For a patent to issue, it must contain a description of an invention that is novel and nonobvious. This requirement is codified in 35 U.S.C. §103 (“Section 103”) which states a patent cannot be obtained if:
the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention[1] to a person having ordinary skill in the art to which the claimed invention pertains.
However, the statute does not spell out how to determine if a claimed invention is obvious; as a result, that issue has been fleshed out by the courts over the past 60 or more years. In 1966, in Graham v. John Deere Co. of Kansas City, the Supreme Court of the United States issued a blueprint for analyzing claims under Section 103 that consisted of the following steps:
- Determine the scope and content of the prior art;
- Ascertain the differences between the prior art and the claims at issue;
- Resolve the level of ordinary skill in the art; and
- Consider any objective indicia (also referred to as “secondary considerations”). [2]
Examples of secondary considerations include: (1) commercial success, (2) long felt but unsolved needs, (3) the failure of others, (4) copyingby others, and (5) industry praise.
For a time the Court of Appeals for the Federal Circuit required there be a specific motivation to combine the prior art references at issue to arrive at the claimed invention being examined. However, the Supreme Court has since clarified that while the prior art may contain a “motivation” or suggestion to combine the prior art in the same way claimed in a patent, the lack of such an explicit teaching does not mean the invention is nonobvious. An examination of the circumstances around which the invention was created can provide a reason a skilled artisan would have had for combining the references.[3]
Recently, the Court of Appeals for the Federal Circuit decided a case under Section 103 that illustrates an obviousness analysis. Although, the meat of this case is about when the lower court was supposed to consider evidence of secondary considerations and whether or not that court properly made certain factual determinations, the case illustrates how the courts currently analyze claims rejected under Section 103. Intercontinental Great Brands LLC v. Kellogg N. Am. Co., concerned an appeal from a patent infringement suit brought by Kraft Foods, aka International Great Brands, LLC, against Kellogg for infringing Kraft’s patent on a resealable cookie package. In short, Kraft’s patent issued in 2005 and claimed a cookie package that is similar to the peel-back resealable packages that are frequently used with wet-wipes. Kraft’s patent claimed a combination of a traditional cookie package consisting of a frame surrounded by an outer wrapper and including an opening covered by a peel-back reclosable seal.
In 2013 Kraft sued Kellogg for infringing their patent claiming Kellogg was making, using and selling cookies in resealable packages similar to those described in their patent. Kellogg countered by arguing, among other things, Kraft’s patent was invalid under Section 103.
Following the Supreme Court’s framework, the trial court first determined what teachings were in the prior art, i.e. what was already known in the food packaging industry at the time of invention. It was undisputed that at the time Kraft’s patent application was filed there already existed traditional cookie packages made of a frame that held food items surrounded by a wrapper, peel-back resealable packages without a rigid structure for wet wipes, and packaging for sushi that included both a peel-back resealable container and a rigid tray for holding food items. Next, the trial court compared the prior art to the claims at issue. In doing so, the court concluded all of the relevant limitations in the patent’s claims were present in one form or another in the prior art. Then, the court determined the technology at issue was relatively simple so it would not be difficult for someone in the food packaging industry to combine these teachings if they were aware of them.
Finally, finding Kraft was facing a known problem with a known solution in the prior art, the trial court decided there was a strong case for a finding of obviousness without persuasive evidence to the contrary. At trial, Kraft had produced evidence that their packaging was commercially successful, had received industry praise and had been copied by at least one competitor, namely Kellogg. However, the trial court concluded that the case for obviousness outweighed the evidence of secondary considerations produced by Kraft. In particular, the Court of Appeals for the Federal Circuit agreed with the lower court that all of the claimed elements of Kraft’s packaging were either present in written prior art references or were already being used in conventional cookie packages.
Section 103 is a statute confuses and frustrates a lot of inventors and is probably one of the more difficult patent law concepts to understand. Intercontinental Great Brands offers a rather simple example of how the statute is applied. A discussion of Section 103 can help determine whether it is worth putting more time, money and energy into pursuing or enforcing a patent. Feel free to contact us with your individual concerns.
[1] A prior version of the statute in effect before March 16, 2013 tied the determination to the date of invention, not the date of filing.
[2] Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
[3] KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-418 (2007)