In American Innotek v. US, the patent at issue covers a urine containment bag and the patentee alleges that the “Piddle Pak with powder” bought and used by the US government infringes United States Patent No. 5,116,139.
The lawsuit here is against the U.S. government – as such, it was filed in the U.S. Court of Federal Claims without right to jury trial, punitive damages or injunction. At the CFC, the court held the patent invalid – finding it obvious even as of its 1989 priority date. On appeal, the Federal Circuit has affirmed, although only after rejecting the lower court’s misapplication of obviousness law. [Decision]
Role of Objective Indicia of Nonobviousness: The
district lower court suggested that the combination of prior art references was so compelling that it was theoretically impossible for secondary indicia of nonobviousness to flip the ruling. On appeal, the Federal Circuit rejected that conclusion and approach to obviousness – holding that it “goes to far.” Rather, “[o]bjective indicia of nonobviousness must be considered in every case where present.” (quoting Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034 (Fed. Cir. 2016) (en banc)). The implication here is that not-only must the secondary indicia be considered, but also that there is the potential in every obviousness case that the objective indicia will be sufficient to render the claims non-obvious.
Despite the lower court’s misstatement of the law, the Federal Circuit agreed with the ultimate conclusion that – in this case – the claim are obvious. Rather than walking through the analysis, the Federal Circuit simply agreed with the conclusion:
Certainly, this court has often determined that particular objective indicia were not decisive in the face of strong other evidence of obviousness, but those results reflect case-specific assessments. In the present case, taking the evidence supported facts found as a given, we weigh the objective indicia with the other facts and agree with the conclusion of obviousness drawn by the Court of Federal Claims.
= = = = =
Asserted claim 1 is below:
A containment bag for a fluid comprising water or a waterbased liquid such as bodily fluids which comprises:
a bag having a hollow interior defined by two sides meeting at opposite edges, a bottom and a top, with said edges and bottom sealed and said top at least partially open to receive said fluid;
a gellable hydrophilic material within said bag, said material becoming fully gelled within thirty seconds of said contact with said fluid when said fluid is deposited in said bag, said gelation serving to essentially completely sequester said fluid and prevent said fluid from thereafter being expelled from said bag;
funnel means within said interior and having an open top, said funnel means being secured to said bag at said top of said bag, and extending downwardly within said interior to a narrower open bottom for conduction of fluid entering said open top through said funnel means and into said bag, with the open bottom of said funnel being disposed between the top and the bottom of said bag, said open bottom being free from attachment to said sides of said bag such that flow of any unsequestered fluid within said bag back toward said funnel means acts to close said funnel means to prevent escape of unsequestered fluid from said bag; and
closure means for closing the top of said bag after introduction of said fluid into said bag.