Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

The secondary considerations of nonobviousness of commercial success, failure of others, and industry praise must be linked to the claimed invention, not pre-existing market share.

Geo. M. Martin Co., v. Alliance Machine Systems Int'l LLC, No. 2009-1132, -1151 (Fed. Cir. Aug. 20, 2010).

Patentee sued for infringement of a patent for a “bundle breaker” used for breaking multiple, uneven bundles of corrugated board.  Following a trial resulting in a hung jury, the district court granted the alleged infringer’s motion for judgment as a matter of law that the patent was invalid for obviousness.  On appeal, the Federal Circuit affirmed.

The Federal Circuit rejected the patentee’s efforts to discredit the prior art.  The patentee argued that the location of a key part of the claimed invention was different from the prior art.  The court rejected that argument as there were only a “finite number of identified, predictable solutions” for locating the key part.  Further, contrary to the patentee’s contention, the prior art need not work.  Indeed, prior art disclosing an inoperative device is still “prior art for all that it teaches.”

The patentee also argued that secondary considerations of nonobviousness precluded the district court’s decision granting the alleged infringer’s motion for JMOL.  Quoting the Supreme Court’s decision in KSR, the court noted that secondary considerations “might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”  Moreover, in rare cases, “the secondary consideration of simultaneous invention might also supply indicia of ‘obviousness.’”  In this case, the secondary considerations of nonobviousness could not overcome the strong case of obviousness.   In particular, the patentee had not established commercial success as a secondary consideration of nonobviousness because the patentee’s commercial success was due to its pre-existing market share, not the claimed invention.  Similarly, failure of others and industry praise are only secondary considerations of nonobviousness if these features are linked to the patented invention.  Further, when differences between the patented invention and the prior art are minimal, it cannot be said that any long-felt need was unsolved. 

A copy of the opinion can be found here.

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