Federal Circuit: Even the Best Secondary Indicia Cannot Overcome this Prima Facie case of Obviousness

In a split opinion, the Federal Circuit has affirmed summary judgment of obviousness in Intercontinenntal Great Brands (Kraft) v. Kellogg (Fed. Cir. 2017). Writing in dissent, Judge Reyna argued that the majority improperly applied a shortcut “prima facie obviousness test” without allowing for a full consideration of the patentee’s objective indicia of non-obviousness that the district court found both substantial and compelling.

The majority opinion, authored by Judge Taranto and joined by Chief Judge Prost begins with a discussion of the resealable cookie package covered by Kraft’s U.S. Patent No. 6,918,532.  Essentially, we have a wet-wipes package for cookies.

US06918532-20050719-D00001

One difference from wet-wipes is that the cookies need a frame to avoid crushing.  The defendants here relied upon a prior art reference showing a rigid re-sealable sushi container (image below).  The container has a tray, and the claimed frame is essentially a tray with higher sides.  When combined with known cookie packaging frames — the district court found that “the only reasonable inference on the record was that a relevant skilled artisan would have been motivated to combine those prior-art references.”

PriorArtCookieBox

In particular, the court noted that the difficulty with opening and closing cookies was well known, and the tray in the Machine Update prior art could simply be replaced with a more complete frame (i.e., a tray with higher sides) to protect the cookies.

In reviewing the lower court decision, the majority wrote:

[T]he court considered the simple and clear teachings of the art, the importance of common sense and ordinary creativity, and the conclusory character of Kraft’s expert’s assertions of nonobviousness.

Despite my love of cookies, I have to admit that I have never purchased one of these re-sealable containers as my preference is to complete a package within a single sitting.  However, the product packaging has apparently met with some amount of commercial success.

Regarding objective indicia of non-obviousness, the district court found it to be highly “substantial” and “compelling” with great commercial success tied to the packaging, industry praise, and copying by the defendant here.  On balance, however, the district court found (on summary judgment) the evidence was insufficient to raise a jury question.

Quite simply, according to the district court, there are some prima facie obviousness cases so strong that they are impossible to overcome even with the best possible secondary indicia of nonobviousness.   On appeal, the majority affirmed this reasoning with a quote from the Supreme Court’s KSR analysis:

Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.

KSR v. Teleflex (2007) (note that KSR elsewhere notes the weak objective indicia in that particular dispute).

To be fair, the majority is clear that the ultimate conclusion of obviousness still requires consideration of the objective indicia (even if they could not make a difference).  However, the majority finds that conclusions regarding the evidence – such as a motivation to combine references — may be drawn without consideration of the objective indicia.

Judge Reyna’s dissent goes the other way:

I would find that the district court improperly found a prima facie case of obviousness before considering Kraft’s evidence of objective indicia of nonobviousness. . . . I am left to wonder how “substantial” and “compelling” evidence of objective indicia cannot overcome a prima facie showing. If such significant evidence does not make a difference in this case, it is hard to imagine a situation in which it would.

For many, the problem with Reyna’s dissent is quite simply that it will make summary judgment more difficult — and the conventional wisdom is that winning an obviousness case is extremely difficult before a jury.

The majority-dissent also battle over the ‘correct’ order of consideration of the questions of operation. I’ll save that issue for a separate post.

 

105 thoughts on “Federal Circuit: Even the Best Secondary Indicia Cannot Overcome this Prima Facie case of Obviousness

  1. At #13 it is written:

    “Now, goon Taranto is going to tell us what is obvious and not based on his private little thoughts. Apparently he just knows ’cause he is a judge. What a goon.”

    That set me thinking, private little thoughts, about the thought process “Obvious Y/N?”. What else can it ever be, but that collection of “private little thoughts” that the court suffers, before announcing the answer to the question?

    So, inevitably (and in the words at # 13):

    “..he just knows ’cause he is a judge”

    So, if he’s a “goon” then so too is every other judge. That can’t be right, can it?

    1. That can’t be right, can it?

      No. It cannot be right – but the problem is not within the statements of Night Writer**; instead they are with your attempted reformulations.

      **assuming merely for arguments sake that the statements are taken as true as written.

  2. Re part of the confusion about not-that-unusual Fed. Cir. decisions like this [reversing D.C. “invalidity not proven”decisions]. In KSR, the Supreme Court explained that the ultimate judgment of obviousness is a legal [not fact] determination. KSR and later Federal Circuit cases established that the legal determination of obviousness may include reliance on logic, judgment, and common sense in lieu of expert testimony, especially where the technology at issue was easily understandable. Fed. Cir. cases like Sundance Inc. v. DeMonte Fabricating, Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008) note that where the factual inquiries underlying the determination of obviousness are not in dispute, obviousness may be determined as a matter of law. That was assertedly the case here – what the prior art was, what technology it was in, and what it did were not in dispute.
    P.S. When the Fed. Cir. has denied S.J. in cases like this the case is then highly likely go through a very expensive trial and then another appeal to another Fed. Cir. panel, where on these same facts it would very likely get the same ultimate decision on obviousness.
    [An IPR to avoid those wasted millions of dollars and judicial time and effort may not have been possible here if the best prior art here was actual product packaging rather than patents or publications disclosing it?]

    1. Paul, can you explain just how it is possible to give a jury the factual questions concerning obviousness when experts are testifying on the ultimate issue themselves, and not have the legal issue bound up with fact in the verdict?

      Juries are always given mixed issues of law and fact in order to determine verdicts. I never understood exactly what the Supreme Court meant by the phrase, did or do you?

  3. So, Taranto is the one that told us that simulating any human thought process is per se obvious. That is perhaps the most ignorant and counter to reality statement ever made by a judge at the CAFC. Consider that scientist in Europe have said that they don’t think that money should even be spent right now on trying to simulate the human thought process because the results were so terrible and we know so little about the subject. But, Taranto the ignorant knows better than science–the Sun revolves around the Earth to this goon.

    Now, goon Taranto is going to tell us what is obvious and not based on his private little thoughts. Apparently he just knows ’cause he is a judge. What a goon.

    1. simulating any human thought process is per se obvious.

      That’s true. Computers exist to carry out logical operations on information in lieu of humans carrying out those operations with their brains. That’s why built computers. Fun fact.

      scientist in Europe have said that they don’t think that money should even be spent right now on trying to simulate the human thought process

      “The human thought process”? LOL

      “Expensive” doesn’t make obvious technology non-obvious. It makes it expensive. You can’t make money selling beer cozies made out of space shuttle insulation. Tht doesn’t make the concept non-obvious.

      1. MM, there is no meaning to anything you wrote.

        “Computers exist to carry out logical operations on information in lieu of humans carrying out those operation with their brains.” And how does that relate to whether building one of these machines is obvious or not?

        MM: “‘Expensive’ doesn’t make obvious technology non-obvious.” And what has this to do with what I said? The European scientist said that it is not worth spending money on because we don’t know enough to get anywhere.

        A machine that performs what a human brain can. It takes space, time, and energy. It has structure. The conservation of information is the most important law of physics. Yet, somehow, the propagandists say, gee that machine isn’t patentable because it is a witch.

        Just a bizarre time we live in where technology has reached levels that are transforming human existence and yet judges and the public do not understand the basics.

        1. The European scientist said that it is not worth spending money on because we don’t know enough to get anywhere.

          Anywhere? We passed “anywhere” a long, long, long time ago.

          Are you on d r u g s or what?

        2. A machine that performs what a human brain can. It takes space, time, and energy. It has structure.

          Describe the structure in your claim and nobody will have any problem.

          It’s what the grown ups do.

          1. ..and yet again with the fallacy of trying to make an optional claim format somehow NOT be an option….

      2. To the Night Wrighter comment about Taranto: “simulating any human thought process is per se obvious.

        Malcolm, being Malcolm and being plainly incorrect quips: “That’s true.

        The zombie rise of the Mental Steps Doctrine needs a bullet to the head.

        Time for the classic reminder:

        link to xkcd.com

        1. …and this salvaged from the “don’t have dialogue” filter…:

          September 8, 2017 at 10:49 am

          Fun fact: computers are NOT humans and instead of any zombie of mental steps doctrine being attempted, the clear words of Congress as to eligibility (the two prongs of category and utility) REMOVE much of the attempted dust-kicking and feelings/philosophy driven attempts to deny innovation most accessible to the non-wealthy.

  4. @ Paul Morgan, 9

    If obviousness is a question of FACT primarily, how can LAW over-ride FACT?

    The winning line in a national lottery differs from the next line by only a single numeral. On any view that is an insignificant difference. therefore the winning line in the lottery is obvious.

    1. I do not think the point hinted at by Paul Morgan at 9 has to do with any “law/fact” issue.

      Instead I think that it reflects the same issue that I hinted at below at 2.1.1.2. “Prima facie” reflects a procedural examination state and not an end adjudicated state.

      Technically, if a prima facie case is presented and not successfuly rebutted, there no longer exists a prima facie case; instead, a final and fully developed case is now present and the term “prima facie” is not appropriate.

      1. Those are good “Prima facie”explanations in paragraphs 2 and 3 of comment 12.1.
        But as to paragraph 1 on law/fact see comment 14.

        1. Thanks Paul – your post at 14 is a good contribution on the law/fact angle.

          “Law” has its review criteria.
          “Facts” has its review criteria.

          “Law” that Necessarily rests on “Facts” really does have a nested review criteria, and the those doing the review would be well advised to NOT take shortcuts and to step through each of the nested criteria separately and clearly.

      2. But how does prima facie work in a patent context? Exceeding the posted speed is a prima facie case of driving an unsafe speed. That the improvement was trivial (a matter of opinion) cannot be the trigger that flips the burden to the rights holder. Some of the best inventions are trivial in hindsight.

        The Fed Circuit should take this en banc and clarify that obviousness test must include objective indicia from the beginning, not as an attempt to rescue an already condemned claim.

        1. But how does prima facie work in a patent context?

          First, don’t try to confuse yourself with an analogy that may not be apt.
          Second, how the prima facie concept works in the patent context has already been stated on this thread (see post 12.1).

          Is there something specific about 12.1 that you are not understanding?

    2. Paul, see Number 14,
      Paul

  5. On this one I support Judge Reyna wholeheartedly.

    Anyone doubtful of the importance of secondary evidence should read very carefully the en banc decision in Apple v Samsung last year.

    How can you possibly compare the spontaneous applause of the invited audience on the slide-to-unlock feature of an iPhone with the dry-as-dust so-called expert opinion based on other relatively remote devices?

    E = mc2 is a simple quadratic equation, isn’t it? Quadratic equations are taught to children about the age of 10 (or at least that is when I encountered them). Therefore Einstein’s mass-energy equation was childishly simple and was not a significant finding at all, was it? The Examiner/Judge is always right.

    1. I agree completely. The problems we are having are two fold. One we have propagandist that generally just want to burn the system down and will support any position that weakens patents. And, two we have all these people that have no training in science or technology and have never seen or consider hindsight reasoning in depth.

      I was a product manager for real consumer products that sold 10’s of millions of copies. And copying is a big deal. (You know each thing you do to a product costs money and those things are not done lightly. And, often you can only do so much per product cycle so you chose your changes carefully.) Also, anyone that has ever actually worked in a real area of innovation knows that things that seem so obvious once they are done and working just were not obvious before they were done. It is actually so powerful that most people just cannot believe it. Anyone that has actually worked in this area spends hours in disbelief. We say over and over again, how come I didn’t think of that.

      Reality. Try it.

    2. Paul, given the Iphone, is it even “new” to apply the slide to unlock feature to a phone with an Android OS?

      1. Ned,

        What “context” of “new” are you wanting to discuss?

        The 103 context?
        The 102 context?

        Or perhaps the ever mysterious (read as undefined) 101 context? (because, you know, the word “new” is present in 101, and some have insisted that the mere presence there has legal force – and legal force different than 102 or 103).

        1. Well, anon, the android phone is different in a million different ways than an iPhone, but are any these differences even relevant to the inquiry regarding newness?

          Samsung can show large increases in sales by using slide to unlock. Does this prove that it was not obvious to use the slide to unlock feature on its Android phones?

          1. Ned, why do you do these things?

            The relevant inquiry is the differences between the Android phone and iPhone as it relates to the slide to unlock. I think we can probably say that the differences as they relate to slide to unlock are
            de minimis.

            Why do you try to pull nonsense all the time when it relates to information processing?

            1. Night, Samsung v. Apple is a well known case, and it is well known that Samsung deliberately copied the iPhone feature and that its sales were much better for it.

              The point here is that it that whether the Samsung phone is running Apple’s OS or the Android OS is completely irrelevant to the inquiry regarding 102/103. It is immaterial, as you say. Makes no difference at all.

              We have the same case here, do we not, with the cookies and the seal. The prior cookie packaging was modified with the known seal and sales took off. Obviously the seal was the reason. But the seal for packaging in general was known, just as the slide to unlock feature of a phone was known making it irrelevant what kind of phone it was.

              1. I agree with the slide to unlock that it makes no difference whether it is an iPhone or Android phone.

                Here, there are some structural differences and content holding requirements that are potentially material. The Android phone was merely copying. There were no material differences related to slide to unlock.

                Here, there are different categories of containers so it is possible that this is material. Again, my main point is that an appellant judge should not be deciding this issue.

          2. even relevant to the inquiry regarding newness?

            How about you answer my question so that we both can understand the context that you are trying to use, Ned…

        2. Yes and also what is “new” is determined what is being CLAIMED. If nothing in the claim draws any unobvious differences from prior art, other differences are irrelevant.

          1. Paul,

            1. Apparatus, comprising:

            a touch screen phone; and

            a slide to unlock mechanism operable with respect to a user swipe of the touch screen phone.

            Reads on the iPhone.

            So, we add,

            “wherein the touch screen phone has an Android OS.”

            This clearly is a distinction without a difference as the type of OS has nothing to do with the slide to unlock mechanism. I could have said, “wherein the phone casing is blue.”

            Now by statute and case law we must address these claims under 103. But if we interpret 102/103 to require a shift to a obviousness inquiry of only if the differences are material in some meaningful way, only if the differences provide some new or improved functionality, then we can hold that the claim is obvious as a matter of law and/or not new.

            Anderson’s Black Rock actually concluded that the claim was not “new” because the radiant heater’s functionality was not changed at all by placing a number of things together on one truck. This lack of functional change perhaps means that we can reject these claims under 102.

            That is the real reason why commercial success in irrelevant, in the words of 7 of 9, when the claims are all but anticipated because no new or improved functionality is added.

            1. I had (in the past) often commented on the state of a claim wherein the claim was a mere aggregation.

              Then, the examiner poster “Random” of all people pointed out a section of the MPEP that stated that examiners were NOT to make rejections based solely on a factor of mere aggregation.

              I don’t have that dialogue bookmarked – maybe Random remembers that dialogue and can repost the MPEP section….

              1. I was told some time ago that those MPEP sections re [the former] rejections of claims as mere “aggregations” are “MPEP 2173.05(k) which provides a pointer to MPEP 2172.01, and there you’ll find a pointer to 35 USC 112, second paragraph, and some cases (primarily PTO cases) that have interpreted it.”

                1. Excellent – thanks Paul.

                  That section:

                  2173.05(K) AGGREGATION [R-08.2012]

                  A claim should not be rejected on the ground of “aggregation.” In re Gustafson, 331 F.2d 905, 141 USPQ 585 (CCPA 1964) (an applicant is entitled to know whether the claims are being rejected under 35 U.S.C. 101, 102, 103, or 112 ); In re Collier, 397 F.2d 1003, 1006, 158 USPQ 266, 268 (CCPA 1968) (“[A] rejection for ‘aggregation’ is non-statutory.”).

                  If a claim omits essential matter or fails to interrelate essential elements of the invention as defined by applicant(s) in the specification, see MPEP § 2172.01.

    3. You’re right. You shouldn’t compare applause of fanboys to the plain fact that slide to unlock was known in the touch screen arts. SCOTUS issued a CVSG, so Samsung v Apple has a decent chance of being KSR round 2.

      1. KSR or anticipated?

        (Do you recognize the difference as pertaining to the word “new”…?)

        1. How is anticipation relevant to Samsung v Apple?

          1. comment caught in the “don’t have a dialogue” filter…

          2. Perhaps salvaged…

            Your comment is awaiting moderation.
            September 8, 2017 at 10:52 am
            The question – while perhaps evoking an easy answer in the particular case – was asked to drive home a larger point regarding “new.”

    4. the spontaneous applause of the invited audience

      LOLOLOLOLOLOLOL

  6. Simple question: how much time elapsed between the sushi reference and the priority date of the subject claim?

    1. Not long. Couple years.

      Another simple question: who eats sushi with a fork?

    2. The ‘sushi’ references are from 2001 and 2002. The patent’s filing date is in August 2003.

  7. ? At the Fed. Cir. level isn’t it far more appropriate to be using the term “obvious as a matter of law” in this situation* rather than “prima facie obvious” which has a normal usage, and different meaning, in application examination.

    *See also Soverain Softwarwe v. Newegg (Fed. Cir. 2013).

    1. Great question. How did this prima facie method wind up in post grant validity challenges, and how is it reconciled with presumption of validity? At some point in the proceeding, the burden flips to the patent owner? At that point is he still a patent owner, or he is back to applicant status?

      Reyna’s approach seems much more correct.

      1. and how is it reconciled with presumption of validity

        Great question.

        Well, no, actually, it is a rather lousy question. Have you not been paying attention to one of the critical points that i have been sharing for, oh, since the AIA was passed?

        That stick in the bundle of property rights of a granted patent is taken at the separate legal point of the initiation decision point.

        Taken, with zero remuneration and – per Congress – with NO Article III review. Taken by a political administrative agency who has broadly admitted that they can – and do – stack the deck to get the policy “judgment” in the ensuing circus-er-um IPR “trial.”

        But belief it or not, some not only fail to see the Constitutional infirmity in this, certain sAme ones actiavley celebrate the process.

        And those celebrating like to pretend that they are “friends” of the patent system…

        Rah rah rah (where did that sar casm emoticon go…?)

        1. Serious question: has anyone fleshed-out this line of reasoning in an article? Is there any caselaw authority on the government taking implications of stripping sticks from a bundle? I’m genuinely curious.

          And to avoid the obligatory ad hominem, no, MM, I’m not cheer-leading anon here; I just want to know more about this line of reasoning.

          1. Look to takings law – plenty of “sticks in the bundle of property rights” fleshed out reasoning there.

            This is not a new concept, PYT.

          2. PYT, the problem is that not everything remotely associated with a “right” is a “stick” that creates a Constitutional takings issue. This has been discussed ad nauseum.

            1. Understood. My question is what level of abrogation of rights attendant to a recognized property interest constitute a “taking” under the law? More specifically, is anything adjudicated in the past analogous to anon’s theory that the loss of the presumption of validity at institution constitutes a taking?

              1. is anything adjudicated in the past analogous to anon’s theory that the loss of the presumption of validity at institution constitutes a taking?

                I can answer that on “anon’s” behalf: “Asked and answered.” Or maybe “Everything that was ever adjudicated.”

                Super satisfying stuff.

                1. I would – and have – answered on my own accord – except the “don’t have dialogues” filter has already been tripped, and the “narrative” here thus remains stilted and artificial.

                  Can you say “La Vee”…?

  8. For many, the problem with Reyna’s dissent is quite simply that it will make summary judgment more difficult — and the conventional wisdom is that winning an obviousness case is extremely difficult before a jury.

    This is nothing more than an “Ends justify the Means” plea.

    Whether or not it makes invalidating patents “more difficult” should NOT be a factor in the calculus of legal logic here.

    Opining a such creates the apparence that a bias towards ease of stripping patent rights is somehow a “good thing,” which is very much in the Efficient Infringer’s camp.

    1. Whether it makes invalidating patents easier should NOT be a factor in the calculus of legal logic here.

      The “calculus of legal logic”? What?

      The fact is that pretty much every precedential decision regarding how to apply 103 will either it make it easier to invalidate the patent or more difficult to invalidate the patent. And it’s also a fact that judges can, will and should consider the impact of their decisions on everybody, including (but not limited to) applicants, patentees and defendants. Ideally they spell out their understanding of the impact so we know that they are thinking about these important matters.

      And guess what: many times people are going to express dismay with the decision primarily because of its impact on future litigants, regardless of whether they disagree with the reasoning of the decision (but also especially if they also disagree with the reasoning). It seems to me that Dennis was just recognizing this reality. It has nothing to do with being in one “camp” or the other.

      And lastly: this silly term “efficient infringement” is just a dog whistle for your silly tribe. You guys hop and down like m0nk eys screeching about freedom and free markets but gosh forbid a corporation actually takes advantage of its freedom, does some math on the risks and costs, and then acts accordingly. Corporations and individuals make these sorts of determinations in literally every context imaginable (including patent acquisition) a zillion times a day and yet somehow if it’s made in the context of assessing the costs of patent infringement liability you start clutching your pearls and ranting about non-existant camps. Get a grip, please. And work on the script.

      1. You continue to show a complete lack of understanding of Ends and Means.

      2. “Corporations and individuals make these sorts of determinations in literally every context imaginable (including patent acquisition) a zillion times a day …”

        Yes, for instance deciding whether and by how far to exceed the speed limit on the freeway. If there is strong enforcement and high penalties, traffic slows down and more people obey the law. If the court decides 99% of the time that the speed limit should never have been posted to begin with, then it might be more efficient to simply ignore it.

  9. Although strongly tempted to just say “that’s the way the cookies crumble,” this case is somewhat significant in that the Fed. Cir. rather rarely supports inexpensive D.C. suit terminations by summary judgments of obviousness [103], notwithstanding the reversal of the Fed.Cir. on one in KSR.
    Since the applied art was all in the food packaging art this was not a non-analogous art situation.
    An IC accusation re the ex parte reexamination was also rejected here.

  10. Certain jurists and critics will always believe an invention is obvious under KSR. It is a mindset that takes for granted every new thing. They will not consider objective evidence! Instead they pronounce their subjective belief. The only thing that saves any patent from these types is when the challenger attorneys fail to simplify the presentation of the subject matter. If the skeptics cannot understand it they may bless it as inventive. If they understand it, well it must be obvious. Thus is certainly the type of dispute that only a jury is qualified to decide.

    1. As a consumer, these seem like a spiffy invention. But I struggle to a packaging engineer seeing this system as non-obvious.

      1. Correction: I struggle to a packaging engineer seeing this system as non-obvious, given the art Dennis discusses.

        1. As a packaging engineer, how long has this problem persisted before it was addressed?

      2. THERE IS A BETTER WAY TO BUILD THAT COOKIE PACKAGE. HOW CAN THEY CALL THEMSELVES ENGINEERS. SHAME, SHAME!

  11. “I have to admit that I have never purchased one of these re-sealable containers as my preference is to complete a package within a single sitting.”

    Regarding these:

    link to 2.bp.blogspot.com

    Louie Anderson said something along the lines of : Have you heard of these new cookies, “Almost Home?” Rolled his eyes as if about to swoon… “They should call them, Almost out of the Store”

  12. “Copying” never made sense as evidence of non-obviousness. All that “copying” shows is that the subject of the claim works for its intended purpose. The more rational argument is that “copying” indicates obviousness because the copiers aren’t concerned about the possibiolity of or the validity of the patent.

    Commercial success and industry praise is likewise one of the least logical “indicia” of non-obviousness. Consumers don’t care about “non-obviousness”. They care about functionality and price.

    1. MM said, “The more rational argument is that “copying” indicates obviousness because the copiers aren’t concerned about the possibiolity of or the validity of the patent.”

      No, if copiers aren’t concerned about getting sued for infringement it is because:

      1. There is the high cost of bringing an infringement action against them;

      2. Their attorney told them their product doesn’t infringe and he/she can get the patent invalidated (with enough billable hours);

      3. Never give in to terrorists (people with patents);

      4. They have protected themselves so if they lose they can fold their tent
      and silently steal away (declare bankruptcy).

      Speaking of terrorists, I think MM works for the Russian government. That explains why he responded to my post on Labor Day. The Russians don’t observe U.S. Labor Day and MM had to fill his daily quota. The FBI should be told about him.

      1. Speaking of terrorists, I think MM works for the Russian government.

        How much do I get paid in your fantasy?

        1. Comrades don’t get (and don’t need to be) paid in glorious Commune!

          Glorious Workers (ahem, muh victims) uprising in the US WHEN?!?!?!?!?!?!

    2. MM, are you criticizing Graham or are you suggesting that Graham is misunderstood? If the former, then is it possible that the Federal Circuit is not following the law (once more)?

      I tend to agree with your analysis of this case. The package sealing technique was known, and was generally known to be useful for all types of food.

      But I would add this wrinkle: The application to cookies that needed frames took place without modification of the seal. Since there was no structural modification of anything, particularly of the seal, the ultimately claimed invention was not even “new” under Anderson’s Black Rock, even before turning one’s attention to 103. “Absent here is the element “new.” For as we have said, the combination patent added nothing to the inherent characteristics or function of the radiant-heat burner.” Id. at n.4.

      Thus, from the point of view of Anderson’s Black Rock, there is no new functionally regarding the seal, let alone some new functionality that was unexpected. When something is not new structurally or functionally, objective evidence of success is, it seems, irrelevant. Merely applying the seal package to known food types with no change in the seal must be obvious as a matter of law.

      1. are you criticizing Graham

        Yes, as I have consistently done for many years. The “secondary indicia” are mostly nonsense. And it’s also a quintessential example of “judicial activism”, for those who tend to get really excited about “the separation of powers” and all that stuff (of course, those folks will mostly sit quietly because it’s “judicial activism” in favor of patentees — that’s the good kind!).

        Since there was no structural modification of anything, particularly of the seal, the ultimately claimed invention was not even “new” under Anderson’s Black Rock

        I haven’t gotten into the case at that level of detail.

        1. MM, thanks.

          On Anderson’s Black Rock, consider that the cookie packaging only adds a known seal that is known to be useful for food in small, pickable units. Certainly this is not new under Hotchkiss. Neither is it new or non obvious under Anderson’s because there is no structural change or improvement of the seal.

          One cannot assemble a variety of known parts into one claim and declare invention unless there is some new (or improved) functionality provided. New functionality is a requirement of novelty.*

          Regarding Graham, when and what kind of “secondary” consideration, if any, would be relevant on the issue of obviousness in your view?

          *You might want to read Rex v. Arkwright, which I attach at the end of by Oil States brief. When a known component of existing carding machine was different from that disclosed in the patent, the question because one of whether the one in the patent provided any new usefulness. This is another way of saying, new functionality. If not, then the component was deemed within the prior art.

          1. To be clear: I haven’t gotten into the facts of THIS case at that level of detail.

          2. Ned, thanks for Rex and Arkwright. That case was in the days before the statute included an obviousness section, right?

            Despite that, I thought it appropriate to mention it in my reply to you at 7.1.3.2.2 in the 1.75(e) thread.

          3. Are you saying that in this case there is no new functionality? I am sure that is wrong and we do have a novel structure when viewed as a whole.

            1. Night, as a whole? No. There was no structural difference in the seal. The cookie packaging was old. It was known that the seal could be used with trays of pickable food like sushi.

              There was nothing new there at all — there were only distinctions without any new functionality.

              Hotchkiss v. Greenwood, Rex v. Arkwright (King’s Bench), Anderson’s Black Rock are all consistent on this point.

              1. Ned, as a whole, yes there is new structure. You say there was no structural difference in the seal, but there was a new frame that interacted with the seal. My understanding–not much time today–is that the frame and seal interacted and provided a new functionality.

                My point is just that it shouldn’t go down in SJ.

              2. Night Writer is righter. The structure capable of holding cookies and permitting the package to be quickly and easily opened and closed was new. It never existed before, as a whole. Jury could and should decide.

      2. That is not how Anderson Black Rock is applied. The two elements in that case were used in the larger context and merely co-located within that existing context. The cookie case here is distinguished because the sealing method was not used (co-located) in the cookie packaging context.

        1. anon, one definitively must show some novel structure or functionality. Even structure nominally new is not new if the there is no new functionality. Then one has mere distinction without any difference.

          Have you yet read Rex v. Arkwright which is set out in full in an appendix in my Oil States brief?

          1. Ned, your reply is not on point to my comment.

            At all.

          2. Wait. Novel structure is not novel unless accompanied by novel functionality? I’m sorry, but anticipation is a question of fact and we no longer have an amorphous “invention” requirement post-’52. For better or for worse, after something is shown to be (even nominally) different, as a matter of fact, we’re out of section 102 and into 103. In 103, lack of new functionality certainly plays a critical role, if not dispositive.

            1. In 103, lack of new functionality certainly plays a critical role, if not dispositive.

              NOT SO.

              A different way of obtaining an old function is perfectly allowed.

              1. Yes, a different way of obtaining an old function is perfectly fine. But if a claimed invention structurally differs from analogous prior art, but the difference is a feature also taught in analogous prior art, and there would have been an apparent reason to combine/modify, then the claimed invention is obvious unless the claimed invention provides a new functionality not suggested in the prior art. Do you disagree?

                1. Sure. Maybe. – but that’s just not a part of the conversation here.

                  (in that sense, the “new functionality” may not in fact BE new – see the accompanying inherency thread)

            2. It depends, PYT, on what the purported invention is. If the purported invention is a typewriter, claiming the old typewriter with new text being typed is a distinction without a difference.

              That is pretty much what the printed matter doctrine teaches us, but the idea is broader, not so? Add to a claim irrelevant subject matter and one may get something not found in the prior art (think pink elephant and a whistle), but the 103 inquiry becomes nonsense without some filtering.

              So the PTO grants the patent on a pink elephant and a whistle. Most American would think there is something seriously amiss in the PTO.

              1. Sure, printed matter is ignored for purposes of analyzing anticipation because it is not really a structural distinction. But that does not mean that quintessentially structural features are ignored when analyzing anticipation, even if the structural feature that is the “point of novelty” is also well-known in the prior art, albeit separately.

                1. Sure, printed matter is ignored for purposes of analyzing anticipation because it is not really a structural distinction.

                  No.

                  That is NOT an accurate portrayal of the judicial doctrine of printed matter.

                  (in part, because the judicial doctrine of printed matter must be accompanied by the exceptions to the judicial doctrine of printed matter – Ned is notorious for such critical omissions)

                2. Point, PYT.

                  But we can look that this claimed invention from two ways: from the sushi packaging starting point or from the cookie packaging starting point. In the one, we add a known frame. In the other we add a known seal.

                  It seems to me that that the commercial success showed that the seal produced demand for cookies in the resealable package. But that was expected, and proved nothing.

  13. We’ve seen the “irrebuttable” prima facie obviousness case come up before. This is another example.

    The prior art taught a nifty solution for a packaging problem in the context of a particular item (in this case, sushi). The applicant/patentee utilized the same solution with some obvious changes to package a different item (cookies). The packaging worked (as expected) and therefore it was (unsurprisingly) commercially successful and was praised. Many cookies were sold! Probably there would be a lot less success if the cookies were anchovy-flavored (unless they were marketed to cats).

    Another way to look at the issue is to ask where you would draw the line if the claimed invention here was deemed non-obvious? Someone wants to sell gummy bears using the same packaging “technology” with obvious modifications to accomodate the gummy bears. It’s commercially successful! There is industry praise! Also non-obvious? Then someone does it with dog biscuits. Still non-obvious? Then someone does it with liquid filled breath freshener candy. Still non-obvious? When does it end?

    1. You keep declaring that the modifications were obvious in your premise.

      But the praise, copying and the commercial success imply that it was not obvious.

      They copying and success imply that there was a need for a solution to a problem that no one else thought of. Once the solution was presented by the inventor the world beat a path to her door, buying the packaged cookies and stealing/copying the solution.

      You meet the solution as you always do, with an eye roll…. but if it was so obvious, why didn’t the copier do it sooner?

      1. You keep declaring that the modifications were obvious i

        Prima facie obvious. I don’t think there’s much doubt about that.

        if it was so obvious, why didn’t the copier do it sooner?

        Didn’t have the money for the manufacturing machine.
        Wasn’t aware of the solution taught in the prior art.
        Had a different solution that worked fine until it didn’t for some reason.
        etc.

        the praise, copying and the commercial success imply that it was not obvious.

        Not really. I explained why upthread. A lot of the secondary indicia are pure b. s. and also redundant.

        1. “Didn’t have the money for the manufacturing machine.”

          But just happened to come into some money after their competitor began doing it? Please…

          “Wasn’t aware of the solution taught in the prior art.”

          But suddenly became aware of it after their competitor began doing it? Please….

          “Had a different solution that worked fine until it didn’t for some reason.”
          Paaaaleeeese…

          1. You asked me “if it was so obvious, why didn’t the copier do it sooner?”

            I gave you perfectly reasonable answers. It really doesn’t matter if you don’t like them. What matters is what I said above: neither copying nor commercial success prove anything about “non-obviousness”.

            Copying and commercial success are evidence that a chosen solution works. Also, as I noted above, copying in many instances indicates a belief by the copier that the claimed invention is not patented because it’s obvious or that the patent is invalid because it’s obvious.

            1. That has got to be some of the most truly horrendous views on understanding patent law ever put forth.

              Your “perfectly reasonable” and “explained earlier” are neither.

              All you did was bloviate your feelings, and then put those on a pedestal.

            2. “neither copying nor commercial success prove anything about “non-obviousness”.”

              No, they don’t necessarily Prooooove it. They are evidence/factors toward showing it.

              Also, in this case, there was an examiner that concluded that the claimed subject matter would not have been obvious to one of ordinary skill in the art….

              1. They are evidence/factors toward showing [non-obviousness]

                Except that they are actually factors showing something else, as I already explained.

                1. You use that word “explain” but it is clear that you do not understand what that word means.

                  Your feelings are not explanations.

                  And your bald assertions based on those feelings certainly are not explanations.

                2. I don’t think these “factors” can be categorically deemed pro-obviousness or pro-nonobviousess. Context matters and that context is shown by evidence of what primarily drives alleged commercial success, etc. Here, in the U.S., juries weight such evidence to resolve disputes over whether , as a factual matter, the evidence shows obviousness or nonobviousness. I’m not saying that secondary indicia will never cut against patentability; as MM notes, it very much can. I am saying, however, that a jury should decide these issues. That’s the way we do things here, at least in theory.

            3. What troubles me about the secondary indicia is their incompatibility with examination of obviousness through the eyes of the notional PHOSITA, who is very definitely NOT any one real inventor or manufacturer. We test obviousness using the notional PHOSITA, so as to do it objectively, not subjectively. Well, give it some credit. At least the jurisprudence tries.

              And then Les trots out that ages-old trope “If obvious, why wasn’t it done sooner?” as if that trumps all other arguments. Is as if he has never before discussed the point with a patent jurist, and grasped (with a mind willing to understand) why the point has no weight.

              Frankly, I suspect that the Graham Factors (secondary indicia) are an artefact of a rabbit in the headlights court, in over its pay grade, lacking self-confidence. A court looking for help, one that that laments “Obvious? To the PHOSITA. How should I know? All very difficult. So what do you think, all-knowing market, invisible hand? You’d better decide it for me, I think.”

              1. Thats not what I said Max. What I said was, if there is evidence of a long felt need, and if the solution was obvious, why wasn’t it invented sooner.

                I note that you did not answer that question. Instead you merely asserted the point has no weight.

                The weightless point is yours.

                1. Les, what you wrote earlier was that the fact of infringement is the evidence of a long felt want. Now you argue that the thus-proven long felt want is the evidence of non-obviousness.

                  You are chasing your own tail.

                2. That you can’t challenge my point, tends to prove it.

                  Yes, infringement where there is long felt need does tend to show non-obviousness.

                  That an infringers argument of invalidity doesn’t hold water on its face is not a defect of the response.

        2. I do not think that you understand what “prima facie obvious” means.

          You seem to want to treat the term as some “de facto and don’t bother to rebut” case of automatic and incontrovertible state of obviousness, when the term actually means merely the first step in an overall review of obviousness – quite the opposite of your “de facto” sense.

  14. “Despite my love of cookies, I have to admit that I have never purchased one of these re-sealable containers as my preference is to complete a package within a single sitting. ”

    I would tend to agree. Hard to stop once you break into the package!

    Concerning the case, I would have to agree with Reyna. With compelling objective evidence of non-obviousness, summary judgement does not seem appropriate.

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