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Mintz v. Dietz & Watson, Inc. - 679 F.3d 1372 (Fed. Cir. 2012)

Rule:

To be clear, a district court must always consider any objective evidence of nonobviousness presented in a case. It can be the most probative evidence of nonobviousness in the record, and enables the district court to avert the trap of hindsight. This obligation is not waived by some procedural requirement that ducks consideration of evidence presented in the opening brief but not pursued in a reply brief or in an oral argument that veers in a different direction. Indeed, where the invention is less technologically complex, the need for Graham findings can be important to ward against falling into the forbidden use of hindsight. Simply because the technology can be easily understood does not mean that it will satisfy the legal standard of obviousness. In fact, objective consideration of simple technology is often the most difficult because, once the problem and solution appear together in the patent disclosure, the advance seems self-evident. Instead, the proper analysis requires a form of amnesia that "forgets" the invention and analyzes the prior art and understanding of the problem at the date of invention.

Facts:

The ‘148 patent, issued to Marcus and Neil Mintz as co-inventors, claimed a casing structure for encasing meat products. The '148 specification described prior art meat encasements, which used a netting that allowed meat to bulge between the netting strands and produce a desirable checkerboard pattern on the meat's surface. But, in the prior art encasements, the meat would bulge and cook around the netting strands, causing difficulty in peeling the netting off the cooked meat. The prior art tried to solve this problem by using a separate layer of collagen film, or stockinette, underneath the netting. This solution, however, required a two-step stuffing process that was labor intensive and expensive. The '148 patent integrated a stockinette into a netting to make a new kind of meat encasement. The integrated stockinette has more stretching ability than the netting. The patent therefore solved the adherence problem with-out the higher cost of the two-step stuffing process while still allowing some bulging to create the desirable checkerboard or grid-like pattern on the meat surface. Mintz designed and manufactured knitted meat encasements for processed meat manufacturers. Mintz asserted that the '148 patent covers its Jif-Pak knitted meat encasement products. Package Concepts & Materials, Inc. ("PCM"), previously a distributor of Mintz’s Jif-Pak products, was now selling products that directly compete with Mintz. After their distribution agreement ended, PCM began selling certain knitted meat encasement products that Mintz alleged infringe the '148 patent. In 2005, PCM filed a declaratory judgment action against Mintz in the United States District Court for the District of South Carolina. Also in 2005, Mintz filed a patent infringement action against PCM in the United States District Court for the Southern District of California. The district court granted PCM's motion and denied Mintz's, holding that PCM did not infringe on Mintz’s ‘148 patent and that the ‘148 patent was invalid because it would have been “obvious to try” the process covered by the aforementioned patent. According to the district court,  a person of ordinary skill, familiar with the knitting art would have thought of the process covered by the ‘148 patent.

Issue:

Did the district court err in holding that: (i) PCM did not infringe on Mintz’s ‘148 patent; and (ii) the ‘148 patent was invalid as obvious?

Answer:

(i) No; (ii) Yes.

Conclusion:

The U.S. Circuit Court of Appeals held that the district court correctly found that PCM did not infringe the ‘148 patents as the design of PCM’s products were substantially different from that of Mintz’s, thereby, it did not satisfy the “intersecting in locking engagement” claim limitation. However, the Court held that the district court  made a clear error in its unsubstantiated reliance on "a common sense view" or "common sense approach" to hold that the ‘148 patent was invalid under § 103 of the Patent Act. Under the said section of the law, a patent claim was invalid as obvious if the differences between the subject matter sought to be patented and the prior art were such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. This statutory test required factual inquiries: (i) the scope and content of the prior art, (ii) the level of ordinary skill in the art, (iii) the differences between the claimed invention and the prior art, and (iv) objective evidence of non-obviousness. In the case at bar, the Court held that the district court discounted the importance of familiarity or experience with meat products in coming up with its decision, and its reliance on the perspective of an artisan in the knitting arts was problematic. Accordingly, the Court affirmed the non-infringement determination, vacated the invalidity holding, and remanded for further proceedings to make the required Graham factual findings.

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