Not So Obvious Patently SpeakingMintz v. Dietz & Watson, Inc., No. 2010-1341 (Fed. Cir. May 30, 2012) (Chief Judge Rader, Circuit Judges Newman and Dyk)

I’ve never paid much attention to the patterns on the outside of ham. But I’m not as discerning a ham-eater as Liz Lemon:

For Liz (presumably) and the folks in the meat-encasing field, these patterns are kind of a big deal. They’re created by putting the meat in a netting that allows the meat to bulge out between the strands. Apparently, though, meat would cook around the netting strands and make the netting difficult to remove. So the Mintz brothers set out to find a way to imprint these patterns without (1) the netting getting embedded in the meat, or (2) adding the extra labor and expense of putting meat in a collagen “stockinette” before putting the netting around the meat. Behold, the Casing-Net™—the Mintz brothers’ invention, which combined the netting and the stockinette into a single pattern-making meat sock. Up close, it looks like this:

Not So Obvious, Patently Speaking • Untitled1

Does that seem like an obvious solution? The district court judge thought so, and granted Dietz & Watson’s summary judgment motion for invalidity. But “obvious” in layman’s terms isn’t the same as “obvious” in patent-speak. On appeal, the Federal Circuit identified several clear errors the district court made in its obviousness analysis.

First, the district court thought a person of ordinary skill in the art would only be familiar with the knitting art but not meat encasing art. But the Federal Circuit said that an artisan would need some understanding of meat and meat encasing to fully grasp the invention.

Second, the patent examiner considered all of the prior art that Dietz & Watson cited against Mintz. So, the Federal Circuit noted, the prior art didn’t block patentability even before the higher clear-and-convincing evidence standard came into play.

Third, the district court’s “common sense approach” inappropriately applied hindsight to the obviousness analysis. The district court didn’t offer any support for its conclusion that this technology is so obvious that anyone skilled in the art would have it in his head.

Finally, the district court didn’t consider any objective indicators that the patented invention wasn’t obvious, like commercial success, copying, and praise by others. The court commented that these indicia are especially important where, as here, the invention is deceptively simple, because they’re helpful in avoiding engaging in a hindsight patent invalidity analysis. The district court said Mintz had provided only “scant” evidence of these validity indicators, but the Federal Circuit found Mintz’s evidence substantial.

Based on these errors, the Federal Circuit vacated the district court’s obviousness judgment. But the court affirmed the district court’s ruling that Dietz & Watson’s products don’t infringe Mintzes’ patent, so the validity victory might be a hollow one.

I’m sure Liz Lemon still appreciates any advancement in the ham industry.

Why is a Turkey Baster Like a Patented Stethoscope?

3M Co. v. Mohan, No. 2011-1328 (Fed. Cir. May 29, 2012) (Chief Judge Rader, Circuit Judges Lourie and Reyna) (nonprecedential)

I don’t know—why is a turkey baster like a stethoscope? The Federal Circuit can’t tell us either, at least not based on Mohan’s explanation. Arguing that 3M’s patent for ear tips for stethoscopes is obvious, Mohan compared the invention to a turkey baster, a door hinge, an eye-dropper, a toilet plunger, and a toothbrush. But he forgot to explain why someone with skill in the art would consider these items pertinent prior art to 3M’s patent. Not surprisingly, the Federal Circuit upheld the district court’s summary judgment that 3M’s patent is valid.

Mohan fared no better defending against 3M’s claims of trademark infringement. He offered no evidence to support his defenses that 3M’s CARDIOLOGY III and MASTER CARDIOLOGY marks for stethoscopes are generic or abandoned or to counter the district court’s finding that the marks are suggestive.

The district court also found that Mohan was trying to take advantage of 3M’s fame, so his cries of trademark fair use rang false. Mohan didn’t make any showing that the district court’s conclusion was erroneous or that he was actually using the trademarks in good faith. So, the Federal Circuit affirmed the district court’s finding of trademark infringement too.

To add insult to injury, Mohan’s unsuccessful fair use defense also cost him 3M’s attorneys’ fees, since the district court found that Mohan acted deliberately and willfully in infringing 3M’s trademarks. The Federal Circuit also said the fee award was justified and upheld it in this case.

Moral: Mad Hatter-esque comparisons and empty arguments won’t get you far at the Federal Circuit.

Photo credit: Erik Starck