Mintz v. Dietz & Watson: Hindsight and Common Sense

By Jason Rantanen

Mintz v. Dietz & Watson, Inc. (Fed. Cir. 2012) Download 10-1341
Panel: Rader (author), Newman, Dyk

Although concerns about hindsight never disappeared from Federal Circuit opinions on obviousness following KSR, it did seem for a time that the court backed away from strong language about hindsight.  The court's opinion in this case exhibits no such timidity.

The Mintzes invented a casing structure for meat products that permits the meat to bulge between netting strands while avoiding the more complex stuffing process associated with prior knitted meat encasements (Patent No. 5,413,148). Package Concepts & Materials, Inc., a former distributor of Mintz products, filed a declaratory judgment action against Mintz and Mintz filed a patent infringement action against PCM.  During the consolidated infringement proceeding the district court granted summary judgment of obviousness as to the '148 patent.  On appeal, the Federal Circuit reversed. 

Hindsight as a major continuing concern: The most striking aspect about the Federal Circuit's opinion is the strong language it uses when discussing the need to avoid hindsight bias when analyzing obviousness.  The opinion uses the word "hindsight" repeatedly, warning against "the forbidden use of hindsight" and the "prohibited reliance on hindsight," as well as the need for "a court to walk a tightrope blindfolded (to avoid hindsight)."  Compare this with KSR: "A factfinder should be aware, of course, 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, however, are neither necessary under our case law nor consistent with it."  KSR v. Teleflex, 550 U.S. 398, 421 (2007).  (Mintz does not cite KSR at any point).

Consistent with its view on hindsight, the opinion seeks to avoid such bias in three ways: by requiring that "common sense" be articulated, by avoiding the use of the patent itself in defining the problem the invention solves, and by emphasizing the need to analyze the objective indicia of nonobviousness. 

"Common sense" must be articulated: In its obviousness determination, the district court relied on a "common sense approach" to conclude that it would have been "obvious to try" an element of the claimed invention.  The CAFC held that more is required than simply saying the words "common sense": "With little more than an invocation of the words "common sense" (without any record showing that this knowledge would reside in the ordinarily skilled artisan), the district court overreached in its determination of obviousness."  Slip Op. at 9.

Nonobvious question/obvious solution: The CAFC also found that the district court erred by using the invention to define the problem that the invention solves.  This was problematic because it may be the problem itself that is nonobvious – once the problem is known the solution may be virtually certain.  "Often the inventive contribution lies in defining the problem in a new revelatory way."  Slip. Op. at 9. This is consistent with KSR - solutions to a problem cannot be "obvious to try" if the problem itself is not known or obvious. 

Objective indicia of nonobviousness: A classic tool for avoiding reliance on hindsight is use of the objective indicia of nonobviousness.  They "help inocolate the obviousness analysis against hindsight,"  Slip Op. at 10, and "turn back the clock and place the claims int he context that led to their invention."  Id. at 11.  Consideration of these indicia is not discretionary; it is mandatory.  By failing to give substantive consideration to the objective evidence of nonobviousness presented by Mintz, the district court erred.   

Summary judgment of noninfringement was also at issue on appeal; the CAFC affirmed the district court on that issue. 

97 thoughts on “Mintz v. Dietz & Watson: Hindsight and Common Sense

  1. Compare Ned’s characterization of someone who is in favor of a strong and healthy patent system with these words from a proven supporter of a strong and healthy patent system:

    The Legislative History of the 1952 Patent Act inform us that Congress intended the patentable subject matter referred to in §101 to “include anything under the sun that is made by man.” Why would this be the case? If an entire category of innovation is deemed patent ineligible then no patent could issue even if the innovation is useful, new, non-obvious and described so as to inform the public. Determining something is patent ineligible subject matter cuts innovation off at the knees. This is why the United States is home to the world’s biotechnology industry, as well as home to the world’s computer and Internet industries. Industries do not blossom where patent rights are prohibited.

    Emphasis added.

  2. I believe that Rader’s words “does not preclude” need to be included in any understanding of the case.

  3. And that’s one of the biggest lies and con jobs ever.

    Patents are an equalizer. It is no mistake that the “side” Ned would have everyone believe he is against wants strong patent rights in as wide apllicability as possible. He crows that the programmer types are symbolic of the little guy and they h_ate patents so his h_atred of patents is “OK.” The fact of the matter is that Ned seeks to limit patents for all, as it is the big established players, the banks and Big Software who benefit most from such a position. Ned’s past “fixes” have been along the lines of jack up the fees. This belies his little guy hero role he wants to paint now. Just more LIES.

    Pure hornswaggle.

    The programmer types who h_ate patents have drunk the koolaid of their lords and masters. They have been fed a leftist and libertian utopia of “the commons” and have no understanding of the true nature of wither their work product or the patent saystem. Ned champions ignorance. He misrepresents “the troll phenomena” as he has never defended the so-called “trolls” in nay of his postings.

    You left off one word in your last sentence. It should read:

    Anything but truth.

  4. Golan V Holder

    Under those prescriptions of our highest law, petitioners assert, a work that has entered the public domain, for whatever reason, must forever remain there.
    In accord with the judgment of the Tenth Circuit, we conclude that §514 does not transgress constitutional limitations on Congress’ authority. Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit.

    The holding says nothing about extending term.

  5. IANAE enjoys playing Calvinball – that is until the other player starts to play; then he disappears.

    Says the do-uchebag sockpuppet who is never really “here” except to engage in drive-by axxholery and change its name again.

  6. No Friend, since I favor a stronger patent system that does the majority of the patent bar, how does that make me anti-patent? On issue after issue, I side with the patent owner against big business, who I observe to be largely trying to rig the system in their favor rather than being pro-patent.

    Historically, who is it that favored expansion of software patents? AT&T, the company that owned the Benson patent. At the time, AT&T was the largest company in the world.

    The programmer types at the time and even today resisted patenting software. The issues raised by patenting software have not vanished, but the parties still have the same relative alignment. One the one hand, big software. On the other, anti-software patent, the little guy software developer.

    Business methods patents were unleashed by State Street Bank. Who is State Street Bank? A bank, for pity’s sake.

    Next comes the troll phenomena. The big guys are now trying to rig the system so only their patents are respected and enforced. Fine for them. But siding with the patent owner against the troll-bashers is not being anti-patent. Anything but.

  7. Dorothy,

    IANAE enjoys playing Calvinball – that is until the other player starts to play; then he disappears.

    What he is neglecting (and he is always neglecting some important aspect in his smart-xss comments), is that I was discussing motivation as a tool in denying patents. So while it is true (and rather besides the point) that a general desire to make things do what they do better, faster, and for less money is not the least bit inventive, the fact remains that if that general desire is enough to deny patents, the only paths left to obtain patents are

    1) Flash of Genius
    2) pure accident

    That might be great for those who despise patents and the patent system, but for anyone not on that agenda, it is not only dangerous, but also was expressly dealt with by Congress more than fifty years ago in retaliation to the then current wave of anti-patent fervor.

  8. Hindsight, I agree with you that Rader got it right on limiting the art field to meat encasement.  The way he did this was also instructive: by noting that to extend the art to knitting would be to use the inventor's solution to expand the scope.  But this is hindsight.

  9. Hindsight and other biases by jurors seems to be inescapable as many of these are built into human psychology. The oddest formality of jurisprudence is when a judge advises jurists to avoid thinking of a certain issue. There’s more than enough psychological data to show that being told to not think of something makes people more aware of what it is they are supposed to not consider.

  10. What road? Why, the path of technical progress.

    That would be a negative. The state of the art is what “is.” It does not include a path of progress.

    “Need for patents” is also a fallacy.

  11. when the improvement is known in the art

    Nice strawman. Except no one said known in the art.

    A single addition to change Anon’s meaning.

    (Infringers’ Right’s comment in 4… 3… 2…)

  12. Quite so. “Obvious” comes from “ob Via” lying in the road. What road? Why, the path of technical progress. Ordinary routine uninventive progress along that path is promoted by competition, without the need for patents. Is there not something some eminent American once said, about patents fuelling a (pre-existing) fire?

  13. If a global level motivation of “to improve things” is allowed to negate patents,

    How can it not, when the improvement is known in the art? A general desire to make things do what they do better, faster, and for less money is not the least bit inventive.

  14. I’m having difficulty understanding what the difficulty is that you perceive with “motivation to combine”. That’s because I have been for 30+ years immersed in the EPO “motivation to combine” world, half my time advocating on behalf of inventors and the other half on behalf of Opponents at the EPO. My experience is that EPO-PSA inherently delivers a fair result. Bad results come when the advocacy is incompetent or the drafting is tailored to First to Invent jurisprudence and fatally deficient for a First to File jurisdiction, where obviousness is judged objectively, through the brain of the imaginary PHOSITA rather than the real inventor, and as of a prior art publication cut-off date (the filing date of the patent application) which the law recognises as SUBSEQUENT to the writing of the specification of the subsequently filed patent application.

    I await with interest to see how this legal recognition pans out, in the USA.

  15. Paul,

    You assume Ned Heller wants to have friend of the patent system.

    Bad assumption. Ned is a part of the anti-patent crowd. He seeks to limit patents as much as he can get away with.

  16. What part of “does not preclude” do you not understand?

    You are over-reading the case law, seeing things that are not there, and not seeing things that are. You launch into fantastical theories of the case without actual reading, and then read only to support your pre-concieved, and errant, theories.

    From the actual case:

    Having identified several errors in the district court’s obviousness analysis, this court vacates and remands to the district court… The district court should not ignore the four-part analysis the
    authorities require. (citations omitted)

    Are you even a lawyer Ned Heller?

  17. There is still a problem with “motivation to combine.”

    If a global level motivation of “to improve things” is allowed to negate patents, then the patent world is reduced to inventions by only two paths:

    1) Flash of Genius
    2) pure accident

    There is no mistake that the philosophical crowd that detests patents at the onset seek to inflate the obviousness question to arrive at a system as limiting as possible in the granting of patent rights. Patents only to Nobel winners and bumbling stooges would severely constrain the creation of property rights that that philospohical camp detests.

    The congresional change in direct response to the Court’s Flash of Genius anti-patent philosophy does collide with the obviousness calculation. It must be understood – and accepted – just exactly why Congress was willing to – and did – make this change in the law.

  18. “Clearly, if the field includes weaving or knitting, the prior art would show the specific solution of integrating the stockinette and meat netting into one weave.”

    The text of 103 … “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.” Note the part about the “person having ordinary skill in the art to which said subject matter pertains.” Meat packers are not knitters.

    “one of ordinary skill in the meat encasement art with think to knit two together, but would not know how.”
    Hindsight … you presume the inventors recognize the solution (they just don’t know how to implement it).

  19. Warning against hindsight in obviousness analysis is welcome. It is all the more so as hindsight is inevitable in patentability analysis just because the search of prior art by the USPTO (or by anybody) in relation to claimed subject matter relies on knowledge of that subject matter. As a result of this a priori knowledge, a prior art search can be both very selective in terms of the claimed features and very comprehensive in terms of the technical field. This is very clear if one compares such a search of prior art based on knowledge of an invention with a real-life state-of-the-art review conducted at the outset of a research project.
    The fact that hindsight is inevitable in the prior art search exercise makes it still more necessary to keep away from hindsight in the obviousness analysis.

  20. High above, Ned Heller wrote:

    “the better statement of the problem would be in how to avoid adherence using netting but without using a two-step process”

    Rader CJ castigates the DC for the sin of using the invention to define the problem. In that he is at one with EPO-PSA which insists that the objective technical problem must be formulated without recourse to any knowledge of the claimed solution.

    So, here, the “technical effect” and therefore the “objective technical problem” might be to simplify and streamline the architecture of the conventional production line (that includes separate stockinette stuffing and mesh encasing stations). Was there any TSM in the prior art universe, how to do this, by prefabrication of a stockinette/mesh combo casing member? Henricus comes close, with its single stuffing station, using a prefabricated two component, wire-reinforced stuffing sleeve.

    But close enough? Depends on the evidence.

  21. Learning EPO-TSM is like learning something so darnright simple as how to ride a bike. Once you have cracked it, you wonder why you ever found it so hard.

    But I do agree, when you first start to learn how to ride a bike, the apparent complexity of it all can indeed make one’s head spin.

    Was it Max Planck who observed that no mature scientist ever switches to a new theory, one that offers an improved explanation of reality. Rather, new and better explanations of reality take over when younger colleagues, not slaves of the older theories, get to more senior positions. This is what is happening in Europe, with obviousness theory.

  22. "Does not preclude" is entirely different from what judge Rader said the question said the district court had to answer on remand.  That question did not include the knitting arts at all.  If there's any ambiguity in the question that the lower court has answer on remand, perhaps Judge Rader should clarify his opinion.

  23. Paul, I know he is Judge Rader.  But you misunderstand the Judge Rader just a bit.  I think Judge Rader has the same overall viewpoint as Judge Rich, who was essentially a judge appointed by the New York Patent Law Association and by the American Patent Law Association.  Both these Association seem to have the view of the bar as a whole, and if you listen to what they say, you will find it echoed in the opinions of Judge Rich and now of Judge Rader.

    Now on the whole the patent bar seems to be in favor of the patent system.  But on particular issues there is divergence of views.  For example, the patent bar as a whole reflects the views of big business and they are very anti-troll.  However, they lump into the term troll anybody that has a patent and who is not a member of big business.  Thus they are decidedly anti-inventor, anti-small business, and anti-startup.  But these latter types of inventors and businesses are critically important to advancing technology.  So as a whole, the patent bar is not 100% in favor patents.  They are selectively in favor patents.

  24. But, but, but to some it is common sense that patents be not valid. Perhaps that is sufficient.

  25. IANAE, I was thinking along the lines the same topic that the knitting art would not be excluded.  But clearly the way Judge Rader phrased the question that must be asked such as to exclude the knitting arts as the art in question,  Judge Rader setting this up so that there is only one possible answer on remand.

    I was wondering whether or not the District Court was operating on some kind of a waiver theory based upon some kind of admission or lack of argument about the relevant art during prosecution in the patent office.  What do you think?

  26. With little more than an invocation of the words ‘common sense’

    true lolz

  27. If nothing else, Rader has a sense of humor:

    The district court made a clear error, however, in its unsubstantiated reliance on “a common sense view” or “common sense approach” to hold that it would have been “obvious to try” a locking engagement. The mere recitation of the words “common sense” without any support adds nothing to the obviousness equation.

    Shades of Prometheus‘ “just apply it” with the mirror of “just say it.”

  28. Clearly MM has no real world experience. Anyone with any level of real world experience does not question that the way a problem is framed, finding out what the real questions, drivers and problems are is often the most difficult task.

    That you are so sure of yourself in your ignorance is amusing.

    T O O L

  29. I think the critical aspect of this case was that the court limited the field of one of ordinary skill in the art to that of ‘meat encasement.’

    What a putz.

    From the actual case:

    This court also observes that the inclusion of meat encasement art within the understanding of a person of ordinary skill in this art does not preclude the use of the knitting references as analogous to the claimed invention.

    Are you even a lawyer Ned Heller?

  30. When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another.”

    Pretty sure it does.

  31. I’m sorry, what is the the District Court found . . . it is common sense that an invention is obvious so as not to operate as a restraint on trade. . . or was it something else:)

  32. Good scenario.

    Might or might not be obvious. Depends on the evidence.

    And what were the pyramid-shaped articles? If the article was in the 1956 issue of the Digest and the articles were charcoal briquettes for use in barbecues, the chance of an obviousness attack succeeding would not be so great.

    On the whole you would do better if you put the advantages in the specification. Better to find a reason other than cost, and cost must be an indirect rather than the direct benefit. For example, is it easier to stabilize pyrimidal articles on the belt than e.g. near spherical ones. It would not be the afterthought of an astute trial lawyer. MANY PLAUDITS for anyone who can tell me where that phrase occurs. HINT: It was said with high authority.

  33. I’ll add to your hyopthetical:

    What if the background section notes that a problem in the art is the inefficiency inherent in conveying almonds? Can the examiner NOT use it now because to do so would be to impermissably use the applicant’s own problem, or did the applicant place the problem in the prior art making it fair to use?

    What if the applicant is aware that it is well known in the art that conveying almonds is terribly inefficient and really a rate-limiting step, and the applicant does not mention this problem in the application or by declaration; is omitting that you’re addressing a known problem inequitable conduct?

  34. Fits with what I remember of the fly screen case. But how is it relevant. Here we have an invention that replaces the conventional two step bulging meat manufacturing process with a single step that works at least as well. That’s a great contribution to the art. Mintz and Mintz deserve their patent.

  35. I’m reminded of that invention comprising a fly screen from a few years back, where the inventor used a screen previously associated with the space shuttle or something. That was a similar panel of judges, as I recall, with a similar result. Except in that case the invention was found non-obvious because the space age screen was so expensive nobody “in the art” would ever have thought to use it.

    Am I mis-remembering that one?

  36. If you are encasing meat the correct starting point is the previous method of packing meat.

    For the pathology of wrong starting point, see the In re Klein decision last year.

  37. Perhaps IANAE, MM, we agree more than is yet apparent. When I write “field” I mean the technical field that is set by the specification and claims as filed. So if you claim a knitted article and announce your field as that of knitted articles you have fixed your own field as that of knitted articles. But if you claim a knitted meat encasement sleeve and your spec begins with a para that announces the fields as that of meat encasement then you have set the field narrower than that of knitted articles.

    Now we come to obviousness, and the relevant fact, what art would have interested the skilled maker of knitted meat sleeves. I dare say anything in the wider field of knitted sleeves (regardless of purpose) would fall within that person’s field of interest. But that’s not the same thing (in my book anyway) as the field of the invention.

    This is all in Paul Cole’s book. A comment Paul?

  38. Seems like you could simply apply a lubricious coating to the sausage and avoid all this knitting business.

  39. I invent a novel candy bar comprising a chocolate coated cube of nougat and pyramid shaped almonds.

    In my specification I point out that previous candy bars comprising nougat and almonds were expensive to produce because the almonds were whole. The use of pyramid shaped nuts makes the conveyer belt which carries the nuts 1000% more efficient and reduces costs accordingly.

    An advertisement in the prior art describes a candy bar comprising a chocolate coated nougat cube with whole almonds. A second prior art article in Conveyer Belt Fanciers Digest teaches that pyrimidal shapes are generally much more conveyer-belt friendly.

    Is novel candy bar obvious? Is it more or less obvious if I omit in my specification any reference to the cost-savings obtained by using the pyrimidal shape (e.g., is it less obvious if I submit the cost-savings factoid in a declaration after an obviousness argument is presented)?

  40. KSR dictates that ANY art that may have a nexus with the Solution is fair game.

    Pretty sure it doesn’t. But you’ve had five years to come up with a quote from KSR to that effect, so let’s have it.

  41. a person of ordinary skill in the meat encasement arts

    Strictly speaking, that doesn’t exclude the possibility that a person of ordinary skill in the meat encasement arts might know to refer to other specific arts to solve certain problems. Isn’t that what KSR was all about?

    It’s really a question of whether, if you tell an ordinary meat encasement artisan that you went and looked at some knitting patents, he’d answer “wow, brilliant idea, I’d never have thought of that” or “yeah, that’s what we do when we have problems with knitted encasements”. If the latter, those knitting patents are within the ordinary skill of the meat encasement artisan.

  42. An excellent and clearly presented point, IANAE.

    From the decision:

    Often the inventive contribution lies in defining the problem in a new revelatory way

    That is gobbledy-gook.

  43.  
    "Instead, PCM must prove by clear and convincing evidence that a person of ordinary skill in the meat encasement arts at the time of the invention would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat en-casement structure disclosed in the ’148 patent to solve that problem.
     
    The focus of KSR was on broading the art field.  Following KSR, one might reasonably have included knitting. But Rader said that that would be using hindsight.
     
     

     

  44. "Instead, PCM must prove by clear and convincing evidence that a person of ordinary skill in the meat encasement arts at the time of the invention would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat en-casement structure disclosed in the ’148 patent to solve that problem. "

  45. Ned find me one word string in the patent in suit which widens the technical field beyond meat encasement.

    Why should that be found in the patent itself? Supposing arguendo that sausage casing artisans regularly consult the knitting arts in developing new casings, but the patent in suit carefully avoids any mention of that fact. Why should the patentee be entitled to arbitrarily exclude otherwise relevant and citable prior art that would commend itself to a person of ordinary skill?

    Identifying relevant and irrelevant classes of art isn’t just about fairness to the inventors. It’s also about fairness to anybody who might care to practice an arguably-obvious combination of prior art teachings.

  46. Ned, you say:

    “Rader was saying that that one could not use the inventor’s own invention to help define the field, otherwise that would be using hindsight.”

    Define the field? Really? If you say so. I don’t see it yet though.

  47. So, what I think Rader was doing here was combatting KSR's point that the field of use includes matter beyond the problem as stated by the inventor.  Rader was saying that that one could not use the inventor's own invention to help define the field, otherwise that would be using hindsight.

    Interesting.

  48. Paul if I were posting under my real name I would perhaps be more circumspect. But then I would not enjoy myself so much. Are my contributions annoying Jason Rantanen and other serious contributers? I hope not. I did not realise my contributions are annoying you. Sorry about that.

  49. I agree.  This case is about defining the field of one of ordinary skill in the art and how we properly do that.  Once we shifted to the knitting arts, the inventor lose. 

     

  50. Ned find me one word string in the patent in suit which widens the technical field beyond meat encasement. What more could the inventors have done, to specify their field as meat encasement. To take it wider is to be unfair to these inventors.

  51. I think the critical aspect of this case was that the court limited the field of one of ordinary skill in the art to that of “meat encasement.” Clearly, if the field includes weaving or knitting, the prior art would show the specific solution of integrating the stockinette and meat netting into one weave.

    This seems to me that because the use of a stockinette in combination with meat netting was old for the purpose of avoiding the meat adherence problem, one of ordinary skill in the meat encasement art with think to knit two together, but would not know how. This hypothetical person of ordinary skill in the meat encasement art might actually think to look into the knitting arts to find a solution. But I think the invention, would not be in the specific way the stockinette and the netting were integrated, but in the fact that they were integrated at all.

    If the above is true, a broad claim to the combination for the purpose might be patentable and nonobvious.

  52. Paul, I would agree with you on the hindsight piece, however I find problematic radar statement of that the problem of adherence was discovered somehow by the inventors. It was not.

    The most critical aspect of this case is not the hindsight portion but the portion whereby the Federal Circuit limited the field of one of ordinary skill in the art to the field of “meat encasement;” and did not include the field of weaving or the knitting art. How they did that is not completely apparent.

    If you have any thoughts on this issue, I I would appreciate your views.

  53. Max, agreed.

    The adherence problem identified by Rader (adherence to the netting) as having first been recognized by the inventors, was rather, in fact, a well-known problem, and there were two known solutions: collagen and a stocking net. The netting of the prior art was fit over either the collagen or the stocking net. But this was two-step process, and expensive.

    It seems to me the better statement of the problem would be in how to avoid adherence using netting but without using a two-step process.

    Using this statement of the problem, the integration of the stocking net and netting into one weave may have been obvious, and well within the skill in the art if the field of the relevant art includes or is limited to weaving. However, it may not have been obvious at all if the art field is limited to the “meat encasement art” as held by the Federal Circuit here.

    So I think the most interesting aspect of this case has to be the process whereby the Federal Circuit limited the field of ordinary skill to the field of “meat encasement art.”

  54. IMHO one of the best decisions to come out of the Federal Circuit on unobviousness in recent years.

    “This statement of the problem represents a form of prohibited reliance on hindsight. The district court has used the invention to define the problem that the invention solves. Often the inventive contribution lies in defining the problem in a new revelatory way.”

    Golden language – should be learned by heart. Useful language on common sense and circumstantial evidence too.

    And for those who think that there is something special about the EPO’s reasoning, like some Supreme Court and CAFC reasoning it encapsulates universal truths about invention which are as applicable before the EPO as they should be applicable in the US.

    @ Max: Don’t annoy our US colleagues. Especially when there is handed down a decision whose reasoning you should like.

  55. But your complaint appears to be that the Federal Circuit’s reasoning did not follow the PSA approach. That’s not particularly surprising, since US law on obviousness is not based on the PSA approach. So, the US framework is different. But what about it is muddled?

    As you say, there was no TSM in the art of record. From the record, the only rationale for combining the prior art elements to obtain the claimed invention appears to have been “Well, it would have been obvious to combine things like the inventors did, because it is just common sense to try to combine things like the inventors did.” The Federal Circuit (correctly) says that you can’t do this, and that the District Court shouldn’t have done it.

    The District Court also completely ignored the secondary considerations of non-obviousness. These are rarely worth much, in my opinion, but it’s clear error to completely ignore them. The Federal Circuit’s analysis here seems quite un-muddled to me.

  56. but do we not read cases in order to find out what the result will be next time

    Your own exaltations betray you.

    Aren’t you the one that glories in the fact of the absence of binding precedent?

    Without binding precedent, it is impossible to take anythign from one case to find out what the result will be next time.

  57. Max, a few posts above you were extolling the virtues of the simplicity of the EPO methodology. What you just described has complexity that makes my head swim.

    It is fundamental differences like this between, say EPO law and US law that never get addressed in the inexorable march towards “harmonization” and makes the march much like a march over a cliff.

  58. But that problem was nothing to do with adherence, cos at that date any adherence problem had already been solved by using exactly the combination in the claim, stockinette inside a square mesh.

    I take from your “already been solved” comment that you think the problem must be something else; ergo, a problem solved (one solution) cannot be the correct problem.

    Told more, done.

  59. No I’m not. Of course there’s a myriad of possibilities to solve every problem. that is beyond dispute. Thank goodness. It is what gives patent attorneys work, and industry progress.

    Where do you find me assuming that there is only one solution to any particular problem? I’m curious. Tell me more, do.

  60. Thanks.
    Hal Wegner has noted in the past other examples of Fed. Cir. decisions completely ignoring Sup. Ct. authority on point. Also, Fed. Cir decisions not infrequently ignoring their own rule of stare decisis that the OLDEST Fed. Cir. panel decision on point controls, and should at least be cited and distinguished unless overruled en banc. [Possibly compounded by briefs submissions to the Fed. Cir. doing both, if they are not ever sanctioned for it?]

  61. Jason (sorry I earlier called you Dennis) thanks. You quoted from the Decision and now I show below the bit from your quote that I need for my argument. It is:

    “PCM must prove by clear and convincing evidence that a person of ordinary skill in the meat encasement arts at the time of the invention would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat en-casement structure disclosed in the ’148 patent to solve that problem.”

    Why? Because there was no “adherence problem”.

    Look at the patent, col 2, lines 18 to 21, in the section headed “Description of the Prior Art”.

    The claimed subject matter solved a technical problem, sure. But that problem was nothing to do with adherence, cos at that date any adherence problem had already been solved by using exactly the combination in the claim, stockinette inside a square mesh.

    With such muddled thinking, Rader CJ would fail the examination one sits, to qualify as a European patent attorney.

    The DC thought the invention solved the problem how to form a grid pattern. As Rader CJ points out though, that problem had also already been solved. Rader substitutes his own definition of the problem and I’m only pointing out that his problem was one admitted by the inventor already to have been solved by the Prior Art. If we are going to equate a patentable invention with the solution to a problem, it is helpful to identify as the problem one which has not already been solved by the conventional product already on the market.

  62. The appeal court resaoning muddled.

    More likely, MaxDrei, it is your udnerstanding that is muddled, given as you cannot be bothered with the nuance of US law.

  63. Your reply is nonsense, as it seeks to equate my posting as on par with yours, when there is absolutely no indication of such.

    I never said, indicated, implied or gave even a whisper of a hint that “I can’t be bothered.”

    The first step in overcoming your ignorance is to admit to your ignorance.

  64. Max – As I read the opinion, the court is focused on the first part of that sentence – avoiding the use of the patent in defining the problem – as impermissible hindsight. It’s less concerned in this particular case about whether one looks to the patent in determining whether the solution is obvious (perhaps because there’s a sense that once the problem is identified then the solution is, in fact, as obvious as the invention in KSR). But if the question had been obvious, the CAFC likely would have been skeptical if the district court had relied on the patent itself as support for the conclusion that the solution was obvious.

    At another level, though, the court necessarily needs to at least consider the patent for its content – particularly for its solution. Even if the problem must be established independent of the patent, you’re right that the solution to that problem will need to be compared to the solution in the patent in order to ascertain whether it’s the same.

    Also, keep in mind that one need not only look to the problem as identified in the patent for purposes of analyzing whether the solution is obvious. That’s the inverse of what the district court apparently did here, and is something that KSR explicitly cautions against.

    Here’s the relevant language from the CAFC’s opinion:

    Moreover, the district court emphasized that the problem in the prior art was merely forming a checker-board or grid-like pattern. To be specific, the district court erroneously phrased the issue as whether it would have been obvious to simply “fix each point of intersection” of each strand in order to solve that problem.

    This statement of the problem represents a form of prohibited reliance on hindsight. The district court has used the invention to define the problem that the invention solves. Often the inventive contribution lies in defining the problem in a new revelatory way. In other words, when someone is presented with the identical problem and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention. Instead, PCM must prove by clear and convincing evidence that a person of ordinary skill in the meat encasement arts at the time of the invention would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat en-casement structure disclosed in the ’148 patent to solve that problem.

  65. The muddle lies in the reasoning (such as it is). Call me naive if you will, but do we not read cases in order to find out what the result will be next time, rather than just to find out who won this time around. Isn’t it the reasoning that is the important thing, not the result Y/N this time?

    The District Court reasoning was wrong. The appeal court resaoning muddled. What are we left with, beyond platitudes? Not a lot.

  66. And in my long experience, empty pots, that call the kettle black, also make the most noise. We can agree on that, I’m sure.

  67. I’ll drink to that. So would most people (although not those with a vested interest in complexity).

    But where, in your opinion, has Europe gone too far, in making its patent law even “simpler” than “as simple as possible”?

  68. So the claimed subject matter ought not to have been found to be obvious. No big deal, right?

    Which is what the Federal Circuit said. So where exactly is the muddle?

  69. I can’t be bothered

    There are none so ignorant as those that refuse to learn.

  70. Dead right that commentator. This student is far too much of a dullard to appreciate all the nuances of US law. I can’t be bothered.

    I admire elegant simplicity. Like stripping a cell phone of its buttons. Far too many unnecessary bells and whistles in US patent law for my taste. The real skill lies in keeping it simple. But each to his own.

  71. Dennis, I am troubled by the muddle here over problem and solution. You write:

    “The CAFC also found that the district court erred by using the invention to define the problem that the invention solves”

    I agree. It is a basic tenet of EPO-PSA that the objective technical problem MUST be formulated without any reference to the claimed invention. Otherwise, it’s unfair and impermissible hindsight. Well done Randy.

    But you also write that hindsight is to be kept at bay by:

    “avoiding the use of the patent itself in defining the problem the invention solves”

    and it is this I don’t like. One must turn to the patent to find out what the solution is. That is the only place where you can find it. But without knowledge of the solution, you don’t know what the relevant problem is. Or do you?

    Just to be clear, EPO-PSA toggles between technical features (in the claim, in the art) and technical effects (as announced in the app as filed). The claim is the solution. The patent tells us that it made stuffing quicker and cheaper. The objective technical problem is to achieve the technical effect that is, as a result of the inventor’s activity, delivered by the claimed feature combination (but not by the prior art starting point). So, here, the objective technical problem was to enhance the efficiency of the conventional (as explained in the patent) two step stuffing of meat into the ubiquitous non-adherent, bulge-encouraging mesh casing. Any suggestions (from those of you who do not yet know what the invention was)?

    There wasn’t any TSM, in the art of record, how to do that at al, much less to do it by resorting to the subject matter claimed.

    So the claimed subject matter ought not to have been found to be obvious. No big deal, right?

  72. MaxDrei, in his typical hurry to espouse all things EP, displays his usual dullard appreciation of the subtlety of US patent law.

    Isn’t 40 years in the second grade long enough?

  73. All this stuff about problem and solution and hindsight arouses my interest, to see how EPO-style TSM would handle it. I see that the EP-B-557061 was opposed, the Dutch Opponent pointing out that products in accordance with the claims were already on the market before the priority date. Four months later, the Opponent withdrew its opposition.

    As the patent faithfully reports, the closest art is a meat product stuffed first into a stockinette and then into a netting. It being a 2-step process, it is relatively expensive.

    The object of the invention is to overcome that disadvantage.

    The solution to the problem was….wait for it… to integrate the stockinette with the netting, so stuffing is accomplished in but one step.

    Henricus (a Dutch, not USPTO, publication, published one month before Marcus and Neil Mintz filed at the USPTO) extrudes meat paste in one step into a stockinette mesh sleeve. On its radially outer surface the sleeve has hoop wires interthreaded into the mesh to manage the outward bulging of the sleeve content.

    I have no idea why the USPTO Examiner thought that the feature added to the claim during prosecution at the PTO did anything for non-obviousness. But it sure dissed Messrs Mintz on infringement didn’t it?

    And Rader CJ is quite right: if the PTO on a preponderance finds the claim not to be obvious over this prior art landscape, how can the CAFC, needing a C+C standard and having no new art to rely upon, do anything but endorse the PTO?

  74. Hear hear! If I ever develop an effective method for cloning Judge Newman, I will file a patent application describing the method with a request for early publication, then expressly abandon the application. (I’m a bit surprised that Judge Dyk went along with this decision, not that I’m complaining.)

  75. They should just get rid of the rest of the Fed. Cir. judges. Newman and Rader are all we need.

    Yea!!! You have fans RRR and Pauline. The forces of darkness (Moore, Stern, Lemley) have not yet won the day.

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