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.