Integrating the Objective Indicia of Nonobviousness

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.

18 thoughts on “Integrating the Objective Indicia of Nonobviousness

  1. 6

    did the trial court misstate the law?

    Dow Chem. Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320, 330 (1945) (“[the patent owner argues that the invention] has filled a long felt want and has been a commercial success. But these [secondary] considerations are relevant only in a close case where all other proof leaves the question of invention in doubt. Here the lack of invention is beyond doubt and cannot be outweighed by such factors [of long felt need and commercial success].”).

      1. 6.1.1

        Here is what Bryson wrote sitting as a trial judge in 2015 (Kroy IP Holdings, LLC v. Safeway, Inc.,, No. 2:2012cv00800 – Document 225):

        “Evidence of secondary considerations is always relevant, but it does not suffice to overcome a strong showing of obviousness in a case in which obviousness is clear from a comparison of the prior art references and the patent in suit. See Western Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1373 (Fed. Cir. 2010); Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). This is such a case, as the Court concludes that the showing of obviousness in this case—even apart from the showing of anticipation—is compelling and is not called into doubt by the evidence of secondary considerations.”

        Did he go too far?


          Anon, “not called into doubt by the evidence of secondary considerations” suggests that he had looked at such evidence.

  2. 5

    Why do so many patents involved in PTAB appeals or litigation use “said” instead of “the” in the claims?

    1. 5.1

      Besides long force of habit, “said” is a good way to remind the claim drafter that claim limitations may need to have an antecedent basis.

  3. 4

    This case exemplified the long and standing intra circuit split by the Federal Circuit if and when secondary considerations can turn an obviousness conclusion. The Supreme Court has the same conflicting two lines of cases. First, going back to post Hotchkiss cases until the late 1940s ( (and several Riding Circuit cases until 1910) the Court held that the weight of certain objective indicia CAN TURN a obviousness finding; the second lines of cases started in the late 1860s through the late 1970s the Court held that secondary considerations can NOT OVERCOME a finding of lack of novelty/lack of invention/non-obviousness. Graham left this question open.

      1. 4.1.1

        The point about a “tie breaker” is that you don’t need it unless you have got to 6-all. Most sets don’t get as far as 6-all.


          That’s not how it works, MaxDrei.

          The consideration is to occur whether or not a “tie-breaker” is being called for.

    1. 4.2

      How much of this “split” can be attributed to much stronger prima fascia obviousness facts, rather than a different legal view?

  4. 3

    Dennis: it was filed in the U.S. Court of Federal Claims without right to jury trial, punitive damages or injunction.

    Dennis then states: The district court suggested ….

    What district court?

    1. 3.1

      It looks like Dennis changed it to “lower court” now. However, under the Federal Circuit’s Internal Operating Procedure #11:

      Respect for the tribunals from whose judgments and decisions
      appeals are taken to this court requires care in referring to those
      tribunals in our opinions. Reference should not be made to “the court
      below,” “the lower court,” “the lower tribunal,” or “the judge below.”
      Reference should be made to, e.g., “the district court,” “the trial court,”
      “the district judge,” “the trial tribunal,” or “the court.”

  5. 1

    Would not an absolute requirement in every case of “[o]bjective indicia of nonobviousness must be considered in every case where present” make summary judgment decision on 103 [as in KSR] almost impossible?

    1. 1.1


      If a case happens to have such factors, then the appropriate options would be – well – appropriate, eh?

      Or are you thinking that there must always be a path to SJ no matter what?

    2. 1.2

      No, I don’t think so. Only if there is a genuine factual dispute over the evidence itself, rather than it’s weight, which the judge implicitly determines when making the ultimate legal conclusion.

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