Recent Federal Circuit Nonobviousness Opinions: Kinetic Concepts

By Jason Rantanen

Kinetic Concepts, Inc. v. Smith & Nephew, Inc. (Fed. Cir. 2012)  Panel: Bryson, Dyk (concurring in the result), O'Malley (author) Download 11-1105

Dennis will be writing about the advisory jury issue in Kinetic Concepts in more detail, so I'll provide only a brief summary here.  Wake Forest, the patent holder, appealed a district court grant of JMOL of invalidity for obviousness of a claimed invention for treating difficult-to-heal wounds by applying suction (negative pressure).  The CAFC reversed, holding that (1) the jury's "advisory" opinion on the ultimate issue obviousness gave rise to implied findings of facts that the district court was required to accept provided that they were supported by substantial evidence, despite the presence of special interrogatories on the verdict form; (2) the jury's implied findings of facts on the Graham factors were supported by substantial evidence; and (3) the ultimate conclusion of obviousness was that the claims were not obvious. 

In arriving at the ultimate (legal) conclusion of nonobvious, the Federal Circuit focused its discussion on the lack of a reason to combine the prior art references (itself a factual finding), referencing concerns about hindsight reconstruction.  In a statement suggesting a technology-based limitation on the use of common sense, the court held that "although expert testimony regarding motivation to combine is not always required, the technology at issue here is not the type of technology where common sense would provide the motivation to combine these references."  Slip Op. at 45.

3 thoughts on “Recent Federal Circuit Nonobviousness Opinions: Kinetic Concepts

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  2. their difficulty in reconciling this with the prior art is apparent with statements like “the Bagautdinov references disclose only the draining of purulent wounds; it says nothing about treating wounds …, much less healing,”

    [facepalm]

    Someone got blinded by big cloud of dust.

  3. I have seen few opinions so factually explicit – and yet appear to miss the boat completely. Looking at “the differences between the claimed invention and the prior art” section (p. 40) is very telling. The whole analysis is based on a bizarre non-real-world interpretation of the word “wound,” and a focus on the importance of “healing” without ever construing the term (Dyk points this problem out). As a result, the court finds that one of ordinary skill in the art would not consider the prior art references because they deal with “pus” despite the identical device structure. Even back in the old 1990′s one of ordinary skill in the art could do a literature search for “wound” and “vacuum” and find all of the prior art references. Given the similarities of the device structures and their action, it is impossible to believe that any of the references would not be considered relevant. Another Federal Circuit work of fiction.

    Thus, the district court judge was correct in finding that there was no legally sufficient basis to find the claims non-obvious. Although the Federal Circuit attempts to pin non-obviousness on a lack of a motivation to combine, their difficulty in reconciling this with the prior art is apparent with statements like “the Bagautdinov references disclose only the draining of purulent wounds; it says nothing about treating wounds …, much less healing,” and “[u]nless one knew that negative pressure could be used to treat wounds, there would be no reason to combine the prior art to arrive at the claimed device and methods.”

    I guess the takeaway is that obviousness is a question of law to be decided by the Federal Circuit panel drawn.

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