Federal Circuit Finds Obviousness Despite Evidence of Commercial Success

In Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed Cir. 2009), Steven D. Ritchie and H. David Reynard own a medical device patent, U.S. Patent No. Re 38,924, which is a reissue of U.S. Patent No. 6,132,366 (hereinafter the ‘924 patent).  They also own a device manufacturer, Know Mind Enterprises, that manufactures medical devices for sexual purposes.  The defendant, Vast Resources, Inc., owns Topco Sales, a manufacturer producing the same category of medical devices.  The devices manufactured by the two parties are generally shaped into a rod made of rubber, plastic, glass or other similar materials or a combination of such materials.  Prior to the plaintiff manufacturing the device of the ‘924 patent, such glass devices were typically manufactured from soda-lime glass.  However, the plaintiff manufactures such devices using an “oxide of boron” or borosilicate glass as the ‘924 patent claims a device “fabricated of generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial absorptions.” 

The plaintiffs sued Vast Resources for patent infringement.  Plaintiff offered evidence of commercial success as evidence of nonobviousness, but did not otherwise offer evidence of nonobviousness.  The U.S. District Court, Middle District of Florida, found the patent valid and ruled in favor of the plaintiffs.  The defendants appealed the decision, challenging the patent’s validity and the plaintiffs cross-appealed on the matter of the amount of relief the District Court granted.  The Federal Circuit Court, hearing the appeal, reversed the District Court judgment with instructions to dismiss the suit. 

The Federal Circuit Court only considered whether the invention of the ‘924 patent would have been obvious to a person of ordinary skill in the art, as per 35 U.S.C. §103(a).  In analyzing the claimed invention of the ‘924 patent, the Federal Circuit looked at the use of and features attributed to borosilicate glass, which in the device of the ’924 patent is substituted for soda-lime glass as compared to the conventional art.  Specifically, since it was not contested as to the well known nature of each component in the claimed invention, the Federal Circuit focused on the use and features of the substituted element, the borosilicate glass, and the effect of evidence of commercial success as evidence of nonobviousness when using well known components. 

As an initial point, the Federal Circuit interpreted “lubricious” to include borosilicate glass, which is smoother than soda-lime glass, and thus, the borosilicate glass becomes slippery with less lubricant when compared to soda-lime glass.  The Federal Circuit noted that the term “appreciable amount,” as recited in the ‘924 patent, while vague, can be interpreted and defined to mean an amount of boron oxide usually found in borosilicate glass.  As such, the amount of boron oxide would be known to those of ordinary skill in the art.

Since no other evidence was contested related to obviousness, the Federal Circuit focused on the extent to which commercial success, which was not contested, is useful for showing nonobviousness.  In discussing the commercial success of the invention of the ‘924 patent, the Federal Circuit noted that borosilicate glass has been used in glassware for nearly 100 years as Pyrex glassware, manufactured by Corning, Inc. (previously Corning Glass Works).  AlthoughCorningnow also manufactures Pyrex using tempered soda-lime glass, borosilicate glass has been used in the glassware market since in 1893, when borosilicate glass was invented.  The Federal Circuit acknowledged that borosilicate glass has the properties recited in the ‘924 patent, and this fact was not contested on appeal.  The Federal Circuit also stated that even if the device is useful due to the recited properties, the invention would not be patentable as it was obvious “to a person having relevant technical skills.” 

The Federal Circuit noted that because the device of the ‘924 patent has commercial value, to call the device obvious “may seem the triumph of hindsight over insight.”  However, because borosilicate glass has been commercially available and used since 1893 and was otherwise very well known, the Federal Circuit proceeded to weigh whether commercial success was an indicator of nonobviousness as per the ‘924 patent. 

The Federal Circuit acknowledged that commercial value is an indicator of nonobviousness (citing Graham v. John Deere, 383 U.S. 1, 17-18 (1966); Simmons Fastener Corp. v. Illinois Tool Works, Inc. 739 F.2d 1573, 1575-76 (Fed. Cir. 1984)).  However, this evidence can work both ways.  Where an invention with commercial value appears on the market soon after the idea or impetus behind the invention appears, this is evidence of obviousness.  In contrast, the delayed appearance of the invention on the market, despite the commercial value, is evidence that an invention was not obvious.  Nonetheless, commercial success is considered as a “secondary” indicator of nonobviousness.  The Federal Circuit cited Graham v. John Deere Co., supra, 383 U.S. at 18; Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483-84 (Fed. Cir. 1997)), as per commercial success being a secondary indicator and noted that commercial success is reliant upon many factors unrelated to patentable inventiveness, such as the marketing of a product or invention.  Thus, commercial success is not sufficient in and of itself to show nonobviousness. 

Also, the Federal Circuit stated that inventions deemed obvious are those that are “modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value…but do not involve sufficient inventiveness to merit patent protection.”  The Court went on to state that “[t]his class of inventions in well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known…This is such a case.”  As per the recitation of “an appreciable amount of an oxide of boron,” the Federal Circuit Court noted that the ‘924 patent “does not claim any variant of off-the-shelf borosilicate glass.”  Furthermore, the Court stated that because borosilicate glass is a standard product with well known properties, substituting borosilicate glass for ordinary glass, in the device category of the ‘924 patent, “was not a venture into the unknown.” 

The Federal Circuit Court went on to state that the present case exemplifies the Supreme Court’s analysis in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), wherein the Supreme Court stated:

“[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.  If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.  For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id.at 417.  

The Federal Circuit stated that the final sentence of the above quotation describes the present case, and further quoted the Supreme Court, which stated that a court need not “seek out precise teaching directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”  Id at 418. 

With respect to supporting the Federal Circuit’s statement as per inventions that are “incremental improvements of an existing product or process that confer commercial value…but do not involve sufficient inventiveness to merit patent protection,” the Federal Circuit cited cases involving substitution of one feature or element for another.  The cases the Federal Circuit cited include Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535-38 (Fed. Cir. 1983) and Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740, 749-750 (7th Cir. 1982).  Thus, in the case where well known materials are substituted from one another, there needs to be some evidence that the substitution is more than routine in the art.

In summary, the Federal Circuit Court said that commercial value of an invention is an indicator of nonobviousness.  However, while an indicator, it is only one secondary consideration and commercial success can be attributed to a variety of factors unrelated to patentable inventiveness, such as successful marketing.  Furthermore, the Court stated that the present case exemplifies the Supreme Court’s analysis in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), which states that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”  Thus, as no other evidence of nonobviousness was on appeal, the Federal Circuit reversed the District Court’s judgment with instructions to dismiss the suit.

Significance for Patent Applicants

On one level, Ritchie stands for the proposition that, under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), substitutions of well known components is obvious.  However, what is more problematic in Ritchie is that the Federal Circuit gives scant weight to evidence of commercial success, which Graham v. John Deere, 383 U.S. 1 (1966) cites as evidence of non-obviousness.  While the Federal Circuit noted that there were many potential reasons for commercial success, the Federal Circuit in Ritchie chose not too give this evidence much weight in comparison with the evidence that the materials were all well known.  Little explanation was given as to why the commercial success evidence was of little evidentiary value, or why the evidence of being well known was of such greater value to eclipse the evidence of commercial success in the context of an analysis under Graham v. John Deere, 383 U.S. 1 (1966).  In light of the ruling in Ritchie, it is therefore doubtful that evidence of commercial success will be deemed a deciding factor in finding nonobviousness even where the evidence of obviousness itself is scant.

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