CAFC Overturns Jury Verdict of Non-Obviousness Because Combination Yields Predictable Results

Woodstream-aAgrizap v. Woodstream Corp (Fed. Cir. 2008)

Agrizap holds a patent covering a method of electrocuting rats and gophers. The product is sold under the trade name “Rat Zapper.”  Woodstream (maker of the Victor rat trap) first licensed the product then began manufacturing its own version.
The jury found the patent nonobvious and held Woodstream liable for both infringement (and for fraud based on its actions during the license.) In a post-verdict decision, the district court granted JMOL of non-infringement.

On appeal, the CAFC (Judge Moore) zeroed-in on the question of obviousness:

“[A]s the ultimate conclusion of obviousness is a question of law, it remains our duty as the appellate court to ensure that the law has been correctly applied to the facts. . . . In other words, we review de novo the conclusion on obviousness . . . [keeping in mind] that ‘[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’” (Quoting KSR v. Teleflex, 127 S. Ct. 1727, 1739 (2007)).

Here, the CAFC found, as a matter of law, that Agrizap’s own commercial product (the “Gopher Zapper”) rendered the claimed invention obvious. The only difference between the two was the type of trigger mechanism, and the Rat Zapper’s claimed electrical switch was already well known in the cattle-prod art.

Secondary Considerations: When faced with a mere combination of familiar elements, even strong secondary evidence of nonobvious will not save the application. Here, Judge Moore took as true “the commercial success of the Rat Zapper, copying by Woodstream, and a long felt need in the market for electronic rat traps.” However, that evidence is “insufficient to overcome the overwhelming strength of Woodstream’s prima facie case of obviousness.”


  • Judges Bryson, Moore, and Wolle (S.D.Iowa).
  • This case should be contrasted with Ortho-Mcneil v. Mylan , also decided this week. (Judges Michel, Rader, and Linn).
  • Perhaps a strategic misstep by Agrizap?: During prosecution, the PTO made the identical argument as that made by Judge Moore. The only difference was that the PTO examiner rejected the Rat Zapper patent application based on the “Gopher Zapper” patent instead of the commercial product.  Instead of arguing around the asserted reference, Agrizap amended inventorship and filed a terminal disclaimer.  This left the Examiner’s rejection glaringly un rebutted when it turned out that the commercial embodiment (102(b) prior art) could not be swept away so easily. [See Patently-O discussion of whether to file a 131 declaration or argue over a reference.]

31 thoughts on “CAFC Overturns Jury Verdict of Non-Obviousness Because Combination Yields Predictable Results

  1. 31

    The proverbial BETTER MOUSE TRAP, and did they beat a path to the inventor’s door? Yes. But it seems the licensee had theft in his heart and plotted to screw the inventor and then stole the invention when he saw how easily valid patents could be buried in today’s politically corrosive patent atmosphere, and sure enough, electrocuting rats was found obvious by a CAFC panel because of cattle prods.

    Well, sure, mouse traps and cattle prods go together like hand in glove (is it just me?, or is that Just plain nuts?, or what?). Remarkable, most remarkable. (To be fair, for several reasons including a weak stomach when I see blind justice go way awry, I didn’t actually read much about this case.)

  2. 28

    OhioIP: good point. But what scale? The decision at first instance is set by a jury of 12 good folks and true, but with no clue how to go about fact-finding (burden of proof) in complex issues when trying the validity of a patent. Are you a parent? Is it your kids who make all the decisions in your family, or do the grown-ups sometimes have to lay a gentle hand on “the scale”? Lest the family suffer.

  3. 27

    Doesn’t every decision that starts with the court saying it is improper to weigh evidence on appeal end with the court weighing the evidence. The court substitutes its own judgment for the jury’s stating that the objective evidence of non-obviousness is insufficient to overcome the strength of Woodstream’s case of obviousness. It is likely that the jury found the opposite to be true. The Fed. Cir. needs to keep its hand off of the scale.

  4. 26

    I dunno, it sounds kind of obvious to me. How many switches are there that might work? Mechanical and resistance are mentioned. There are also pressure switches, electric eyes and “break the beam switches. I’m no switch expert, but there are probably more. Maybe I think too highly of myself, but it seems that with a little research I could have come up with a pressure or resistance switch as the best option.

    But maybe thats ego and hindsight. I guess we should have been told the problem and been allowed to think about it for a few minutes before being told the actual switch was a resistance switch.

    The larger issue I see is licensee abuse, on which the licensor seems to have won on a fraudulent misrepresentation and breach of confidentiality claims.

    While there is no more licensee estoppel (which is probably a good thing in principle since it seems unfair to make a licensee continue to pay for something in the public domain), how do you stop licensees from doing what was done in this case?

    I guess it must be put in the license. How about the exclusive licensee paying the licensor a bonus in the event the patent is invalidated. Sounds counter-intuitive, but that fee could be based on the benefits of the exclusivity in developing market share and the fact that the license was granted based on a presumption of validity.

    If the patent was invalid, what the licensee was really getting was the use of the invention before the patent’s invalidity was determined.

    Or maybe an agreement continue on at a lower royalty rate even after invalidity is found. Again, the real benefit in an exclusive license was early exclusive access based on the perception/belief of validity. That has value even if the patent is invalid. Indeed, if an invention is not easily reverse engineered, the licensor probably would have licensed the invention as a trade secret. Col. Sanders’ herbs and spice combination and the Coke formula are good examples of trade secret with lives longer that a patent.

    The drafters of licenses need to consider these things. It seems quite apparent that the licensee’s sole basis for obtaining a license in this case was to get a head start in the market by getting earlier access to the technology. They thought it faster and cheaper to get the license first and than work around it or prove invalidity. That may be a legitimate business strategy, but the licensor doesn’t have to go along with it. The licensor can always say no if the royalty isn’t high enough.

    A critical question is what is the value of the technology to the parties, whether or not the patent is valid?

  5. 25

    As I mentioned in another post, “If the examiner can cast the art sufficiently broad, almost every component is well known. (e.g., in ‘the tangible apparatus art’ — to be truthful I haven’t seen this one yet, but I fear it’s only a matter of time; I would expect there are analogous rejections already out there for ‘the software art’).”

    Here, Judge Moore essentially refers to the “animal zapping art” — creating a sufficiently broad definition of art to suit her purposes. With KSR, all you need is to fudge with the definition of the relevant art.

  6. 24

    “Would a person of ordinary skill in the mousetrap art look to the ‘cattle art’?”

    All of this falls under the ‘mammalian art.’ I think there’s even a TC for this.

  7. 23

    What happened to notion that if one builds a better mousetrap, the world will beat a path to your door?

    And what happened to the notion that non-analogous art may not be used to form a proper obviousness rejection? Would a person of ordinary skill in the mousetrap art look to the “cattle art”?

  8. 22

    David Boundy,

    Excellent points about KSR. Every time I re-read it (and I do so from time to time), I see it differently.

    May I add to your excellent points that nowhere in KSR does the Supreme Court issue a per se rule that something “is” obvious. Rather they say it is more “likely” to be obvious or “can be” obvious. Thus they give a prima facie, slight 51% advantage in terms of burden of proof to the proponent for obviousness. However, it is not an iron clad win. The proponent for nonobviousness can in many cases tilt the balance the other way by bringing forth “evidence” (i.e. expert testimony) showing why it was not obvious. Or at minimum the patent defender can show that the obviusness case has no “rational underpinnings”.

    (Query: What has KSR done to the clear and convincing standard for validity of issued patents?)

    In this particular case (AgriZap), the patentee did present expert testimony at the district court level. If Judge Moore were truly doing a de novo review of the case, it appears to have been incumbent on her –and the two other panel members– to address all the evidence of record. See 5 USC 706. And to address the claim language in whole. See 35 USC 103. None of that seems to have been done here.

    That’s what bothers me about this Agrizap case. The CAFC panel zapped the patent without giving it due process of law. It would be nice to see an en banc review of the appeals process.

  9. 21

    David B (and Malcolm M) —

    It is true that KSR wasn’t intended to change the law, but only to drop back to Graham without fully sanctioning the TSM test (unless of course a patent can be found obvious using TSM, then TSM’s okay in the eyes of the S.Ct.)

    The more troublesome case is really Pfizer v. Apotex, in which there was substantial evidence of unexpected results. There were also three district court decisions in Pfizer’s favor, in addition to the examiner’s. The three-judge CAFC panel felt it knew better, however. (Of course, they were already feeling the heat based on oral arguments in KSR.) What many don’t know is that seemingly inocuous decision from the CAFC created chaos in the pharma world because they invalidated the patent only three days before its natural expiration.

    I can give you a dozen reasons why Pfizer v. Apotex was wrongly decided, but my opinion doesn’t count. What counts is how quickly the CAFC can reverse course. Hopefully the Ortho decision is a step in the right direction.

    Judge Moore is dangerous, by the way.

  10. 20


    Another reason Agrizap may have chosen to file a terminal disclaimer is because they just wanted a patent and did not want to go through another round of prosecution with the attendent costs and wasted time.

  11. 19

    “It seems to me that Ortho-McNeil may the beginning of the pendulum’s back swing against KSR, against the obvious-to-try, and obvious-to-substitute camp. Or am I being too hopeful?”

    Yes you are being too hopeful. As MaxDrei noted upthread, the difference between Ortho and AgriZap is in the unexpected results obtained in Ortho.

    If AgriZap really believed that their Rt Zapper invention was non-obvious over the prior art Gopher Zapper, they likely would have tried arguing the point during prosecution (consider: this was in the strict TSM era, and they still couldn’t come up with anything!). Instead, as Dennis noted, they chose to file a terminal disclaimer and amend inventorship. But they somehow neglected to address the 102(b) prior sale during the course of their communications with the PTO. Perhaps they weren’t terribly concerned about the solidity of their patent. Or perhaps they still didn’t know that the Gopher Zapper was 102(b) art that could be used against them. Perhaps.

  12. 18

    I was just looking at KSR again over the weekend, and I was struck by the pains the Supreme Court took to *not* change the law. They left absolutely intact the notion that (a) every element must be known in the art that is applied, (b) that art must be “analogous art,” (c) there must be a non-hindsight “reason” (rather than the old “gobbledygook” word “teaching, suggestion or motivation”) to combine that precise art, and (d) there must be some reasonable expectation of success in the combination. They described several alternative ways of meeting this four-part test, but KSR took some pains to leave the four elements in place.

    The only thing that the Supreme Court intended to change was the evidentiary standard for applying that four-part test, from “wooden” reliance on hard objective evidence. KSR adds sworn and cross-examinable expert testimony supported by hard evidence to the body of evidence available for obviousness expert testimony. Notably, KSR does *not* overrule Zurko, and does not add evidence-free, non-Universal-Camera examiner argument, and does not disturb the long standing principle of administrative law that “it is impossible to conceive of a ‘nonarbitrary’ factual judgment supported only by evidence that is not substantial in the [Administrative Procedure Act] sense.” Association of Data Processing Service Organizations v Federal Reserve, 745 F.2d 677, 684 (D.C. Cir. 1984) (Scalia, J.)

    On first read, Agrizap v Woodstream errs fundamentally by (a) mixing up “reasonable expectation of success” with “reason to combine,” (b) ignoring non-analogous art issues, and (c) substituting Kimberly Moore’s hindsight for substantial evidence.

    Maybe the patentee’s briefs were awful.

  13. 17

    I’m surprised that no one has mentioned here the famous old [and erronious] saying: “Build a better mousetrap and the world will beat a path to your door.”
    The decision here seems inevitable after the Supreme Court’s KSR decison. But I could not resist suggesting changing that old saying to: “”Build a better mousetrap and the world will beat a path to the CAFC.”

  14. 16


    Thanks for pointing out the contrasting case of Ortho-McNeil. Looks like we have disagreement amongst CAFC panels.

    Is it a good thing that so many CAFC judges are up for senior status? (Not Judge Moore).

    It seems to me that Ortho-McNeil may the beginning of the pendulum’s back swing against KSR, against the obvious-to-try, and obvious-to-substitute camp. Or am I being too hopeful?

  15. 15

    The claim found infringed was claim 16 of US 5,949,636.

    If the only difference with the art was the resistive switch instead of the mechanical switch, I probably agree with you. But you also have the whole timer thing with the arm/disarm function and dependent claims 20-24.

    Again, without a careful analysis of the art, I would not jump to conclusions.

  16. 14

    So much for the better “rat trap.” May be Justice Breyer would like to offer up his “raccoon invention” for review by Judge Moore for obviousness under 35 USC 103.

  17. 13

    Sorry Erez, in trying to be compact, I am maybe not clear enough. If you do obviousness, EPO-stryle, you split the subject claim into pre-characterizing and characterizing parts. Here, the prior art starting point is Agrizap’s device on the market which has, we are told, all the features of the subject claim (in all its length and glory) except the resistive switch. EPO-style is to examine the effects of modifying the prior art starting point, by the addition to it of the characterizing feature. You get what you would expect, from the well-known switch component.

  18. 12

    I accept what you are saying, without entirely agreeing.

    I agree that the claim (as you wrote) is probably too broad (it reads on 220V wall outlet with a sign “put fingers here”) and that technical features should probably have be added as you suggest. To comment further I would examine the arguments Agrizap made during prosecution of the patent and study the art of underground rodent electrocution.

    That said, I still think the underhanded copying when a cheaper alternative of independent development was available is indicative of something. Perhaps the copying was of exactly the technical features that are missing from the claim.

  19. 11

    Not convinced Erez. Just because Victor-maker Woodstream didn’t know how to make a zapper with a resistive switch doesn’t mean that a claim to: “A pest zapper with an actuation switch characterized in that the switch is a resistive switch” is valid. If there were problems to be solved, in getting a resistive zapper to perform properly, a valid claim is achievable, provided it corresponds to the solution of that problem. But, by the date of the claim, the mere proposal to use, underground where its damp and dirty, a resistive switch, was an obvious proposal. What if the Wright Brothers had claimed: A heavier than air flying machine? Too wide, no? Obvious, no?

  20. 10

    Yes, sending something to China indicates non-obviousness.

    The Chinese have excellent engineers and designers. You could send an email explaining what mousetrap you wanted (“I need to electrocute mice but the mechanical switch gets dirty. please solve”) and within a week you would get a working prototype. If the product looked like “RatZapper” we have obviousness.

    However, if you have to ask an innovator to borrow a prototype and then go as far as violating a signed agreement to send it to the Chinese , there is a problem. The killer quote is on page 3, last line of the penultimate paragraph in the CAFC decision.

  21. 9

    ….and now I’ve read Ortho. There the evidence was of surprising and unexpected results obtained exclusively with the subject matter of the claim. Nothing so unexpected in Agrizap. The resistive switch contributed no more, and no less, than what it was well-known to be able to contribute. Far from rocket science, this obviousness thing.

    Sending a sample to China, to get it made on the cheap, proves that something’s non-obvious? You serious?

  22. 8

    Yawn, Yawn;

    Better mouse trap, hey that’s my Job.
    Oh mercy, yes. You gotta beat that competition.

  23. 7


    “to draw the little animal (the rights holder) into a trap” or as the Judges call them “hapless pests”.

    I think your last sentence is spot-on.

    When Agrizap prepared and prosecuted the application starting in 1997, they acted properly considering the legal landscape at the time. They could not know that ten years later someone would do a “bait and switch”, rendering the patent worthless.

    For an inventor or scientist working under pressure, simultaneously running a number of projects, lacking sufficient funding and lacking enough faithful PHOSITA lackeys it is impossible to effectively analyze all the relevant art. Rather, (lacking evidence to the contrary) any specific choice is made arbitrarily and when it works is almost miraculous.

    The big revolution in US patent scene seems to come from a combination of the low claim-killing threshold of “obvious to try” from Pfizer v Apotex together with KSR’s “known component used for known function” without needing any motivation.

    Using these two tests together, anything is obvious 10 years down the line to someone who has never been an inventor or a scientist and knows how difficult it is to invent.

    In the case at hand, I think the fact that Woodstream found it necessary to steal Agrizap’s product (sending a sample to China in order to make copies) should have been considered sufficient evidence for non-obviousness of the claims.

    Just to wave the Stars and Stripes a bit before JAOI(TM) wakes up, justice was better served by the People’s decision (in the jury) than by the CAFC.

  24. 6

    Now I’ve found what Judge Moore relied on. Prior Nye, in the field of gopher terminators, cites “corrosion” as a problem. What I am still missing is any message in Nye that “If corrosion’s your problem, well then a resistive switch is your answer” Hindsighty but nevertheless KSR-fit, perhaps?

    Erez, isn’t it standard practice (at least for big corporations) to use a licence as bait, to draw the little animal (the rights holder) into a trap, then take the invention anyway?

    And what about pendulum swings. Maybe Woodie recently came round to the view that the claim, duly issued by the Government USPTO, suddenly isn’t unassailable, after all.

  25. 5

    I haven’t read the decision so it is dangerous to comment, but Dennis’ first sentence makes me feel uncomfortable with this decision.

    If the invention was so obvious, why did Woodstream bother licensing it from Agrizap in the first place?

    There is something wrong when someone pays money to license a combination of elements that have existed for decades and one day (after having established a market and acquiring various trade secrets) miraculously realizes how obvious the combination was. There is a bad smell of hindsight here.

    n.b., if today was April Fool’s day, I’d suspect this posting was a play on Ralph Waldo Emerson’s adage about a better mousetrap.

  26. 4

    I’d just like to say how refreshing it is to see Dennis getting out of agendas, politics, and controversy and getting back to the basics that made Patently-O a favorite. Interesting case analysis.

  27. 3

    Let me see if I can summarize Moore’s position: it’s obvious to her in her subjective judgment to replace something in a rat trap with a part from a cattle prod (who can argue with that – I always think of cattle prods when I’m trying to design a better mousetrap), so she can ignore objective evidence of non-obviousness to the contrary. Guess I need to go back and read Graham…

    Oh how I wish I had written my senators to oppose her nomination…

    At least I can take some solace from the decision in Ortho-McNeil that the CAFC will still sometimes recognize a non-obvious invention as non-obvious.

  28. 2

    “Well-reasoned” writes Malcolm. Obvious to modify D1 by replacing its mechanical switch with a resistive switch, because the resistive copes better with dirt and damp, and Nye and Madsen gave prior published messages that, if dirt and damp is your problem, a resistive switch is your answer.

    Only problem for me, in Europe, is that I found no such hint in Nye, while Madsen is in a different technical field. I’m not saying the claim in Europe is non-obvious, just that an issued claim is entitled to live, till the reasoning for its execution is powerful enough to kill it.

    But I’ll have to read the decision again. I missed “well-known” in the cattle prod art.

  29. 1

    “Perhaps a strategic misstep by Agrizap?”

    Not if the strategy was to get the patent. It’s possible that Woodstream has been mortally injured by all this litigation and AgriZap may have already made plenty of money off their patent. This litigation may have been gravy for AgriZap.

    All in all, seems like a well-reasoned decision. Ortho-McNeil strikes me as the more interesting of the two cases in some respects, as it provides yet another possible roadmap for proving non-obviousness in the post-KSR universe.

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