K-Tec v. Vita-Mix: Analogous Art and Willful Infringement

By Jason Rantanen

K-Tec, Inc. v. Vita-Mix Corp. (Fed. Cir. 2012) Download 11-1244-1484-1512
Panel: Newman, Lourie (author), Prost

K-TEC and Vita-Mix are manufacturers of high-end blenders.  In the early 2000's, K-Tec developed a blender geometry that reduced the problem of cavitation (the formation of an air-pocket around the spinning blade).  Figure 11 of K-Tec's patent illustrates the concept:

Figure 11

Vita-Mix used K-TEC's five-sided commercial embodiment to design its own upgraded blending jar.  After Vita-Mix released its product, two of K-TEC's patents issue.  Upon being notified of the patents, Vita-Mix redesigned its product in an attempt to design-around the patent claims (which reference "four side walls" and "a fifth truncated wall disposed between two of the four side walls.")  The redesigned Vita-Mix product looked like this:

Vita-Mix
During the patent infringement suit, the district court granted summary judgment of infringement and summary judgment that two prior art references asserted by Vita-Mix were not analogous art.  The remaining issues were tried to a jury, which found in favor of K-TEC on the remaining issues of validity, willfulness, and damages.

Analogous Art: Following KSR v. Teleflex, there was some question as to the strength of the analogous arts doctrine in light of the Court's repudiation of rigid tests in analyzing nonobviousness.  Last year, however, in In re Klein, the Federal Circuit applied a robust analogous art doctrine to limit the scope of prior art that may be considered by the examiner during patent prosecutionK-TEC v. Vita-Mix indicates that the analogous art test continues to remain alive and well in the infringement context, affirming a grant of summary judgment that the references did not constitute analogous art. 

Vita-Mix argued that the district court should have permitted the jury to consider two non-blender designs that depict five-sided containers.  Design Patent 227,535 ("Grimes") provides an example:

GrimesUnder Federal Circuit precedent, a prior art reference may not be considered in the obviousness analysis unless it is analogous art.  There are two ways to meet this requirement: (1) the reference can be from the same field of endeavor as the claimed invention; or (2) it can be reasonably pertinent to the particular problem with which the inventor is involved.  Here, Vita-Mix did not contend that the container design patents were from the same field of endeavor, and thus the CAFC focused its analysis on the second condition.

In affirming the district court's grant of summary judgment that the two design patents were not analogous art, the CAFC concluded that despite the inventor testifying that he "wanted the resulting jar to fit within K-TEC's existing quiet box, there is no dispute that creating a smaller jar was not the problem he set out to solve because K-TEC's existing jars already fit within the quiet box."  Slip Op. at 16.  (It's unclear from the opinion why needing a smaller jar would caused Grimes to have "commended itself" to an inventor's intention in considering his problem.)  A greater problem was that Vita-Mix's expert report "did not 'explain any rational underpinning for [the inventor] to have consulted non-blending containers or food mixers in order to solve the problems he encountered in designing a new blending container.'"  Slip Op. at 16, quoting the district court's opinion.

Comment: Why, especially in light of KSR v. Teleflex, should the analogous arts analysis have anything to do with what an inventor thought?  Here's how the CAFC is currently articulating the "reasonably pertinent" prong: "A reference is reasonably pertinent if it, as a result of its subject matter, 'logically would have commended itself to an inventor’s attention in considering his problem.'" Slip Op. at 15, quoting Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).  Shouldn't the analysis be based on what a person having ordinary skill in the art would have thought, not an inventor (and especially not "the" inventor)? 

Willful Infringement Treated as a Question for the Jury: For those seeking to prove willful infringement, this is a good case; for those seeking some consistency with previous opinions on the subject, it may be less so.  Following the jury trial, the district court denied Vita-Mix's motion seeking to overturn the finding of willful infringement.  In affirming, the opinion makes no reference to the CAFC's recent instruction that the "objective prong" of the Seagate recklessness analysis is a separate question of law.  Instead, the opinion barely distinguishes the "objective" prong from the "subjective" prong.  Evidence for the "objective" prong:

  • Vita-Mix's noninfringement theory and most of its invalidity theories were properly disposed of on summary judgment;
  • Its remaining theories were "soundly" rejected by the jury;
  • In designing the product illustrated above, Vita-Mix started with a direct copy of K-TEC's five-sided jar (note: the "direct copy" was Vita-Mix's own pre-patent version of K-TEC's commercial embodiment); and
  • Vita-Mix considered other noninfringing designs, but opted to "produce a container that performed in the same way as the [earlier Vita-Mix product] and employ a design that its customers would not be able to distinguish from [Vita-Mix's earlier product]."

The court continued on to state that "similarly, K-TEC presented substantial evidence that Vita-Mix knew of the objectively high risk of infringing K-TEC's valid patents, but decided to proceed anyway,"  Slip Op. at 22, indicating that the preceding factors were the factors relevant to that "objectively high risk."  

Comment: One area where the K-Tec holding is particularly difficult to square with prior precedent is its reliance on copying as part of the "objective" prong of the Seagate analysis.  See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) ("Because we hold that DePuy failed as a matter of law to satisfy Seagate's first prong, we need not address DePuy's arguments concerning “copying” and Medtronic's rebuttal evidence concerning “designing around,” both of which are relevant only to Medtronic's mental state regarding its direct infringement under Seagate's second prong.").  

26 thoughts on “K-Tec v. Vita-Mix: Analogous Art and Willful Infringement

  1. A bit of a double standard perhaps…?

    Analogous art is any art field (at all) that happens to have some reasonable pertinence to any problem with which one of ordinary skill in the art is concerned, and yet, restrictions are allowed if the searhc happens to cross an arbitrary unit line, even though both units are highly pertinent to any problem with which one of ordinary skill in the art is concerned…

  2. See PTO Board decision in Ex parte Leimkuhler (Application 10/920,721), decided 2/28/2012. Per the PTO Board, the the test for analogous art was “broadened” by KSR. A prior art reference is analogous “if it reasonably pertinent to any problem with which one of ordinary skill in the art is concerned.” Further: “While any advantages or problem solving intended by inventors as described in the Specification may be considered as relevant secondary evidence, they are not controlling in terms of evaluating the contents of the prior art references for the purpose of determining appropriateness of their combinability.”

  3. No kidding. Examiners will abstract the applicant’s field and that of the prior art reference until they both are the same. “They’re both in the field of things that use electricity.” “They’re both in the field of articles of manufacture.” In re Clay batted down overly broad characterizations by drawing a distinction between petroleum extraction and petroleum storage – but any examiner would argue both are in the field of petroleum handling. While In re Klein has been maligned, I note that the issue wasn’t whether the fields of invention were the same, it was on the second prong despite the obvious similarities in the structures between the cited references and the claimed invention. But it’s virtually impossible to get an examiner off of the first prong (most won’t even acknowledge which prong they’re talking about). The MPEP is badly out of date on how to determine analogousness.

  4. In winslow, 365 F.2d 1017 (CCPA 1966), late Judge Rich depicted inventor’s researching activities as putting prior arts to a wall of the inventor’s researching lab and then among them the inventor selects a few of them. Issues are, first whether this (analagous or non-analagous) prior art could have been put to the wall, and then second whether the inventor would have selected this prior art among many other prior arts.
    Considering this situation, the inventor’s eyes become more important to decise problem relevancy of the prior art at issue.

  5. Chaho:
    regarding whether problem relevancy must be judged based on PHOSITA’s eyes, ordinary inventors’ eyes or the inventor’s eyes, there is at least one case which refers to PHOSITA’s eyes:
    Heidelberger Druckmaschinen AG v. Hantscho Commercial Products, Inc., 21 F.3d 1068, 1071 (Fed. Cir. 1994) (“References that are not within the field of the inventor’s endeavor may also be relied on in patentability determinations, and thus are described as ‘analogous art’, when a person of ordinary skill would reasonably have consulted those references and applied their teachings in seeking a solution to the problem that the inventor was attempting to solve.”).
    Current case (K-Tec) seems to pay attention on the inventor’s researching procedures, during which he searches prior arts and selecs some of them, and modifies, combines and so on.

  6. Pursuing this line of thought a lot further…

    Graham v. Deere may be considered ultra vires, as the Court sought to reset obviousness back to before the ’52 Patent Act and place it on “comfortable grounds.” But doing so may have violated the direct words of the body of the government (and the only body of the government) charted with the power to make such words into law.

    As Professor Hricik indicates, just because the courts may have long misunderstood law may not validate that law – if the Supreme Court does not have authority to create its version of common law, than there are quite a few things in patent law that need to be recalibrated. And obviousness is one of them.

    Patentability shall not be negatived by the manner in which the invention was made.

    On its face, that is a powerfully succinct directive.

    But then again, perhaps 103 itself must be thrown out…? The powerful admonition follows directly after PHOSITA. Did Congress write an unsolvable conundrum?

  7. FWIW I submit to you – from personal experience handling dozens of cases – that the PTO continues to ignore all instructions from the CAFC on what is “analogous” art. To the PTO, anything they can THINK of is “analogous” art. Its gone so far that at least one Examiner is citing acid rain EPA regulations from 1972 and some vague, undefined employee “leave donation” program – that he imagined out of thin air – against an e-commerce case which, in one limitation, notes configuring a computing system so that two subscribers share content in a common account. Check out 10/771094 sometime – the argument is farcical.

  8. anon, I never thought of the issue this way, but you do have a point.  The inquiry into the education and skill level of the ordinary practitioner actually is an attempt to show that what he did was a flash of genius.  That consideration seems to have been statutorily removed by the '52 Patent Act.

    I agree.

  9. not some inquiry into an engineer’s education level, which tends to distract and cannot be decisive in any particular case

    Pursuing this line of thought a little further…

    What does 103 mean (Patentability shall not be negatived by the manner in which the invention was made)?

    Isn’t “manner made” intricately tied into the level of skill? Recognizing that this phrase is directly tied into the Congressional desire to ban the “Flash of Genius” doctrine, isn’t it an attempt at re-introducing the doctrine to attach any “skill level” to any particular art? If an art is composed of advanced PhD level individuals, haven’t you arrived back at Flash of Genius? In any art field, don’t you merely have a sliding scale of “Genius” if you peg invention to the manner in which it was made – manner being skill level?

  10. Dennis, but it then is just nonsense what we go through in court, trying to figure out the credentials of the person of ordinary skill in the art.  After you establish that, we simply ignore it just as the patent office ignores it.  Why?  Because a hypothetical person of ordinary skill in the art is deemed to know the entire content of the relevant art and what it teaches.  That is the objective test, not some inquiry into an engineer's education level, which tends to distract and cannot be decisive in any particular case.

  11. Yesterday 6 wrote in the Magsil thread on the Ryan Alley blog that there were too many applications. I guess then that he’s busy.

  12. KSR did not expressly discuss analogous art. However, the most straightforward interpretation of the case (in my view) leads to the conclusion that the case did alter the scope of analogous art. So, I agree with you Mr. Curmudgeon.

  13. Ned said: This should be an objective test.

    DDC replied: I have not fully thought this through but I tend to agree that the test should be objective. Further, regardless of the best policy, the law of obviousness as codified in 35 U.S.C. 103 requires that the test be objective.

  14. I would just like to say how much I love my Blendtec! If you’re interested in a healthier diet or need to add more leafy greens to your diet, either of the products at issue here are excellent.

  15. Oh, Hello, mention of “the problem-solution approach” arouses my interest.

    Of course EPO-PSA properly starts with the subjective problem and ends with the objective problem, and experienced practitioners of EPO-PSA are careful not to confuse the one problem with the other.

    Somebody one perceptively observed that a little knowledge is a dangerous thing.

    Tomorrow I’ll read K-Tec and (perhaps) comment further.

  16. It would seem to be a “slip up” indeed, and one that is difficult to excuse for such experiencd CAFC judges. “Obvious to a PHOSITA” is the statutory test, clearly set forth in 35 USC 103, not “obvious to an inventor.”
    Also, the repeated failure of some CAFC judges to even cite, much less distinguish, the Sup. Ct. KSR decision on obviousness issues [as here] when that is their controlling case law authority on both obviousness and non-analogous art, is also hard to understand. Unlike some other recent Sup. Ct. decisions, KSR was not without any guidance.

  17. Dennis, When the examiner cites something than is non analoguous, how do we know it is non analogous? I think we know it from the field of the invention statement in the patent specification, and perhaps from the class and subsclasses that the examiner has classfied the patent. If it is from an entirely different field, clearly it is non analogous.

    What the skill level is in the field based on education levels and years of experience to me seems a somewhat irrelvant inquiry. The proper measure of skill level is a knowledge test. The proper question is, “what does one practicing in the field legally deemed know?” It is not, “what does he know.”

    He is legally deemed to know all the art in the field and what it teaches.

    This should be an objective test.

  18. This language usage in Innovention Toys has always bothered me:

    “logically would have commended itself to an inventor’s attention in considering his problem.”

    I think that usage of the verb “commend” is flat-out wrong. References are inanimate, and not capable of doing anything like “commending themselves”.

    More sloppiness from the CAFC, while the DC exhibits much more adroitness with language: “explain any rational underpinning for [the inventor] to have consulted non-blending containers or food mixers in order to solve the problems he encountered in designing a new blending container.” MUCH better.

    Shades of the problem-solution approach, and even the way-function-result of Graver Tank.

  19. My reading is that the court’s test here is still an objective test rather than subjective. My conclusion is based upon the court’s reference to what “an inventor” would have done rather than considering what the inventor did in this case. I also suspect that this is a slip-up on the part of the court and that it intended to base the rule on a person having ordinary skill in the art rather than on an (ordinary) inventor.

    It is interesting to pause for a second to consider the difference. Normally, we think of a person of ordinary skill in the art as somewhat less skilled than an ordinary inventor. It is that difference in skill that allows the inventor to make non-obvious leaps that result in invention. This is true in most cases that I have explored – i.e., the inventors that I have studied have, for the most part, been cut from a different cloth than ordinary engineers or scientists. On the other hand, there are also lots of inventors who lack skills in the art but who stumble upon their invention. In other words, perhaps there is more variance in the skill of an inventor as compared with the skill of PHOSITA.

  20. “Shouldn’t the analysis be based on what a person having ordinary skill in the art would have thought, not an inventor (and especially not “the” inventor)? ”

    Yep, it is an objective not subjective test

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