 and issued in 1943, but that less than a month after filing the patentee brought his discovery to the attention of the Army and Navy, which "did not believe the battery was workable." However, at the height of World War II, the Army's Signal Corps concluded that the battery was feasible
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and the government entered into contracts with various battery companies for its procurement, but did not notify
the patentee of its changed views nor of the use to which it was putting his device, and Adams' subsequent request for compensation resulted in this action. The Adams battery, the court went on, was shown to embrace elements having an interdependent functional relationship, and it begged the question to state, as did the government, that magnesium and cuprous chloride were individually known battery components because, if such a
combination was novel, the issue was whether bringing them together as taught by Adams was obvious in the
light of the prior art. The Supreme Court resolved the issues of novelty and utility in favor of patentability, saying that "the operating characteristics of the Adams battery have been shown to have been unexpected and to
have far surpassed then-existing wet batteries," and the court then resolved the issue of obviousness in favor of
validity, pointing out that despite the fact that each of the elements of the Adams battery was well known in the
prior art, "to combine them as did Adams" required that a person reasonably skilled in the prior art must ignore
that (1) batteries which continue to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use
of magnesium. These long-accepted factors, when taken together, the court said, would deter any investigation
into such a combination as was used by this patentee, and while this was not to say that one who merely found
new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovered a patentable innovation, it was plain that known disadvantages in old devices which would naturally discourage the search for
new inventions might be taken into account in determining obviousness. As bearing on the question of the obviousness of the invention, the court also pointed out that noted experts had expressed disbelief in the invention,
that several of the same experts subsequently recognized the significance of the invention and some even patented improvements on the same system, and that in a crowded art replete with a century and a half of advancement the Patent Office found not one reference to cite against the Adams application.
Cases:
The United States Supreme Court in KSR Intern. Co. v. Teleflex Inc., 127 S. Ct. 1727, 167 L. Ed. 2d 705,
82 U.S.P.Q.2d 1385 (U.S. 2007), determined that the Court of Appeals for the Federal Circuit in Teleflex, Inc. v.
KSR Intern. Co., 119 Fed. Appx. 282 (Fed. Cir. 2005), cert. granted, 126 S. Ct. 2965, 165 L. Ed. 2d 949 (U.S.
2006) and judgment rev'd, 127 S. Ct. 1727, 167 L. Ed. 2d 705, 82 U.S.P.Q.2d 1385 (U.S. 2007), applied the
"teaching-suggestion-motivation" test for determining whether a claimed invention was obvious in a narrow, rigid manner, when the Court of Appeals decided that there were fact issues as to the obviousness of a patent entitled "Adjustable Pedal Assembly With Electronic Throttle Control." Applying the correct analysis, the Supreme Court further determined that the patent at issue was obvious. The patent owner sued a competitor for infringement of the patent. Claim 4 of the patent described a mechanism for combining an electronic sensor with
an adjustable automobile gas pedal so that the pedal's position could be transmitted to a computer that controlled
the throttle in the vehicle's engine. When the patent owner accused the competitor of infringing the patent by
adding an electronic sensor to one of the competitor's previously designed pedals, the competitor countered that
claim 4 was invalid under the Patent Act, 35 U.S.C.A. § 103, because its subject matter was obvious. Section
103 forbids issuance of a patent when "the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art to which said subject matter pertains." The Court of Appeals applied
the "teaching, suggestion, or motivation" test (TSM test), under which a patent claim is only proved obvious if
some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the
problem, or the knowledge of a person having ordinary skill in the art. Writing for a unanimous Supreme Court,
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Justice Kennedy rejected the "rigid" approach of the Court of Appeals. He said that the Supreme Court's cases
have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied the
TSM test in this case. When a work is available in one field of endeavor, design incentives and other market
forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been
used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her
skill. Often, Justice Kennedy said, it will be necessary for a court making this inquiry to look to interrelated
teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. The analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in
the art would employ. The first error of the Court of Appeals in this case was holding that courts and patent examiners should look only to the problem the patentee was trying to solve. The second error lay in the Court of
Appeals' assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. The Court of Appeals erroneously concluded that a patent
claim cannot be proved obvious merely by showing that the combination of elements was obvious to try. Finally,
the Court of Appeals drew the wrong conclusion from the risk of courts and patent examiners falling prey to
hindsight bias. Although a factfinder should be aware of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning, rigid preventative rules that deny factfinders recourse to common sense are neither necessary under our case law nor consistent with it. Applying the standards he had articulated, Justice Kennedy concluded that claim 4 was obvious. He saw little difference between the teachings of
two prior patents and the adjustable electronic pedal disclosed in claim 4. A person having ordinary skill in the
art could have combined one of the patents with a pedal position sensor in a fashion encompassed by claim 4,
and would have seen the benefits of doing so. The Court of Appeals considered the issue too narrowly by, in effect, asking whether a pedal designer writing on a blank slate would have chosen both a certain prior patent and
a modular sensor similar to the ones used in a Chevrolet truckline and disclosed in another patent. The proper
question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by
developments in the field of endeavor, would have seen a benefit to upgrading the patent with a sensor. In automotive design, as in many other fields, the interaction of multiple components means that changing one component often requires the others to be modified as well. Technological developments made it clear that engines using computer-controlled throttles would become standard. As a result, designers might have decided to design
new pedals from scratch; but they also would have had reason to make pre-existing pedals work with the new
engines.
In determining whether invention is invalid for obviousness, courts are to consider (1) the scope and content
of prior art, (2) the level of skill in the art, (3) the differences between prior art and the claimed subject matter as
a whole, and (4) secondary considerations, or objective indicia of nonobviousness like commercial success,
long–felt but unsolved needs, or failure of others to meet those needs. 35 U.S.C.A. § 103(a). North American Oil
Co., Inc. v. Star Brite Distributing, Inc., 148 F. Supp. 2d 1351 (N.D. Ga. 2001).
Patentability may be barred by anticipation if the device used in public includes every limitation of the later
claimed invention, or by obviousness if the differences between the claimed invention and the device used
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would have been obvious to one of ordinary skill in the art. 35 U.S.C.A. § 102(b). Netscape Communications
Corp. v. Konrad, 295 F.3d 1315 (Fed. Cir. 2002).
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[END OF SUPPLEMENT]
§ 13. Prior art teaching away from invention
The indicia of nonobviousness most strongly emphasized by the United States Supreme Court in holding a
patent valid (in the Adams Case (1966) 383 US 39, 15 L Ed 2d 572, 86 S Ct 708, supra § 12) was that the patentee had to ignore the prior art teaching in order to achieve his result. This consideration has been recognized
by the lower federal courts in several cases in which prior art teachings away from the invention in suit were
held to be indicia of the fact that the subject matter as a whole would not have been obvious at the time of invention to a person having ordinary skill in the art.Second Circuit
Corporate Communications Consultants, Inc. v Columbia Pictures Industries, Inc. (1983, SD NY) 576 F
Supp 1429, 221 USPQ 883
Thus, in Shaw v E. B. & A. C. Whiting Co. (1969, CA2 Vt) 417 F2d 1097, cert den 397 US 1076, 25 L Ed
2d 811, 90 S Ct 1518, reh den 398 US 954, 26 L Ed 2d 298, 90 S Ct 1866, the judgment of the trial court holding invalid the patent on a filament particularly adapted for use as brush bristles, on the ground of obviousness,
was reversed, the court saying that the disclosures of the prior art used by the trial court to negate validity
demonstrated that if a particular patent were taken at face value, this patentee's filament could not be produced.
Rather than serving to point the way to innovation, the court said, that prior patentee's teachings would tend to
discourage one skilled in the art from investigating the methods ultimately used by this patentee to achieve production of an improved polymer filament, and known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.
Holding valid the patent on a coupling and rod system for rock drills, the court in Ingersoll-Rand Co. v
Brunner & Lay, Inc. (1973, CA5 Fla) 474 F2d 491, reh den (CA5 Fla) 474 F2d 1347, cert den 414 US 865, 38 L
Ed 2d 117, 94 S Ct 125, noted that to add the novelty of full-length threading, as these patentees did, required
that a person ordinarily skilled in the prior art must ignore that most rod failures occurred in the threaded sections, and that the design of a rod with threads throughout its length would probably aggravate rather than lessen
its tendency to fail in heavy use. Such a known disadvantage in old devices that would naturally discourage the
search for a new invention in this direction, the court stated, is a reliable indicator of nonobviousness.
Where the court held the patent on a unique business-form envelope valid, in Uarco, Inc. v Moore Business
Forms, Inc. (1971, CA7 Ill) 440 F2d 580, cert den 404 US 873, 30 L Ed 2d 117, 92 S Ct 91, reh den 404 US
961, 30 L Ed 2d 279, 92 S Ct 307, it pointed out that portions of both of the most pertinent business forms in the
prior art would have had to be discarded in order to produce a result similar to this patentee's, and said that
where parts of prior art devices must be discarded in order to get to the patented invention, then such prior art
does not make the invention obvious under 35 U.S.C.A. § 103
On the other hand, patentees in other cases have been unsuccessful in claiming that they had to ignore prior
art which taught away from their particular inventions, where the courts, while recognizing the validity of the argument, held that the particular facts did not support a finding of this indicia of nonobviousness.
Thus, where there was evidence that the use of a vertical fence which did not extend to the ground presented
structural problems to be resolved for a design patent on an above-ground swimming pool, and the patentee ar-
23 A.L.R. Fed. 326
Page 153
gued that most people would consider the patentee's inverted triangular stud and strut support less stable than alternative methods of support, he claimed in Rains v Niaqua, Inc. (1969, CA2 NY) 406 F2d 275, cert den 395 US
909, 23 L Ed 2d 222, 89 S Ct 1751, that his design came within the scope of United States v Adams (1966) 383
US 39, 15 L Ed 2d 572, 86 S Ct 708, supra § 12, in that like the inventor in that case he had to ignore disadvantages in designing his pool, but the court said that there was nothing to suggest that these problems were particularly difficult to solve or that they would have been a deterrent to a designer of ordinary skill familiar with the
prior art.
The patent upon a method of increasing the tensile strength of paper when wetted was held invalid in American Cyanamid Co. v Hercules, Inc. (1966, DC Del) 260 F Supp 368, the court saying that the claims were obvious in view of the prior art, that, given the disclosures of a prior patent, all the "inventor" had to do in the
present case, contrary to his claim of long search, was to select a resin which fitted the generic description of the
resins used in the prior patent so that their chemical reaction could be duplicated, and that the fact that the resins
which this patentee employed proved to be more effective than those used by the earlier patentee did not alter
the fact that the trial had been blazed by earlier work showing the chemical reaction between certain resins and
cellulose fiber. This patentee did not have to ignore any prior art; his behavior was mechanical, the court said,
for he merely applied the innovations of other chemists.
It was urged in University of Illinois Foundation v Winegard Co. (1968, CA8 Iowa) 402 F2d 125, cert den
394 US 917, 22 L Ed 2d 452, 89 S Ct 1191, reh den 402 US 990, 29 L Ed 2d 157, 91 S Ct 1641, that the patentee had to overcome two serious handicaps which hid the developmental obviousness of his patent on a television antenna for color reception with unidirectional performance over a wide band width of frequencies, but the
court, holding the patent invalid, said that the simple answer to this argument was that the "problems" presented
were never recognized beyond experimental correction by those skilled in the calling, the problem of matching
"impedence" being one of adjustment which was an elementary problem to those skilled in radio electronics, and
that there was not involved the same deterrent as was experienced in the Adams Case where chemicals were interchanged to achieve the "water battery." The problem here, the court concluded, was one of trial and error with
a combination of commonly used elements operating within known principles of electronics and mechanics to
achieve a desired result, and experimental combination of common elements and principles to obtain a high
quality performance did not obviate the test of nonobviousness. If this were not true, at least in the instant case,
the court noted, nonobviousness would depend simply upon achieving a new result, and the standard of patentability under 35 U.S.C.A. § 103 requires more.
In Jeddeloh Bros. Sweed Mills, Inc. v Coe Mfg. Co. (1967, CA9 Or) 375 F2d 85, cert den 389 US 823, 19 L
Ed 2d 76, 88 S Ct 57, a combination patent describing an apparatus for feeding wood veneer into a multipledeck conveyor-type dryer was held invalid despite the findings of the trial court that the asserted invention enabled veneer to be fed into dryers with fewer men, with less damage, and with more uniform loading of the dryer, resulting in increased efficiency, and that mechanical feeders had virtually eliminated the previous hand
feeding of veneer dryers. The only sense in which this patent combination was novel, the court said, was that in
order to handle moist veneer mechanically, it was necessary to have a different range and positioning of old
components than was to be found in the prior art combinations, but these elements of novelty, and the means of
achieving them, would have been obvious to a person of ordinary skill in the art of handling sheet materials by
mechanical means. Experimentation, the court added, was undoubtedly necessary to achieve an efficient veneerhandling apparatus, but it was not necessary to seek and apply any substantially new principle, as in the case of
the combination patent described in the Adams Case. There the Supreme Court held that the combination was
nonobvious because to conceive this combination required a person reasonably skilled in the art to disregard
long-accepted principles in the science of electrochemistry, the court said, but this patentee did not have to ignore any long-standing principles in the art of handling sheet materials.
23 A.L.R. Fed. 326
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In Young Corp. v Jenkins (1968, CA9 Or) 396 F2d 893, the patent on a two-point grapple designed for use
in loading logs on a truck or railroad car was held invalid for obviousness despite the inventor's contention that
something fairly remarkable and not to be anticipated by one of ordinary skill was accomplished by cutting
down his device to two jaws as distinguished from grapples having three or four points which were concededly
old in the art. He argued that the two-point grapple was not obvious because it required him to disregard longaccepted principles in the art, at the time of his invention the prevailing concept of a grapple structure being a
"balanced grip," whereas his grapple was a radical departure in that it employed a lopsided or unbalanced grip
on the log. However, the court said that it was unconvinced that the superior results achieved by this device were
beyond the comprehension of one having ordinary skill in the art, the trial court having expressly found that the
designing of a two-point grapple as distinguished from a grapple having more than two points did not involve a
disregard of accepted principles of mechanics, that all of the elements of this patent were old and functioned together in the expected manner to produce the expected results, and that one having ordinary skill in the pertinent
art would be aware of accepted principles of mechanics, would be familiar with all of the elements which were
combined in this patent, and would be familiar with the expected manner in which they would function together.
Cases:
For purposes of obviousness analysis in patent case, a prior art reference that "teaches away" from a given
combination may negate a motivation to modify the prior art to meet the claimed invention; to "teach away," the
reference must criticize, discredit, or otherwise discourage the solution reached by the proposed invention. 35
U.S.C.A. § 103(a). Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 526 F. Supp. 2d 162 (D. Mass. 2007).
Patented flame spraying process for bonding material to untreated metal surface by causing exothermic reaction releasing additional heat during spray flight is not obvious from prior art knowledge of particular exothermic reaction or flame spraying techniques failing to achieve improved bond. Eutectic Corp. v Metco, Inc.
(CA2 NY) 579 F2d 1, 197 USPQ 129, cert den (US) 58 L. Ed. 2d 177, 99 S Ct 192.
Prior invention in this country by another who has not abandoned, suppressed, or concealed the invention is
prior art for purposes of applying Patent Act's obviousness standard. 35 U.S.C.A. § 103. Loral Fairchild Corp. v.
Victor Co. of Japan, Ltd., 208 F. Supp. 2d 344 (E.D. N.Y. 2002).
Claim that patent of gel shave cream was invalid would be denied where (1) fact that entire shave cream industry had gone in direction, of aerosol instant-foaming shave products was good evidence of what reasonably
could have been gleaned from prior art and fact that patentee went in different direction was strong evidence of
invention, (2) prior art references did not, either individually or together, suggest post-foaming gel invention
since acknowledged pioneer in aerosol shave cream did not find it obvious to make post-foaming gel product until after it was led to do so by appearance and early success of invention, and (3) differences between prior art
and invention defined by asserted claims, availability of art to all workers in field, failure of established competitors in highly competitive shave cream market to make invention despite incentive to do so, admittedly unobvious performance benefits realized through invention, impressive commercial success of product, praise of independent commentators, and forbearance of competitors from infringing patent all went to confirm that invention
was not obvious at time it was made to person of ordinary skill in art. S.C. Johnson & Son, Inc. v Carter-Wallace, Inc. (1985, SD NY) 614 F Supp 1278.
Patent disclosing systems for the transdermal administration of fentanyl was not invalid for obviousness;
there was no suggestion or motivation to combine the teachings of prior art reference with other prior art references, that the prior art reference taught away from the use of fentanyl base in solution for transdermal delivery,
and secondary considerations supplied objective evidence of nonobviousness. Alza Corp. v. Mylan Laboratories,
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Page 155
Inc., 310 F. Supp. 2d 610 (D. Vt. 2004).
To rebut prima facie case of patent obviousness, patentee may present objective evidence of nonobviousness, such as: (1) long-felt and unmet need in the art for invention; (2) failure of others to achieve results of invention; (3) commercial success of invention; (4) copying of invention by others in field; (5) whether invention
was contrary to accepted wisdom of prior art; (6) expression of disbelief or skepticism by those skilled in the art
upon learning of invention; (7) unexpected results; (8) praise of invention by those in field; and (9) independent
invention by others. 35 U.S.C.A. § 103. Kao Corp. v. Unilever U.S., Inc., 334 F. Supp. 2d 527 (D. Del. 2004).
Objective evidence of nonobviousness that may be considered in determining whether patent should be held
invalid as obvious includes: (1) a long–felt and unmet need in the art for the invention, (2) failure of others to
achieve the results of the invention, (3) commercial success of the invention, (4) copying of the invention by
others in the field, (5) whether the invention was contrary to accepted wisdom of the prior art, (6) expression of
disbelief or skepticism by those skilled in the art upon learning of the invention, (7) unexpected results, (8)
praise of the invention by those in the field, and (9) independent invention by others. 35 U.S.C.A. § 103. Matsushita Elec. Indus. Co., Ltd. v. Cinram Intern., Inc., 299 F. Supp. 2d 348 (D. Del. 2004).
To rebut a prima facie case of obviousness based on prior art, objective evidence of nonobviousness may be
used, including: (1) a long–felt and unmet need in the art for the invention; (2) failure of others to achieve the
results of the invention; (3) commercial success of the invention; (4) copying of the invention by others in the
field; (5) whether the invention was contrary to accepted wisdom of the prior art; (6) expression of disbelief or
skepticism by those skilled in the art upon learning of the invention; (7) unexpected results; (8) praise of the invention by those in the field; and (9) independent invention by others. 35 U.S.C.A. § 103. Eaton Corp. v. ParkerHannifin Corp., 292 F. Supp. 2d 555 (D. Del. 2003).
Substantial evidence supported jury's conclusion that method of making gas permeable hard contact lens
principally of tertiary butyl styrene would not have been obvious at time of invention to person of ordinary skill
and art where experts differed as to understanding of those working in art at relevant time, and earlier patent,
which taught that contact lenses could be made of styrene or substituted styrenes, did not anticipate disputed patent under general rule that prior genus does not anticipate later species in that anticipated reference did not contain sufficient description to enable one to practice invention without experimentation or inventive skill. Further,
rather than merely claiming new use for tertiary butyl styrene, patent disclosed new composition made from it,
and jury was presented with substantial evidence from which it could reasonably have concluded that lens of tertiary butyl styrene had such unexpected properties as to rebut any inference that might be drawn from structural
similarity with prior art. Schering Corp. v Precision-Cosmet Co. (1985, DC Del) 614 F Supp 1368, 227 USPQ
278.
A prior art reference that "teaches away," or discourages the practice of the invention, supports the nonobviousness of the invention. 35 U.S.C.A. § 103. Daiichi Pharmaceutical Co., Ltd. v. Apotex, Inc., 441 F. Supp. 2d
672 (D.N.J. 2006).
For preliminary-injunction purposes, obviousness of shape-memory alloy eyeglass frame was not established, where several frame suppliers had attempted to develop flexible frame components but were unable to do
so before teaching of patent. CVI/Beta Ventures v Custom Optical Frames (1995, DC Md) 893 F Supp 508.
Invalidity of patent based on obviousness requires the person alleging invalidity to show prior art references
which alone or combined with other references would have rendered the invention obvious to one of ordinary
skill in the art at the time of the invention; party seeking patent invalidity based on obviousness must also show
some motivation or suggestion to combine the prior art teachings. Christiana Industries v. Empire Electronics,
Inc., 443 F. Supp. 2d 870 (E.D. Mich. 2006), amended on denial of reconsideration, (Aug. 4, 2006) and modified
in part on other grounds, 2006 WL 2375956 (E.D. Mich. 2006), dismissed, 219 Fed. Appx. 987 (Fed. Cir. 2007)
and dismissed, 219 Fed. Appx. 987 (Fed. Cir. 2007).
23 A.L.R. Fed. 326
Page 156
Patent obviousness inquiry presents question of law based on several underlying factual inquiries including:
(1) scope and content of prior art; (2) level of ordinary skill in art; (3) differences between prior art and claimed
invention; and (4) extent of any objective indicia of non–obviousness. 35 U.S.C.A. § 103(a). Teleflex Inc. v.
KSR Intern. Co., 298 F. Supp. 2d 581 (E.D. Mich. 2003).
Patented riser sleeve used in casting steel was nonobvious where although each element of patent was
present in prior art, prior art did not suggest use of specific chemical for particular purpose for which it was used
in patent, but rather taught away from such use, and where evidence suggested that introduction of riser sleeve
by plaintiff, solving long standing problem in industry, created competitive problem for defendant which defendant solved by appropriating plaintiff's commercially successful product. Foseco International, Ltd. v Fireline, Inc. (1984, ND Ohio) 607 F Supp 1537, 224 USPQ 888, motion gr (ND Ohio) 226 USPQ 33.
Plaintiff's patent for spark plug was invalid where he merely substituted one conventional, well-known electrode material for another, even though prevailing technical wisdom taught away from use of that material.
Brunswick Corp. v Champion Spark Plug Co. (1982, CA7 Ill) 689 F2d 740, 216 USPQ 1.
Ordinary person skilled in the art would not have seen benefit of combining erythromycin derivative with
polymer with same pharmacokinetic limitations as embodied in claims of patent relating to extended release formulations of clarithromycin given state of pharmaceutical industry at that time, where there was no indication
that either prior art publication or patent disclosed specific pharmacokinetic limitations of claims, and, thus,
there was no indication that prior art would have motivated person of ordinary skill in art to combine their teachings to arrive at patented invention. Fed.Rules Civ.Proc.Rule 62(c), 28 U.S.C.A. Abbott Laboratories v. Sandoz,
Inc., 500 F. Supp. 2d 846 (N.D. Ill. 2007).
Combination of prior art publication, which disclosed sustained release formulation created from combining
azithromycin with hydroxypropyl methylcellulose, and prior art patent, which disclosed use of alginate polymer
in making sustained release formulations and disclosed use of clarithromycin, did not raise substantial question
of obviousness with regard to patent on extended release formulation of clarithromycin, since pharmacokinetic
profile of clarithromycin-metabolite data of prior art patent formulation was not same as pharmacokinetic profile
of clarithromycin-only data utilized by patent in suit and those skilled in the art would not have been motivated
to apply prior art pharmacokinetic profile to clarithromycin. 35 U.S.C.A. § 103. Abbott Laboratories v. Sandoz,
Inc., 500 F. Supp. 2d 807 (N.D. Ill. 2007), motion for stay pending appeal denied, 500 F. Supp. 2d 846 (N.D. Ill.
2007).
To find patent invalid as obvious, prior art must supply some motivation for or teach person having ordinary
skill in relevant art to combine invalidating references. 35 U.S.C.A. § 103. American Standard, Inc. v. York Intern. Corp., 244 F. Supp. 2d 990 (W.D. Wis. 2002).
357 F. Supp. 2d 1105 (S.D. Iowa 2005).
Whether a prior art reference anticipates a patent claim is a question of fact. 35 U.S.C.A. § 102. Vision-Ease
Lens, Inc. v. Essilor Intern. SA, 322 F. Supp. 2d 991 (D. Minn. 2004).
(C.D. Cal. 2005).
Patent for high speed data modem system intended to operate over ordinary unconditioned switched telephone lines was not obvious where modem's utilization of differential eight phase modulation of single carrier
23 A.L.R. Fed. 326
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and narrow band width filtering was contrary to prior art, where modem was first to employ narrow band limiting in phase modulated system, where such modems were first commercially acceptable modems capable of
transmitting 2400 bps over ordinary switched voice-grade telephone lines, and where problem had been approached with a completely opposite philosophy and was first to combine eight level modulation and extreme
band limiting into one modem. Milgo Electronic Corp. v United Business Communications, Inc. (1980, CA10
Kan) 623 F2d 645.
Patent on process for slug feeds of asphalt hotmix to prevent segregation of large and small particles is not
obvious from prior art suggesting intermittent feed but using other measures to prevent segregation, and simplicity of invention does not defeat unobviousness, especially considering prior art contrary to invention. C M I
Corp. v Metropolitan Enterprises, Inc. (CA10) 189 USPQ 770.
In order to find patent invalid for obviousness, there must be a teaching or suggestion within the prior art, or
within the general knowledge of a person of ordinary skill in the field of the invention, to look to particular
sources of information, to select particular elements, and to combine them in the way they were combined by the
inventor. 35 U.S.C.A. § 103(a). Medtronic Xomed, Inc. v. Gyrus ENT LLC, 440 F. Supp. 2d 1300 (M.D. Fla.
2006).
Person of ordinary skill in the art would not have selected closest prior art compound as lead compound for
antidiabetic treatment, and thus presumption of motivation did not apply on competitor's claim of obviousness;
although prosecution history of patent included statement characterizing compound as "especially important,"
any suggestion to select compound was essentially negated given more exhaustive and reliable scientific analysis which taught away from compound and evidence from similar contemporaneously filed patents showed that
there were many promising, broad avenues for further research. 35 U.S.C.A. § 103. Takeda Chemical Industries,
Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 83 U.S.P.Q.2d 1169 (Fed. Cir. 2007).
Prior art compound did not make claims in subsequently patented drug obvious, although patented drug was
adjacent homolog of prior art compound; person of ordinary skill in art would not have selected prior art compound as lead compound, state of art at time of invention would have directed person of ordinary skill in art
away from prior art compound, and prior art did not suggest any other modifications necessary to reach patented
drug. 35 U.S.C.A. § 103. Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 471 F.3d 1369, 81
U.S.P.Q.2d 1324 (Fed. Cir. 2006).
Rebuttal evidence defeating prima facie showing of obviousness may show that claimed invention achieved
unexpected results relative to the prior art, that the prior art teaches away from the claimed invention, that objective evidence, such as commercial success, supports the conclusion that invention would not have been obvious to a skilled artisan, or that the prior art did not enable one skilled in the art to produce the now-claimed invention. In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005).
Legal determination of patent obviousness is made on basis of underlying findings of fact as to: (1) scope
and content of prior art; (2) differences between prior art and claims; (3) level of ordinary skill in the art; and (4)
objective evidence of nonobviousness. 35 U.S.C.A. § 103. National Steel Car, Ltd. v. Canadian Pacific Ry.,
Ltd., 357 F.3d 1319, 69 U.S.P.Q.2d (BNA) 1641 (Fed. Cir. 2004).
When finding of patent obviousness depends on combination of prior art references, there must be some
teaching, suggestion, or motivation to combine references. 35 U.S.C.A. § 103. Akamai Technologies, Inc. v.
Cable & Wireless Internet Services, Inc., 344 F.3d 1186, 68 U.S.P.Q.2d (BNA) 1186 (Fed. Cir. 2003).
Conventional wisdom that particular combination of elements should not be made is evidence that patent for
invention combining those elements is not obvious. 35 U.S.C.A. § 103. Arkie Lures, Inc. v. Gene Larew Tackle,
Inc., 119 F.3d 953, 43 U.S.P.Q.2d (BNA) 1294 (Fed. Cir. 1997), reh'g denied, in banc suggestion declined,
(Sept. 11, 1997).
Use of radiant heat energy to heat substrate in production of semiconductor integrated circuits through
23 A.L.R. Fed. 326
Page 158
chemical vapor deposition was not obvious from prior art, although earlier texts discussed possibility of radiant
heat method, since other manufacturers had been unsuccessful in attempting to develop radiant heat method to
replace radio frequency method, and industry belief had been that achieving required extremely high temperatures was not possible with radiant heat method. Applied Materials v Advanced Semiconductor Materials Am.
(1996, CA FC) 98 F3d 1563, 40 USPQ2d 1481 and petition for certiorari filed (Mar 14, 1997).
Argument that prior art taught away from use of epoxy in printed circuit material was insufficient to establish nonobviousness; even though prior art may have discouraged use of epoxy, patent applicant asserted no discovery beyond what was known to art. In re Gurley (1994, CA FC) 27 F3d 551, 31 USPQ2d 1130.
Patent and Trademark Office Board of Appeals properly sustained examiner's rejection of claim to patent
detergent composition where it would have been obvious to use known hydrated zeolites with known detergents
to reduce water hardness in view of prior teachings of use of hydrated zeolites with known detergents and bleach
to reduce water hardness and of zeolites having same composition and properties as zeolites in other art. Re
Corkill (1985, CA FC) 771 F2d 1496, 226 USPQ 1005.
Trial court properly found that patent of photosensitive electric lamp which is able to turn itself on by degree as ambient light diminishes was invalid for obviousness, where teachings of references from electric nightlight art could have been combined to produce device meeting all limitations of claimed invention except for one
feature which could be found in other patents and straight-forward quality of invention and art involved made
required combination quite apparent, and where suggestion to modify art to produce claimed invention need not
have been expressly stated in one or all of references used to show obviousness. Further, trial court properly declined to give weight to declaration on issue of commercial success as indicator of nonobviousness where affidavit failed to establish any nexus between hypothetical success and merits of claimed invention. Finally, with
regard to copying, although trial court's statement that it was just as likely that similarity was more attributable
to simple obviousness of design rather than to defendant's deliberate mimicry was not supported by record, it
would have been improper to give alleged copying much weight in obviousness analysis in light of patentee's
poor showing as to copying and in view of bareness of record on nexus between any copy arguably shown and
nonobviousness of claimed invention. Cable Electric Products, Inc. v Genmark, Inc. (1985, CA FC) 770 F2d
1015, 226 USPQ 881.
District court properly found patent for hot water heater burner assembly invalid where teachings of two
burners manufactured by competitor were properly combined and clearly disclosed all claimed elements and
rendered claims obvious as natural evolution of prior art, and even though district court's reference to "natural
evolution" may have been unfortunate if intended as new standard of patentability, it was ultimately harmless.
Further, fact that district court gave less weight to secondary considerations than desired by inventor was insufficient indication that they were not considered. State Industries, Inc. v Rheem Mfg. Co. (1985, CA FC) 769 F2d
762, 227 USPQ 375.
Patent and Trademark Office Board of Appeals properly affirmed rejection of claims for patent of heat recoverable article where two prior art references clearly pertained to same general subject matter so as to be analogous art constituting "prior art," person of ordinary skill in relevant art, familiar with all that both prior references disclosed, would have found it obvious to make structure corresponding to what was claimed, and where
inventor's argument that neither prior reference resulted in useful device presumed stupidity, rather than skill, on
part of one of ordinary skill in art. Re Sovish (1985, CA FC) 769 F2d 738, 226 USPQ 771.
Patent and Trademark Office Board of Appeals improperly sustained rejection of claims of patent application for herbicidal safeners on grounds of obviousness where, although it was possible to find isolated disclosures which might be combined in such way to produce new compound, patent office cited no pertinent reference
showing or suggesting to one of ordinary skill and art change of thioester for ester group, so that there was inadequate support for office's position that modification was prima facie obvious, and where solicitor's contention
23 A.L.R. Fed. 326
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that sulphur that replaced oxygen in prior invention occurred in portion of molecule that was not significant to
safener activity was lacking in adequate support in prior art as prior inventor did not state that carboxylic segment of his molecule was not significant to its biological properties and no other support was invoked. Re Grabiak (1985, CA FC) 769 F2d 729, 226 USPQ 870.
District court erred in considering process for stretching teflon obvious where its decision was reached by
separating invention in two separate elements and comparing these to separate parts of prior art references
without regard for fact that each prior art references as a whole taught away from process at issue. W.L. Gore &
Associates, Inc. v Garlock, Inc. (1983, CA FC) 721 F2d 1540, 220 USPQ 303, cert den (US) 83 L Ed 2d 107,
105 S Ct 172.
Plaintiff's hard-bearing balancer, which was unitary structure eliminating need for damping, was nonobvious where prior art had taught that hard-bearing balancers required damping and that damping was undesirable.
Schenck v Nortron Corp. (1983, CA FC) 713 F2d 782, 218 USPQ 698.
Claims on lamps having specified ratios of halogen atoms to mercury atoms are not obvious from prior art
lamps having halogen and mercury atoms in unspecified ratios, and claim is not rejectable as requiring only obvious experimentation as to ranges where result of claimed range is difference in kind rather than difference in
degree and prior art leads away from applicants' experiments. Application of Waymouth (Cust & Pat App) 499
F2d 1273, 182 USPQ 290.
Under § 103, prior art must be considered not only for what it may teach toward patent but also for manner
in which it may lead one of ordinary skill in art away from invention. Penda Corp. v United States (1993) 29 Fed
Cl 533.
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§ 14. Skepticism of experts
The fact that experts expressed disbelief in an invention at the time it was made was recognized by the
United States Supreme Court as bearing on the issue of obviousness, in the Adams Case (1966) 383 US 39, 15 L
Ed 2d 572, 86 S Ct 708, supra § 12, and such skepticism has been recognized by the lower federal courts in several cases as an indication that the subject matter would not have been obvious at the time the invention was
made to a person of ordinary skill in the art.
In Columbia Broadcasting System v Sylvania Electric Products, Inc. (1969, CA1 Mass) 415 F2d 719, cert
den 396 US 1061, 24 L Ed 2d 755, 90 S Ct 755, the question was whether a patent issued in the field of color
television was obvious to one skilled in the art under 35 U.S.C.A. § 103, and the court noted, among other
factors showing nonobviousness, that many skilled in the television industry were initially skeptical of the feasibility of this patent on a curved screen and a matching curved mask, holding the patent valid.
Noting that prior to the patentee's method for the production of ammonium sulphate, the production of ammonium sulphate crystals from coke oven gas was accomplished by two different systems in commercial practice but that no one in commercial practice had combined principles of the two systems in one installation, the
court in Otto v Koppers Co. (1957, CA4 W Va) 246 F2d 789, cert den 355 US 939, 2 L Ed 2d 420, 78 S Ct 427,
23 A.L.R. Fed. 326
Page 160
held the patent on this successful "all spray saturator" valid, pointing out that at the time of its first commercial
installation the engineers and officials of the using company had been persuaded by the patentee that his idea
might have substantial merit, but that they were so skeptical of its worth that they required him to so design and
construct it that it could be converted back to a former type.
In Honolulu Oil Corp. v Shelby Poultry Co. (1961, CA4 NC) 293 F2d 127, the validity of the patent on a
mechanical poultry-defeathering apparatus was upheld, the court noting that with one simple change the machine of an earlier patentee could have been converted into a loose fowl-processing machine but that no such
change was made, "obviously for the reason that" the patentee did not think a loose fowl-processing machine
was practicable, and that the Examiner in the Patent Office first rejected all of this patentee's claims on the
ground of inoperativeness, while even the defendant in this action interposed the defense that the patented
device was inoperable. The court found that the demonstration of this machine at the trial proved wrong the
testimony at the trial that this patent could not produce a commercially acceptable product, and concluded that
when experts working in the field in search of improved results were of the opinion that a thing could not be
done, it was not for the court to say that it would have been obvious.
If noted experts express initial disbelief, that fact is probative of nonobviousness, the court said in Ag Pro,
Inc. v Sakraida (1973, CA5 Tex) 474 F2d 167, supp op (CA5 Tex) 481 F2d 668, holding valid the patent on a
barn floor flushing arrangement, with the observation that the expert testimony presented at trial supported the
conclusion that the system was initially viewed with disbelief.
Cases:
Trial court erred in accepting expert testimony of lawyer associate of law firm representing defendants and
failing to discount such testimony for interest in litigation, and balance of evidence fails to show prior art sufficient to overcome presumption of validity so that holding of patent invalidity for obviousness is vacated. Universal Athletic Sales Co. v American Gym, Recreational & Athletic Equipment Corp. (CA3 Pa) 546 F2d 530,
Substantial evidence supported finding that patent claim for cryogenically cooled receiver front end for
wireless communications base station, with automatic bypass, was invalid as obvious; several expert witnesses
opined that all elements of invention were disclosed in prior art references, that it would have been obvious to
person of ordinary skill in art to combine them, and that there was motivation to do so. 35 U.S.C.A. § 103. Isco
Intern., Inc. v. Conductus, Inc., 279 F. Supp. 2d 489 (D. Del. 2003).
23 A.L.R. Fed. 326
Page 161
Court did not err in relying on testimony of expert witnesses, together with other evidence, in finding that
steps of method for making insulated windows would be obvious to persons having ordinary skill in art. Reynolds Metals Co. v Acorn Bldg. Components, Inc. (CA6 Mich) 548 F2d 155, 192 USPQ 737.
Jury's implicit finding that "mobile unit" referred to in prior art reference met claimed "subscriber station"
limitations and "send/receive unit" limitation in patents relating to field of digital wireless telephony was supported by evidence, for purpose of alleged infringer's assertion that patent claims at issue were anticipated and
obvious; even if prior art reference did not describe contents of mobile unit, expert testified that person with ordinary skill would understand reference's "mobile unit" to be compatible with parameters of claimed invention,
and, in finding claims obvious, jury relied on separate reference indisputably containing full description of contents of first reference's "mobile unit." Motorola, Inc. v. Interdigital Technology Corp., 121 F.3d 1461, 43
U.S.P.Q.2d (BNA) 1481 (Fed. Cir. 1997).
Expressions of disbelief by experts constitute strong evidence of nonobviousness. Environmental Designs,
Ltd. v Union Oil Co. (1983, CA FC) 713 F2d 693, 218 USPQ 865, cert den (US) 79 L Ed 2d 173, 104 S Ct 709.
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§ 15. Recognition of significance by experts
Recognition by experts of the significance of an invention (assuming, of course, impartial experts and statements or conduct uninfluenced by partisanship in potential litigation) was recognized by the United States Supreme Court in the Adams Case (1966) 383 US 39, 15 L Ed 2d 572, 86 S Ct 708, supra § 12, as a factor bearing
on the question of obviousness,[10] and the lower federal courts have also recognized as an indication of nonobviousness the acclaim of the significance of an invention by experts in the field.
Thus, in Columbia Broadcasting System v Sylvania Electric Products, Inc. (1969, CA1 Mass) 415 F2d 719,
cert den 396 US 1061, 24 L Ed 2d 755, 90 S Ct 755, the patent on a curved screen and a matching curved mask
for a color TV picture tube was held valid despite claims that it was obvious. Noting that the level of skill in the
art was high, millions of dollars having been expended by almost every major company in the communications
industry in an organized application of technical intelligence to color television, the court said that it was significant that, given this high level of skill, those trained in the art immediately recognized this patent as a breakthrough development, and that the alleged infringer's own color tube manager stated that it was a very desirable
advance in the state of the art.
Holding valid the patent on a method of spray saturation for producing ammonium sulfate from coke oven
gas, the court observed in Otto v Koppers Co. (1957, CA4 W Va) 246 F2d 789, cert den 355 US 939, 2 L Ed 2d
420, 78 S Ct 427, that practical operators of coke oven plants hailed it as revolutionary, while chemical engineers of the infringer extolled the substantial advantages of the all-spray saturator in their training courses for
their young engineers, and this patentee's method soon resulted in its general acceptance in the industry.
The court held valid the patent on a planing boat hull, in Hunt Industries, Inc. v Fibra Boats, Inc. (1969, DC
Fla) 299 F Supp 1145, saying that the favorable articles and publications concerning the success of this hull buttressed the patentee's claim of nonobviousness, and that the rule was that favorable mention of developments of
patents in trade publications and by competitors was indicative of nonobviousness.
The court in Amerace Esna Corp. v Highway Safety Devices, Inc. (1971, DC Tex) 330 F Supp 313, said that
the acclaim following use of the patentee's highway markers, which were visible in the nighttime, was a consideration tending to demonstrate that the invention would not have been obvious to a person having ordinary skill
23 A.L.R. Fed. 326
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in the art at the time the invention was made, and held the patent valid.
A factor tending to rebut obviousness, albeit not necessarily controlling, the court pointed out in General
Tire & Rubber Co. v Firestone Tire & Rubber Co. (1973, CA6 Ohio) 489 F2d 1105, cert den 417 US 932, 41 L
Ed 2d 235, 94 S Ct 2643, is immediate acceptance of the invention in the art, and in holding the patent involved
here on oil-extended rubber valid, the court found that acceptance of this patentee's process was beyond dispute,
oil-extension becoming the standard production item in the government's synthetic rubber plants, and every major tire company using the patentee's process.
In holding valid the patent on a swing frame trap for catching small animals, the court in Woodstream Corp.
v Herter's, Inc. (1971, CA8 Minn) 446 F2d 1143, said that the testimony of an inventor who had spent most of
his adult life in the animal trap field was most significant on the issue of obviousness, his testimony demonstrating the nonobvious nature of the patentee's trap by indicating that recognition of the mechanical features of existing trap art did not foretell the patentee's invention. This inventor had testified that when he read a magazine
article describing the patentee's trap, it "almost knocked me off my feet," and that he thereafter made improvements on the trigger mechanism but that these did not amount to anything of importance.
Cases:
Criteria for obviousness of invention is measured not in terms of what would be obvious to laymen, but
rather what would be obvious to one reasonably skilled in applicable art. Dann v Johnston, 425 US 219, 47 L.
Ed. 2d 692, 96 S Ct 1393.
Court properly considered expert testimony on principles of operation and information disclosed in specification relative to scope and clarity of claims in finding patent on yarn tensioning device valid and nonobvious.
Rosen v Lawson-Hemphill, Inc. (CA1 RI) 549 F2d 205, 193 USPQ 193.
See S.C. Johnson & Son, Inc. v Carter-Wallace, Inc. (1985, SD NY) 614 F Supp 1278, § 13.
Court properly invalidated patents in field of bonded magnets, and properly chose to credit testimony of
three expert witnesses as to what prior art disclosed, where patentholder attempted to discredit expert testimony
with test results performed by patentholder. Experiments by interested party which show that it may be possible
to operate within disclosure of prior art patent without obtaining disclosed product did not overcome presumption that process, if followed by one skilled in art, would produce product. Minnesota Mining & Mfg. Co. v
Blume (1982, CA6 Ohio) 684 F2d 1166, 215 USPQ 585, cert den (US) 75 L Ed 2d 803, 103 S Ct 1449.
Secondary evidence of nonobviousness can include commercial success of invention, long-felt need, failure
of others to solve problem, licensing of patented invention, professional recognition and approval, and copying
of invention. 35 U.S.C.A. § 103. Network Appliance, Inc. v. Bluearc Corp., 374 F. Supp. 2d 825 (N.D. Cal.
2005).
Method of treating bacterial ear infections via topical administration of antibiotic ofloxacin would have
been obvious to one having ordinary skill in the art at time of method's invention, and thus patent for method
was invalid; art involved was creation of compound to treat ear infections without damaging patient's hearing,
and invention would have been obvious to otologist, otolaryngologist or otorhinolaryngologist with training in
23 A.L.R. Fed. 326
Page 163
pharmaceutical formulations, given previous publication concluding that ciprofloxacin, member of same family
of drugs as ofloxacin, was both effective and safe when used topically. 35 U.S.C.A. § 103. Daiichi Sankyo Co.,
Ltd. v. Apotex, Inc., 501 F.3d 1254, 84 U.S.P.Q.2d 1285 (Fed. Cir. 2007).
Where no prior art device of any type could economically process rigidly massive scrap without pretreatment, this unexpected result of patented invention was strong evidence of nonobviousness. Lindemann
Maschinenfabrik GMBH v American Hoist & Derrick Co. (1984, CA FC) 730 F2d 1452, 221 USPQ 481.
Only scientific community's reaction to invention and its contributions to the art, not its opinions as to
whom is inventor of any contribution, is relevant as secondary consideration of nonobviousness under § 103.
Rockwell Intern. Corp. v U.S. (1997) 37 Fed Cl 478, disagreed with by Abbott Laboratories v Diamedix Corp.
(1997, ND Ill) 969 F Supp 1064.
Preinvention reaction by expert that thesis published by applicant does not suggest treatment for animal disease is considered important evidence of effect of thesis on knowledgable workers in art making later discovery
of effective treatment for animal disease unobvious and patentable. In re Carroll (Cust & Pat App) 202 USPQ
571.
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§ 16. Absence of prior art references
Of significance to the United States Supreme Court on the question of obviousness in the Adams Case
(1966) 383 US 39, 15 L Ed 2d 572, 86 S Ct 708, supra § 12, was the fact that in a crowded art replete with a
century and a half of advancement, the Patent Office found not one reference to cite against the application for
the patent involved. This would seem to be an unusual situation, but in a few cases the lower courts have taken a
similar view of the absence before the Patent Office of specific prior art references to be cited against the application, as an indication of its nonobviousness.
Thus, in Application of Prater (1969) 56 Cust & Pat App 1381, 415 F2d 1393, the court noted that no prior
art references were cited against this application for a patent on a method and apparatus for the processing of
spectrographic data disclosed by reference to a special-purpose analog device but also disclosing that a generalpurpose digital computer might be used. The court held that the apparatus claim would not have been obvious at
the time of the invention, and that the Patent Office erred in rejecting it, when no prior art reference had been
cited, and the claims showed admittedly patentable subject matter.
In this category of cases relying upon an absence of prior art references as indicating nonobviousness might
be considered Federal Sign & Signal Corp. v Bangor Punta Operations, Inc. (1973, DC NY) 357 F Supp 1222,
because of the court's approach to holding valid the patent on an electronic speed computer for use in a single
police vehicle to apprehend possible highway speeders. The court held that the device was not obvious on the
basis of prior art references, although the defendant infringer contended that it would be unconscionable to
monopolize the well-known principle of measuring the distance traveled by a vehicle, measuring the time
elapsed in traveling the distance, and dividing the distance by the time to derive the speed of the vehicle, which
was essentially what this patented device did. The court found in the prior art other methods using this principle,
but said that this missed the mark, because the patentee's method patent claimed as invention a particular method
of measuring time and distance, and of combining the two to determine the speed of a vehicle. None of these
other techniques teaches the utilization of a speed detector within the car for performing the methods as specified, the court went on, and while the patentee was perhaps not the first to think of the concept of measuring
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the speed of a moving vehicle from another vehicle with the use of a speed computer, he was the first to reduce
this concept to practical application. Put differently, the court concluded, the patentee invented both the method
and an apparatus to practice the method, and while the method might indeed seem obvious, given the invention
of the apparatus, yet at the time of the filing of the application for the method patent, the only apparatus which
could practice the method was that disclosed in the specifications of the application.
The court also referred to the absence of specific references in the prior art in holding valid the patent on a
method of clearing veins from the backs of slit shrimp meat, in Laitram Corp. v Deepsouth Packing Co. (1971,
CA5 La) 443 F2d 928. The court said that the real art of the patent was uncomplicated, and that the very fact
that the infringer cited 48 patents covering related or associated processes, not one of which taught this simple
invention, indicated as a matter of law that it was not obvious to those then possessed of the ordinary skill of the
art in this field.
Cases:
Prosecution history estoppel arises when an amendment to a patent application is made to secure the patent
and the amendment narrows the patent's scope, the United States Supreme Court has ruled in Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 122 S. Ct. 1831, 62 U.S.P.Q.2d (BNA) 1705 (U.S. 2002). Further, such estoppel is not a complete bar to an inventor's assertion of infringement against any equivalent. The
issues arose in a case in which the holder of two patents relating to magnetically coupled rodless cylinders sued
an alleged infringer, asserting that, although the device made by the alleged infringer did not fall within the literal claims of either patent, it was so similar that it infringed under the doctrine of equivalents. The alleged infringer contended that the patentee was estopped from making this argument because of the prosecution history
of its patents. According to the alleged infringer, amendments in the patentee's applications narrowed the earlier
applications, surrendering alternatives that were the very points of difference in the competing devices—certain
sealing rings and the type of alloy used to make the device's outer shell or sleeve. Thus, the alleged infringer
contended, the patentee was estopped from claiming that these features were immaterial. The district court disagreed, finding that the amendments were not the kind that gave rise to estoppel. Eventually, upon en banc rehearing, the Court of Appeals for the Federal Circuit, in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
Ltd., 234 F.3d 558, 56 U.S.P.Q.2d (BNA) 1865 (Fed. Cir. 2000) and cert. granted, 533 U.S. 915, 121 S. Ct.
2519, 150 L. Ed. 2d 692 (2001) and judgment vacated (U.S. May 28, 2002), reversed, concluding that the prosecution history barred the patentee from asserting that the accused device infringed its patents under the doctrine of equivalents. Estoppel arises from any amendment that narrows a claim to comply with the Patent Act,
the Court of Appeals determined. Further, the Federal Circuit held, when estoppel applies, it stands as a complete bar against any claim of equivalence for the element that was amended. This latter holding overruled precedents which had held that prosecution history estoppel constituted a flexible bar that foreclosed some, but not
all, claims of equivalence, depending on the purpose of the amendments and the alterations in the text. The Supreme Court granted certiorari. Writing for a unanimous Court, Justice Kennedy began by noting that the case
required the Court to address the relation between two patent law concepts, the doctrine of equivalents and the
rule of prosecution history estoppel. Pursuant to the doctrine of equivalents, the scope of a patent is not limited
to its literal terms but, instead, embraces all equivalents to the claims described. Prosecution history estoppel, in
turn, "requires that the claims of a patent be interpreted in light of the proceedings in the PTO (Patent and Trademark Office) during the application process." "The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created
through trivial changes," the Court explained. "When, however, the patentee originally claimed the subject mat-
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ter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of
the issued patent." By submitting an amended claim, the patentee recognizes the difference between the original
claim and the amendment, and concedes that the invention, as patented, does not reach as far as the original
claim. The Court next addressed the kinds of amendments that may give rise to estoppel. In Warner-Jenkinson
Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (U.S. 1997), the Court recognized that prosecution history estoppel does not arise in every instance when a patent application is amended.
Although Warner-Jenkinson made clear that estoppel applies to amendments made for a substantial reason related to patentability, such as to avoid prior art, the decision did not purport to catalog every reason that might
raise an estoppel, nor did it limit estoppel to amendments to accommodate prior art, Justice Kennedy explained.
"We agree with the Court of Appeals that a narrowing amendment made to satisfy any requirement of the Patent
Act may give rise to an estoppel," Justice Kennedy wrote. The Court thus rejected the petitioner's argument that
amendments made to comply with § 112 of the Act concern the form of the application and not the subject matter of the invention and so do not give rise to estoppel. "A patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter, whether the amendment was made to avoid the
prior art or to comply with § 112," the Court concluded. Finally, the Court addressed whether prosecution history estoppel bars an inventor from asserting infringement against any equivalent to the narrowed element, or
whether some equivalents might still infringe. The Court disagreed with the Court of Appeals' holding that prosecution history estoppel is a complete bar. Rather, the Court determined, when a patentee has chosen to narrow
a claim, courts may presume that prosecution history estoppel bars a finding of equivalence, but the patentee
may overcome that presumption by showing that the amendment does not surrender the particular equivalent in
question. The per se rule established by the Court of Appeals "is inconsistent with the purpose of applying the
estoppel in the first place—to hold the inventor to the representations made during the application process and to
the inferences that may reasonably be drawn from the amendment," the Court reasoned. By amending the application, the inventor is deemed to concede that the patent does not extend as far as the original claim, the Court reiterated. "It does not follow, however, that the amended claim becomes so perfect in its description that no one
could devise an equivalent." Thus, there is no reason why a narrowing amendment should be deemed to relinquish unforeseeable equivalents, those beyond a fair representation of what was surrendered, or those for aspects
of the invention that have only a peripheral relation to the reason the amendment was submitted. Moreover, in
its prior cases, the Court had consistently applied prosecution history estoppel in a flexible way, not a rigid one.
"We have considered what equivalents were surrendered during the prosecution of the patent, rather than imposing a complete bar that resorts to the very literalism the equivalents rule is designed to overcome," the Court
stated. The Court noted, too, that in adopting the complete bar, the Court of Appeals ignored the guidance of
Warner-Jenkinson, which instructed that courts act cautiously in adopting changes that disrupt the settled expectations of the inventing community.
Where none of previously patented femoral prostheses involved distal tip integral with stem of prosthesis in
manner of proposed prosthesis, prosthesis was not obvious. Stryker Corp. v Intermedics Orthopedics (1995, ED
NY) 891 F Supp 751.
Patents for pioneer drug to treat gastrointestinal disorders were not invalid for lack of novelty under Patent
Act; no single prior art reference, read as one of ordinary skill in art at time of invention would have read it, described each and every element of any claim of patents at issue. 35 U.S.C.A. § 102(b). In re Omeprazole Patent
Litigation, 490 F. Supp. 2d 381 (S.D. N.Y. 2007).
Patent for pre-brushing dental rinse was not invalid for obviousness; none of the prior art references disclosed rinse that included both lauryl sulfate and tetrasodium pyrophosphate, none of the prior art references addressed problem of low temperature instability or low temperature precipitation or flocculation, alleged infringer
23 A.L.R. Fed. 326
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resorted to copying patented rinse, patented rinse was a commercial success, and other companies had tried but
failed to develop comparable product. 35 U.S.C.A. § 103. Pfizer, Inc. v. Perrigo Co., 988 F. Supp. 686
(S.D.N.Y. 1997).
Improved viewfinder for motion picture camera is not shown to be obvious by hindsight collection of prior
art no more pertinent than art considered by Examiner and failing to suggest patented improvement. Arriflex
Corp. v Aaton Cameras, Inc. (1983, SD NY) 220 USPQ 424.
Patent on successful control valve improving over prior art and using individual passageway grooves differing from anything suggested in art was properly held valid. Control Components, Inc. v Valtek, Inc. (1980,
CA5) 204 USPQ 785.
Patents on tacky mats and frames for cleaning shoes at entrances to clean rooms are obvious from prior art
suggestions for tacky mats and devices for holding mats in place. Arbrook, Inc v American Hospital Supply
Corp. (ND Tex) 202 USPQ 676, affd in part and revd in part on other grounds (CA5 Tex) 645 F2d 273, 210 USPQ 84.
Patent on snowmaking machine that used fan to divide water, mix with air and accomplish nucleation at fan
tip vortices was valid and unobvious where design advanced in unobvious way from prior art, differed sufficiently from snowmaking machine using compressed air supply, and enjoyed substantial commercial success.
Hanson v Alpine Valley Ski Area, Inc. (1979, CA6) 204 USPQ 803.
Prior art suggesting carbon particles in refractory brick makes particular combination of carbon particles obvious so that patent is invalid; evidence that much of industry was licensed under patent on adding carbon
particles to refractory brick is attributable to economics of particular particles used and does not overcome obviousness of patent from prior art suggesting similar carbon particles in refractory bricks. Eltra Corp. v Basic Inc.
(CA6) 202 USPQ 630.
Finding that patent for method of making purified lutein crystals was not obvious in light of prior art journal
article was supported by evidence that article would not have taught claimed method to person of ordinary skill
in the art, and that claimed method had satisfied long-felt need and achieved significant commercial success. 35
U.S.C.A. § 103(a). Kemin Foods, L.C. v. Pigmentos Vegetables del Centro S.A. de C.V., 357 F. Supp. 2d 1105
(S.D. Iowa 2005).
Competitor did not show that combination of all limitations of patent claims were found in prior art, or that
one of ordinary skill in the art would have been motivated to combine limitations of any claim, as required for
claim that patents were invalid as obvious, by, in essence, handing court pieces of jigsaw puzzle and asking
court to assemble it. 35 U.S.C.A. § 103(a). In re Cygnus Telecommunications Technology, LLC, Patent Litigation, 481 F. Supp. 2d 1029 (N.D. Cal. 2007).
Competitor did not show by clear and convincing evidence that citation of book on psychoacoustics within
prior art paper would have led one of ordinary skill in the art to combine two to result in audio encoding patent,
and thus render it invalid as obvious, where competitor's expert did not opine where corresponding structure of
function could be found in prior art and expert for patent owner testified that elements of claim were not found
in prior art paper and that it was not obvious to combine other art to arrive at those claim limitations. 35
U.S.C.A. § 103(a). Lucent Technologies Inc. v. Gateway, Inc., 509 F. Supp. 2d 912 (S.D. Cal. 2007).
Where there is range disclosed in prior art, and claimed invention falls within that range, there is presumption of obviousness, which can be rebutted by evidence that: (1) prior art taught away from claimed invention, or
(2) that there are new and unexpected results relative to prior art. 35 U.S.C.A. § 103. Iron Grip Barbell Co., Inc.
v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004).
Although suggestion to combine prior art references, for purpose of determining whether patent is invalid as
obvious, may flow from nature of problem, suggestion more often comes from teachings of pertinent references
or from ordinary knowledge of those skilled in art that certain references are of special importance in particular
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field. 35 U.S.C.A. § 103. Akamai Technologies, Inc. v. Cable & Wireless Internet Services, Inc., 344 F.3d 1186,
68 U.S.P.Q.2d (BNA) 1186 (Fed. Cir. 2003).
Where prior art reference failed to disclose four particular synchronization functions included in patent
claim relating to field of digital wireless telephony, and no combination of prior art references described four
particular functions recited in claim, claim was neither anticipated nor obvious. Motorola, Inc. v. Interdigital
Technology Corp., 121 F.3d 1461, 43 U.S.P.Q.2d (BNA) 1481 (Fed. Cir. 1997).
Patent for plastic, salt impregnated fishing lure was not invalid for obviousness, as prior art references did
not show or suggest combination of salty bait and plastisol, those in field of invention did not view such lure as
simple concept but as unfeasible combination, and evidence of commercial success, licensing activity, and copying indicated that claimed lure was not obvious. 35 U.S.C.A. § 103. Arkie Lures, Inc. v. Gene Larew Tackle,
Inc., 119 F.3d 953, 43 U.S.P.Q.2d (BNA) 1294 (Fed. Cir. 1997), reh'g denied, in banc suggestion declined,
(Sept. 11, 1997).
Dental device for delivering gas, abrasive, and liquid to surface of tooth to remove plaque without damaging
tooth was not obvious subject matter, considering scope and content of prior art, difference between device and
prior art, level of ordinary skill in art, and objective evidence of nonobviousness. Electro Medical Sys., S.A. v
Cooper Life Sciences (1994, CA FC) 34 F3d 1048, 32 USPQ2d 1017.
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§ 17. Combination exceeding sum of parts; "synergistic effect" found
The United States Supreme Court in the Great Atlantic & Pacific Tea Co. Case (1950) 340 US 147, 95 L Ed
162, 71 S Ct 127, reh den 340 US 918, 95 L Ed 663, 71 S Ct 349, supra § 3[a], commented that the subject of
the patent there held invalid was "wanting in any unusual or surprising consequences" from the unification of
the elements concerned, and asserted in that case that "only when the whole in some way exceeds the sum of its
parts" was an accumulation of old devices patentable; in the Adams Case (1966) 383 US 39, 15 L Ed 2d 572, 86
S Ct 708, supra § 12, the Supreme Court, after turning to the question of obviousness, referred to the "unexpected" operating characteristics of the combination of old elements forming the subject of the patent there held valid; and in Anderson's-Black Rock, Inc. v Pavement Salvage Co. (1969) 396 US 57, 24 L Ed 2d 258, 90 S Ct 305,
supra § 12, it reasserted that a combination of elements may result in an effect greater than the sum of the several effects taken separately, but pointed out that no such "synergistic result" was argued by the unsuccessful patentee in that case.Second Circuit
Leinoff v Louis Milona & Sons, Inc. (1982, SD NY) 556 F Supp 273, 219 USPQ 1186, affd (CA FC)
726 F2d 734, 220 USPQ 845
Fourth Circuit
Plasser American Corp. v Canron, Inc. (1980, DC SC) 546 F Supp 589, 217 USPQ 823
Sixth Circuit
TWM Mfg. Co. v Dura Corp. (1983, CA6 Mich) 722 F2d 1261, 221 USPQ 25
Ninth Circuit
Omark Industries, Inc. v Textron, Inc. (1982, CA9 Or) 688 F2d 1242, 216 USPQ 749 (chainsaw)
Sarkisian v Winn-Proof Corp. (1983, CA9 Or) 697 F2d 1313
Federal Circuit
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Page 168
Connell v Sears, Roebuck & Co. (1983, CA FC) 722 F2d 1542, 220 USPQ 193
Jervis B. Webb Co. v Southern Systems, Inc. (1984, CA FC) 742 F2d 1388, 222 USPQ 943
Noting these remarks, the lower federal courts in a number of cases in which a particular combination of old
elements did not produce merely the usual or expected result from that combination, but the combination resulted in an effect greater than the sum of its components, have stated or recognized that this synergistic effect was
indicative of nonobviousness of the patented combination.
Thus, in Ling-Temco-Vought, Inc. v Kollsman Instrument Corp. (1967, CA2 NY) 372 F2d 263, the patent
on a data plotting and indicating device which provided a relatively inexpensive method of projecting a clear image of the paths of a number of airplanes on a screen while at the same time preserving a permanent record was
held valid, the court applying the teachings of Graham to conclude that this patentee's solution of the problem
was not obvious within the meaning of 35 U.S.C.A. § 103, despite the fact that in the prior art there was a patent
on a device that was never manufactured but which involved the conception of recording a trace of the incoming
data on an opaque plate covered by removable material and transmitting the data to a screen by use of a projector. Whatever may be the aggregate, the whole must exceed the sum of the several contributing elements, the
court held, and that is precisely what this later patent did, for the concept of mounting a stylus on a moving
transparent plate was previously unknown and this invention exceeded the sum of all the prior art.
A combination patent was at issue in Van Gorp Mfg., Inc. v Townley Industrial Plastics, Inc. (1972, CA5
Fla) 464 F2d 16, and the court held it valid upon finding that the key facet of the patentee's patent was the method of combining certain parts old in the art in such a manner as to achieve the desired results, the combination of
these elements resulting in an effect greater than the sum of the effects taken separately. Such a synergistic result, the court said, is strong if not conclusive evidence of nonobviousness.
And in Canaan Products, Inc. v Edward Don & Co. (1968, CA7 Ill) 388 F2d 540, the patent relating to a
moist paper applicator inclosed in a pouch which, upon being opened, could be used to wash the hands and face
and then be used as a drying towel, was held valid, and its commercial embodiment to be novel, utilitarian, and
nonobvious. At the trial the alleged infringers repeatedly referred to "drying" as being solely an evaporative
step, but the patentee claimed and the court found that the drying which the moist towelettes did was an absorptive process. The court pointed out that the envelope, paper, and lotion were all individually old, but that the
manner in which they were combined and the results of the combination were clearly unobvious, for one would
not expect that a small piece of paper could perform the same drying function as a cloth or paper towel while it
remained moist. The court added that the fact that the alleged infringers could not properly explain how it
happened even after it had been done was strong proof of the unobviousness of such a combination.
The court found a "synergistic effect" especially applicable to the patent on a nestable, thin-wall plastic container whose principal use was in applications which required dependable automatic dispensing of such containers, in Illinois Tool Works, Inc. v Sweetheart Plastics, Inc. (1971, CA7 Ill) 436 F2d 1180, cert dismd 403 US
942, 29 L Ed 2d 722, 91 S Ct 2270. It held the patent valid, noting that in this case the use of two or more elements from the prior art together increased the effectiveness of one of the elements, and successfully achieved
something denied the marketplace in the past.
The court affirmed the validity of the patent on a car-wash device in Malsbary Mfg. Co. v Ald, Inc. (1971,
CA7 Ill) 447 F2d 809, saying that the combination stated in the claim made possible an apparatus capable of
automatic spray washing which cleaned the top, sides, and ends of an automobile efficiently and without requiring the presence of an operator. The elements of the patent in suit were combined in a new and useful way, not
otherwise attainable under the prior art, the court concluded, and such a combination is clearly patentable.
See also Bowser, Inc. v United States (1967) 181 Ct Cl 834, 388 F2d 346, where the court said that while 35
23 A.L.R. Fed. 326
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U.S.C.A. § 103 had eliminated the need to apply severe tests of patentability such as that requiring an "unusual
and unexpected result," a finding of an unexpected result should not be disregarded, because clearly it could be
considered as one of the factors contributing to nonobviousness.
Cases:
Combination of yarn tensioning elements improving substantially over art and solving problems in art operates in different manner to produce improved result and is not obvious from art. Rosen v Lawson-Hemphill, Inc.
(CA1 RI) 549 F2d 205, 193 USPQ 193.
Although many patents covering new combinations of old materials have been invalidated for obviousness,
such new combination inventions are not inherently unpatentable; relevant legal standard is sometimes defined
as whether new combination results in effect greater than sum of several effects taken separately. International
Tel. & Tel. Corp. v Raychem Corp. (CA1 Mass) 538 F2d 453, cert den 429 US 886, 50 L. Ed. 2d 167, 97 S Ct
238.
Fact that plaintiff's burglar-proof window grill constituted combination of existing components did not preclude finding of nonobviousness where components had been directed toward new functions in nonobvious manner. Shackelton v J. Kaufman Iron Works, Inc. (1982, CA2 NY) 689 F2d 334, 217 USPQ 98, cert den (US) 75 L
Ed 2d 931, 103 S Ct 1500.
Combination claim containing elements old in art is valid not only when covering "new functions" but also
when covering "co-operation" of elements producing new results representing marked improvement over prior
art, and claims on combination of known ball and valve with improved seal are not summarily invalid for overclaiming. Jamesbury Corp. v Litton Industrial Products, Inc. (1978, CA2 Conn) 586 F2d 917, 199 USPQ 641,
cert den 440 US 961, 59 L Ed 2d 774, 99 S Ct 1503, 201 USPQ 960, later proceeding (CA FC) 756 F2d 1556,
225 USPQ 253, later proceeding (DC Conn) 646 F Supp 1495, 1 USPQ2d 1717, affd (CA FC) 839 F2d 1544, 5
USPQ2d 1779, cert den 488 US 828, 102 L Ed 2d 57, 109 S Ct 80.
Combination patents are subject to strict scrutiny because they remove existing knowledge and access to
materials from public domain. Dielectric Laboratories, Inc. v American Technical Ceramics (1982, ED NY) 545
F Supp 292, 217 USPQ 1122.
The motivation to combine prior art references need not be explicit, but may be inferred from the nature of
the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art;
in some situations, where the prior art and the invention at issue are relatively straightforward, the motivation to
combine may be "apparent without more." 35 U.S.C.A. § 103(a). Scanner Technologies Corp. v. Icos Vision
Systems Corp., N.V., 253 F. Supp. 2d 624 (S.D. N.Y. 2003), adhered to on reconsideration, 2003 WL 1961565
(S.D. N.Y. 2003).
Combination of known elements may be unobvious where such elements have been combined to produce
useful and unexpected result; in patent infringement and validity action patentee's invention is not obvious to
one of ordinary skill in art where all of elements of device, although known in prior art, are combined in way
that rose to level of invention. Dennison Mfg. Co. v Ben Clements & Sons, Inc. (SD NY) 467 F Supp 391.
An invention is obvious when the prior art would have suggested to one of ordinary skill in the art that this
process should be carried out and would have a reasonable likelihood of success, viewed in the light of the prior
art; however, an invention is not obvious solely because it is composed of elements that are all individually
found in the prior art. Alza Corp. v. Mylan Laboratories, Inc., 310 F. Supp. 2d 610 (D. Vt. 2004).
Patent for composition and method for unclogging skin pores, calling for application of chemically-coated
sheet material to skin and then removal of same after chemical had dried, was not invalid as obvious, even if
23 A.L.R. Fed. 326
Page 170
person of skill in the art would have been motivated to combine prior art references in order to achieve same invention, where invention was unexpectedly more effective than prior art. 35 U.S.C.A. § 103. Kao Corp. v. Unilever U.S., Inc., 334 F. Supp. 2d 527 (D. Del. 2004).
Patent for extended release pharmaceutical preparations was not invalid as obvious, though it allegedly
combined elements from various prior art references, absent showing of some teaching, suggestion, or reason in
prior art that would have led one of ordinary skill in art to combine elements. 35 U.S.C.A. § 103(a). Astrazeneca
AB v. Mutual Pharmaceutical Co., Inc., 278 F. Supp. 2d 491 (E.D. Pa. 2003).
Aggregation of existing components to create new amphibious swamp vehicle produced synergistic effect
where new craft could travel for longer periods through stump-filled areas and carried heavier loads than existing vehicles. Kori Corp. v Wilco Marsh Buggies & Draglines, Inc. (1983, CA5 La) 708 F2d 151, 219 USPQ 286
, transf to (CA FC) 761 F2d 649, 225 USPQ 985, cert den (US) 88 L Ed 2d 229, 106 S Ct 230.
Section 103 cannot be easily satisfied by inventions that rearrange old elements in new combinations with
each element performing same function it performed in prior art, even though new combination produces more
striking result than old ones or makes something stronger than it was before. With regard to mechanical objects,
question is not whether pieces of prior art could be put together to make anticipation or obvious rejection, but
whether there is any teaching or disclosure in prior art as to what purpose it would serve to put them together.
Tri-Collar, Inc. v Reamco, Inc., Div. of Sun Oil Co. (1982, WD La) 538 F Supp 669, 214 USPQ 590.
Unique combination of several existing elements in one piece of furniture rendered patented design nonobvious. Benchcraft, Inc. v Broyhill Furniture Industries, Inc. (1988, ND Miss) 681 F Supp 1190, 7 USPQ2d
1257.
When obviousness is based on the teachings of multiple prior art references, to establish a prima facie case
the movant must show some reason, suggestion, or motivation that would have led a person of ordinary skill in
the art to combine the relevant prior art teachings in the manner claimed. 35 U.S.C.A. § 103. Transocean Offshore Deepwater Drilling, Inc. v. GlobalSantaFe Corp., 443 F. Supp. 2d 836 (S.D. Tex. 2006).
Patents on combinations of elements require slightly higher standard of unobviousness represented by synergism in improved result; and for lack of this, patent on hinge for folding door was invalid as obvious. Smith v
ACME General Corp. (1980, CA6) 204 USPQ 1060.
Patent on device for tool selection and interchange under numerical control is combination of elements producing synergistic result not obvious from prior art so that patent is valid. Kearney & Trecker Corp. v Cincinnati
Milacron, Inc. (CA6) 562 F2d 365, 195 USPQ 402.
In determining patentability, courts are guided by 35 U.S.C.A. § 103: requirement that invention reflect "synergism," or achieve "synergistic result" before it may be held patentable, does not appear in § 103; test of obviousness under § 103 is whether invention as whole would have been obvious to one of ordinary skill in art, so
that references to synergism as patentability requirement are unnecessary and confusing. Torin Corp. v Philips
Industries, Inc. (1985, SD Ohio) 625 F Supp 1077, 228 USPQ 465.
Noting that synergistic effect was irrelevant to obviousness determination, court found patent on harrow
having angled teeth oriented and operating like teeth of prior art patent to be invalid as obvious, even though
patent could cooperate with disc harrow to achieve advantage not claimed. Lee Blacksmith, Inc. v. Lindsay
Bros., Inc., 605 F.2d 341, 203 U.S.P.Q. (BNA) 211 (7th Cir. 1979).
Synergy is not necessary or proper test for obviousness of inventions combining known elements, and under
exclusive Graham test, fire door closer combining known elements in ways that would be obvious to ordinary
worker at time invention was made is obvious, and patent is invalid. Republic Industries, Inc. v Schlage Lock
Co. (CA7 Ill) 592 F2d 963, 200 USPQ 769.
Combination of prior art elements need not produce synergistic effect in order for combination patent to be
valid. National Business Systems, Inc. v AM International, Inc. (1982, ND Ill) 546 F Supp 340, 217 USPQ 235.
23 A.L.R. Fed. 326
Page 171
To be patentable, combination of elements must produce something more than some of pre-existing elements, there must be synergistic result that is itself nonobvious; novel combination of old elements that would
so co-operate as to produce new and useful results or substantial increase in efficiency is patentable. Reynolds
Metals Co. v Aluminum Co. of America (ND Ind) 457 F Supp 482, revd on other gnds (CA7 Ind) 609 F2d 1218,
cert den 446 US 989, 64 L. Ed. 2d 847, 100 S Ct 2976.
Sameness and difference in function are simply factors to be considered in answering question of obviousness; basic inquiry remains whether and to what degree difference in function supports conclusion that device in
question achieves "unusual and surprising results." Sarkisian v Winn-Proof Corp. (1983, CA9 Or) 697 F2d 1313.
Determination of unusual or surprising result is requisite to finding of nonobviousness of combination patent. Sarkisian v Winn-Proof Corp. (1982, CA9 Or) 688 F2d 647, on remand (CA9 Or) 697 F2d 1313 and cert
den (US) 75 L Ed 2d 930, 103 S Ct 1499.
Patent for rock bit used in drilling for oil and gas was affirmed where combination of O-ring with journal
bearing had synergistic effect by producing first consistent 100-plus hour rock bit, about double previous maximum life span. Smith International, Inc. v Hughes Tool Co. (1982, CA9 Cal) 664 F2d 1373, 215 USPQ 592,
Rejecting "synergism" analysis which focuses on obviousness of combination invention after it has been put
together, court adhered to standard announced in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545,
86 S Ct 684, which consists of three-part factual analysis to be followed when determining obviousness of incombination invention, emphasizing that basic question was whether any difference in function is significant
enought to support conclusion that device in question was not obvious to those of ordinary skill in relevant art.
Sarkisian v Winn-Proof Corp. (1981, CA9 Or) 662 F2d 596, 213 USPQ 912, withdrawn, rereported (CA9 Or)
686 F2d 671, on reh (CA9 Or) 688 F2d 647.
Substantial evidence supported jury verdict that design of filter for collecting dust from industrial plants
produced synergism, i.e., unusual and suprising results, where expert testimony established that utility of filter
was unmatched by any prior art, for unlike its predecessors, design produced simple unit with only one moving
part, consuming little energy, and capable of collecting unusually large amount of dust. Hammerquist v Clarke's
Sheet Metal, Inc. (1981, CA9 Or) 658 F2d 1319, 212 USPQ 481, on reh (CA9 Or) 688 F2d 647.
No unusual or suprising results are required unless patent merely combines old elements, and dental handpiece differing from prior art by using diaphragm valve in combination with hanger valve assembly is not mere
improvement but is innovatively different and not readily obvious to person of ordinary skill in field so that patent is valid. Austin v. Marco Dental Products, Inc., 560 F.2d 966, 195 U.S.P.Q. 529 (9th Cir. 1977), cert Marco
Dental Products, Inc. v. Austin, 435 U.S. 918, 98 S. Ct. 1477, 55 L. Ed. 2d 511, 197 U.S.P.Q. 448 (1978).
To withstand challenge, combination patent must be synergistic, it must result in effect greater than sum of
several effects taken separately, that is, to be valid combination patent must produce unusual or surprising result;
synergy requirement for combination patents does not apply to patent having many features distinguishing over
single prior art reference in question; thus, patent on waterbed having pneumatic periphery giving it functional
advantages over prior art is valid as unobvious even though differences from prior art are minor. Penn International Industries v Pennington Corp. (CA9 Cal) 583 F2d 1078, 200 USPQ 651.
Patent combining many technical concepts in electronic video analyzer for color film negatives produced
significant advance in art and is not obvious combination. Photo Electronics Corp. v England (CA9 Cal) 581
F2d 772, 199 USPQ 710.
Foundation building method using particular arrangement of steel and concrete in achieving significant advantages over prior art is not obvious from fact that separate steps and elements exist in uncombined ways in
prior art. Santa Fe-Pomeroy, Inc. v P & Z Co. (CA9 Cal) 569 F2d 1084, 197 USPQ 449.
Saw chain patent is not invalid for obviousness where, when plaintiffs added bumper link to saw chain,
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what appeared to be minor change was actually great step forward since it resulted in beneficial combination of
known elements and achieved results not contemplated by prior art, and invention solved problem loggers were
encountering in cutting brush with standard chain. Omark Industries, Inc. v Carlton Co. (DC Or) 458 F Supp
449, 201 USPQ 825, affd (CA9 Or) 652 F2d 783, 212 USPQ 413.
For patent to be invalid as obvious, there must have been some suggestion or motivation, prior to patented
invention, to make its combination of prior art elements. 35 U.S.C.A. § 103(a). Ruiz v. A.B. Chance Co., 357
F.3d 1270, 69 U.S.P.Q.2d (BNA) 1686 (Fed. Cir. 2004).
Patent for process of continuously anodizing aluminum was not invalid for obviousness, even though much
had been written on anodization at time invention was made, as no reference or combination of references
showed or suggested process as whole. Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437, 45 U.S.P.Q.2d
(BNA) 1269, 48 Fed. R. Evid. Serv. 611 (Fed. Cir. 1997), reh'g denied, in banc suggestion declined, (Feb. 23,
1998).
Combinability of teachings of prior art patents is not determinative of obviousness, which requires determination of whether hypothetical person of ordinary skill in relevant art, familiar with prior art references, would
have found it obvious to make structure corresponding to what is claimed. Re Sovish (1985, CA FC) 769 F2d
738, 226 USPQ 771.
Proper showing of unexpected results will rebut prima facie case of obviousness. Re De Blauwe (1984, CA
FC) 736 F2d 699, 222 USPQ 191.
Test for obviousness of colored embroidered emblem-making process over prior art requires answering
questions of whether combination of teachings of art suggests expressly or by implication possibility of achieving further improvement made by invention and whether claimed invention achieves more than combination of
prior art references suggest, expressly or by reasonable implication. Re Sernaker (1983, CA FC) 702 F2d 989,
217 USPQ 1.
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§ 18. Effect of absence of unusual or unexpected results
The synergistic effect of a combination of old elements, as an indication of nonobviousness, requires that
the result not be merely the usual or expected effect of that combination (§ 17, supra). It is the reverse of this
which most often causes the courts concern, when they search in vain for any unusual or unexpected results
from a combination of old elements. In a number of cases, the courts have found that the absence of any unusual
or unexpected results from a particular invention showed the obviousness of the subject matter.Second Circuit
Turner v Montgomery Ward & Co. (1982, ED NY) 556 F Supp 344, 219 USPQ 802
Sixth Circuit
Park-Ohio Industries, Inc. v Letica Corp. (1980, CA6) 205 USPQ 781
Seventh Circuit
Bontrager v Steury Corp. (ND Ind) 457 F Supp 526
Ninth Circuit
Mollura v Miller (1979, CA9) 204 USPQ 434
Penn International Industries, Inc. v New World Mfg., Inc. (1982, CA9 Cal) 691 F2d 1297, 216 USPQ
293
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Carpet Seaming Tape Licensing Corp. v Best Seam, Inc. (1982, CA9 Cal) 694 F2d 570, 216 USPQ 873,
1982-83 CCH Trade Cases ¶65087, cert den (US) 78 L. Ed. 2d 89, 52 USLW 3262
The patentee contended in U. S. Expansion Bolt Co. v Jordan Industries, Inc. (1973, CA3 Pa) 488 F2d 566,
23 ALR Fed 316, that the District Court should have considered whether his patent constituted a combination
patent having a synergistic effect, instead of having analyzed the obviousness of the differences between his patent and the prior art piece by piece in denying validity to his patent, but the Court of Appeals did not believe that
his patent created such an effect. The combination in the plaintiff's patented screw-nail known in the prior art
resulted simply in an effect which represented no more than the sum of the several effects taken separately, the
court said, and the screw-nail with the nylon anchor combination of the patent reflected no other effect which
was greater than or substantially different from the individual effects of the parts, which were obvious to one
having ordinary skill in the art.
Thus, where the patentee contended that his patent relating to a means of conveniently packaging electrical
resisters was valid because it produced an unexpected result, in Allen-Bradley Co. v Air Reduction Co. (1967,
DC Pa) 273 F Supp 930, affd (CA3 Pa) 391 F2d 282, the court held the patent invalid for obviousness, noting
that the concept of "unexpected result" had received considerable treatment by the courts, but that this patentee
did not achieve something new and unexpected by the use of the narrow adhesive tape, for he was faced with a
mechanical problem and found that the thin diameter resisters would adhere firmly to their transverse placement
on the thin adhesive band. This was true of common pins under a prior patent, the court pointed out, and the adhesive band in this patentee's package performed its expected function, retaining the material pressed against it.
Findings of the trial court that the patent in issue on a tree-wrapping machine was invalid, because the differences between it and the prior art were such that the differences would have been obvious at the time the machine was designed, were affirmed in Greening Nursery Co. v J & R Tool & Mfg. Co. (1967, CA8 Iowa) 376
F2d 738. The court pointed out that the fact that one patented device would have to be modified in order to accommodate a part of the device covered by another patent did not suffice to sustain the validity of the patent in
suit, which combined elements of both, saying that a mere improvement over the prior art does not rise to the
level of patentability, and that only when the whole in some way exceeds the sum of its parts is the accumulation
of old devices patentable.
The patent teaching a mechanism which embodied all of the common elements of existing load elevators for
trucks, but which taught a design whereby the loading platform, after use, could be manually rotated from the
horizontal position until it was inverted to rest under the bed of the truck, was held invalid in Santa Anita Mfg.
Corp. v Lugash (1966, CA9 Cal) 369 F2d 964, cert den 389 US 827, 19 L Ed 2d 83, 88 S Ct 83, the court saying
that the patent had not been shown to perform a new or unexpected function in light of the prior art. This patent
was a combination of two known elements, a parallel linkage system and an invertible platform, both taught by
prior art patents, the court pointed out, and with respect to an improvement patent, where the elements of the
primary patent were within the public domain, the addition of another element of prior art could not make the
device patentable unless it then performed a new or surprising function.
Assuming that a two-point grapple as distinguished from a grapple having three or more points was new in
the art, the court said in Young Corp. v Jenkins (1968, CA9 Or) 396 F2d 893, that, absent something unusual or
surprising about the result achieved by a two-point grapple, envisioned by the inventor at the time, the elimination of one or more jaws to obtain a two-point grapple would be obvious to one having ordinary skill in the pertinent art. It held the patent invalid, and rejected the patentee's contention that something fairly remarkable and
not to be anticipated by one of ordinary skill was accomplished by cutting down the device to two jaws.
The argument was made by the unsuccessful patentee in Regimbal v Scymansky (1971, CA9 Wash) 444
F2d 333, that the enactment of 35 U.S.C.A. § 103 ousted "unusual or surprising" results as the test for patentab-
23 A.L.R. Fed. 326
Page 174
ility of combination devices, and substituted obviousness as the sole test, but the court said that unusual or surprising results, although not the only consideration, were certainly the central standard that must be satisfied in
establishing nonobviousness for combination devices. It noted that the Supreme Court in the Great Atlantic &
Pacific Tea Co. Case (1950) 340 US 147, 95 L Ed 162, 71 S Ct 127, reh den 340 US 918, 95 L Ed 663, 71 S Ct
349, supra § 3[a], determined that the standard for measuring the obviousness of an idea to combine elements
known to the prior art was whether this combination produced "unusual or surprising" results, and stated that in
the absence of authority to the contrary, this remained the proper standard for determining the "obviousness" of
a combination patent.
It was argued in Hewlett-Packard Co. v Tel-Design, Inc. (1972, CA9 Cal) 460 F2d 625, that the patentee's
device was not obvious because none of the old elements of the prior art, taken separately, suggested the combination contained in his patent, but the court held it invalid for obviousness, pointing out that the statutory
standard of patentability was directed to the person of ordinary skill in the pertinent art, and that the fact that the
suggestion of combination did not inhere in the separate elements of the prior art which had been combined
would not support patentability if the combination of those elements produced results which were neither unusual nor surprising to those of ordinary skill in the art.
And see Hewlett-Packard Co. v Tel-Design, Inc. (1972, CA9 Cal) 460 F2d 625, where the District Court
made no findings of fact that the combination of old elements in the patent at issue resulted in any unusual or
surprising result. In reversing the District Court's finding of validity, the Court of Appeals said that in view of
the findings it was left without the factual basis or central standard that must be satisfied in establishing nonobviousness for combination devices.
The court said in Canadian Ingersoll-Rand Co. v Peterson Products of San Mateo, Inc. (1963, DC Cal) 223
F Supp 803, affd in part and revd in part on other grounds (CA9 Cal) 350 F2d 18, holding invalid a fiber glass
cutter, that what this patentee did in 1951 was not the result of any inventive genius but the ordinary response of
one skilled in the art to the advent of fiber glass in the form of roving which became available only experimentally in 1951, the patentee having to wait to get fiber glass in the form of roving, and when he saw it he got the
idea of making a small hand-held cutter to cut it. Ordinarily, when patent claims are drawn to a mere congregation of two or more well-known elements the combination is unpatentable, unless the combination of such elements or steps produces in some way or manner a surprising or unusual result which would not have been expected by a person having ordinary skill in the art, the court concluded.
Cases:
See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S. Ct. 971, 103 L. Ed. 2d 118, 9
U.S.P.Q.2d (BNA) 1847 (1989), § 6[a].
Combination patent on water flush system to remove cow manure from dairy barn with abrupt release of
water for sheet flow across barn floor for quick removal of waste without hand labor is invalid for obviousness
even though more convenient, cheaper, and faster than prior art, and even though commercially successful,
where all individual elements of combination were old in dairy business, and combination of old elements to
produce abrupt release of water is within skill of ordinary mechanic; courts should scrutinize combination
claims with care proportioned to difficulty and improbability of finding invention in assembly of old elements.
Sakraida v Ag Pro, Inc., 425 US 273, 47 L. Ed. 2d 784, 96 S Ct 1532, reh den 426 US 955, 49 L. Ed. 2d 1194,
96 S Ct 3182.
Patent on self-checking monitoring system is obvious as applying generally known devices and methods in
control system art and not producing any new or surprising result from particular combination of features. Scully
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Page 175
Signal Co. v Electronics Corp. of America (CA1 Mass) 570 F2d 355, 196 USPQ 657, cert den 436 US 945, 56
L. Ed. 2d 787, 98 S Ct 2848.
Applying generally known digital data processing techniques and components to upgrade prior art electromechanical devices for racetrack betting is obvious advance, considering state of development of data processing art, so that patent is invalid. Digitronics Corp. v New York Racing Asso. (CA2 NY) 553 F2d 740, 193
USPQ 577, cert den 434 US 860, 54 L. Ed. 2d 133, 98 S Ct 187.
Patent on wood splitting wedge was invalid as obvious where prior art revealed every element of patent,
even in combination, where features of wedge did not perform in unexpected manner, and where patent simply
arranged old elements with each performing same function it had been known to perform. Omark Industries, Inc.
v Colonial Tool Co. (1982, CA3 NJ) 672 F2d 362, 217 USPQ 13.
Patent on aluminum baseball bat is invalid as obvious combination of concepts available in art for forming
bats of metal, giving bats equal weight per unit of length, and plugging ends of bats with various materials. Aluminum Co. of America v Amerola Products Corp. (CA3 Pa) 552 F2d 1020, 194 USPQ 1.
See Imperial Chemical Industries, PLC v Danbury Pharmacal, Inc. (1991, DC Del) 777 F Supp 330, § 8.
Patent owner can rebut a prima facie case of obviousness by showing "unexpected results," i.e. that the
claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art
would have found surprising or unexpected. Pfizer Inc. v. Teva Pharmaceuticals USA, Inc., 460 F. Supp. 2d 655
(D.N.J. 2006).
Final step of yarn dyeing process involving "edge crimping" is generally known in art so that combination
of edge crimping with other known steps of process results in invalidity of patent for obviousness. Fred Whitaker Co. v E. T. Barwick Industries, Inc. (CA5 Ga) 551 F2d 622, 194 USPQ 113.
Obvious and nonobvious combinations of prior art elements are distinguished on basis of whether "creative"
as opposed to "mechanical" skills are required or whether surprising or synergistic results are achieved; combination patent on tuning circuitry for radio or tv is scrutinized with special care, and it is invalid for obviousness
from prior art for producing no unusual or surprising consequences. Parker v Motorola, Inc. (CA5 Fla) 524 F2d
518, reh den (CA5 Fla) 526 F2d 1407 and cert den 425 US 975, 48 L. Ed. 2d 799, 96 S Ct 2175, reh den 427 US
908, 49 L. Ed. 2d 1200, 96 S Ct 3194.
Patent on bus seats having single inverted T pedestal is obvious collection of prior art elements including inverted Ts, and single pedestals for bus seats, and since combination does not produce synergistic effect, patent is
invalid. American Seating Co. v National Seating Co. (CA6 Ohio) 586 F2d 611, 199 USPQ 257.
Patent on mounting both electric and gas meters on single pedestal does not involve any co-operation or
combined or new functions and is invalid as obvious from prior art pedestals for meters and power boxes. Nickola v Peterson (CA6 Mich) 580 F2d 898, 198 USPQ 385, cert den (US) 59 L. Ed. 2d 774, 99 S Ct 1504.
Patent on method of constructing insulated windows using steps all separately available in prior art is invalid as obvious for not producing new or different function from prior art suggestions, or achieving any synergistic
effect. Reynolds Metals Co. v Acorn Bldg. Components, Inc. (CA6 Mich) 548 F2d 155, 192 USPQ 737.
23 A.L.R. Fed. 326
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Patent on car washing machine is invalid as obvious from prior art patents suggesting lazy tong and parallelogramatic linkages that are combinable within level of ordinary skill and art. Allen Group, Inc. v Nu-Star, Inc.
(CA7 Ill) 575 F2d 146, 197 USPQ 849.
Noting that 35 U.S.C.A. § 103 cannot easily be satisfied by inventions that rearrange old elements in new
combinations with each element performing same function it performed in prior art, even though new combination produces more striking results than old ones, court finds that patents on bag differ in only obvious ways
from prior art in forming bags as multilayered with stepped edges and secured with hot melt adhesive, because
all of these expedients are known in bag making art. St. Regis Paper Co. v Bemis Co. (CA7 Ill) 549 F2d 833,
Claims reciting vacuum cleaner environment in preamble and otherwise defining improved filter shown to
be old in art are directed to filter and not to unobvious combination so that summary judgment of invalidity is
affirmed. Super Products Corp. v D P Way Corp. (CA7 Wis) 546 F2d 748, 192 USPQ 417.
Combination of old elements, none of which performs different function or operation than previously, is not
patentable even though result may be improvement, and court finds patent on vehicle equipment support bar
with T-shaped slots and fittings is invalid for obviousness from prior art. Burland v Trippe Mfg. Co. (CA7 Ill)
543 F2d 588, 191 USPQ 667.
Combination claims should be carefully scrutinized because of difficulty and improbability of finding invention in assembly of old elements, and prior art showing speedometers adapted to various vehicles and
coupled to driveshafts in various ways makes patent on snowmobile speedometer invalid for obviousness. Pederson v Stewart-Warner Corp. (CA7 Ill) 536 F2d 1179, 192 USPQ 20, cert den 429 US 985, 50 L. Ed. 2d 597, 97
S Ct 505.
Prior art machines that are readily combinable in logical manner are properly considered as invalidating patents on machines for cleaning soaking pits for steel mills as obvious. Louis A. Grant, Inc. v Keibler Industries,
Inc. (CA7) 191 USPQ 424.
Patent relating to manufacturing process for prestressed precast concrete was invalid as obvious where application of hydraulic drive to mobile casting bed, while admittedly more accurate and efficient than prior mechanical means, appeared to be no more than work of skilled mechanic combining two devices both known in prior
art. Span-Deck, Inc. v Fab-Con, Inc. (1982, CA8 Minn) 677 F2d 1237, 215 USPQ 835, cert den (US) 74 L Ed 2d
294, 103 S Ct 318.
Combining known elements of truss design in way that improves functioning and capability of rotary irrigation equipment does not produce synergistic effect and is invalid. Reinke Mfg. Co. v Sidney Mfg. Corp. (CA8
Neb) 594 F2d 644, 201 USPQ 344.
In action alleging patent infringement and unfair competition, patent of plaintiff's stepstool was invalid
where combination of well-known elements did not produce effect greater than sum of several effects taken separately, notwithstanding its commercial success. Black & Decker Mfg. Co. v Ever-Ready Appliance Mfg. Co.
(1981, ED Mo) 518 F Supp 607, 213 USPQ 842, affd Black & Decker Mfg. Co. v Ever-Ready Appliance Mfg.
Co. (1982, CA8 Mo) 684 F2d 546, 215 USPQ 97.
Air freight pallet combining features separately known in prior art to achieve improvement is obvious under
Graham test where device, which combines old elements, fails to create synergistic result or to disclose any unusual or surprising consequences. Satco, Inc. v Transequip, Inc. (CA9 Cal) 594 F2d 1318, 202 USPQ 567, cert
den 444 US 865, 62 L. Ed. 2d 89, 100 S Ct 137.
Key elements of patent on shoring are known from separate prior art patents and are combined in obvious
way so that patent is invalid. Ceco Corp. v Bliss & Laughlin Industries, Inc. (CA9 Cal) 557 F2d 687, 195 USPQ
23 A.L.R. Fed. 326
Page 177
337.
Improvement in floating reservoir cover combining separately known concepts for raising center of cover to
form rainwater collecting trough around perimeter is within ordinary skill in art and does not satisfy severe test
for patentability of combination so that patent is invalid. Globe Linings, Inc. v Corvallis (CA9 Or) 555 F2d 727,
194 USPQ 415, cert den 434 US 985, 54 L. Ed. 2d 479, 98 S Ct 611, reh den (US) 54 L. Ed. 2d 805, 98 S Ct 904
.
Patent claims on steering wheel cover combining known features of porosity and tough inner and outer skin
separated by foamed interior to improve over prior art in absorbing perspiration amount to minor and obvious
improvements suggested by prior art not considered by patent examiner, and claims are invalid as obvious.
Kamei-Autokomfort v Eurasian Automotive Products (CA9 Cal) 553 F2d 603, 194 USPQ 362, cert den 434 US
860, 54 L. Ed. 2d 133, 98 S Ct 186.
District Court's use of "unusual, surprising, new, and unexpected" results test was not error in finding patent
on hay harvester invalid as covering obvious improvements in preventing plugging up of cut hay. Deere & Co. v
Sperry Rand Corp. (CA9 Cal) 513 F2d 1131, 185 USPQ 495, cert den 423 US 914, 46 L. Ed. 2d 142, 96 S Ct
218.
Patent on agricultural fan using long, thin blades mounted in specific way on hub by generally known
mounting devices does not achieve any new or surprising result and collects features generally known separately
in art to be invalid as obvious. SSP Agricultural Equipment, Inc. v Orchard-Rite Ltd. (CA9) 202 USPQ 1.
No new or unusual result is accomplished by patented hairbrush having flexible spine supporting bendable
fingers carrying tufts of bristles so that patent is obvious combination of known elements and is invalid. Herschensoln v Hoffman (CA9) 201 USPQ 721.
Patents on haystacking machines are result of mechanical skill in combining elements separately known in
art and are invalid as obvious even though producing improved result. Deere & Co. v Hesston Corp. (CA10
Utah) 593 F2d 956, 201 USPQ 444, cert den 444 US 838, 62 L. Ed. 2d 49, 100 S Ct 75.
Patent combining several elements separately shown in prior art for pontoons and hoists for dry dock for
boats is invalid as obvious to persons of ordinary skill because of not producing new function or result. Rutter v
Williams (CA10 Okla) 541 F2d 878, 193 USPQ 760.
Factual inquiries involved in determining patent obviousness are: (1) scope and content of prior art; (2)
level of ordinary skill in art; (3) differences between claimed invention and prior art; and (4) secondary considerations of nonobviousness, such as commercial success, long–felt but unresolved need, failure of others, copying, and unexpected results. 35 U.S.C.A. § 103(a). Simmons, Inc. v. Bombardier, Inc., 328 F. Supp. 2d 1188 (D.
Utah 2004).
Evidence supported conclusion that patent for once-daily extended release form of oxybutynin to treat incontinence was invalid as obvious in light of prior art; prior art references, taken as a whole, were consistent
with the finding that in 1995 a person of ordinary skill in the art would have expected a general, albeit imperfect,
correlation between a drug's lipophilicity and its colonic absorptivity, and the district court could thus conclude
that, while colonic absorption was not guaranteed, a person of ordinary skill in the art would nonetheless have
perceived a reasonable likelihood of success and would have been motivated to combine prior art references to
make the claimed invention. 35 U.S.C.A. § 103(a). Alza Corp. v. Mylan Laboratories, Inc., 464 F.3d 1286, 80
U.S.P.Q.2d 1001 (Fed. Cir. 2006).
Finding that invention of transgenic mammal capable of expressing fibrinogen in its milk was unpatentable
as obvious was supported by evidence that elements of invention were present in prior art, that such prior art
contained motivation to combine elements, and that one of ordinary skill in art would have had reasonable expectation of success in generating recoverable amount of biologically active fibrinogen. 35 U.S.C.A. § 103(a).
Velander v. Garner, 348 F.3d 1359, 68 U.S.P.Q.2d (BNA) 1769 (Fed. Cir. 2003).
23 A.L.R. Fed. 326
Page 178
There is no requirement for "an effect greater" or for "unusual or surprising results" in determining nonobviousness under § 103. Kansas Jack, Inc. v Kuhn (1983, CA FC) 719 F2d 1144, 219 USPQ 857.
When present, synergism may point toward nonobviousness, but the absence of synergism has no place in
evaluating evidence on obviousness. Stratoflex, Inc. v Aeroquip Corp. (1983, CA FC) 713 F2d 1530, 218 USPQ
871.
Section 103 does not require invention to reflect synergism or to achieve synergistic result before it may be
held patentable. Chore-Time Equipment, Inc. v Cumberland Corp. (1983, CA FC) 713 F2d 774, 218 USPQ 673.
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§ 19. Other technical considerations
In cases preceding the Graham Case (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684 (supra § 12), the courts
developed rules for determining patentability, such as "a new and useful result," which were held in that case not
to apply the correct test of patentability. In some cases decided since then, however, the courts have gone back
to the rules of former cases or have referred to technical considerations other than those discussed in the preceding sections. A few of these "miscellaneous" cases follow, by way of illustrating what other technical factors
have been considered in recent decisions as indicia of nonobviousness.
For example, while denying validity to a patent, the court in Koppers Co. v Foster Grant Co. (1968, CA1
Mass) 396 F2d 370, said that "a marked improvement in result," while not a primary consideration, was to be
viewed as indicia of nonobviousness, but added that on the other hand, the patentee's accomplishments could not
alone save the patent.
In National Dairy Products Corp. v Borden Co. (1968, CA7 Wis) 394 F2d 887, cert den 393 US 953, 21 L
Ed 2d 364, 89 S Ct 378, the court noted that not a single person skilled in the art testified that this patentee's
method of gas flushing cheese packages was obvious at the time it was invented, but that the district judge held
that it was, saying in the course of his opinion that the principle of gas flushing, to the extent that it had been
followed as disclosed in the prior art, was practiced unwittingly without realization that it could be utilized for a
less cumbersome, faster, and yet satisfactory packaging method. Such an unwitting prior use did not evidence
obviousness in a later invention, the court said in reversing the judgment below, and in fact it indicated just the
opposite, for those workers were in pursuit of the same end result as that achieved by this patentee—a mold-free
packaging method—and yet they did not recognize the value of using gas alone to displace mold-inducing air,
but instead they relied on a vacuum to displace the air, using gas as an incidental aid in creating the vacuum.
The patent on a device for the alignment of filter belts used in the sanitation and industrial fields was held
valid in Eimco Corp. v Peterson Filters & Engineering Co. (1968, CA10 Utah) 406 F2d 431, cert den 395 US
963, 23 L Ed 2d 749, 89 S Ct 2105, the court noting that the vacuum drum filter belt process was well known in
the art at the time of the issuance of this patent, but that the new element claimed in this combination was a filter
belt guide which continuously and automatically realigned the belt before it returned to the drum surface. Patentability, the court said, must be determined on whether the combination as a whole would have been obvious
to a worker having ordinary skill in the art at the time the alleged invention was made; this is statutory law and
the law of this circuit. Generally, however, the court continued, when elements old in the art are combined together in a manner which secures a new and useful result, or an old result in a more facile, economical, or efficient way, there is a patentable combination.
23 A.L.R. Fed. 326
Page 179
Cases:
Patent for metering device used to measure quantities of "kneadable" materials fed into apparatus used to
blend coloring agents into plastic, was invalid for obviousness where mechanism merely put to new use mechanical principle of common gear pump. Colortronic Reinhard & Co. v Plastic Controls, Inc. (1981, CA1 Mass) 668
F2d 1, 213 USPQ 801.
Patent for producing proteins by genetic engineering was not invalid as obvious; patent was overwhelmingly
accepted as legitimate by pharmaceutical industry, and there was no showing that person having ordinary skill in
art at time of invention would have thought it obvious to combine linked cotransformation with subsequent amplification. 35 U.S.C.A. § 103(a). Trustees of Columbia University in City of New York v. Roche Diagnostics
GmbH, 272 F. Supp. 2d 90 (D. Mass. 2002).
In order to rise to level of independent contemporaneous conception that is evidence of obviousness, independent conception must be something that is intentionally developed, not happened upon by accident. Dennison
Mfg. Co. v Ben Clements & Sons, Inc. (SD NY) 467 F Supp 391.
Patents related to drug used to treat glaucoma were not obvious in light of prior art; one of ordinary skill in
art would not have been motivated to combine prior art, and would not have known that brimonidine was soluble
within pH ranges claimed in patents. 35 U.S.C.A. § 103. In re Brimonidine Patent Litigation, 666 F. Supp. 2d
429 (D. Del. 2009).
Patent for optical sensor used to identify pharmaceutical drug reactions was not invalid as obvious; there
was no showing that person of skill in art would have been motivated to make inventor's combination of prior art
diffraction grating with waveguiding film and chemo-responsive layer, and there were several secondary considerations of nonobviousness present. 35 U.S.C.A. § 103. Corning Inc. v. SRU Biosystems, 400 F. Supp. 2d 653
(D. Del. 2005).
A single prior art reference may be used to render a patent claim obvious, but there must be a suggestion or
motivation to modify its teachings to the claimed invention based on the reference itself, the knowledge of one
of ordinary skill in the art, or from the nature of the problem to be solved to support the obviousness conclusion.
Genzyme Corp. v. Atrium Medical Corp., 315 F. Supp. 2d 552 (D. Del. 2004).
Competitor failed to prove by clear and convincing evidence that the asserted claims of patent for aluminum
alloy product used in connection with aircraft fuselage skin were invalid for obviousness; although certain aspects of the claimed invention appeared in individual prior art references, competitor had not shown sufficient
reason, suggestion, or motivation to lead one of ordinary skill in the art to combine those aspects so as to render
the claimed invention obvious. 35 U.S.C.A. § 103(a). Rhenalu v. Alcoa, Inc., 224 F. Supp. 2d 773 (D. Del.
2002).
Claim 14 of patent for drug-in-adhesive transdermal patch was not obvious; prior art did not suggest to one
of ordinary skill in the art of transdermal delivery systems how to make patented invention. 35 U.S.C.A. § 103.
Key Pharmaceuticals, Inc. v. Hercon Laboratories Corp., 981 F. Supp. 299 (D. Del. 1997).
Use of light-emitting means to measure oxygen saturation with coding scheme designed to interpret variable
components was not obvious in light of prior art. BOC Health Care v Nellcor Inc. (1995, DC Del) 892 F Supp
598.
Patents for drug combining specific amounts of particular antidiarrheal compound and simethicone were in-
23 A.L.R. Fed. 326
Page 180
valid as obvious; prior art references, disclosing concurrence of diarrhea and flatulence, and teaching combination of other antidiarrheals with simethicone, would have clearly suggested patent's combination to one of ordinary skill in art. 35 U.S.C.A. § 103(a). McNeil-PPC, Inc. v. L. Perrigo Co., 207 F. Supp. 2d 356, 63 U.S.P.Q.2d
(BNA) 1493 (E.D. Pa. 2002).
Persistent problems in art of burning waste gases in petroleum stack and patentee's economical solution
eliminating previous components and achieving clean burn by injecting steam supported unobviousness and
validity of patent. John Zink Co. v National Airoil Burner Co., Inc. (1980, CA5) 205 USPQ 494.
Finding of relatively low level of creative skill in chair making art and tendency to use minor variations on
previous concepts is considered in finding chair patent obvious from collection of similar prior art. Steelcase,
Inc. v Delwood Furniture Co. (CA5 Ala) 578 F2d 74.
In the context of obviousness challenge to validity of patent, the reason, suggestion, or motivation to combine prior art references may be found explicitly or implicitly (1) in the prior art references themselves, (2) in
the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are
of special interest or importance in the field, or (3) from the nature of the problem to be solved, leading inventors to look to references relating to possible solutions to that problem. Verve, L.L.C. v. Crane Cams, Inc., 395 F.
Supp. 2d 558 (E.D. Mich. 2005).
Complicity is not to be equated with obviousness. Roberts v Sears, Roebuck & Co. (1983, CA7 Ill) 723 F2d
1324, 221 USPQ 504.
Court properly considers fact that suggestion for substituting tungsten for center electrode for spark plug is
derived from information supplied by others on longevity characteristics of tungsten at lower temperatures and
low operating temperatures within outboard marine engines and fact that substitution was readily made by supplier instead of inventor in finding that patent is invalid for obviousness. Brunswick Corp. v Champion Spark
Plug Co. (1982, CA7 Ill) 689 F2d 740, 216 USPQ 1.
Evidence that others experimented with automobile wheels having enlarged lug apertures and adapters for
fitting to different makes of automobiles results in finding that patented combination of enlarged lug holes and
adapter is obvious as result of likely experimentation in art, especially because both enlarged lug apertures and
adapters for enlarged holes were known separately in art. E-T Industries, Inc. v Whittaker Corp. (CA7 Ill) 523
F2d 636, 187 USPQ 369.
Prior art did not render obvious system for monitoring level of material in storage tank by discriminating
between true and false echo returns. Endress + Hauser, Inc. v Hawk Measurement Sys. Pty. (1995, SD Ind) 892
F Supp 1107.
Patent on improved truss design for rotary irrigation equipment allowing longer spans without compromising other qualities is nevertheless within skill that is ordinary in art and is invalid; level of ordinary skill in art
of rotary irrigation equipment is somewhat more than elementary skills in structural engineering arts and familiarity with irrigation equipment and basic principles of truss design, and such hypothetically skilled person could
achieve improvements of patent held invalid. Reinke Mfg. Co. v Sidney Mfg. Corp. (CA8 Neb) 594 F2d 644,
201 USPQ 344.
Patent on using known split-screen technology for making before and after comparisons is merely new use
of known device and is invalid as obvious. Lawrence v The Gillette Co. (CA9) 202 USPQ 642.
Routine experimentation using conventional techniques and quickly producing patented boiler cleaning
composition tends to show obviousness of solution and invalidity of patent. Halliburton Co. v Dow Chemical
Co. (CA10 Okla) 514 F2d 377, 185 USPQ 769.
Contemporaneous designs for automobiles and other boats having similar appearance to patented design for
boat are considered in finding obviousness and invalidity; level of skill in art relevant to design patent is level of
skill of ordinary designer in such art and familiarity with analogous designs such as automotive designs pertin-
23 A.L.R. Fed. 326
Page 181
ent to boat design. Sidewinder Marine, Inc. v Starbuck Kustom Boats & Products, Inc. (CA10) 202 USPQ 356.
In determining nonobviousness of invention, test is not "obvious to try," as this would disregard concept
that inquiry is whether invention as a whole would have been obvious. Ralston Purina Co. v Far-Mar-Co, Inc.
(1984, DC Kan) 586 F Supp 1176, 222 USPQ 863, affd in part and revd in part on other gnds (CA FC) 772 F2d
1570, 227 USPQ 177.
Claims for patent relating to anticonvulsive drug topiramate were not obvious; challenges of inventive process would have prevented one of ordinary skill in the art from traversing the multiple obstacles to easily produce the invention in light of the evidence available at the time of invention. Ortho-McNeil Pharmaceutical, Inc.
v. Mylan Laboratories, Inc., 520 F.3d 1358, 86 U.S.P.Q.2d 1196 (Fed. Cir. 2008).
Claims of patent disclosing a process for dyeing textile materials with catalytically hydrogenated leuco indigo were invalid for obviousness; although the patent claimed a new, more efficient, way of performing a
known function, dyeing indigo, the asserted innovation, storing leuco indigo solution in airtight containers for
immediate use in dyebaths, was merely exploitation of the well-known principle of vacuum packaging. 35
U.S.C.A. § 103(a). DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 80
U.S.P.Q.2d 1641 (Fed. Cir. 2006), cert. denied, 127 S. Ct. 2937, 168 L. Ed. 2d 262 (U.S. 2007).
Comment
The United States Supreme Court in DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 127
S. Ct. 2937, 168 L. Ed. 2d 262 (U.S. 2007), refused to grant certiorari from DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 80 U.S.P.Q.2d 1641 (Fed. Cir. 2006), cert. denied, 127 S.
Ct. 2937, 168 L. Ed. 2d 262 (U.S. 2007), in which the Federal Circuit held that claims of a patent disclosing a
process for dyeing textile materials with catalytically hydrogenated leuco indigo were invalid for obviousness.
Although the patent claimed a new, more efficient way of performing a known function, namely dyeing indigo,
the asserted innovation, storing leuco indigo solution in airtight containers for immediate use in dyebaths, was
merely an exploitation of the well-known principle of vacuum packaging. The petition for certiorari presented
three questions. First, it asked whether the Federal Circuit's standard for appellate review in patent cases that
does not give deference to a jury's verdict violates the Seventh Amendment. Second, it asked whether the Federal Circuit erred by ignoring substantial evidence of objective indicia of non-obviousness and instead finding that
an invention must be obvious if it is within the capability of a hypothetical ordinary artisan. Third, it asked
whether the Federal Circuit erred by creating a new corroboration requirement for all testimony in patent cases.
With regard to the third question, the petition for certiorari stated that, to reach its conclusion that the patent was
obvious, the Federal Circuit had to ignore the testimony of an inventor of the patent. It did so by stating that the
testimony was a bare assertion that was undocumented and non-specific. Thus, the petition said, the Federal Circuit used this case to extend its corroboration requirement far beyond any reasonable scope and in direct conflict
with its sister circuits.
Question was for jury, about whether patent which related to method of making multilayered plastic laminate boat hulls by rotational molding would have been obvious improvement over prior art, where competitor introduced clear and convincing evidence that prior art patent and published prior art articles, in combination, disclosed every element of claim, and "rotational molders were motivated" to combine those sources, and competitor also provided evidence that single-layer molding techniques were essentially same as multi-layer techniques
and single-layer techniques could have been used in construction of multi-layer products. 35 U.S.C.A. § 103(a).
Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 78 U.S.P.Q.2d 1705 (Fed. Cir. 2006).
23 A.L.R. Fed. 326
Page 182
USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005).
Fact that prior art taught that pursuit of combination employed in plaintiff's process would be prohibitively
expensive would not have discouraged one skilled in art from making combination. Re Farrenkopf (1983, CA
FC) 713 F2d 714, 219 USPQ 1.
Differences between invention and cited prior art cannot be ignored merely because those differences reside
in content of printed matter, and claim must be read as a whole to include printed matter and its relationship to
substrate in determining that invention is unobvious from prior art. Re Gulack (1983, CA FC) 703 F2d 1381,
217 USPQ 401.
Claimed intermediate differing from prior art intermediate in having dimethyl group appearing in end
product having unexpected superiority is "contributing cause" of improvement and is unobvious. Henry Magerlein, (Cust & Pat App) 202 USPQ 473.
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[END OF SUPPLEMENT]
B. Economic or "secondary" considerations
§ 20. In general
It has been observed that the judiciary is most ill-fitted to discharge the technological duties cast upon it by
patent legislation (Mr. Justice Frankfurter in Marconi Wireless Tel. Co. v United States (1943) 320 US 1, 87 L
Ed 1731, 63 S Ct 1393, reh den 320 US 809, 88 L Ed 489, 64 S Ct 25), and the necessity of determining under
the Patent Act of 1952 what "would have been obvious at the time the invention was made to a person having
ordinary skill in the art" has not simplified those duties. Before enactment of that Act, the courts relied upon
various "objective" subtests of invention to help in determining patentability, and under the statute they have recognized the continuing utility of such secondary considerations, whose focus is upon economic and motivational rather than technical issues.
The United States Supreme Court has approved "such secondary considerations as commercial success, long
felt but unsolved needs, failure of others, etc.," which may be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness,
these inquiries may have relevancy, it said in Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S
Ct 684.
The Supreme Court's views on certain secondary considerations appear in its response to the argument made
in Calmar, Inc. v Cook Chemical Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, that the development of a
workable sprayer eluded others who had long and unsuccessfully sought to solve the problem, and that the longfelt need in the industry for such a device, with its wide commercial success, supported patentability. The court
agreed that these legal inferences or subtests did focus attention on economic and motivational rather than technical issues, and were, therefore, more susceptible of judicial treatment than were the highly technical facts often present in patent litigation. The court observed that such inquiries might lend a helping hand to the judiciary,
and might also serve to guard against slipping into use of hindsight and to resist the temptation to read into the
prior art the teachings of the patent in suit, but held that these factors did not, in the circumstances of that case,
"tip the scales of patentability" in favor of claims of the patent in suit, which the court found clearly evident
from the prior art.
23 A.L.R. Fed. 326
Page 183
Although the United States Supreme Court has not directly applied "secondary considerations" based on
economic factors in its decisions under the Patent Act of 1952, the lower federal courts in a number of recent
cases have continued to refer approvingly to the secondary considerations in determining that the invention in
suit would not have been obvious to a person of ordinary skill in the art.
Thus, the court in Shields-Jetco, Inc. v Torti (1970, DC RI) 314 F Supp 1292, affd (CA1 RI) 436 F2d 1061,
stated that the expert testimony presented to it was insufficient to determine the issue of obviousness without
looking to the secondary factors, and it turned to those in holding the patent at issue valid.
The court remarked in finding an invention nonobvious, in Shaw v E. B. & A. C. Whiting Co. (1969, CA2
Vt) 417 F2d 1097, cert den 397 US 1076, 25 L Ed 2d 811, 90 S Ct 1518, reh den 398 US 954, 26 L Ed 2d 298,
90 S Ct 1866, that although the "subtests" or secondary considerations of validity could not be given talismanic
effect in its deliberations, they might be utilized to guard against hindsight and to resist the temptation to read
into the prior art the teachings of the invention in issue.
In Smith Industries International v Hughes Tool Co. (1968, CA5 Tex) 396 F2d 735, the court found that
none of the prior art patents would have made obvious the development of an effective seal for use in a bit used
in drilling oil wells, saying that any doubt on that score was removed by considering the legal inferences or
subtests which served to focus attention on economic and motivational rather than technical issues, and so were
more susceptible of judicial treatment than were highly technical facts.
The court held valid a patent on valves for use in development of the atom bomb, in Hobbs v United States
Atomic Energy Com. (1971, CA5) 451 F2d 849, finding the valve nonobvious under the primary inquiries of
fact, and pointing out that the secondary considerations supported validity.
In Arthur J. Schmitt Foundation v Stockham Valves & Fittings, Inc. (1966, DC Ala) 292 F Supp 893, affd
(CA5 Ala) 404 F2d 13, reh den (CA5 Ala) 420 F2d 699, cert den 398 US 965, 26 L Ed 2d 549, 90 S Ct 2177, the
court stated that obviousness must be determined on the basis of both technical factors and historical events and
conditions, such as the secondary considerations, and that, measured by these guidelines, the inventions in question were not obvious at the time they were made, under 35 U.S.C.A. § 103
The court in Matherson-Selig Co. v Carl Gorr Color Card, Inc. (1967, DC Ill) 301 F Supp 336, observed that
the nonobviousness of the patentee's process for making fabric sample charts was not entirely free from doubt
when considered in light of certain prior art references, and that certain prior art by itself and in combination
with other prior arts suggested the essential elements combined in this patentee's process. However, the court
went on, there were other countervailing considerations which were persuasive that the patentee's process was
not obvious, the evidence on secondary considerations being clear and supporting validity of this invention.
Caution
Proof of the secondary considerations, without proof of technical considerations which show nonobviousness,
will not establish the validity of a patent. See Calmar, Inc. v Cook Chemical Co. (1966) 383 US 1, 15 L Ed 2d
545, 86 S Ct 684, supra.
In other cases, the courts have, following the lead of the Graham and Calmar Cases, supra, referred approvingly to the secondary considerations, but nevertheless held them insufficient under the circumstances to negate
evidence of obviousness.
Thus, the patent on a device using semiconductors to provide a wall switch dimmer for lights was held invalid in Leviton Mfg. Co., Inc. v Slater Electric, Inc. (1970, DC NY) 331 F Supp 395. The court noted that the
failure of others, well-equipped to do so, to make the invention despite work on the same problem, or at least, in
the same area, was a powerful argument for unobviousness of this device, but said that it must yield to the analysis of the invention against the prior art, and that that comparison failed to identify the required gap of unobvi-
23 A.L.R. Fed. 326
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ousness that this patentee bridged. The explanation, the court went on, may lie in the hurry of priorities of work
in the new semiconductor field, and the high cost of them in the initial stages.
In W. A. Baum Co. v Propper Mfg. Co. (1972, DC NY) 343 F Supp 1016, the patentee argued that the evidence of the commercial success of, and the long-felt need in the industry for, its design patent on a wall-mounted
sphygmomanometer showed its nonobviousness, but the court found the invention obvious in the light of prior
art, and held it invalid with the observation that such factors as commercial success and long-felt need cannot
establish patentability when the evidence of obviousness is strong.
Reversing the District Court's finding of validity of certain patents for lining metal bottle caps, the court in
Continental Can Co. v Crown Cork & Seal Co. (1969, CA3 Pa) 415 F2d 601, cert den 397 US 914, 25 L Ed 2d
94, 90 S Ct 916, observed that the conclusion that the patents were nonobvious was based on the District Court's
findings of "the existence of a problem and of protracted search for a solution of it," and said that such secondary considerations as commercial success and long-felt but unsolved needs, by themselves, could not support a
finding of nonobviousness if it was established that a patent taught nothing of significance that had not already
been disclosed.
The patentee's emphasis on the tremendous commercial success in the trucking industry of its patented
fastener was noted by the court in U. S. Expansion Bolt Co. v Jordan Industries, Inc. (1973, CA3 Pa) 488 F2d
566, 23 ALR Fed 316, and it agreed that such secondary considerations might be relevant as indicia of nonboviousness, but, having determined that the patented fasteners were obvious to one having ordinary skill in the art
and that the patent was invalid, it stated that these factors were entitled to only measured weight.
The failure of others is never dispositive of the issue of obviousness, the court stated in affirming dismissal
of the patent infringement action in Technograph Printed Circuits, Ltd. v Martin-Marietta Corp. (1973, CA4 Md)
474 F2d 798, cert den 414 US 880, 38 L Ed 2d 125, 94 S Ct 68. It observed that the failure of others to achieve
the results of an allegedly valid patent does not necessarily make that patent nonobvious. Such failure, the court
said, is only evidence which the court may look to in applying the objective tests of 35 U.S.C.A. § 103, along
with all the other evidence in the case; it is not controlling as a matter of law, and is a secondary consideration.
Having concluded that the claims of the patent in suit were clearly invalid for obviousness, the court in
Leach v Rockwood & Co. (1967, DC Wis) 273 F Supp 779, affd (CA7 Wis) 404 F2d 652, said that while commercial success might be relevant in a doubtful case of patentability, it could not be used to create a doubt on the
question where none would otherwise exist, and that it considered the secondary indicia of patentability in the
sense of the rule that while commercial success and the filling of a long-felt want do not determine patentability,
they do serve to guard against what the United States Supreme Court has called the temptation to read into the
prior art the teachings of the invention in issue.
In Payne Metal Enterprises, Ltd. v McPhee (1967, CA9 Cal) 382 F2d 541, the court noted a number of secondary considerations asserted by the patentee in an attempt to establish patentability of his device, that is, "the
presumption of validity arising from the issuance of the patent, " the alleged copying of his patent, a previously
unfulfilled need for such a patent, and commercial success of his device, but said that the law appeared to be
clear that such factors could not make patentable a patent which was invalid for lack of invention.
In Young Corp. v Jenkins (1968, CA9 Or) 396 F2d 893, the court noted the patentee's contention that the record showed that his device operated successfully, that it had become the predominant structure of its type in the
field, that it had had commercial success and widespread acceptance, and that it fulfilled a long-felt need in the
industry, but said that, giving appropriate weight to these collateral indicia of nonobviousness, they were not
enough to carry the day for the patent.
Affirming a summary judgment holding a design patent invalid on the ground of obviousness, the court in
Schwinn Bicycle Co. v Goodyear Tire & Rubber Co. (1970, CA9 Cal) 444 F2d 295, declined to give serious
consideration to the patentee's substantial evidence of acceptance of its design and commercial success, the court
23 A.L.R. Fed. 326
Page 185
noting that reference need be made to such secondary considerations only when the question of obviousness was
uncertain and inquiry into the circumstances surrounding the origin of the subject matter became of importance,
which was not the case here.
Also recognizing that secondary, nontechnical, considerations may be considered as criteria of obviousness
or nonobviousness of patent:Second Circuit
S.C. Johnson & Son, Inc. v Carter-Wallace, Inc. (1985, SD NY) 614 F Supp 1278
Third Circuit
Regents of University of Cal. v Howmedica, Inc. (1981, DC NJ) 530 F Supp 846, affd without op (CA3
NJ) 676 F2d 687
Fifth Circuit
Ebeling v Pak-Mor Mfg. Co. (1982, CA5 Tex) 683 F2d 909, 216 USPQ 563
Seventh Circuit
Paper Converting Machine Co. v Magna-Graphics Corp. (1982, CA7 Wis) 680 F2d 483
Reynolds Metals Co. v Aluminum Co. of America (ND Ind) 457 F supp 482, revd on other gnds (CA7
Ind) 609 F2d 1218, cert den 446 US 989, 64 L. Ed. 2d 847, 100 S Ct 2976
Ninth Circuit
Sarkisian v Winn-Proof Corp. (1983, CA9 Or) 697 F2d 1313
Tenth Circuit
Lam, Inc. v Johns-Manville Corp. (1982, CA10 Colo) 668 F2d 462, 213 USPQ 1061, cert den (1982)
456 US 1007, 73 L. Ed. 2d 1302, 102 S Ct 2298
Cases:
Although commercial success without invention will not make patentability, nevertheless secondary considerations such as commercial success, long felt but unsolved need, and failure of others to achieve invention may
be relevant in determining obviousness; but court finds data processing system for bank to be obvious from prior
art. Dann v Johnston, 425 US 219, 47 L. Ed. 2d 692, 96 S Ct 1393.
Absent showing of long-felt need or failure of others, mere passage of time without claimed invention is not
evidence of patent's nonobviousness. 35 U.S.C.A. § 103(a). R.H. Murphy Co., Inc. v. Illinois Tool Works, Inc.,
409 F. Supp. 2d 53 (D. Mass. 2006).
Objective indicia of non-obviousness, referred to as secondary considerations, include (1) commercial success; (2) copying; (3) long-felt, but unresolved need; (4) the failure of others; (5) unexpected result created by
claimed inventions; (6) unexpected properties of the claimed inventions; (7) licenses revealing industry respect
for the invention; and (8) skepticism of skilled artisans before the invention. 35 U.S.C.A. § 103. Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 339 F. Supp. 2d 202 (D. Mass. 2004).
In patent law, secondary indicators of non-obviousness include commercial success, long felt but unsolved
needs, failure of others to make the invention, whether there was simultaneous invention, and whether there is
evidence of copying and acclamation. 35 U.S.C.A. § 103(a). Insight Technology Inc. v. SureFire, LLC, 447 F.
Supp. 2d 120, 2004 DNH 120 (D.N.H. 2006).
Fact that product was developed within one month of request from customer for such product was evidence
of obvious nature of innovation. A & H Mfg. Co. v Contempo Card Co. (1983, DC RI) 576 F Supp 894, 221 USPQ 67.
In determining whether a patent is invalid as obvious, court may consider secondary considerations such as
23 A.L.R. Fed. 326
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commercial success, long felt but unsolved needs, and the failure of others, so as to give light to the circumstances surrounding the origin of the subject matter sought to be patented; the relevant question is not whether
the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary
skill in the art. 35 U.S.C.A. § 103. Papyrus Technology Corp. v. New York Stock Exchange, LLC, 653 F. Supp.
2d 402 (S.D. N.Y. 2009).
Secondary considerations of patent's nonobviousness include commercial success, long felt but unsolved
needs, failure of others to address problem, copying of invention by others, praise for invention, disbelief of experts, and unexpected results. 35 U.S.C.A. § 103(a). Medinol Ltd. v. Guidant Corp., 412 F. Supp. 2d 301 (S.D.
N.Y. 2005).
"Objective"—or secondary—evidence of nonobviousness of patent includes evidence of copying, commercial success, failure of others, and long felt but unresolved need for product. 35 U.S.C.A. § 103. Pfizer, Inc. v.
Perrigo Co., 988 F. Supp. 686 (S.D.N.Y. 1997).
Obviousness is a legal determination, based on findings concerning the so-called Graham factors: (1) the
On a claim that the patent was obvious, secondary considerations as commercial success, long felt but unsolved needs, failure of others, et cetera, may be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. 35 U.S.C.A. § 103(a). Oracle Corp. v. Parallel Networks, LLP,
588 F. Supp. 2d 549 (D. Del. 2008).
Substantial evidence existed regarding secondary considerations of non-obviousness of patent based on
competitor's copying of claimed invention, invention's commercial success and improvement over existing technologies, and acclaim received by inventor from other persons in the field for his invention. 35 U.S.C.A. § 103.
Power Integrations, Inc. v. Fairchild Semiconductor Intern., Inc., 585 F. Supp. 2d 568 (D. Del. 2008).
Objective evidence of patent's nonobviousness includes: (1) long-felt and unmet need in art for invention;
(2) failure of others to achieve results of invention; (3) commercial success of invention; (4) copying of invention by others in field; (5) whether invention was contrary to accepted wisdom of prior art; (6) expression of disbelief or skepticism by those skilled in art upon learning of invention; (7) unexpected results; (8) praise for invention by those in field; and (9) independent invention by others. 35 U.S.C.A. § 103. IMX, Inc. v. LendingTree, LLC, 405 F. Supp. 2d 479 (D. Del. 2005).
Relevant objective evidence of patent's nonobviousness include commercial success, satisfaction of longfelt need, and copying. Syngenta Seeds, Inc. v. Monsanto Co., 404 F. Supp. 2d 594 (D. Del. 2005).
Question of whether patent is obvious and thus invalid, turns on four factual inquiries: (1) the scope and
content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) any objective indicators of non–obviousness, more commonly termed secondary
considerations. 35 U.S.C.A. § 103. Matsushita Elec. Indus. Co., Ltd. v. Cinram Intern., Inc., 299 F. Supp. 2d 348
(D. Del. 2004).
In the patent context, secondary considerations such as commercial success, long felt but unresolved need,
failure of others, et cetera, may be used to shed light on an obviousness determination. 35 U.S.C.A. § 103. Wesley Jessen Corp. v. Bausch & Lomb, Inc., 209 F. Supp. 2d 348 (D. Del. 2002).
Analysis of secondary considerations is not "secondary" at all, for purposes of obviousness analysis of pat-
23 A.L.R. Fed. 326
Page 187
ent validity; such considerations may be highly probative or even the most probative evidence in record regarding question of obviousness. 35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade Brands, Inc., 989 F.
Supp. 547 (D. Del. 1997).
Secondary considerations, such as commercial success, long-felt but unresolved need, unexpected results,
copying, and the failure of others to develop the invention, must be considered as part of a court's obviousness
analysis when reviewing a patent infringement claim; the term "secondary" does not refer to the importance of
the considerations, but instead indicates that the considerations necessarily arise second in time, after the invention has been introduced in the market. Pfizer Inc. v. Teva Pharmaceuticals USA, Inc., 460 F. Supp. 2d 650
(D.N.J. 2006).
Claims of patented schizophrenia drug were not invalid for obviousness; it would not have been obvious to
the person of ordinary skill in the art that lead chemical compound was short-lasting and that that was a problem
requiring a modification of its molecular structure, none of the cited references would convince the person of ordinary skill in the art that metabolism at the ketone was causing lead compound to be short acting, the solution
to the lead compound's duration problem would not have been obvious to the person of ordinary skill in the art,
and secondary considerations overwhelmingly demonstrated the nonobviousness of the patent. 35 U.S.C.A. §
103(a). Janssen Pharmaceutica N.V. v. Mylan Pharmaceuticals, Inc., 456 F. Supp. 2d 644 (D.N.J. 2006).
Secondary considerations that court may take into account when deciding issue of patent's obviousness include: (1) long–felt but unsolved need; (2) commercial success; (3) failed efforts of others; (4) copying by others; (5) praise for invention; (7) unexpected results; (8) disbelief of experts; (9) general skepticism of those in
art; (10) commercial acquiescence; and (11) simultaneous development. 35 U.S.C.A. § 103(a). National Steel
Car, Ltd. v. Canadian Pacific Ry., Ltd., 254 F. Supp. 2d 527 (E.D. Pa. 2003).
While secondary considerations such as skepticism of experts, commercial success, long felt but unresolved
needs, and failure of others may warrant consideration in close case, they cannot validate patent if claimed subject matter fails to meet statutory standard of nonobviousness. Reed Tool Co. v Dresser Industries, Inc. (1982,
CA5 Tex) 672 F2d 523, 214 USPQ 501.
See Medical Designs, Inc. v Medical Technology, Inc. (1992, ND Tex) 786 F Supp 614, § 23.
In summary judgment proceedings challenging validity of patent, nonmovant may rebut a prima facie showing of obviousness with evidence refuting the movant's case or with other objective evidence of nonobviousness;
evidence may include evidence of commercial success, long-felt but unsolved need, failure of others to find a
solution to the problem at hand, and copying of the invention by others. 35 U.S.C.A. § 103. Transocean Offshore Deepwater Drilling, Inc. v. GlobalSantaFe Corp., 443 F. Supp. 2d 836 (S.D. Tex. 2006).
Secondary considerations are properly not considered because evidence shows that patent on single inverted
T pedestal for double bus seats is obvious combination of prior art elements having no synergistic effect. American Seating Co. v National Seating Co. (CA6 Ohio) 586 F2d 611, 199 USPQ 257.
Patent obviousness inquiry presents question of law based on several underlying factual inquiries including:
(1) scope and content of prior art; (2) level of ordinary skill in art; (3) differences between prior art and claimed
invention; and (4) extent of any objective indicia of non–obviousness. 35 U.S.C.A. § 103(a). Teleflex Inc. v.
KSR Intern. Co., 298 F. Supp. 2d 581 (E.D. Mich. 2003).
Secondary considerations of nonobviousness of patent related to improvement to washing machine outlet
boxes that facilitated compliance with certain municipal plumbing codes and ease of installation, including that
patented product was successful product, problem lingered for ten years after change to plumbing code, and that
allegedly infringing product was similar to patented product, were insufficient to overcome competitor's strong
prima facie case of obviousness; there was no evidence that patented product was more successful than other
washing machine outlet boxes using different design, there was no evidence establishing causal connection
between time it took to address problem and nonobviousness of problem, and there was no evidence of failed
23 A.L.R. Fed. 326
Page 188
design efforts or that patented design was surprising or unexpected. 35 U.S.C.A. § 103. Oatey Co. v. IPS Corp.,
665 F. Supp. 2d 830 (N.D. Ohio 2009).
Unlike technical obviousness analysis prescribed in Graham, secondary considerations are nontechnical signals of obviousness and thereby provide scientifically unsophisticated judge with some very manageable criteria
of obviousness. General Motors Corp. v Toyota Motor Co. (SD Ohio) 467 F Supp 1142, 205 USPQ 158, affd in
part and revd in part on other grounds (CA6 Ohio) 667 F2d 504, 212 USPQ 659, cert den Toyota Motor Co. v
General Motors Corp. (1982, US) 72 L Ed 2d 457, 102 S Ct 1994, 215 USPQ 95.
Secondary considerations, such as commercial success, may be weighed only in close case in which application of primary criteria of nonobviousness does not produce firm conclusion. Ashland Oil, Inc. v Delta Oil
Products Corp. (1982, CA7 Wis) 685 F2d 175, 216 USPQ 857, cert den (US) 76 L Ed 2d 343, 103 S Ct 1769.
Patents on loader and power transmission system for loader are not invalid for obviousness relative to prior
art loaders operating in different ways and using different power transmission systems that are less satisfactory
than patented systems. Clark Equipment Co. v Keller (CA8 ND) 570 F2d 778, 197 USPQ 209 cert den (US) 58
L. Ed. 2d 118, 99 S Ct 96.
Secondary considerations such as commercial success, long felt but unsolved needs, failure of others to
device, etc., often assist in determining obviousness, but their presence or absence alone is not determinative,
and lack of support for patent by evidence of secondary considerations does not defeat validity decision. Penn
International Industries v Pennington Corp. (CA9 Cal) 583 F2d 1078, 200 USPQ 651.
Court considers substantially improved results in economy and reliability in finding patent on foundation
building process to be unobvious and valid. Santa Fe-Pomeroy, Inc. v P & Z Co. (CA9 Cal) 569 F2d 1084, 197
USPQ 449.
Secondary considerations such as commercial success and meeting of unsolved need in art of hay harvesters
cannot be basis for validating patent lacking in invention in failing to provide "new and surprising result." Deere
& Co. v Sperry Rand Corp. (CA9 Cal) 513 F2d 1131, 185 USPQ 495, cert den 423 US 914, 46 L. Ed. 2d 142, 96
S Ct 218.
Even if secondary consideration evidence, including commercial success, long felt but unsolved needs, and
failure of others to invent, is present to support finding of nonobviousness of patent, such evidence must be sufficient to override determination of obviousness based on primary considerations, namely, scope and content of
prior art, differences between prior art and claims at issue, and level of ordinary skill in pertinent art. 35
U.S.C.A. § 103(a). Tokyo Keiso Co., Ltd. v. SMC Corp., 533 F. Supp. 2d 1047 (C.D. Cal. 2007).
On a claim of obviousness, secondary considerations include whether the inventor was responding to long
felt but unsolved needs, the failures of others, and the commercial success of the invention. 35 U.S.C.A. § 103.
Synvasive Corp. v. Stryker Corp., 478 F. Supp. 2d 1193 (E.D. Cal. 2007).
Secondary considerations, when present, must be considered when analyzing whether a patented invention
was obvious. 35 U.S.C.A. § 103. Comcast Cable Communications Corp. v. Finisar Corp., 571 F. Supp. 2d 1137
(N.D. Cal. 2008).
Secondary considerations of nonobviousness of a patent include commercial success, long-felt need, failure
of others, skepticism and unexpected results. 35 U.S.C.A. § 103. Friskit, Inc. v. RealNetworks, Inc., 499 F.
Supp. 2d 1145 (N.D. Cal. 2007).
Secondary evidence of nonobviousness in a patent infringement action can include the commercial success
of the invention, long-felt need, failure of others to solve the problem, licensing of the patented invention, professional recognition and approval, and copying of the invention. 35 U.S.C.A. § 103(a). Semiconductor Energy
Laboratory Co. Ltd. v. Chi Mei Optoelectronics Corp., 485 F. Supp. 2d 1089 (N.D. Cal. 2007).
Secondary considerations of patent's nonobviousness include: (1) commercial success due to merits of
claimed invention; (2) long felt need for solution provided by claimed invention; (3) unsuccessful attempts by
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Page 189
others to find solution provided by claimed invention; (4) copying of claimed invention by others; (5) unexpected superior results from claimed invention; and (6) acceptance by others of claimed invention as shown by
praise from others in field or from licensing of claimed invention. 35 U.S.C.A. § 103(a). O2 Micro Intern. Ltd.
v. Monolithic Power Systems, Inc., 420 F. Supp. 2d 1070 (N.D. Cal. 2006).
(N.D. Cal. 2005).
Fish-finding sonar device designed to detect fish located on side of boat was not likely to be shown to be
obvious; device and alleged infringing device showed commercial success, alleged infringer had apparently attempted and failed to produce similar device earlier, plaintiff made strong showing of surprise by relevant experts, and device satisfied long-felt need in commercial fishing market. Computrol, Inc. v Lowrance Elec. (1994,
DC Idaho) 893 F Supp 1440, dismd (CA FC) 48 F3d 1234.
With respect to obviousness analysis in patent case, secondary considerations can include commercial success, unexpected results, copying, long-felt but unresolved need, and the failure of others to develop the invention. 35 U.S.C.A. § 103(a). Freeman v. Gerber Products Co., 450 F. Supp. 2d 1248 (D. Kan. 2006).
Secondary considerations of non-obviousness under patent law include the commercial success of the invention at issue, its satisfaction of long-felt need and failure of others; evidence relating to secondary considerations
constitutes independent evidence of nonobviousness. 35 U.S.C.A. § 103(a). Johnson & Johnson Vision Care,
Inc. v. CIBA Vision Corp., 648 F. Supp. 2d 1294 (M.D. Fla. 2009).
When present, secondary considerations of non-obviousness of a patent may often be the most probative and
cogent evidence of non-obviousness in the record. Proctor & Gamble Co. v. Teva Pharmaceuticals USA, Inc.,
566 F.3d 989 (Fed. Cir. 2009).
In determining whether subject matter of patent application would have been obvious to a person of ordinary skill in the art at the time of the asserted invention, Board of Patent Appeals and Interferences can assess
evidence related to secondary indicia of non-obviousness like commercial success, long felt but unresolved
needs, and failure of others. 35 U.S.C.A. § 103(a). In re Kahn, 441 F.3d 977 (Fed. Cir. 2006).
and content of prior art; (2) differences between prior art and claims at issue; (3) level of ordinary skill in pertinent art; and (4) evaluation of any relevant secondary considerations. 35 U.S.C.A. § 103. Princeton Biochemicals,
Legal determination of patent obviousness is made on basis of underlying findings of fact as to: (1) scope
and content of prior art; (2) differences between prior art and claims; (3) level of ordinary skill in the art; and (4)
objective evidence of nonobviousness. 35 U.S.C.A. § 103. National Steel Car, Ltd. v. Canadian Pacific Ry.,
Ltd., 357 F.3d 1319, 69 U.S.P.Q.2d (BNA) 1641 (Fed. Cir. 2004).
"Secondary considerations" in determining whether patent is obvious, such as commercial success, provide
evidence of how patented device is viewed by interested public: not inventor, but persons concerned with
product in objective arena of the marketplace. 35 U.S.C.A. § 103. Arkie Lures, Inc. v. Gene Larew Tackle, Inc.,
119 F.3d 953, 43 U.S.P.Q.2d (BNA) 1294 (Fed. Cir. 1997), reh'g denied, in banc suggestion declined, (Sept. 11,
1997).
See State Industries, Inc. v Rheem Mfg. Co. (1985, CA FC) 769 F2d 762, 227 USPQ 375, § 13.
In patent infringement actions, evidence of secondary considerations may often be most probative and cogent evidence in record, and it may often establish that invention appearing to have been obvious in light of prior art was not, and it is to be considered as part of all evidence, not just when decision maker remains in doubt
after reviewing the art. Re Piasecki (1984, CA FC) 745 F2d 1468, 223 USPQ 785.
23 A.L.R. Fed. 326
Page 190
Objective evidence of nonobviousness, when present, should always be considered as integral part of analysis. W.L. Gore & Associates, Inc. v Garlock, Inc. (1983, CA FC) 721 F2d 1540, 220 USPQ 303, cert den (US)
83 L Ed 2d 107, 105 S Ct 172.
Issue of obviousness of invention can only be resolved after all relevant evidence of nonobviousness, including secondary considerations if any, has been taken into account. Richdel, Inc. v Sunspool Corp. (1983, CA
FC) 714 F2d 1573, 219 USPQ 8.
Evidence rising out of secondary considerations must always, when present, be considered in making determination of obviousness; thus, trial court erred in determining that secondary considerations should be considered only in close case. Stratoflex, Inc. v Aeroquip Corp. (1983, CA FC) 713 F2d 1530, 218 USPQ 871.
There is nothing improper about making a determination as to whether a patent claim is invalid for obviousness without considering secondary indicia, if no evidence of secondary indicia is available. 35 U.S.C.A. § 103.
Zoltek Corp. v. U.S., 86 Fed. Cl. 738 (2009).
[Top of Section]
[END OF SUPPLEMENT]
§ 21. Failure of others
In many cases, the courts have referred specifically to the failure of others in the field to have achieved the
patentee's particular good result, as an indication of the nonobviousness of his invention at the time it was
made.Second Circuit
Shackelton v J. Kaufman Iron Works, Inc. (1982, CA2 NY) 689 F2d 334, 217 USPQ 98, cert den (US)
75 L. Ed. 2d 931, 103 S Ct 1500
Fourth Circuit
Ninth Circuit
Laitram Corp. v Depoe Bay Fish Co. (1982, DC Or) 549 F Supp 29, 1983-1 CCH Trade Cases ¶65268
(shrimp peeler)
Eleventh Circuit
Ramos v. Biomet, Inc., 828 F. Supp. 1570 (S.D. Fla. 1993), aff'd in part, rev'd in part on other grounds,
69 F.3d 553 (Fed. Cir. 1995), reh'g denied, in banc suggestion declined, (Oct. 24, 1995) (hip prosthesis)
In holding valid the patent for a circular knit thermal fabric where there was expert testimony that, given the
prior art, the patent was obvious, the court in Jones Knitting Corp. v Morgan (1966, CA3 Pa) 361 F2d 451, pointed out that the same experts were unsuccessful in their experiments to achieve the results sought in this patent,
and that a recognized expert in the knitting field, with considerably more skill than the ordinary knitter, was unable to offer one constructive suggestion to inquiries concerning the manufacture of a thermal type of fabric on a
circular machine. Here, the court said, were two skilled knitters testifying to obviousness, but one of them failed
to produce the result through his own experimentation and the other did not offer constructive suggestions toward a solution, and where two experts were unable to foresee the solution provided by the patent, an inference
23 A.L.R. Fed. 326
Page 191
of nonobviousness was not without justification.
In Baut v Pethick Constr. Co. (1966, DC Pa) 262 F Supp 350, the court found that the obviousness of the
patentee's glass window panel was "certainly not apparent" from the windows themselves, and that the testimony
of the alleged infringer's witnesses clearly showed that the differences were not obvious, they having to seek
guidance and assistance in designing and constructing the infringing window in accordance with the specifications in the construction contract. The court said that where, before the disclosure of a patent, experts were unable to foresee the solution provided by the patent, an inference of nonobviousness was not without justification.
In upholding the validity of the patent involved in Honolulu Oil Corp. v Shelby Poultry Co. (1961, CA4
NC) 293 F2d 127, the court emphasized that this was not a stagnant field in which no one was attempting to advance the art, the record containing evidence of other patents showing efforts to develop machines and methods
which would give improved results over existing machines, but the machines of those patents being generally inoperable. What this patentee did may now seem simple, the court said, but it cannot be said to have been obvious when it eluded experts who were searching for it over a considerable period.
In Entron of Maryland, Inc. v Jerrold Electronics Corp. (1961, CA4 Md) 295 F2d 670, in finding patentability in a device used to effect a tap-off of high-frequency signals from a coaxial transmission line, the court said
that the unobviousness of this patentee's combination was strongly evidenced by the failure of contemporary
workers, including the alleged infringer, to perceive the advantages of using the screw-jack and insulated piercing pin in direct combination, to pierce a coaxial cable. Another patentee achieved a similar combination many
years before in an accessory art, the court noted, but there was no indication that anyone before this patentee had
tried to adapt the teachings of the earlier patent to effect a high-frequency tap, and in fact the evidence showed
that government scientists during World War II searched but could not find a simple and inexpensive means to
tap radar and radio coaxial transmission cables. It was of great significance, the court concluded, that this patentee succeeded where learned scientists had failed.
In National Latex Products Co. v Sun Rubber Co. (1959, CA6 Ohio) 274 F2d 224, reh den (CA6 Ohio) 276
F2d 167, cert den 362 US 989, 4 L Ed 2d 1022, 80 S Ct 1078, the court said that when the prolonged efforts of
experts failed to produce the remedy desired, the discovery of the needed improvement by this patentee justified
the conclusion that there was invention although the device was simple. Here, the court pointed out, there was a
technological block and the fact that those skilled in the art had failed to eliminate it was cogent evidence of invention and patentability.
The judgment of the District Court holding invalid a patent pertaining to a mechanism for paving concrete
highways was reversed and a judgment upholding its validity entered, in Blaw-Knox Co. v I. D. Lain Co. (1956,
CA7 Ill) 230 F2d 373. All prior efforts to solve the problem resulted in ineffectiveness, the court pointed out,
and to say that this patentee conceived mere aggregation with no new results was equivalent to saying that his
achievement would have been obvious as a whole to a person having ordinary skill in the art to which it pertained, as those terms were employed in 35 U.S.C.A. § 103 But here, the court went on, the undisputed facts
showed beyond peradventure that the conception was not obvious, for other workers in the art failed to comprehend the ideas disclosed by this patentee or to suggest his successful solution of the troublesome problem.
Agreeing with the District Court's description of the prior art and its enumeration of the differences between
that art and the patent in issue, relating to a method for packaging separate units of cheese in a package filled
with a preservative gas atmosphere which was substantially free of mold-inducing air, the court in National
Dairy Products Corp. v Borden Co. (1968, CA7 Wis) 394 F2d 887, cert den 393 US 953, 21 L Ed 2d 364, 89 S
Ct 378, disagreed with the District Court's conclusion that "any mechanic" skilled in the art, after viewing a prior art operation in all its aspects, would readily recognize the modifications in that operation necessary to
achieve this invention, thereby rendering it obvious. The very fact that those in charge of that other operation, all
of whom were skilled and experienced in the art, did not, after 4 years of work, develop this patentee's method,
23 A.L.R. Fed. 326
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is strong evidence that the invention was not obvious, the court said, and this evidence of nonobviousness shows
the validity of the patent, being strengthened by the fact that this other work with gas was finally abandoned.
The alleged infringers argued, and the patentee conceded, in Illinois Tool Works, Inc. v Sweetheart Plastics,
Inc. (1971, CA7 Ill) 436 F2d 1180, cert dismd 403 US 942, 29 L Ed 2d 722, 91 S Ct 2270, that if certain features
of a plastic cup in the prior art and another cup in the prior art were united in one structure, the result would be a
container like the nestable thin-wall plastic container invented by this patentee for use in automatic dispensing
machines, but the court, holding the patent valid, said that this merely begged the question of obviousness and
invited it to participate in more than a little of the omniscience that hindsight always allows. The court found far
more telling that not only did a prior inventor of nestable cups fail to outrace the patentee to the marketplace or
to the patent office with an operative product like the patentee's invention, but that other inventors of paper and
plastic cups, as well as all others skilled in the art, failed to do so, and concluded that this invention was not obvious from the prior art.
In affirming the District Court's judgment that the patent on a pump was valid, the Court of Appeals in Ellipse Corp. v Ford Motor Co. (1971, CA7 Ill) 452 F2d 163, cert den 406 US 948, 32 L Ed 2d 337, 92 S Ct 2041,
reh den 409 US 898, 34 L Ed 2d 157, 93 S Ct 99, noted that there was ample evidence in the record to show the
scope and content of the prior art and the differences between the prior art and the claims at issue, this evidence
showing the existence of factors presenting obstacles to the patentee's discovery. Further evidence of the nonobviousness of this patent disclosure, the court stated, was the failure of other experts working on pumps of this
nature to make or develop one like the patentee's until 10 years after his discovery.
Photocomposition patents were held valid in Photon, Inc. v Eltra Corp. (1969, DC Ill) 308 F Supp 133, the
court noting that the prior art consisted of a number of patents on methods of photocomposition but that none of
them taught the use of collimated light to space characters in photocomposition as did the patentee's. The infringer's experts possessed ordinary, if not extraordinary, skill in the art, the court continued, and yet when the
patentee conceived of the invention, the infringer's employees had already spent 3 years trying unsuccessfully to
solve the character-spacing problem. The court found that a total of eight different experts employed by the infringer, all of whom were named as inventors in photocomposition patents, worked futilely on the design of an
optical spacing system, and held that accordingly, the patentee's invention was not obvious to one ordinarily
skilled in the art.
The court in Reeves Instrument Corp. v Beckman Instruments, Inc. (1971, CA9 Cal) 444 F2d 263, cert den
404 US 951, 30 L Ed 2d 268, 92 S Ct 283, found evidence of 15 prior unsuccessful approaches to the problem
solved by the patent in issue, and said that this substantially strengthened the statutory presumption of validity,
which it held applicable, the evidence of prior unsuccessful attempts to solve the same problem establishing both
the pressing need for such a solution as well as the fact that the solution had not been obvious to those whom the
court found to be highly skilled in the pertinent art.
Cases:
Failure of others to solve long standing problem of pressure regulation in paint sprayer art is considered in
finding patented solution unobvious and valid; thus, where level of skill in paint sprayer art was inadequate to
23 A.L.R. Fed. 326
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solve long standing problem of pressure regulation, and patent on pressure regulation system for paint sprayers
using fixed and movable regulators differing from prior paint spraying art and solving long standing problem is
unobvious and valid. Champion Spark Plug Co. v. Gyromat Corp., 603 F.2d 361, 202 U.S.P.Q. (BNA) 785 (2d
Cir. 1979).
Lack of evidence of inability of others to devise successful heated socks and obviousness of heating only
toe portion of socks to reduce power and battery size makes patent invalid for obviousness. Timely Products
Corp. v Arron (CA2 Conn) 523 F2d 288, 187 USPQ 257.
Failure of defendant's earlier aluminum baseball bats to embody concepts of patented bat is secondary consideration that fails to rebut primary findings of obviousness, because defendant may not have been familiar
with art and may not have tried to perfect commercially acceptable bat, so that patent is properly held invalid.
Aluminum Co. of America v Amerola Products Corp. (CA3 Pa) 552 F2d 1020, 194 USPQ 1.
Failure of other workers in art to appreciate and use advantages of patented improvement in color TV tubes
for 6 years after issuance of prior art patent amounts to secondary consideration inadequate to overcome finding
of obviousness based on logical advance from prior art. Tokyo Shibaura Electric Co. v Zenith Radio Corp. (CA3
Del) 548 F2d 88, 193 USPQ 73.
Substantial evidence supported jury's determination that patent for a stent with a drug-eluting coating was
nonobvious; patentee presented evidence that there was no motivation to combine prior art references to arrive
at the claimed invention, and that alleged infringer had unsuccessfully attempted to develop bioabsorbable polymers for coating materials. 35 U.S.C.A. § 103. Boston Scientific Scimed, Inc. v. Cordis Corp., 434 F. Supp. 2d
308 (D. Del. 2006).
Court weighing the issue of obviousness in patent action must ascertain the scope and content of the prior
art, differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art;
court may also consider a number of secondary factors, among them the failure of others to come up with the invention. Forest Laboratories, Inc. v. Ivax Pharmaceuticals, Inc., 237 F.R.D. 106 (D. Del. 2006).
23 A.L.R. Fed. 326
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Objective evidence of patent's non–obviousness includes evidence such as long felt needs, failure of others
to design invention, and commercial success. 35 U.S.C.A. § 103. Leviton Mfg. Co., Inc. v. Universal Sec. Instruments, Inc., 304 F. Supp. 2d 726 (D. Md. 2004).
Fact that cutter for laminated plastic solved problem which others were not able to solve was one factor
warranting affirmation of jury finding of unobviousness. White v Mar-Bel, Inc. (CA5 Fla) 509 F2d 287, reh den
(CA5 Fla) 511 F2d 1402, 185 USPQ 129.
See Henkel Corp. v Coral, Inc. (1990, ND Ill) 754 F Supp 1280, § 22.
Nonobviousness of ribbed supports for shipping cylindrical rolls was evidenced by failure of others to create similar supports. Great N. Corp. v Henry Molded Prods. (1994, ED Wis) 864 F Supp 865.
357 F. Supp. 2d 1105 (S.D. Iowa 2005).
2d 1009 (D. Neb. 2003).
Court considers evidence of substantial unsolved problem in art of building foundations in unstable soil and
failure of many engineering experts to find solution as satisfactory as claimed method in holding patent valid as
unobvious. Santa Fe-Pomeroy, Inc. v P & Z Co. (CA9 Cal) 569 F2d 1084, 197 USPQ 449.
2005).
23 A.L.R. Fed. 326
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In determining whether a patent is invalid as obvious, secondary considerations of nonobviousness, such as
commercial success, unsolved need, failure of others, and copying must be considered. 35 U.S.C.A. § 103(a).
Storage Technology Corp. v. Quantum Corp., 370 F. Supp. 2d 1116 (D. Colo. 2005).
Utah 2004).
Absent showing of long-felt need or failure of others, mere passage of time without claimed invention is not
evidence of patent's nonobviousness. 35 U.S.C.A. § 103. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392
F.3d 1317 (Fed. Cir. 2004).
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[END OF SUPPLEMENT]
§ 22. Commercial success
When a new product or improvement in a particular field achieves wide success in the marketplace, a fair
inference is that it was not obvious to those familiar with the field. A wide demand for the commercial embodiment of the invention[11] suggests that it was more than the work of a person of ordinary skill in the field, for
such persons would also have capitalized on this demand had the differences between the subject matter of the
invention and the prior art been obvious to them. Such is the broad rationale of "commercial success" as an indicia of nonobviousness.
While commercial success usually overlaps and combines with other factors, it has been recognized and applied by the courts in a number of cases as a viable secondary consideration indicating that an invention would
not have been obvious at the time the invention was made to a person having ordinary skill in the art.Second
Circuit
75 L. Ed. 2d 931, 103 S Ct 1500
Corporate Communications Consultants, Inc. v Columbia Pictures Industries, Inc. (1983, SD NY) 576 F
Supp 1429, 221 USPQ 883 (video signal color correction system)
Fourth Circuit
23 A.L.R. Fed. 326
Page 196
Fifth Circuit
Benchcraft, Inc. v Broyhill Furniture Industries, Inc. (1988, ND Miss) 681 F Supp 1190, 7 USPQ2d
1257
Tenth Circuit
Ralston Purina Co. v Far-Mar-Co, Inc. (1984, DC Kan) 586 F Supp 1176, 222 USPQ 863, affd in part
and revd in part on other grounds (CA FC) 772 F2d 1570, 227 USPQ 177 (food processing method)
Eleventh Circuit
Ramos v. Biomet, Inc., 828 F. Supp. 1570 (S.D. Fla. 1993), aff'd in part, rev'd in part on other grounds,
69 F.3d 553 (Fed. Cir. 1995), reh'g denied, in banc suggestion declined, (Oct. 24, 1995) (hip prosthesis)
Federal Circuit
(US) 83 L Ed 2d 107, 105 S Ct 172 (teflon laminates and tubes)
Lindemann Maschinenfabrik GMBH v American Hoist & Derrick Co. (1984, CA FC) 730 F2d 1452,
221 USPQ 481 (scrap shears)
Perkin-Elmer Corp. v Computervision Corp. (1984, CA FC) 732 F2d 888, 221 USPQ 669, cert den
(US) 83 L Ed 2d 120, 105 S Ct 187, 225 USPQ 792 (projection printer)
Thus, in Reiner v I. Leon Co. (1960, CA2 NY) 285 F2d 501, cert den 366 US 929, 6 L Ed 2d 388, 81 S Ct
1649, reh den 366 US 978, 6 L Ed 2d 1268, 81 S Ct 1918, holding valid a claim of the patent for clamps used to
maintain "formed curls" in a woman's hair, the court noted that this clamp achieved unexpected success and established an almost complete monopoly of the two-piece clamps on the market, and said that while the sale of a
patented device was not alone a measure of its invention, nevertheless, great commercial success, when properly
scrutinized, might be a telling circumstance.
The usual defense that the result would have been obvious to one skilled in the art could not avail the infringer here, the court said in upholding the validity of the patent upon a device to obtain an aerated stream of
water that would not splash as it emerged from a domestic faucet, in S. H. Kress & Co. v Aghnides (1957, CA4
NC) 246 F2d 718, cert den 355 US 889, 2 L Ed 2d 189, 78 S Ct 261, for obviousness did not mean that one
skilled in the art could perceive the solution after it had been found and pointed out by someone else. If the answer to the riddle were in fact discoverable as readily as the infringer now claims, the court noted, it was incredible that with a latent demand strong enough to result in the sale of 21,000,000 units of this particular device
since it was patented, the persistent researches in the industry who were engrossed by the problem would have
been blind to the solution found by this patentee.
The court in Otto v Koppers Co. (1957, CA4 W Va) 246 F2d 789, cert den 355 US 939, 2 L Ed 2d 420, 78 S
Ct 427, entering a judgment of validity of the patent in suit, said that where it appeared as in this case that the
claims of the patent contained elements of novelty and invention within the meaning of the Patent Act, commercial success tended strongly to overcome the defense that what was done was obvious to other persons of great
skill shown to have been working in the same field in an effort to accomplish the same objective. This was particularly so in a field in which many highly trained engineers had been actively working and for years had been
attempting to overcome the disadvantages of the methods and apparatus then known and the difficulties inherent
in their operation, the court pointed out, and the demonstrated success of this patentee's device was persuasive
that it was not a thing readily apparent to other engineers skilled in the art.
In Shumaker v Gem Mfg. Co. (1962, CA7 Ill) 311 F2d 273, the patent directed to a pair of wind deflectors
attached to the rear corner posts of a stationwagon to break up the vacuum formed during forward movement of
the vehicle was held valid, the court agreeing with the infringer that development of a vacuum at the flat-ended
23 A.L.R. Fed. 326
Page 197
rear of a forward-moving vehicle was a well-known physical phenomenon, but saying that the need for a device
such as this had existed for a long time prior to this patentee's discovery of a solution, and that the District
Court's finding of patent validity was bolstered by the immediate commercial success of the device, the apparent
simplicity of the invention here involved giving it a false appearance of obviousness only after the event, in the
light of the patent's own teaching.
The court stated in Illinois Tool Works, Inc. v Sweetheart Plastics, Inc. (1971, CA7 Ill) 436 F2d 1180, cert
dismd 403 US 942, 29 L Ed 2d 722, 91 S Ct 2270, that it was obligated by the apparent simplicity of the patentee's nestable plastic container for use in automatic dispensing machines to note its remarkable commercial
success. The patentee and its licensees had manufactured and sold several billions of these cups, the court pointed out, and domestic and foreign manufacturers had obtained licenses from the patentee to manufacture such
cups. The court said that the tribute of the trade and the marketplace cannot be ignored when it is so overwhelming in scope and magnitude, holding the patent valid.
In Palmer v United States (1968) 182 Ct Cl 896 (later app 191 Ct Cl 346, 423 F2d 316, affirming validity),
cert den 400 US 951, 27 L Ed 258, 91 S Ct 242, the court, in holding that a motion for summary judgment
should be denied, emphasized that it was not deciding that if the patentee proved commercial success, that
would automatically show nonobviousness of the patentee's battery-operated electric lamp secured to a bag
filled with ballast, particularly useful for marking airport runways at night, but that commercial success and the
satisfying of long-felt need were "secondary considerations" which might be relevant indicia of unobviousness
under 35 U.S.C.A. § 103 The court pointed out that it did not appear here that commercial success was attributable substantially to factors independent of the claimed invention, such as advertising, superior workmanship,
and the like, but, on the contrary, this patentee's commercial success appeared to be attributable in large part to
the feature upon which patentability was predicated, and therefore, under the circumstances of this case, it was
the duty of the trier of fact to consider evidence of commercial success before reaching the legal conclusion of
obviousness or unobviousness.
In a number of cases, courts recognizing the validity of commercial success as an indication of nonobviousness have nonetheless found that the success asserted was, under the particular circumstances, not necessarily attributable to the invention, and so lent no support to a finding of validity of the patent.
Judgment of the lower court holding valid the patent for a poultry tag was reversed in E. J. Brooks Co. v
Stoffel Seals Corp. (1959, CA2 NY) 266 F2d 841, cert den 361 US 883, 4 L Ed 2d 119, 80 S Ct 154, the court
noting that the validity of the patent had been sustained almost entirely on the device's commercial success and a
finding that it filled long-felt needs in the tag-making industry. As to the claims of commercial success, the court
pointed out, these must be viewed with a degree of sophistication lest undue reward be given to skilful advertising, and this case involved the two manufacturers who monopolized the American market, which became active with the increased practice of tagging poultry as encouraged by the United States and Canadian governments. Certainly their business would grow under the circumstances, the court said, but the District Court made
no attempt to apportion the sale in terms of response to these various obvious stimuli.
In Deering, Milliken & Co. v Temp-Resisto Corp (1960, CA2 NY) 274 F2d 626, the court, holding invalid
the patent at issue, pointed out that commercial success of almost every new article which had appeared on the
market in recent years was the result of intensive advertising campaigns, and that it was a primary function of
good advertising to make the public conscious of a long-felt want for the first time—a process not dissimilar to
starting a tradition—so that a conclusion of invention derived from this circumstance did an injustice to this
modern-day art of salesmanship.
Where the patentee of a swimming pool claimed that the considerable commercial success enjoyed by his
franchise holders and the "infringing imitators" established that his design could not have been obvious, the
court in Rains v Niaqua, Inc. (1969, CA2 NY) 406 F2d 275, cert den 395 US 909, 23 L Ed 2d 222, 89 S Ct 1751,
23 A.L.R. Fed. 326
Page 198
held the patent invalid, noting that the evidence was not so clear as he claimed, as there was evidence that all
types of above-ground swimming pools, including competing designs, were enjoying greatly increasing sales, so
that social and economic factors might have been a reason for the commercial success.
The court said in Modern Millinery Box Corp. v Boas Box Co. (1963, DC Pa) 219 F Supp 615, holding invalid the patent in suit, that even if it believed that the question of patentable invention of a collapsible box with
paper locks to prevent accidental collapse while in use was a close one so that it might consider commercial success, here even the evidence of commercial success was weak, for while it was true that sales of the box did increase at about the time of the introduction of the locks, this also coincided with the return of a valued employee
to the company and with an increase in advertising expenditures, in one year as much as 92 percent over the year
just prior to the filing of the patent application.
With respect to the commercial success of a tooth positioner, it resulted largely from the patentee's extensive promotional efforts, and success due to a patentee's business ability in exploiting and advertising did not establish patentability, the court stated in T. P. Laboratories, Inc. v Huge (1966, CA7 Wis) 371 F2d 231.
In Kennatrack Corp. v Stanley Works (1961, DC Ill) 216 F Supp 394, the court noted, in holding the patent
invalid, that although the evidence showed that the assignee of the patent in suit had been successful in its sales
of products embodying the construction of the patent in suit, it did not show the kind of commercial success that
would strengthen the presumption of validity or carry weight in deciding the issue of validity in a doubtful case.
The success in the sale of this product had been due to factors other than to any inventive quality in the patent itself, the court went on, these factors being an already existing demand for products of this type, an already established market by this producer, his intensive and extensive national advertising campaign, and the basically
advantageous features of the original product which was old in the prior art. The court also found that the claim
of commercial success was refuted by the fact that the sales of the assignee's earlier products which the patentee
claimed in his patent he was improving upon, had continued to increase in popularity and volume of sales during
the same years that this patented device had been sold.
The relevancy of "commercial success" is based upon the assumption that public acceptance of a device is
indicative of that device's novelty and invention over prior art in the field, the court said in American Infra-Red
Radiant Co. v Lambert Industries, Inc. (1966, CA8 Minn) 360 F2d 977, cert den 385 US 920, 17 L Ed 2d 144,
87 S Ct 233, holding that patent in suit invalid, and therefore when explanations other than invention are brought
forth to indicate reasons for the commercial success, the evidentiary weight of this factor is all but destroyed.
The court found that in this case there were many explanations for this patentee's commercial success other than
the claimed invention of his gas burner: perhaps foremost among these was the fact that the chemical composition and manufacturing process of the ceramic tile used in the burner was a trade secret of the patentee not
covered by his patent; in addition, the patentee had made many modifications in the housing unit of his burner
that were not covered by this patent and had added metal reflectors and a protective screen, all of these having
contributed to the effective and efficient operation of his burner, and yet none were related to the invention of
the patent in question; the patentee manufactured various sizes and types of burners, thus appealing to a wide
market, some being very large for use in industrial heating, and others very small and using bottled gas to warm
the hands of the outdoor sportsmen; in association with this adaptation to various uses, the patentee had undertaken an extensive advertising and promotion campaign; and last, but not least, the patentee's assignee had developed an organization for the manufacture and sale of these devices that was international in scope. The court
concluded that, there being numerous explanations for the commercial success of this burner, it was difficult to
say with any force that this success was due to the invention of the burner plate patent, and that under the circumstances, commercial success was not a weighty factor in deciding the issue of patentability.
In Ellicott Machine Corp. v United States (1969) 186 Ct Cl 655, 405 F2d 1385, while conceding the commercial success of the patentee's dredge, the court said that it did not necessarily follow that such success was an
23 A.L.R. Fed. 326
Page 199
indicia of unobviousness. Because this patentee's dredge used hydraulic power and control exclusively, it was
small, compact, easily operated, and readily transported from place to place, the court pointed out, and also,
since modern hydraulic components were in large part readily available in the market, sometimes as catalog
items, at the time the invention was made, this patentee's dredge could be mass-produced relatively inexpensively. Thus, the court concluded that its commercial success appeared to have been attributable in large measure
to these considerations and not to any new, unexpected, or unobvious performance characteristics of the dredge,
and held the patent issued on it invalid.
Cases:
Evidence of commercial success of envelope for laminating data card is more attributable to improved chip
bonding lamination technique than to configuration of envelope and does not support validity of patent otherwise obvious from prior art envelopes for similar purposes. Avant, Inc. v Polaroid Corp. (CA1 Mass) 572 F2d
889, 197 USPQ 593, cert den (US) 58 L Ed 132, 99 S Ct 120.
Secondary considerations of commercial success and acceptance in industry fail to support validity of patent
when evidence does not show that problem existed in art and resisted solution by others or that success is based
on claimed features. Scully Signal Co. v Electronics Corp. of America (CA1 Mass) 570 F2d 355, 196 USPQ 657
, cert den 436 US 945, 56 L. Ed. 2d 787, 98 S Ct 2848.
In action for infringement of patent for instant photography, patent was invalid where alleged invention
would had been obvious to one skilled in art, notwithstanding commercial success of device. Polaroid Corp. v
Eastman Kodak Co. (1981, DC Mass) 519 F Supp 381, later proceeding (DC Mass) 641 F Supp 828, 228 USPQ
305, stay den (CA FC) 833 F2d 930, 5 USPQ2d 1080 and affd (CA FC) 789 F2d 1556, 229 USPQ 561, cert den
479 US 850, 93 L Ed 2d 114, 107 S Ct 178, later proceeding (CA FC) 867 F2d 1415, 9 USPQ2d 1877, cert den
490 US 1047, 104 L Ed 2d 425, 109 S Ct 1956 and later op (DC Mass) 16 USPQ2d 1481, amd, on reconsideration (DC Mass) 17 USPQ2d 1711.
Product's acceptance and acclaim in marketplace due to utility cannot impart patentability to design. A & H
Mfg. Co. v Contempo Card Co. (1983, DC RI) 576 F Supp 894, 221 USPQ 67.
Court considers substantial commercial success and widespread acceptance in flame spraying industry of
patented process resulting in bond with untreated metal surfaces in finding patent valid as unobvious. Eutectic
Corp. v Metco, Inc. (CA2 NY) 579 F2d 1, 197 USPQ 129, cert den (US) 58 L. Ed. 2d 177, 99 S Ct 192.
Secondary considerations of long felt need and commercial success need not be considered because evidence clearly shows that patent on data processing system for racetrack betting merely applies generally known
techniques to update prior art electromechanical devices and is therefore invalid as obvious. Digitronics Corp. v
New York Racing Asso. (CA2 NY) 553 F2d 740, 193 USPQ 577, cert den 434 US 860, 54 L. Ed. 2d 133, 98 S
Ct 187.
Industry wide acceptance of patented process for forming accurate gaps in magnetic heads and ability of
patented process to solve long standing problems of gap accuracy are considered in finding patent unobvious
and valid. U. S. Philips Corp. v National Micronetics, Inc. (CA2 NY) 550 F2d 716, 193 USPQ 65, cert den 434
US 859, 54 L. Ed. 2d 131, 98 S Ct 183.
Secondary consideration of commercial success is not shown to be attributable to features of patent held invalid for obviousness so that commercial success evidence does not justify reversal, and other evidence supports
validity of other patent on lightweight headsets used by airplane pilots and air traffic controllers. Plantronics,
Inc. v Roanwell Corp. (CA2 NY) 535 F2d 1397, 192 USPQ 67, cert den 429 US 1004, 50 L. Ed. 2d 617, 97 S Ct
538, reh den 429 US 1079, 50 L. Ed. 2d 800, 97 S Ct 826.
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Page 200
Commercial success cannot overcome clear showing of obviousness, and even though heated sock heating
only toe portion with smaller battery fitted in pouch at top of sock sold well enough to drive prior art product
from market, obviousness of improvement invalidates patent. Timely Products Corp. v Arron (CA2 Conn) 523
F2d 288, 187 USPQ 257.
On a patent-invalidating claim of obviousness, evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success. 35
U.S.C.A. § 103. Perricone v. Medicis Pharmaceutical Corp., 539 F. Supp. 2d 571 (D. Conn. 2008).
See S.C. Johnson & Son, Inc. v Carter-Wallace, Inc. (1985, SD NY) 614 F Supp 1278, § 13.
Industry recognition and commercial success of improvement in color TV tube are properly evaluated as
secondary considerations inadequate to overcome finding of obviousness based on logical advance from prior art
suggestion. Tokyo Shibaura Electric Co. v Zenith Radio Corp. (CA3 Del) 548 F2d 88, 193 USPQ 73.
For patentee to satisfy burden of proof as to nexus between proven success and patented invention, so as to
support claim of nonobviousness, patentee must show both that there is commercial success, and that product or
method that is commercially successful is invention disclosed and claimed in patent; if patentee satisfies this
burden, then challenger must demonstrate that commercial success was due to extraneous factors other than patented invention, e.g., advertising. 35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade Brands, Inc., 989
F. Supp. 547 (D. Del. 1997).
For commercial success to evidence non-obviousness in a patent case, the record must show a sufficient
nexus between the success and the patented invention. 35 U.S.C.A. § 103. Everett Laboratories, Inc. v. Breckenridge Pharmaceutical, Inc., 573 F. Supp. 2d 855 (D.N.J. 2008).
Evidence of commercial success is relevant to question of nonobviousness since it indicates inventive nature
of product. Tights, Inc. v Acme-McCrary Corp. (CA4 NC) 541 F2d 1047, cert den 429 US 980, 50 L. Ed. 2d
589, 97 S Ct 493.
Fabric patent is invalid for obviousness from prior patent showing identical ground construction and from
other prior patent showing concept of "wraparound" yarn for stretch fabric, and District Court erred in finding
wraparound concept not shown in art and in relying on commercial success and prompt copying by infringer.
Deering Milliken Research Corp. v Beaunit Corp. (CA4) 189 USPQ 565.
In patent infringement action by chair manufacturer against furniture company, plaintiff's patents were not
invalid by reason of obviousness, within meaning of 35 U.S.C.A. § 103, where plaintiff's chairs had no less than
eight specific design differences and had enjoyed considerable commercial success, and commercial success was
trustworthy indicator of non-obviousness due to fact that undisputed testimony established that overall appearance of upholstered furniture is most important factor considered by those purchasing it and thus largely determinative of its commercial success; fact that plaintiff's patent design was imitated also substantiated its nonobviousness. Pacific Furniture Mfg. Co. v Preview Furniture Corp. (1985, MD NC) 626 F Supp 667, 228 USPQ
23 A.L.R. Fed. 326
Page 201
235, affd (CA FC) 800 F2d 1111, 231 USPQ 67.
Substantial commercial success of chair patent is attributed to lower cost derived from variations within
reach of person of ordinary skill so that patent differing in minor ways from prior art is invalid. Steelcase, Inc. v
Delwood Furniture Co. (CA5 Ala) 578 F2d 74.
Fact that cutter for laminated plastic met with substantial commercial success was one factor warranting affirmation of jury finding of unobviousness. White v Mar-Bel, Inc. (CA5 Fla) 509 F2d 287, reh den (CA5 Fla)
511 F2d 1402, 185 USPQ 129.
Unobviousness of feeder for thoroughly mixing polymers with liquid is supported by substantial commercial success of patented feeder and is relevent to finding that patent is valid. Gaddis v Calgon Corp. (CA5 Tex)
506 F2d 880, 184 USPQ 449.
See Hanson v Alpine Valley Ski Area, Inc. (1979, CA6) 204 USPQ 803, § 16.
Evidence of commercial success of patented pedestal for mounting electric and gas meters is insufficient to
overcome determination of obviousness from prior art meter pedestals. Nickola v Peterson (CA6 Mich) 580 F2d
898, 198 USPQ 385, cert den (US) 59 L. Ed. 2d 774, 99 S Ct 1504.
Although patent on insulated window construction has enjoyed moderate commercial success, this is inadequate to validate combination of steps separately suggested in art and producing no new or different function.
Reynolds Metals Co. v Acorn Bldg. Components, Inc. (CA6 Mich) 548 F2d 155, 192 USPQ 737.
See Foseco International, Ltd. v Fireline, Inc. (1984, ND Ohio) 607 F Supp 1537, 224 USPQ 888, motion gr
(ND Ohio) 226 USPQ 33, § 13.
Commercial success, standing alone, has nothing whatever to do with obviousness question; it is foreseeability of commercial success at point in time before problem is solved which is relevant to obviousness determination. Dickey-John Corp. v International Tapetronics Corp. (1983, CA7 Ill) 710 F2d 329, 219 USPQ 402.
Commercial success is persuasive circumstantial evidence of nonobviousness, but is weakened by fact that
successful prior art bearing was not licensed for industrial use so that patented bearings filled need not otherwise
filled because of unavailability of prior art bearing, and clear and convincing showing of invalidity prevails.
Chicago Rawhide Mfg. Co. v Crane Packing Co. (CA7 Ill) 523 F2d 452, cert den 423 US 1091, 47 L. Ed. 2d
103, 96 S Ct 887.
Court will consider some commercial success of patented machines for cleaning soaking pits for steel mills
and comparable success of allegedly infringing machines to find that commercial success evidence does not
compel conclusion of unobviousness of patented machines. Louis A. Grant, Inc. v Keibler Industries, Inc. (CA7)
191 USPQ 424.
Commercial success of invention is objective evidence of its nonobviousness. General Am. Transp. Corp. v
Cryo-Trans, Inc. (1995, ND Ill) 893 F Supp 774, mod, motion den, in part, objection sustained (ND Ill) 897 F
Supp 1121.
In action in which plaintiff sought order restraining defendant from infringing plaintiff's patent by manufacturing and selling low–temperature cleaner to manufacturers of aluminum cans for food and beverage industry,
court issued preliminary injunction where it found that defendant could not carry its burden of proving obviousness; aluminum can industry had long–felt need for low temperature cleaner, major manufacturers had been
pressing for development of alternative to high–temperature cleaner, need had always been present and reached
serious proportions with energy crisis of 1970s, other manufacturers' attempts to develop low–temperature
23 A.L.R. Fed. 326
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cleaner had been unsuccessful, plaintiff's patented composition had been immediately recognized as long
sought-for answer, plaintiff's product had been immediate success and "spread like wildfire," in first 10 years
after introduction, yearly sales climbed from $34,000 to over $10,000,000, sales continued to climb through
1970s, during first decade of production almost all aluminum can manufacturers had switched to plaintiff's patented product, and commercial success continued to present day; no evidence was presented to suggest that defendant had conducted independent research to arrive at its accused formulation, defendant had continued to
copy plaintiff's composition, and defendant's copying continued despite its admitted knowledge of means to
avoid infringement of plaintiff's product. Henkel Corp. v Coral, Inc. (1990, ND Ill) 754 F Supp 1280.
Objective evidence of patent's nonobviousness includes extent of commercial success of patented invention,
unexpected properties of invention compared to prior art, whether invention satisfies long-felt need, whether
others have failed to find solution to problem plaguing art, and any copying of invention by others. 35 U.S.C.A.
§ 103(a). Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 364 F. Supp. 2d 820 (S.D. Ind. 2005).
Evidence of substantial commercial success of patented fishing bobber is insufficient to support validity of
patent, because obviousness from prior art bobbers is clear. Airlite Plastics Co. v Plastilite Corp. (CA8 Neb) 526
F2d 1078, cert den 425 US 938, 48 L. Ed. 2d 179, 96 S Ct 1671.
357 F. Supp. 2d 1105 (S.D. Iowa 2005).
Evidence of commercial success, or other secondary considerations, is only significant in determination of
patent obviousness if there is a nexus between the claimed invention and the commercial success. 35 U.S.C.A. §
103. Allan Block Corp. v. County Materials Corp., 634 F. Supp. 2d 979 (D. Minn. 2008).
See Maxwell v J. Baker, Inc. (1992, DC Minn) 805 F Supp 735, § 23.
See Black & Decker Mfg. Co. v Ever-Ready Appliance Mfg. Co. (1981, ED Mo) 518 F Supp 607, aff'd 684
F2d 546, 215 USPQ 97, § 18.
Although commercial success may be relevant secondary indication of obviousness, commercial success
without invention will not make patentability. Bristol Locknut Co. v SPS Technologies, Inc. (1982, CA9 Cal)
677 F2d 1277, 216 USPQ 867.
Where trial court failed to consider evidence of substantial commercial success of patented travel chair for
handicapped children, failed to consider distinctions from prior art, evaluate prior art and evaluate distinctions
relative to level skill and art and to evaluate obviousness of such distinctions relative to level of skill, case
would be remanded. Palmer v Orthokinetics, Inc. (1980, CA9) 204 USPQ 893.
See Photo Electronics Corp. v England (CA9 Cal) 581 F2d 772, 199 USPQ 710, § 23.
Evidence of substantial problems with dental handpiece controls and substantial and widespread success of
patented solution to problems is considered as bolstering determination of unobviousness and validity of patent.
Austin v Marco Dental Products, Inc. (CA9 Or) 560 F2d 966, 195 USPQ 529. cert den 435 US 918, 55 L. Ed. 2d
511, 98 S Ct 1477.
Failure of patented shoring device to achieve commercial production over prior art shoring device is considered in finding patent invalid as obvious combination of suggestions from art. Ceco Corp. v Bliss & Laughlin
Industries, Inc. (CA9 Cal) 557 F2d 687, 195 USPQ 337.
District Court did not err in invalidly ruling on patent on setting fuel-air mixture for aircraft engines based
on measurement of exhaust gas temperature, because prior art shows full knowledge of relationship of exhaust
gas temperature to fuel-air mixture and suggests similar fuel control using exhaust gas temperature, and court
was correct in concluding that substantial commercial success cannot make patent valid when it is obvious from
23 A.L.R. Fed. 326
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art. Alcor Aviation, Inc. v Radair, Inc. (CA9) 188 USPQ 549.
2005).
Commercial success of patented boat design is offset by contemporaneous designs for automobiles and other boats having similar appearance resulting in invalidity decision. Sidewinder Marine, Inc. v Starbuck Kustom
Boats & Products, Inc. (CA10) 202 USPQ 356.
In order for commercial success to constitute secondary evidence of patent's nonobviousness, patentee must
demonstrate nexus between claimed sales and merits of invention. 35 U.S.C.A. § 103(a). Hildebrand v. Steck
Mfg. Co., Inc., 395 F. Supp. 2d 1036 (D. Colo. 2005).
Minimal indications of commercial success are not cause to deny summary judgment of invalidity of patent
if obviousness is apparent from the prior art. Dow Jones & Co., Inc. v. Ablaise Ltd., 632 F. Supp. 2d 23 (D.D.C.
2009).
Evidence of factors such as commercial success and long felt need and copying may rebut a Patent and
Trademark Office (PTO) assertion of obviousness where the patentee provides a nexus between the objective
factors and the claimed invention. 35 U.S.C.A. § 145. Hitachi Koki Co., Ltd. v. Dudas, 556 F. Supp. 2d 41
(D.D.C. 2008).
Patentee's evidence of commercial success was insufficient to show that patent for inventory control and reporting system for use in retail dry-cleaning establishment was not obvious; patentee provided no coordinating
data to support his market share claim, and patentee established no nexus between his alleged commercial success and merits of his claimed invention. 35 U.S.C.A. § 103. Markman v. Lehman, 987 F. Supp. 25, 45
U.S.P.Q.2d (BNA) 1385 (D.D.C. 1997).
Commercial success, even if unexpected, is not part of the "unexpected results" inquiry of secondary objective evidence of non-obviousness under patent law; an unexpected result must arise from combining prior art elements. 35 U.S.C.A. § 103(a). Media Technologies Licensing, LLC v. Upper Deck Co., 596 F.3d 1334, 93
U.S.P.Q.2d 1911 (Fed. Cir. 2010).
Evidence of secondary considerations, including evidence of unexpected results and commercial success,
are but part of totality of evidence that is used to reach ultimate conclusion of whether claimed invention is obvious; although, in some cases, such evidence is most probative of obviousness, existence of such evidence does
not control obviousness determination. 35 U.S.C.A. § 103. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476,
44 U.S.P.Q.2d (BNA) 1181 (Fed. Cir. 1997), reh'g denied, in banc suggestion declined, (Nov. 21, 1997).
Evidence that over one million of patent applicant's tennis racket grips had been sold did not establish that
grip was nonobvious, as there was no indication whether that number represented substantial share of market. In
re Huang (1996, CA FC) 100 F3d 135, 40 USPQ2d 1685.
Patentee of laptop computer failed to show that evidence of commercial success was relevant to issue of obviousness. In re Paulsen (1994, CA FC) 30 F3d 1475, 31 USPQ2d 1671.
23 A.L.R. Fed. 326
Page 204
See Cable Electric Products, Inc. v Genmark, Inc. (1985, CA FC) 770 F2d 1015, 226 USPQ 881, § 13.
Statement by trial court that "commercial success without invention will not make patentability" was erroneous; however, where evidence of commercial success consisted solely of number of units sold without any
showing of market share, growth in market share, or nexus between sales and merits of invention, trial courts
finding that device had met with overwhelming commercial success did not require holding that invention would
have been nonobvious at time it was made. Kansas Jack, Inc. v Kuhn (1983, CA FC) 719 F2d 1144, 219 USPQ
857.
See Messerschmidt v United States (1993) 29 Fed Cl 1, § 8.
[Top of Section]
[END OF SUPPLEMENT]
§ 23. Long-felt but unsolved need
When the need for something has existed for a long time in a particular field without having been met, there
is an implication that a solution to the problem was not obvious to those working in the field.[12] An invention
filling the need suggests that it was more than the work of a person of ordinary skill in that field, for such persons would have found the solution themselves had the differences between the subject matter of the invention
and the prior art been obvious to them. This is the rationale of "long-felt but unsolved need" as indicia of nonobviousness under 35 U.S.C.A. § 103, and while it frequently overlaps or is combined with commercial success
and failure of others, it has been recognized and applied by the courts in a number of cases as a valid secondary
consideration indicating the nonobviousness of an invention at the time it was made to a person having ordinary
skill in the art.Second Circuit
75 L. Ed. 2d 931, 103 S Ct 1500
Ninth Circuit
Laitram Corp. v Depoe Bay Fish Co. (1982, DC Or) 549 F Supp 29, 1983-1 CCH Trade Cases ¶65268
(shrimp peeler)
Tenth Circuit
Ralston Purina Co. v Far-Mar-Co, Inc. (1984, DC Kan) 586 F Supp 1176, 222 USPQ 863, affd in part
and revd in part on other gnds (CA FC) 772 F2d 1570, 227 USPQ 177 (food processing method)
Eleventh Circuit
Ramos v. Biomet, Inc., 828 F. Supp. 1570 (S.D. Fla. 1993), aff'd in part, rev'd in part, 69 F.3d 553 (Fed.
Cir. 1995), reh'g denied, in banc suggestion declined, (Oct. 24, 1995) (hip prosthesis)
Federal Circuit
(US) 83 L Ed 2d 107, 105 S Ct 172 (teflon laminates and tubes)
The court said that it applied "the secondary considerations referred to" in the Graham Case (1966) 383 US
1, 15 L Ed 2d 545, 86 S Ct 684, supra § 20, in holding the patent at issue valid in National Dairy Products Corp.
v Borden Co. (1968, CA7 Wis) 394 F2d 887, cert den 393 US 953, 21 L Ed 2d 364, 89 S Ct 378, saying that the
prior unsuccessful attempts to satisfy a long-felt need in the industry were strong indicia that this patentee's
method, successfully achieving aims so long sought, was not obvious.
Thus, in Norman v Lawrence (1960, CA2 NY) 285 F2d 505, the patented disclosure was for clip-on earring
23 A.L.R. Fed. 326
Page 205
pads which, the court pointed out, consisted of a combination of the simplest sort, made of two elements that
had for many years been used in the industry. Holding the patent valid, the court said that while the courts have
again and again evinced repugnance to recognizing as patentable a trivial readjustment of existing elements into
a new combination, apparently insisting that monopolies should be limited to new assemblages of old elements
that are important and imposing, there was no escape from measuring invention in cases where all the elements
of the new combination had long been available, (1) by whether the need had long existed and been desired, and
(2) whether, when it was eventually contrived, it was widely exploited as a substitute for what had gone before.
Holding nonobvious and valid the patent on a method to measure the speed of potential traffic violators with
an electronic computing device, the court in Federal Sign & Signal Corp. v Bangor Punta Operations, Inc. (1973,
DC NY) 357 F Supp 1222, noted that the invention was rapidly supplanting older methods and devices for speed
detection. The need for such an invention had existed since the development of the automobile, the court said,
and the long existence of the means necessary to bring about the invention, and its very simplicity, suggested
that the invention was by no means obvious to those familiar with the art or the problem.
In holding valid plaintiff's power ventilator patents, the court in Jenn-Air Corp. v Penn Ventilator Co.
(1972, CA3 Pa) 464 F2d 48, pointed out that the ventilator industry had been for many years unsuccessfully endeavoring to sizably reduce the noise of power roof exhausters, and found that the plaintiff's construction of its
baffles with the other independent curbs to air flow made its product ten times more effective than any of the exhibits offered by the alleged infringer. The latter's expert witness, who knew of plaintiff's patented curb, brushed
it aside as too new, and downgraded it generally, and yet, the court said, it was those patents that proved of
amazing value to the whole power ventilator industry.
In Brown v Brock (1957, CA4 Md) 240 F2d 723, the patent on a weeping doll which a child could easily
manipulate by squeezing the doll's hollow flexible body at any place convenient to the child was held valid, the
court saying that a new combination providing new and unobvious results was patentable. After considering features in this patent which were "new in dolls," the court referred to 35 U.S.C.A. § 103, and said that the record
showed a long-felt and unsatisfied want for an acceptable weeping doll, and that a number of devices were attempted but none served the purpose. If any solution to the problem had been obvious, it would not have been
overlooked in the industry for want of desire or effort, the court concluded.
Finding that for many years there had been a need for a highway pavement marker which would be visible
in the nighttime under adverse conditions, the court in Amerace Esna Corp. v Highway Safety Devices, Inc.
(1971, DC Tex) 330 F Supp 313, held the patent on such a device valid. It stated that where there has been a
long-standing need for a solution to overcome defects in the prior art, the answer to the problem as solved by the
patentee, as was done in this case, was not obvious to those skilled in the art.
In Cold Metal Process Co. v Republic Steel Corp. (1956, CA6 Ohio) 233 F2d 828, cert den 352 US 891, 1 L
Ed 2d 86, 77 S Ct 128, reh den 352 US 955, 1 L Ed 2d 245, 77 S Ct 323, the court said, in holding the patents
valid, that the fact that these patents had revolutionized the art to which they related required that they be given
liberal construction, the long-standing want and insistent demand satisfied by the patentee demonstrating the existence of invention. The court also said that the fact that there was a "technological block" which those skilled
in the art had not previously eliminated was cogent evidence of invention, and that long recognition of an existing problem in any art, and the advantages to accrue to an industry from its solution, were highly persuasive of
invention when success was finally achieved.
The court held valid the patent involved in National Latex Products Co. v Sun Rubber Co. (1959, CA6
Ohio) 274 F2d 224, reh den (CA6 Ohio) 276 F2d 167, cert den 362 US 989, 4 L Ed 2d 1022, 80 S Ct 1078, saying that the long-established tests of invention existed in this case in high degree. It noted that the need to solve
the problem achieved by this patentee was long recognized but that prior invention had failed to accomplish the
results of this patent which, within a few years, had to a great extent replaced the prior practices in the art. This
23 A.L.R. Fed. 326
Page 206
was one of the strongest indicia of invention, the court said, for plainly, when manufacturing concerns, practicing the art and competing with each other in the market, extensively replaced one method for another, it was
evidence of invention.
Holding valid the patent on an oil-extended synthetic rubber composition for use in tire treads, the court in
General Tire & Rubber Co. v Firestone Tire & Rubber Co. (1973, CA6 Ohio) 489 F2d 1105, cert den 417 US
932, 41 L Ed 2d 235, 94 S Ct 2643, pointed out that one of the ways by which a showing of obviousness might
be rebutted was to point to a long-felt and, up to the point of invention, unfulfilled need, and that in this case the
need was long-felt and the patentee's invention filled it.
The court held valid the patents on a hinge for latchless doors, in Cardinal of Adrian, Inc. v Peerless Wood
Products, Inc. (1973, DC Mich) 363 F Supp 1298, noting testimony of hinge experts that prior to the patentee's
inventions, the functions and operating principles of cams, followers, and latches, such as were involved in this
lawsuit, were familiar and were within the general knowledge of workers in the mechanical arts. There was also
evidence from experts of the long-felt need of the cabinet industry for such a hinge as this patentee's, and of
earlier unsuccessful attempts to satisfy the need. Despite the prior art that was available, the court said, only this
patentee put the combination of elements together, and from all the evidence it was plain that the combination of
elements in these patents was not obvious to those skilled in the art at the time of invention.
The patent on a coating which provided corrosion protection for iron and steel was held valid in Carboline
Co. v Mobil Oil Corp. (1969, DC Ill) 301 F Supp 141, the court emphasizing that when all the elements of a patented combination are well known and the problem solved by the patent is long-existing, the delay and failure of
others to produce the invention of the patent in suit is cogent evidence that the invention was not obvious.
Where the patentee buttressed its claim of patentability for its swing-frame animal trap by evidence of secondary considerations, in Woodstream Corp. v Herter's, Inc. (1971 CA8 Minn) 446 F2d 1143, and the court
found the trap technically nonobvious and so patentable, it turned to the secondary evidence introduced, and
found that the inventor of the trap had received the only award ever given by the American Humane Association
for the development of a humane animal trap. There was also testimony of a long-time professional trapper that
the commercial version of the patentee's trap had almost completely replaced the old style leg-hold trap, and
evidence from the publisher and editor of a fish and game magazine who testified as to the impact of the patentee's trap on the trapping industry, whose problems were "licked" by this trap. Evidence of this nature, the
court said, whether characterized as commercial success or fulfilling long-felt but unsolved needs or failure of
others, and similar considerations, might be utilized to give light to the circumstances surrounding the origin of
this patent, and they had relevancy as indicia of nonobviousness.
In Kaakinen v Peelers Co. (1962, CA9 Wash) 301 F2d 170, cert den 371 US 823, 9 L Ed 2d 62, 83 S Ct 40,
where the alleged infringer of the patent held valid on a machine designed to peel raw shrimp referenced prior
art machines such as corn huskers, rock and gravel strainers, peanut stemmers, and onion skinners, as showing
lack of invention over prior art, the court pointed out that none of the evidence adduced overcame the point that
where the method or device satisfied an old or recognized want, as it did in this case in which the machine had
completely replaced manual shrimp peeling, invention would be inferred rather than the exercise of mechanical
skill, for mere mechanical skill of the art would normally have been called into action by the generally known
want.
A showing that there has been a long-felt pressing need for a particular device will substantially strengthen
the validity of a patent, the court said in Reeves Instrument Corp. v Beckman Instruments, Inc. (1971, CA9 Cal)
444 F2d 263, cert den 404 US 951, 30 L Ed 2d 268, 92 S Ct 283, but only if that showing is accompanied by
evidence of prior unsuccessful efforts to fill that need. Here there was evidence of such efforts, and the court
held the patent valid.
In a number of cases, the courts have, while recognizing "long-felt but unsolved need" as a valid considera-
23 A.L.R. Fed. 326
Page 207
tion, nonetheless found that under the particular circumstances, the need for the invention in suit was either not
long-felt or did not exist, or that a solution had not been sought, and hence could not lend support to a finding of
nonobviousness.
Thus, while it was argued in support of the patent on sunglasses held invalid in Welsh Mfg. Co. v Sunware
Products Co. (1956, CA2 NY) 236 F2d 225, that if the device were obvious, others in the industry would have
made use of it, the court pointed out that here there was no evidence that there had been any sustained effort
over a period of time to find a way of doing what the patentee did, nor was it shown that there was a great demand in the industry for such a combination.
The patent on a new design of the hardware used for the operation of a reclining chair with a movable leg
rest was held invalid in Lorenz v F. W. Woolworth Co. (1962, CA2 NY) 305 F2d 102, the court saying that
while in a proper case it was relevant on the issue of obviousness that the patent under attack served to satisfy a
"long-felt want," here the only evidence of long-felt want was the relatively large number of patents issued on
reclining-chair hardware, an indication of considerable interest in the improvement of these devices, and immediate adoption of this patentee's device by the trade. However, the court said, the patentee could not point to a
specific problem to which workers in the field were directing their attention and which was solved by his device,
and apart from the usual and common desire of manufacturers constantly to improve their product, there was no
evidence here of any specific recognized problems which the claimed invention solved.
In reversing the trial court's decision and denying validity to a patent for full-fidelity FM stereo radio which
was monophonically compatible, the court in Preuss v General Electric Co. (1968, CA2 NY) 392 F2d 29, cert
den 393 US 834, 21 L Ed 2d 104, 89 S Ct 105, said that the trial judge placed too great emphasis on the secondary supporting issues, not focusing on the inventive process so much as on the after-the-discovery results and
occurrences, concluding that the patentee's results filled a real need in the industry, and bolstering this finding
by emphasizing the acclaim accorded the patentee and the resultant commercial success of his invention. Although these issues may be appropriate for consideration, the court pointed out, they are not to carry too heavy a
burden. Saying that, in reversing, it placed primary reliance on the technical facts of the inventive process, the
court pointed out that it was not until 1961 that the FCC approved FM stereo broadcasting on a commercial
scale, and that while the trial judge found that the history of FM stereo indicated a "desire" for it, and then drew
the inference that since the patentee satisfied the desire the invention must have been nonobvious, he having
been "confronted with the same obstacles and problems of FM stereo as were others devoted to the art," the record did not support this inference because many researchers simply ignored the field, since without FCC approval no radio system could be profitable and there was little incentive for researchers to devote their laboratories to this area of uncertain return. The patentee had to sell his product to the FCC and then to the public, and it
was to his credit that he would work in an area of such uncertain profit, the court said, but such a fact did not
support the conclusion that he filled a need in the industry from which to draw an inference that his invention
must have been nonobvious. Admittedly, the court said, there was considerable professional excitement over this
invention and the radio industry acclaimed the discovery, but this was so because this patentee was the first to
make the additions he did, not because his invention was nonobvious at the time.
Similarly, the patent on a "push-pull cable" consisting of a wire or core inclosed in a plastic tube surrounded
by a wire casing was held invalid in Teleflex, Inc. v American Chain & Cable Co. (1967, DC NY) 273 F Supp
573, the court finding it novel and useful, but obvious under 35 U.S.C.A. § 103 In answer to the patentee's argument that its cable filled a long-felt need in the industry, the court pointed out that the patentee was the dominant
seller of metal-lined cable and, before this patent was applied for, it was in no hurry to put a plastic-lined cable
on the market, its view being that it should stick to its metal-lined cable as long as its competitors did not come
out with a successful plastic-lined one, and that in seeking this patent, it attempted by substituting a plastic tube
for a metal one to obtain an extension for another 17 years of the monopoly which it had previously enjoyed and
23 A.L.R. Fed. 326
Page 208
which enabled it to dominate the push-pull cable industry.
And in Zero Mfg. Co. v Mississippi Milk Producers Asso. (1966, CA5 Miss) 358 F2d 853, cert den 385 US
841, 17 L Ed 2d 74, 87 S Ct 93, where the patent at issue was held invalid, the court said that examination of the
record revealed numerous factors which militated against nonobviousness within the statutory meaning. There
was no showing that the industry needs were urgently felt, or that others had long sought the claimed new development, the court noted, but rather, it appeared that the patentee's device found a great deal of opposition in the
industry, and that it was only after several years of use that it reached its present state of acclaim.
The patent on a valve for inclusion in a ventilating system designed to prevent the unburned hydrocarbons
present in the blow-by gases of an automobile engine from polluting the atmosphere was held invalid in Novo
Industrial Corp. v Standard Screw Co. (1967, CA7 Ill) 374 F2d 824, cert den 389 US 823, 19 L Ed 2d 75, 88 S
Ct 51, the court noting that the advent of legislation requiring the use of effective blow-by control devices on
automobiles served to create an expanded market for the valve used in crankcase-ventilating systems, and
spurred those skilled in the art to address themselves to the elimination of the features which were causing dissatisfaction with the performance of the earlier valve. The development of the valve of the patent in suit, and the
independent and almost contemporaneous development and introduction of the alleged infringer's accused valve
structure which followed, warranted the conclusion, the court said, that the structure of the patent in suit was but
the result of application of ordinary skill in the art to a problem which for the first time was beginning to assume
significant commercial importance to the automotive industry.
In Leach v Badger Northland, Inc. (1967, CA7 Wis) 385 F2d 193, the patent on a suction silo unloader was
held invalid over the patentee's argument that it described a pioneer invention providing a long-sought solution
to an old problem, and that this was in itself a compelling indication of the patentable character of the invention.
The court found, however, that the solution was not seriously sought in the past because prior to 1945 most
farms lacked sufficient electrical power for operation of workable silo unloaders and produced insufficient income to warrant purchase of expensive equipment, but that farmers did have access to sufficient low-priced farm
labor to perform this admittedly arduous task of unloading silos manually.
In Canadian Ingersoll-Rand Co. v Peterson Products of San Mateo, Inc. (1963, DC Cal) 223 F Supp 803, affd in part and revd in part on other grounds (CA9 Cal) 350 F2d 18, in which the patent was held invalid, the
background of prior art and prior use was such that the patentee leaned heavily upon certain objective, as distinguished from so-called subjective, tests, which it contended were applicable in this case to test patentable invention. The court noted that with respect to meeting a long-felt want, any significant want for the particular apparatus claimed could not have begun to be felt in the industry until about 1951 when fiber glass in the form of roving became available, and that even if such a want then became immediately recognizable and felt in the industry, it would be reasonable to expect that this patentee, who claimed to have conceived his method and constructed a device for a hand-held cutter and sprayer of such roving about that time, would have responded to that
want. He was no closeted theorist working single-handed in the field of reinforced plastic but was aligned at that
time with substantial commercial enterprises which were presumably anxious to respond to any such significant
want in the industry for spray-up apparatus of the type disclosed by this patent, the court said, but there was no
evidence that he or anyone else connected with the patent recognized or responded to any such industry need,
nor was there evidence that any commercial part or article was ever made by his device during a period of nearly
5 years thereafter. It was not until 1957, the court said, that this patentee and the commercial enterprises who
had rights in the device evidenced any recognition of an industry want, a want which for that reason seemed to
have been either nonexistent, insubstantial, or at least, certainly not long-felt.
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Cases:
Secondary considerations of commercial success and acceptance in industry fail to support validity of patent
when evidence does not show that problem existed in art and resisted solution by others or that success is based
on claimed features. Scully Signal Co. v Electronics Corp. of America (CA1 Mass) 570 F2d 355, 196 USPQ 657
, cert den 436 US 945, 56 L. Ed. 2d 787, 98 S Ct 2848.
Dominance of one company in art of racetrack betting devices detracts from argument of "long-felt need"
because of lack of incentive to convert electromechanical systems to solid state electronic ones. Digitronics
Corp. v New York Racing Asso. (CA2 NY) 553 F2d 740, 193 USPQ 577, cert den 434 US 860, 54 L. Ed. 2d
133, 98 S Ct 187.
Existence of important problem of art remaining unsolved for long period, despite continued efforts at solution, until new combination of concepts produces solution is evidence that combination is not obvious, and patent on making accurate gaps in magnetic heads by using capillary action is valid. U. S. Philips Corp. v National
Micronetics, Inc. (CA2 NY) 550 F2d 716, 193 USPQ 65, cert den 434 US 859, 54 L. Ed. 2d 131, 98 S Ct 183.
Patent on groving sheet of PTFE for locating wires in groves when sheets are pressed together is obvious
from prior art suggesting groving of materials to locate conductor wires, and secondary considerations of long
felt need and commercial success cannot overcome clear obviousness; patent on pressing sheets of PTFE together over conductor wires is not invalid for obviousness from prior art suggesting that sheets of PTFE cannot be
pressed together without heat, especially considering that patent process supplied unsatisfied need and met with
immediate commercial success. W. L. Gore & Associates, Inc. v. Carlisle Corp., 529 F.2d 614, 189 U.S.P.Q.
(BNA) 129, 1976-1 Trade Cas. (CCH) ¶ 60700, 41 A.L.R. Fed. 941 (3d Cir. 1976).
Long-felt need, as relevant to issue of drug's non-obviousness, arose as of the date on which the drug's side
effects were identified, articulated and efforts to solve the side effects were commenced, rather than the date on
which a person with ordinary skill in the art would have been aware of the specific enzymes involved in solving
the drug's side effects. Pfizer Inc. v. Teva Pharmaceuticals USA, Inc., 460 F. Supp. 2d 650 (D.N.J. 2006).
See John Zink Co. v Nat. Airoil Burner Co., Inc. (1980, CA5) 205 USPQ 494, § 19.
In patent infringement action in which court held that patent for articulated orthopedic brace was unenforceable because of obviousness, court stated that it had also looked to secondary considerations in determining obviousness, including long–felt but unresolved need, failed attempts by others, initial skepticism, subsequent
praise, commercial success, and copying by others. Medical Designs, Inc. v Medical Technology, Inc. (1992,
ND Tex) 786 F Supp 614.
23 A.L.R. Fed. 326
Page 210
See Foseco International, Ltd. v Fireline, Inc. (1984, ND Ohio) 607 F Supp 1537, 224 USPQ 888, motion gr
(ND Ohio) 226 USPQ 33, § 13.
Secondary considerations of long-felt need in industry and commercial success of bundle strap applying tool
may be indicia of obviousness or nonobviousness, but considered relative to known tools in art, do not make patented tool unobvious so that patent is invalid. Panduit Corp. v Burndy Corp. (CA7 Ill) 517 F2d 535, 186 USPQ
75.
For purposes of § 103, there was no long-felt need in lock-and-key industry for key that was one-third wider
than standard key. Best Lock Corp. v Ilco Unican Corp. (1995, SD Ind) 896 F Supp 836, 36 USPQ2d 1527.
357 F. Supp. 2d 1105 (S.D. Iowa 2005).
In action in which patent holder alleged that defendant shoe retailers had violated holder's patent by selling
shoes using holder's patented system for attaching together mated pairs of shoes, court determined that holder's
patent was valid, in spite of defendants' claim that it was invalid as being obvious, where, among other reasons,
defendant retailers failed to raise material fact issue concerning alleged obviousness of claims covered by holder's patent, and holder proffered evidence demonstrating that her patented attachment system had solved
long–felt need in shoe industry, that her system had been commercially successful, and that defendant's officers
and employees had tried but were unsuccessful in their search for prior art to invalidate her patent. Maxwell v J.
Baker, Inc. (1992, DC Minn) 805 F Supp 735.
Extremely technical and complex subject matter of electronic video analyzer for color film negatives
presents obviousness questions especially suitable for secondary considerations of long felt need and commercial success. Photo Electronics Corp. v England (CA9 Cal) 581 F2d 772, 199 USPQ 710.
Court considers evidence of substantial unsolved problem in art of building foundations in unstable soil and
failure of many engineering experts to find solution as satisfactory as claimed method in holding patent valid as
unobvious. Santa Fe-Pomeroy, Inc. v P & Z Co. (CA9 Cal) 569 F2d 1084, 197 USPQ 449.
23 A.L.R. Fed. 326
Page 211
2005).
Delay between conception of invention and evidence of long-felt need and commercial success did not preclude consideration of such secondary evidence of nonobviousness. 35 U.S.C.A. § 103(a). Hildebrand v. Steck
Mfg. Co., Inc., 395 F. Supp. 2d 1036 (D. Colo. 2005).
Secondary consideration evidence of long-felt need did not provide persuasive support for the nonobviousness of "programmatic" and "direct" control claims in patents on computer system that enabled continuous
streaming media playback from distribution of sites available over network such as Internet, although market
forces allegedly discouraged software developers from creating on-demand media services, where patent holder's approach did not present any technical challenge to one of ordinary skill in the art once market forces had
created a demand for integrated, streaming media services. Friskit, Inc. v. Real Networks, Inc., 306 Fed. Appx.
610 (Fed. Cir. 2009).
Because earlier doors consisting of glass-fiber reinforced skin over wooden frame had been unsatisfactory
because glass fibers at surface had caused blemishes to finish, similar door with no glass fibers within 0.005
inches of surface was properly found by jury to be nonobvious. Therma-Tru Corp. v Peachtree Doors (1995, CA
FC) 44 F3d 988, 33 USPQ2d 1274.
In action in which plaintiff alleged that competitor had infringed its patent for resin–based orthopedic casting tape system, trial court properly entered judgment for plaintiff where plaintiff's patent would not have been
obvious to one of ordinary skill in the art at time of plaintiff's invention; non–obviousness was demonstrated by
several factors, including long–felt but unsolved need for workable resin–based casting system, which was established by attempts and failures of all competitors in casting field; in spite of importance that secondary consideration of long–felt need and failure of others played in considerations of both patent office and special master, competitor failed to address it. Minnesota Mining & Mfg. Co. v Johnson & Johnson Orthopaedics, Inc.
(1992, CA FC) 976 F2d 1559, 93 Daily Journal DAR 1473, 24 USPQ2d 1321.
See Messerschmidt v United States (1993) 29 Fed Cl 1, § 8.
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[END OF SUPPLEMENT]
§ 24. Commercial acquiescence
The fact that competitors and others in a particular field do not infringe a patent, but are willing to obtain li-
23 A.L.R. Fed. 326
Page 212
censes under it and pay royalties for its use, implies their recognition of the validity of the patent, that is, that the
invention was not obvious to persons of ordinary skill in the field. Such "commercial acquiescence" has been recognized by the courts in a number of cases as an indication that the invention was not obvious at the time it was
made to a person having ordinary skill in the art.
Thus, in Columbia Broadcasting System v Sylvania Electronic Products, Inc. (1969, CA1 Mass) 415 F2d
719, cert den 396 US 1061, 24 L Ed 2d 755, 90 S Ct 755, the court noted, in holding valid the patent on a TV
screen, the "tangible action" of the Radio Corporation of America in licensing this patent. It observed that while
licensing has its limits as an indicator of obviousness, absent a showing that the licensing arrangement was motivated by considerations other than those relating to evaluations of validity and the desires to avoid infringement, the fact that the leader in color television development chose to license this patent was entitled to some
weight. The alleged infringer asserted that licensing arrangements often have a "back scratching" effect, but the
court pointed out that in view of RCA's considerable investment in color television—in both money and corporate prestige—it was unlikely that it would have so readily licensed a competitor's patent for reasons unrelated to
patentability.
Commercial success might in considerable measure be due to the decorative appeal of the finished plywood
allegedly infringed in this case, the court said in Georgia-Pacific Corp. v United States Plywood Corp. (1958,
CA2 NY) 258 F2d 124, cert den 358 US 884, 3 L Ed 2d 112, 79 S Ct 124, but held the patent on it valid, saying
that this commercial success must be viewed in light of the long-continued public acquiescence in the validity of
the patent, since such a volume of sales not only raised the inference that the plywood was a product of invention, but it also understandably led to pressure on competitors to imitate the product and thus to appropriate part
of this profitable market. It was most significant, therefore, the court noted, that the only plywood manufacturers
to contest the patentee's statutory monopoly prior to the present litigation was an interrelated group of persons
that ultimately consented to an adverse decree against it, and thus this alleged infringer was the first producer to
litigate fully this patent, but this attack was not initiated until 13 years after the patent issued. The court noted
that unwillingness in an industry to engage in extensive patent litigation could sometimes be explained in terms
unrelated to the validity of the patent, such as limited commercial appeal of the product making even successful
litigation unprofitable, or the industry being composed of such small producing units that no single one of them
was able to undertake the burden and expense of a big litigation. Here, however, the court pointed out, the record showed that the plywood industry was comprised of many relatively large units, and that large profits were
to be made as a result of the strong commercial appeal of a product like this one, so that the fact that licensees
paid out substantial sums in royalties made it highly unlikely that a firm in a competitive industry would commit
itself to pay such royalties if there was a substantial likelihood that the rest of the industry could manufacture the
product free of the patent.
And in Shaw v E. B. & A. C. Whiting Co. (1969, CA2 Vt) 417 F2d 1097, cert den 397 US 1076, 25 L Ed 2d
811, 90 S Ct 1518, reh den 398 US 954, 26 L Ed 2d 298, 90 S Ct 1866, holding nonobvious and valid the claims
of a patent on a synthetic filament adapted for use as brush bristles, the court noted it as significant that E. I.
DuPont de Nemours & Co. which owned patents in the prior art and which might be considered a leader in the
plastics field, took out a license under this patentee's patent, and that the patent had enjoyed considerable commercial success, licenses having been issued under it to a number of other domestic and foreign manufacturers,
one of whom owned another patent in the prior art.
Holding that the patentee's device for aerating a stream of water so that it would not splash as it emerged
from a domestic faucet was not obvious and the patent on it valid, the court in S. H. Kress & Co. v Aghnides
(1957, CA4 NC) 246 F2d 718, cert den 355 US 889, 2 L Ed 2d 189, 78 S Ct 261, found that licenses to use the
device had been taken by many large concerns which paid royalties on millions of units made according to this
patentee's teaching, and that before taking the license, one of these companies had conducted an extensive
23 A.L.R. Fed. 326
Page 213
search of the art and made unsuccessful attempts to attain the results of the invention by other means. By the
payment of substantial royalties, the court said, such business concerns attested their opinion of the merit of the
patent.
Holding the patent at issue valid, the court observed in Cold Metal Process Co. v Republic Steel Corp.
(1956, CA6 Ohio) 233 F2d 828, cert den 352 US 891, 1 L Ed 2d 86, 77 S Ct 128, reh den 352 US 955, 1 L Ed 2d
245, 77 S Ct 323, that to say that there was no invention in disclosures which had filled a long-existing demand
in the steel industry, to which the greatest companies in the country had paid tribute by settling litigation and
taking out licenses, was to deny the actualities of the patent law, for in determining the value of an invention, the
safest test was what those thought of it who were looking impartially for the best thing they could get for their
purpose.
However, although recognizing the validity of commercial acquiescence as an indicator of nonobviousness
in a proper case, the court emphasized its limitations in Monroe Auto Equipment Co. v Superior Industries, Inc.
(1964, CA9 Cal) 332 F2d 473, cert den 379 US 901, 13 L Ed 2d 175, 85 S Ct 190, a case involving the patent on
automobile shock absorbers, which it held invalid. On the patentee's argument as to the objective tests relating to
the immediate success of his device, the court noted that the evidence of sales and licenses was valid evidence of
success, but that it did not necessarily prove that such success was proximately and solely caused by the genius
of the invention. This patentee carried on an aggressive, forceful campaign to license any and all shock absorber
manufacturers who could be induced by a license, and to obtain consent judgments from the same or similar
manufacturers who were willing, or who might prefer, for one reason or another, to avoid litigation, the court
said, and apparently all the consent decrees awarded no costs, no attorneys' fees, and no damages. Thus, the
court went on, a great deal could be surmised by one knowledgeable in patent law as to just how much was
proved by consent decrees and licenses other than that the parties thereto usually were of a different economic
level. It assumed no facts, the court added, but was realistic enough not to be blinded to the fact that many patents are "built up" by the wholesale use of consent decrees, without the merits of the invention ever having been
tested in the courts; commercial success, however great, is but one factor in proving originality, that is, invention, and these same considerations apply to the payment of royalties to the patentee.
Cases:
23 A.L.R. Fed. 326
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§ 25. Copying by others
In a number of cases, the courts have recognized the efforts of infringers to share in the patentee's rewards
by copying a patent, as a secondary indication that the subject matter of the invention was not obvious to those
of ordinary skill in the art.
Thus, where the court found a "slavish imitation" of certain elements of the patentee's invention by the infringer, in Shields-Jetco, Inc. v Torti (1970, DC RI) 314 F Supp 1292, affd (CA1 RI) 436 F2d 1061, it said that
such conscious copying was a recognizable feature that the invention was of patentable stature, as this one was
found to be, deliberate imitation being a real tribute to an invention. The differences marking the distinction
between the potential invention at issue and the older art were not trivial or obvious, the court continued, and the
infringer's machines accentuated this, for otherwise they would have had no incentive to copy; rather, they could
have used the prior art or a variant of their own.
And in Shaw v E. B. & A. C. Whiting Co. (1969, CA2 Vt) 417 F2d 1097, cert den 397 US 1076, 25 L Ed 2d
811, 90 S Ct 1518, reh den 398 US 954, 26 L Ed 2d 298, 90 S Ct 1866, where the court held valid the patent on
a synthetic filament, finding it nonobvious in the light of the prior art, it pointed out in this connection considerable evidence in the record indicating that the alleged infringer, having been informed that the patentee's product
was being purchased and used by several manufacturers, obtained samples of it and sought other relevant information in order to develop a similar product so as to compete in the market theretofore enjoyed by the patentee.
Noting that the patentee's invention of a new method for the production of ammonium sulphate was a combination patent each individual element of which was known in the art, the court in Otto v Koppers Co. (1957,
CA4 W Va) 246 F2d 789, cert den 355 US 939, 2 L Ed 2d 420, 78 S Ct 427, found that the combination and its
concept were new, producing clearly improved results, and held the patent valid. Noting the impact of this patent upon the industry and the infringer's prompt adoption of the patented apparatus, the court said that its merit
and utility foreclosed the suggestion that the combination was obvious to others working in the field. The imitation of a thing patented, by a defendant who denies invention, the court added, has often been regarded as conclusive evidence of what the defendant thinks of the patent, and persuasive of what the rest of the world ought to
think.
In Sel-O-Rak Corp. v Henry Hanger & Display Fixture Corp. (1956, CA5 Fla) 232 F2d 176, cert den 352
US 870, 1 L Ed 2d 76, 77 S Ct 95, the court found that the infringers of the design patent at issue on a rack for
displaying trousers had borrowed the rack and copied it, manufactured it, and advertised it to the trade, claiming
for themselves the research and inventive skill which they now asserted did not exist in the true inventor. The
court held the patent valid, saying that it was of utmost significance here that the infringers themselves considered the design patent possessed of elements that were not "obvious at the time the invention was made to a
person having ordinary skill in the art," for after having used a trouser rack of their own design as leaders in the
field for 20 years, they immediately, upon seeing the article designed and manufactured by the patentee, appropriated it and advertised it to the trade as "revolutionary in concept," and as having been "designed for you, after
months of research." The court said that it was impressed by the recognition thus given to the essential contentions of the inventor by one who had vital commercial interests at stake, and whose attitude might be considered
as fairly representing the industry, the imitation of a thing patented being persuasive of what the world ought to
think.
23 A.L.R. Fed. 326
Page 215
Where the defendant admitted infringement of the patented process, which it declared it had used in all material and substantial respects, the court held this to be evidence of invention and validity of the patent, in National Latex Products Co. v Sun Rubber Co. (1959, CA6 Ohio) 274 F2d 224, reh den (CA6 Ohio) 276 F2d 167,
In McKee Door Co. v Forest Door Co. (1960, CA7 Ill) 284 F2d 809, the court said that it found its determination of nonobviousness and validity of the patented overhead door in issue buttressed by the showing that the
alleged infringer initiated a patent application on its overhead door, and after notification of the patentee's application, thereafter elected to prosecute claims drawn to inventions other than the combination involved in the
patent, but that subsequently the alleged infringer was issued several foreign patents drawn to this patentee's
combination. It pointed out that the infringer was thus in the anomalous position of urging the invalidity of that
which it formerly sought for itself in the United States and on which it now claimed foreign protection.
The court stated in Shumaker v Gem Mfg. Co. (1962, CA7 Ill) 311 F2d 273, that the District Court's finding
of validity of the patent in suit was bolstered by the infringer's own prompt adoption of it.
In National Dairy Products Corp. v Borden Co. (1968, CA7 Wis) 394 F2d 887, cert den 393 US 953, 21 L
Ed 2d 364, 89 S Ct 378, the court upheld the validity of a patent on a method of packaging cheese, finding
nonobvious the patentee's process. It said that the correctness of this result was further indicated by arrogation of
the process by many other competing cheese packagers, and that such arrogation could hardly comport with a
finding of obviousness.
Cases:
Later independent development of toy piano similar to patented toy piano has only negligible probative
value of unobviousness when second development occurs 17 years after original development. Lerner v Child
Guidance Products, Inc. (CA2 NY) 547 F2d 29 193 USPQ 329.
Substantial commercial success of patented ashtray design supports finding of unobviousness and validity of
patent and is confirmed by widespread imitation of patented design. Lancaster Colony Corp. v Aldon Accessories, Ltd. (CA2 NY) 506 F2d 1197, 184 USPQ 193.
Challenger of validity of diaper patent claiming use of liquid impermeable barrier leg cuffs (BLC) failed to
prove claim of obviousness, despite a prior inventor's initial conception of the patented invention; one of ordinary skill in art would have understood that one of problems associated with disposable diapers was containment
of runny bowel movements and other liquid exudates, none of prior art references provided any suggestion or
23 A.L.R. Fed. 326
Page 216
motivation to combine liquid impermeable BLC with traditional elements of disposable diaper in manner disclosed, and liquid impermeable BLC was copied by almost entire industry and became required feature to compete. 35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade Brands, Inc., 989 F. Supp. 547 (D. Del. 1997).
See Thomas & Betts Corp. v Winchester Electronics Div. etc. (1981, DC Del) 519 F Supp 1191, 213 USPQ
943, § 9[a].
More than mere fact of copying by accused patent infringer is needed to make that action significant to determination of nonobviousness. Cedarapids, Inc. ex rel. El-Jay Div. v Nordberg, Inc. (1995, ND Iowa) 895 F
Supp 1230.
357 F. Supp. 2d 1105 (S.D. Iowa 2005).
2005).
Allegations of copying by competitors, made only on information and belief, were insufficient to demonstrate nonobviousness. Cable Electric Products, Inc. v Genmark, Inc. (1984, ND Cal) 582 F Supp 93, 223 USPQ
287, summary judgment gr (ND Cal) 586 F Supp 1505, 223 USPQ 291, affd in part and vacated in part on other
gnds (CA FC) 770 F2d 1015, 226 USPQ 881.
23 A.L.R. Fed. 326
Page 217
Utah 2004).
Vibrating device to free aircraft instruments from effects of static friction was not obvious; engineer for defendant testified that he had been instructed to copy every detail of device, and that there were no acceptable
substitutes in industry. Sensonics, Inc. v Aerosonic Corp. (1996, CA FC) 81 F3d 1566, 38 USPQ2d 1551.
See Cable Electric Products, Inc. v Genmark, Inc. (1985, CA FC) 770 F2d 1015, 226 USPQ 881, § 13.
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[END OF SUPPLEMENT]
§ 26. Effect of simultaneous solution
The courts in a number of cases have found evidence, not of a failure of others to have achieved the patentee's solution (§ 21, supra), but of a solution by others of the general subject matter at about the same time,
and have held this to be an indication that the differences between the prior art and the subject matter as a whole
would have been obvious to a person having ordinary skill in the art.
Finding evidence of simultaneous invention to support its conclusion of obviousness and invalidity of the
patent obtained on a wrap-around carton, the court in Continental Can Co. v Old Dominion Box Co. (1968, CA2
NY) 393 F2d 321, noted that another inventor had filed an application for a patent for a packaging machine in
which he included a sketch of a wrap-around carton to be used therewith which was practically identical with the
carton in dispute, and that while he did not claim that carton as part of the invention, he did refer to folding the
wrapper tightly around the cans. Thus, the court said, the sketches of this other inventor and his patent applications were evidence of a simultaneous invention, and while not in the realm of anticipation or of prior art, nevertheless buttressed the conclusion negating nonobviousness of the invention in dispute.
Thus, in Reeves Bros., Inc. v U. S. Laminating Corp. (1968, DC NY) 282 F Supp 118, affd (CA2 NY) 417
F2d 869, the court, in holding the patent invalid, said that in connection with "simultaneous invention" as a
subtest of obviousness, other patents were evidence that others reached a solution of the same problem independently and approximately simultaneously. While it agreed with the patentee's argument that these were foreign patents which under 35 U.S.C.A. § 102 could not be used to show constructive knowledge, the court noted
that the use of such foreign patents did not rest upon implied or constructive notice on the part of the patentee,
the significance of the foreign patents upon the issue not being the disclosures contained in them as prior art, but
in the fact that they were evidence of simultaneous solution by others, thus being evidence tending to negate
nonobviousness of the subject matter as a whole.
And in Cleveland Fabricating Co. v Adsure, Inc. (1968, DC Ohio) 298 F Supp 1275, the court observed that
the almost simultaneous discovery of the general subject matter by a plurality of independent workers was evidence of obviousness and invalidity of the patent at issue.
The court held a patent on a flexible tie for a bundle of electrical conductors invalid in All States Plastic
Mfg. Co. v Weckesser Co. (1973, DC Ill) 362 F Supp 94, noting that in addition to the evidence of obviousness
in fact, there was evidence of contemporary developments by third parties working in the recognized art of the
patent in suit. This, the court said, was persuasive evidence that the subject matter of the patent in suit was obvi-
23 A.L.R. Fed. 326
Page 218
ous within the meaning of 35 U.S.C.A. § 103
Where the unsuccessful attempts by others to solve the problem described in the patent in suit were asserted
as an objective factor showing its nonobviousness in spraying fiber glass roving, the court in Canadian IngersollRand Co. v Peterson Products of San Mateo, Inc. (1963, DC Cal) 223 F Supp 803, affd in part and revd in part
on other grounds (CA9 Cal) 350 F2d 18, held the invention obvious and the patent invalid, noting that the evidence showed that regardless of whether the activities of two other companies constituted "anticipation" of this
patent, they did independently come up with the same basic idea, apparatus, and method as this patentee, and put
the idea to use for their particular purposes as soon as fiber glass roving became available, the record also showing that neither of them was as skilled in the art of making reinforced plastic as this patentee nor as familiar as
he with the glass cutter devices of prior art used in the fiber glass preform plastic art, and yet they came up independently with the same idea.
The court stated in International Glass Co. v United States (1969) 187 Ct Cl 376, 408 F2d 395, holding certain claims of the patents at issue invalid, that the fact of near-simultaneous invention, though not determinative
of statutory obviousness, was strong evidence of what constituted the level of ordinary skill in the art. In resolving the claim of infringement of the patentee's method for working gem stones by freezing them to a work station for treatment such as grinding and polishing, by the alleged infringer's method of machining thin metal honeycombs by filling them with water and freezing them solid to a work platform, the court said that the problem
of hindsight was greatly minimized in this case where there was evidence of the level of ordinary skill in the art
and how those skilled in the art approached and solved problems of holding down honeycomb. Two others, independently and several years before the invention in suit was made, the court pointed out, conceived the idea of
ice-bonding honeycomb as part of their normal work of machine shop practice, and they hit upon the idea immediately when seeking a bonding material which would not contaminate honeycomb edges.
Cases:
Contemporaneous independent development of invention substantially similar to that of patent in suit is
evidence, although not conclusive evidence, of obviousness of claims in suit, weight and relevancy of evidence
is dependent upon number of factors including similarities between two conceptions, time between identification
of need for solution to problem and solution, and sequence of and time between patented conception and alleged
independent conception. Dennison Mfg. Co. v Ben Clements & Sons, Inc. (SD NY) 467 F Supp 391.
Evidence of independent contemporaneous development, while not conclusive, is highly persuasive of obviousness of invention; trial and success, at least where same solution has been independently reached by number
of others almost immediately after problem arose, may be best evidence of obviousness. Schimizzi v Chrysler
Corp. (SD NY) 462 F Supp 630.
Near simultaneous invention by two or more inventors working independently of each other may or may not
be indication of obviousness, for purposes of determining patent validity, when considered in light of all circumstances; evidence of contemporaneous invention is probative of level of knowledge in art at time invention was
made. 35 U.S.C.A. § 103. Procter & Gamble Co. v. Paragon Trade Brands, Inc., 989 F. Supp. 547 (D. Del. 1997)
23 A.L.R. Fed. 326
Page 219
.
Contemporaneous independent development of processes similar to patented process for dyeing yarn is considered as evidence of obviousness of yarn dyeing patent held invalid. Fred Whitaker Co. v E. T. Barwick Industries, Inc. (CA5 Ga) 551 F2d 622, 194 USPQ 113.
Independent development of similar subject matter by others is considered in finding patent on shoring
device invalid as obvious combination of suggestions from art. Ceco Corp. v Bliss & Laughlin Industries, Inc.
(CA9 Cal) 557 F2d 687, 195 USPQ 337.
Because § 135 recognizes possibility of near simultaneous inventions by two or more equally talented inventors working independently, such occurrence may or may not be indication of obviousness when considered
in light of all circumstances. Lindemann Maschinenfabrik GMBH v American Hoist & Derrick Co. (1984, CA
FC) 730 F2d 1452, 221 USPQ 481.
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RESEARCH REFERENCES
Primary Authority
35 U.S.C.A. § 103
A.L.R. Library
A.L.R. Quick Index, Patents
A.L.R. Federal Quick Index, Patents
Modern status of rules as to pendent federal jurisdiction over nonfederal claims, 5 A.L.R.3d 1040
Construction and Application of Patent Act—United States Supreme Court Cases, 27 A.L.R. Fed. 2d 151
When Is Public Use of Invention, More Than One Year Before Patent Application, for Experimental Purposes, so that 35 U.S.C.A. § 102(b) Does Not Prevent Issuance of Valid Patent, 171 A.L.R. Fed. 39
Right of licensor to receive and retain royalties on patent for period prior to judicial declaration of patent's
invalidity, 86 A.L.R. Fed. 455
Meaning of term "printed publication" under 35 U.S.C.A. § 102(a) and (b, denying patentability to invention
described in printed publication before invention by applicant, or more than one year prior to date of patent application, 70 A.L.R. Fed. 796
Fraud in patent procurement as violation of § 2 of Sherman Act (15 U.S.C.A. § 2), 65 A.L.R. Fed. 408
Requirement that combination device for which patent is sought produce "synergistic effect," defined as the
whole in some way exceeding the sum of its parts, in order to avoid finding of obviousness under 35 U.S.C.A. §
103, 60 A.L.R. Fed. 562
Laches as defense in patent infringement suit, 35 A.L.R. Fed. 551
23 A.L.R. Fed. 326
Page 220
Construction and application of provisions of 35 U.S.C.A. § 146, pertaining to jurisdiction over adverse
parties residing outside district in patent interference action, 30 A.L.R. Fed. 606
Right to jury trial in patent infringement action in federal court, 18 A.L.R. Fed. 690
What constitutes "regular and established place of business" within meaning of 28 U.S.C.A. § 1400(b) fixing venue in actions for patent infringement, 12 A.L.R. Fed. 502
What constitutes "civil action for patent infringement" for purposes of special venue provisions of 28
U.S.C.A. § 1400(b), 10 A.L.R. Fed. 645
Patentability of computer programs, 6 A.L.R. Fed. 156
Legal Encyclopedias
Am. Jur. 2d, Patents §§ 53-86
Treatises and Practice Aids
2 Deller's Walker on Patents 2d ed.
Forms
19 Am. Jur. Pleading and Practice Forms, Patents, Form 15, Form 15
Law Reviews and Other Periodicals
Dession, The Trial of Economic and Technological Issues of Fact. 58 Yale LJ 1019
Note, Subtests of "Nonobviousness": A Nontechnical Approach to Patent Validity. 112 U of Pa L Rev 1169
Note, The 1966 Patent Cases: Creation of a Constitutional Standard. 54 Georgetown LJ 1320 (exceptionally
helpful as an introduction)
Note, The Impact of the Supreme Court's § 103 Cases on the Standard of Patentability in the Lower Federal
Courts, 35 George Washington L Rev 818
Note, The Standard of Patentability—Judicial Interpretation of Section 103 of the Patent Act. 63 Columbia
L Rev 306
Roth, Obviousness Under § 103, 47 J of the Patent Office Soc 811
Section 1[a] Footnotes:
[FN1] The Court of Customs and Patent Appeals, for example, often discusses obviousness, but it re-
23 A.L.R. Fed. 326
Page 221
views only denials of patents by the Patent Office, and lacks jurisdiction to determine the validity of an
issued patent (see Am. Jur. 2d, Patents § 230)
[FN2] As to the assignment of patents and the rights acquired, (see Am. Jur. 2d, Patents §§ 330 et seq.
§§ 11-14.), and Ellis, Patent Assignments 3d ed.
Section 1[c] Footnotes:
[FN3] Act of July 19, 1952 Ch 950, 66 Stat 798.
The provisions of the United States Constitution respecting patents appear in § 3[c], infra.
[FN4] 35 U.S.C.A. § 102 defines statutory novelty and states other conditions for patentability, providing, in substance, that a person is entitled to a patent "unless" the invention was previously known or
used by others, or the invention was previously patented or described in a printed publication, or was
abandoned, or other conditions exist that are more fully set out in the statute.
35 U.S.C.A. 101 relates to utility and the general subject of patents, providing that a patent may be obtained by the person who "invents or discovers any new and useful" process, machine, manufacture, or
composition of matter, or "any new and useful improvement thereof."
[FN5] Commentary—Proposed Patent Reforms, 36 George Washington L Rev 95 (1967) (A collection
of articles by judges, patent lawyers, professors, and other experts in patent law on the report of the
President's Commission on the Patent System (1966), the report being transmitted to the President on
November 17, 1966, and released to the public in December 1966; the bills drafted to implement its recommendations are S. 1042 Ninetieth Congress First Session 1967 and H. R. 5924, at the same Session,
which on February 21, 1967, were introduced in Congress).
[FN6] Supreme Court cases applying the "two-court" rule also indicated that patentability was a question of fact, that rule being that the Supreme Court, as a court of law rather than a court for the correction of errors in fact finding, could not undertake to review concurrent findings of fact by two courts below in the absence of a very obvious and exceptional showing of error. The rule was applied in affirming validity of the patent in Goodyear Tire & Rubber Co. v Ray-O-Vac Co. (1944) 321 US 275, 88 L Ed
721, 64 S Ct 593, where the lower courts had found the patent for a leakproof dry-cell battery to be valid and infringed, supra § 3[a], but was distinguished in reversing the lower courts' findings of validity
on a sliding supermarket tray in Great Atlantic & Pacific Tea Co. v Supermarket Equipment Corp.
(1950) 340 US 147, 95 L Ed 162, 71 S Ct 127, supra § 3[a], reh den 340 US 918, 95 L Ed 663, 71 S Ct
349. In a concurring opinion in the latter case, Mr. Justice Douglas said that the "two-court rule" never
had a place in patent law, and was now in substance rejected, the court recognizing what had long been
apparent in the cases: that it was the "standard of invention" that controlled, and that the question of
validity of a patent was one of law.
23 A.L.R. Fed. 326
Page 222
[FN7] For example, see Harris, Some Aspects of Legislative Intent of the Patent Act of 1952, 23
George Washington L Rev 658 (1955).
For a general discussion of the agitation by the patent profession for a revision of the patent laws, and
of the effect of their efforts, see Note, The 1966 Patent Cases: Creation of a Constitutional Standard, 54
Georgetown LJ 1320 (1966).
Section 6[b] Footnotes:
[FN8] In earlier cases, the Court had repeatedly used such phrases as "exercise of genius" (Shaw v
Cooper (1833) 32 US 292, 8 L Ed 689); "inventive genius" (Reckendorfer v Faber (1876) 92 US 347,
23 L Ed 719); "flash of thought" (Densmore v Scofield (1880) 102 US 375, 26 L Ed 214); and "flash of
creative genius" (Cuno Engineering Corp. v Automatic Devices Corp. (1941) 314 US 84, 86 L Ed 58,
62 S Ct 37, further discussed in § 6[c], infra).
Section 10 Footnotes:
[FN9] In Filmon Process Corp. v Spellright Corp. (1967, DC Dist Col) 274 F Supp 312, affd 131 App
DC 374, 404 F2d 1351, the court said that no doubt this inventor had a desirable and a constructive and
useful idea, but unfortunately, the hopes and aspirations of many a worthy inventor are frequently blasted and dashed to pieces when it is discovered that, unbeknownst to him, someone else had previously
trodden the same path and had made the same discovery and contribution to the sum of human knowledge; the discovery of the activities of a prior inventor is a disaster that brings grief to many a person
who feels that he has conceived a new and novel invention, and if he gets a patent, the patent just keeps
the word of promise to his ear and breaks it to his hope.
[FN10] In Harris, Some Aspects of Legislative Intent of The Patent Act of 1952, 23 George Washington
L Rev 658 (1955), a letter from an inventor of 40 years' experience is quoted, stating that the infallible
test of what was obvious when the invention was made, if the facts permitted the test to be applied, was,
"Find what the men skilled in the art, who had worked on the problem unsuccessfully, said or wrote at
the time the invention was brought to their attention."
[FN11] This is nonobviousness reflected in the consumers' reaction, and is to be distinguished from
nonobviousness from the producers' viewpoint, infra § 23. The objective criteria are different, the conduct of consumers versus the conduct of producers.
[FN12] This is nonobviousness reflected in the producers' inaction which should be distinguished from
nonobviousness reflected in the consumers' reaction, supra § 22.
Westlaw. © 2009 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.
23 A.L.R. Fed. 326
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