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Obviousness in view of references considered in examination – Tokai Corp. v. Easton Enterprises, Inc.

Tokai owned three patents at issue, pertaining to lighters with an elongated rod, useful for lighting barbecue grills.  Easton makes competitive products. Tokai sued Easton for patent infringement. The diputed feature was a safety device requiring the user to depress a button while pulling the trigger.  Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057 (Fed. Cir. 1/31/2011)

The district court issued a claim construction order, after which Easton stipulated that its devices infringed all but one of the asserted claims.  Easton counterclaimed that the patents were obvious over four prior art references. In the invalidity analysis district court applied the Graham factors and concluded that there existed no genuine issue of material fact as to the obviousness of the asserted claims over the references.

The central issue for the Federal Circuit was the burden of proof to show invalidity over references that were considered during prosecution of the patent. The patentee asserted that the alleged infringer had an enhanced burden of proof with respect to patents before the examiner in prosecution.  Slip op. at 12. The reasoning that an enhanced burden flows from deference to the agency during examination.  Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004). But, where arguments are made that the PTO did not consider, there is no enhanced burden of proof.  Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984). In Tokai, not all of the art was considered at the PTO, so there was no enhanced burden of proof.

The majority dismissed secondary considerations of commercial success and copying to affirm the district court.

Newman dissented over the burden of proof for references before the examiner, asserting that the majority applied an incorrect standard. Newman argues that the standard of obviousness is not ”whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles.”  Such a standard would rely on hindsight and presumably, obvious-to-try.  Rather, the standard is “whether it would have been obvious, without knowledge of the patentee’s achievement, to produce the same thing that the patentee produced.  This judgment must be made without the benefit of hindsight.”  Newman alleges that the majority have taken concepts from other devices and changed them in light of the now-known template of the patented device to improperly agree that the inventions were obvious.  Obviousness would require some direction from the prior art, which Newman asserts is absent here.

Newman also argues that the secondary considerations of commercial success and copying were improperly excluded by the district court, and support a finding of nonobviousness.

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