Tokai Corp. v. Easton Enterprises (Fed. Cir. 2011)
Tokai’s patents relate to a safety switch the type of long-nozzle lighters that are often used to light barbecues and patron saint candles. Easton has allegedly sold more than 9-million infringing lighters in the US. The district court construed the claims broadly – leading Easton to admit infringement but successfully challenge the claims as obvious. The district court’s obviousness finding came on summary judgment after the court excluded Tokai’s expert testimony (since the plaintiff had not submitted written reports during discovery) – finding no “genuine issue of material fact as to the obviousness of the asserted claims.”
On appeal, the Federal Circuit affirmed – holding that the district court had properly excluded the expert testimony and that the obviousness determination was correct.
Lets focus on obviousness:
Conventional wisdom over the past twenty years has been that summary judgment is useful for resolving issues of infringement and novelty, but that obviousness challenges are rarely resolved on summary judgment. Although ultimately a question of law, judges often leave the obviousness question for a jury. That conventional wisdom may have changed in 2007 when the Supreme Court decided KSR v. Teleflex, 550 U.S. 398 (2007). In that case, the Supreme Court wrote what looked like a summary judgment decision finding the asserted patent invalid as obvious.
The question of obviousness is defined in 35 U.S.C. § 103(a). The statute considers the differences between the patented invention and the prior art and whether, in light of those differences, a person having ordinary skill in the art would have found the invention obvious at the time of the invention.
Clear and Convincing + Added Burden: A question raised on appeal relates directly to the Supreme Court’s upcoming decision in Microsoft v. i4i. Here, some, but not all, of the four prior art references had been considered by the USPTO during prosecution. The patentee argued that the court should have provided more deference to the PTO. On the other side, the defendant argued that much less deference should be given to PTO decisions because the PTO had not considered “key” elements of the obviousness argument. On appeal, the Federal Circuit affirmed that the current law-of-the-land requires clear and convincing evidence to invalidate a patent and that an “added burden” is not required when the obviousness question is based on at least some evidence not considered by the PTO.
Conclusion of Obviousness: In arriving at its conclusion that Tokai’s asserted claims were obvious, the appellate panel looked at the fact that the components of the claim are “simple mechanical parts that are well known in the art;” that “a need for safety utility lighters was recognized in the art;” that similar safety switches were already available for cigarette lighters (an admitted analogous art); and that the art is “predictable.” As in KSR, the appellate court here held that the “identified, predictable solution” to the “known problems” were within the grasp of a skilled artisan.
It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters, as disclosed in Floriot and/or Morris, to fit a utility lighter as disclosed by Shike, even if it required some variation in the selection or arrangement of particular components.
In dissent, Judge Newman lauded the importance of the invention and explained her view that the patents were valid.
The Tokai lighter has an ingenious safety design, whereby the device is simple to operate by adults but not by children, unlike prior art utility lighters, and locks automatically after use, unlike prior art utility lighters. The Tokai safety structure does not result from direct combination of the prior art. Nonetheless the district court, and now this court, hold on summary judgment that the asserted claims of the Tokai patents are invalid for obviousness. I must, respectfully, dissent.
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The determination of obviousness is not whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles. The question is whether it would have been obvious, without knowledge of the patentee’s achievement, to produce the same thing that the patentee produced. This judgment must be made without the benefit of hindsight. It is improper to take concepts from other devices and change them in light of the now- known template of the patented device, without some direction in the prior art that would render it obvious to do so.
In a crowded and competitive field such as this is stated to be, a modification that achieves a valuable improvement is of significance in view of the many entrants seeking commercial advantage. As the Hummer court recognized, incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.