Obviousness; Scope and Content of the Prior Art; Secondary Considerations

Süd-Chemie v. Multisorb Technologies (Fed. Cir. 2009)

Süd-Chemie holds a patent covering a desiccant container for keeping products dry in shipment. In an infringement action, the Kentucky district court found the patent invalid as obvious. On appeal, the Federal Circuit vacated – holding that the lower court had erred in its analysis of the scope and content of the prior art. There are two primary take-away points from Sud-Chemie. First, obviousness jurisprudence continues to require detailed analysis of the claims and the prior art. I.e., KSR did not suddenly allow handwaving as a substitute for evidence and clear argument. Second, well presented secondary indicia of nonobviousness continue to be important in rebutting obviousness allegations.

Here, the claimed patent required the use of “compatible polymeric materials” used in a laminate seal. The prior art disclosed the use of laminate materials taken from the same general class of materials. However, the Federal Circuit recognized that the prior art did not specify that the selected materials be “compatible” in a way to allow for a proper laminate seal.

This is a case where a definition of the claim term in the specification greatly aided the patentee. The specification defined “compatible” materials as those that “mix on a molecular scale and will crystallize homogeneously.” The prior art reference did not teach this form of compatibility. In fact, the prior art appeared to teach “incompatible” materials.  

Multisorb ignores the fact that while the ’942 patent requires the inner surfaces of the laminate and microporous films to have similar softening points, Komatsu [the prior art] requires the films to have dissimilar softening points. Komatsu thus does not teach the use of a microporous film that is compatible with the inner surface of the laminate film.

Looking at secondary considerations, the Federal Circuit instructed district courts to “attend carefully to any evidence of … secondary considerations of nonobviousness.” Here, the focus is on the surprising and unexpected result that compatible materials formed stronger bonds even without adhesive.

The Federal Circuit did not apply these findings to form a conclusion on the issue of obviousness. Rather, the court remanded for further development of the facts.

[NOTE- This decision is from January 2009]

18 thoughts on “Obviousness; Scope and Content of the Prior Art; Secondary Considerations

  1. Hi Malcolm,

    I think it would be better to say “Welcome to our world”, as your world is not isolated from “my world”.

    Having been both an inventor and also an expert witness in a civil case, I am fully aware of the gamesmanship that exists and how this can and does spill over into everyday life. If it didn’t, this blog would be a lot more fun to read.

    Being a scientist and not a lawyer, I seldom contribute to the discussions. As I said in my post, this decision had me going and I replied from the passion.

  2. Hi Malcolm, and thanks. The word “unfortunately” is interesting. Over the years I have learned to be sparing with it. Sometimes things that seem “unfortunate” turn out not to be. Another pet of mine is “happy” as in “I am happy to tell you that we have received a Notice of Allowance”. As my old boss used to chide me: The client isn’t the least bit interested whether or not his patent attorney is “happy” today or unhappy.

  3. MaxDrei: “I wrote “usually irrelevant” didn’t I”

    Yes, you did. Unfortunately, we lack clear and convincing evidence that the omission by the quoter was not accidental.

  4. I wrote “usually irrelevant” didn’t I, Isn’t it? As for your “incredibly” you sure have the right word there. It means “not believable”, no? And, sorry, I don’t understand your peultimate sentence. It’s lost on me.

  5. “[secondary considerations] are irrelevant to the question whether the subject matter on the date was technologically obvious.”

    Um, no they are incredibly relevant. If it was documented that the rest of the technical world thought it couldn’t be done, and the “teachings” amounted to a superficial description followed by a disclaimer that it was ineffective or whatever, then guess what – maybe no obviousness. I say maybe only because it is not a “bright line” test.

  6. Just Visiting: “Do secondary considerations ever work?”

    They sure the helll worked for Judge Newman in that SanofiLabo v. Apotex case.

    John S: “I think Sud-Chemie was able to “game” this one through.”

    Welcome to my world.

  7. Mr Spevacek, could you perhaps now look at what happened to the sister patent in the EPO, where the Examiner applied a sister of Komatsu, and the Süd-Chemie app got refused. Was the EPO on the ball, or what? Wonder why Multisorb didn’t pick it up and run with it.

  8. The science is so bad here that I just want to scream.

    First off, the “normal” definition of polymer compatability is only part of what was discussed here. Two materials are compatible if they mix on a molecular scale. Homeogenous crystallization is nice, but many materials are amorphous and do not crystallize and yet are still intimately mixed at a molecular scale.

    I first started flpping out when I read the quote from the decision discussing (dis)similaity in the melting points. Intimate mixing has nothing to do with (dis)similarity of melting points, and I wondered how that bait-and-switch occurred. Then I read the decision and found that Sud-Chemie had actually extended their definition of compatibility to include similar melting points. Shame on Dennis for not abstracting that fact.

    Compatability (as noramly defined) is extremely rare in polymers, but it does exist. But beyond simple compatability, there are dozens of compatible polymer systems (as normally defined) with large differences in melting points between the two constituents. Polystyrene melts at ~ 100 C but will readily mix with polyphenylene oxide despite its much higher melting point (~ 210 C). And when you do mix them, the blend has melting point that is somewhere between the two. In fact, that is a simple way to determine if they are intimately blended – they have only 1 melting point. Two materials that are incompatible will have two different melting points.

    But fine, I understand that Sud-Chemie can define this as they wish. No problem, now that we can all agree on what their definition actually was.

    Now let’s talk about the Komatsu patent. The only reason the Komatsu materials work at all is that they are compatible in the normal sense defined above, not as Sud-Chemie defines it. Without the compatability, the materials will not bond. Heat them up and they will fall apart when they cool down. That’s how heat-sealing works – the heat melts/softens the polymers so that they can interdiffuse together and intimately mix. You simply can’t heat seal just any two polymers together – they have to be compatible (in the normal scientific sense of the word). Apparently Multisorb was lacking in a scientific expert to state this.

    Since Komatsu has taught how to combine compatible materials (in the normal sense of the definition) then it is obvious that the Sud-Chemie restriction to similar melting materials is not any advancement at all? This decision should never had happened had the Komatsu patent been defended properly. I think Sud-Chemie was able to “game” this one through.

  9. I’m getting depressed here. Are we saying that, in mech cases, unexpected results are to be expected, so you can’t complain if your mech invention is refused as “predictable” because you can’t boast any “unexpected” results? As to secondary considerations, of course they should usually fail because, usually, they are irrelevant to the question whether the subject matter on the date was technologically obvious. What was commercially “obvious” on that early date is of course another matter entirely, but the patent statute is not interested in that. Or is it?

  10. Do secondary considerations ever work? Here, the fed. cir. opinion simply insists that the district court not dismiss evidence of secondary considerations out of hand, but the tone seems to be that the district court need not be persuaded.

    In agree that this is a mechanical case type with respect to the unexpected results.

  11. Unexpected results are becoming decreasingly “unexpected” and “commensurate in scope with the claims”. It’s not a cake walk, I assure you.

  12. Drafter, I agree it’s sometimes difficult to fix where physics turns into chemistry. I was just thinking how handy unexpected results are, for defeating obviousness attacks, and how they are usually absent, in ME/EE cases, which therefore are easier meat for 6 and his hindsight friendly pals in the PTO. As to the European flavour, might that be because the asserted patent was written in Europe?

  13. @ Max:

    But indeed this is a Mechanical case, with a functional recitation of compatability, the spec using chemical properties to define “compatible”. And the obviousness question turns on the scope of the functional recitation, relative to the teachings of the prior art. Very European. :^)

  14. “KSR did not suddenly allow handwaving as a substitute for evidence and clear argument.”

    Handwaving was in vogue long before KSR.

  15. A nice simple case, that could (if it continues to be handled skilfully) become a shining example to the rest of the world, of how to “do” obviousness properly. But it’s chemistry again, where “unexpected” results are the order of the day. I look forward to reading about a new ME or EE case, ie one in the “predictable” arts, where obviousness is managed at first instance in an exemplary way ie that’s transparent, and fair to both the inventor and those threatened by the claims.

  16. “KSR did not suddenly allow handwaving as a substitute for evidence and clear argument.”

    ’nuff said.

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