Hot Dogs and Hindsight

In the five years since the Supreme Court issued its ruling in KSR v. Teleflex, on the whole courts have liberally applied the case’s legal standard of “common sense” to overturn patents for inventions that are not overly complex.  However, a ruling from the Federal Circuit last week indicates that “common sense” only carries so far.

In Mintz v. Dietz & Watson, Inc., the Federal Circuit considered whether a lower court erred when overturning a patent covering an elongated tubular encasing structure for encasing meat products — in other words, hot dog and sausage casings.  The lower court found the patent to be invalid on the basis of prior art that included various patents that taught methods of knitting various fabrics.

On review, the Federal Circuit disagreed.  Topics that the Court considered include:

• Analogous art:  The Court made it clear that the use of knitting art to render the invention obvious was not appropriate when the patent application made it clear that the relevant art is meat encasement.  “Without some understanding of meat and meat encasement technology in various settings, the artisan of ordinary skill would not grasp many aspects of the invention.  Therefore, entirely omitting the meat encasement art led the validity search astray.”  The court also noted that  “[t]he basic knowledge (common sense) of a knitting artisan is likely to be different from the basic knowledge in the possession of a meat encasement artisan.”
• Hindsight:  Although the invention may have been technologically simple and readily apparent once the problem is defined, the invention may not be common sense if the problem itself is not obvious:  “Often the inventive contribution lies in defining the problem in a new revelatory way.”
• Secondary evidence:  Objective indicia of non-obviousness, such as evidence of strong sales, copying, and praise by others.  “Indeed, where the invention is less technologically complex, the need for Graham findings can be important to ward against the forbidden use of hindsight.”

Despite the favorable result on validity, the patent holder still lost the argument of infringement.  Nonetheless, the patent survived for use in future actions, and patent holders and applicants may find comments like those above to be helpful when faced with challenges to validity of the patent.