Three References PLUS Predictable Variation Doom Utility Lighter Claims


Written by Brandon Baum , of baum legal and Practice Center Contributor.

Some have suggested that the Federal Circuit’s recent decision in Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057, -1116 (Fed. Cir. Jan 31, 2011), signals a raising of the bar to show nonobviousness post-KSR.  See, e.g., Quinn, KSR Fears Realized: CAFC Off the Obviousness Deep End; Patently-O, The Teeth of KSR: Obviousness on Summary Judgment.  This author disagrees.

The technology at issue in Tokai is straightforward: a child-safety mechanism for use on a “utility lighter,” the type of lighter used to light a barbecue or pilot light. The safety mechanism consists of a spring-loaded locking lever that must be unlocked with one finger while simultaneously depressing the trigger to light the flame with another.  Although two-finger safety mechanisms had been used in prior art cigarette lighters, they had never been used with a utility lighter prior to the patentee’s application. Nevertheless, the panel majority of Judges Lourie and Bryson upheld the district court’s determination on summary judgment that the patents-in-suit were obvious.

The asserted claims of the three patents-in-suit claimed the safety mechanism in a variety of ways.  Applying the four-factor Graham test, the panel majority found that various combinations of cigarette lighter prior art rendered each of the asserted claims obvious.  Some have taken issue with the majority’s reasoning, in particular with respect to two claims of U.S. 5,897,308.  Specifically, claim 10 of the ‘308 patent required that the locking mechanism be unlocked using the thumb, while the lighter is ignited with the finger.  The panel conceded that the prior art taught only the reverse configuration – finger to unlock, thumb to ignite.  Nevertheless, the panel concluded that the reversal of the finger position was “nothing more than a predictable variation on the prior art.”  Hence, a combination of three prior art references (Floriot, Morris, Shike) plus the “mere reversal” of the finger positions rendered the ‘308 patent claims obvious.

The panel also rejected the patentee’s argument that the district court failed to impose an “enhanced burden” on Easton to show invalidity because some of the asserted prior art references were considered during prosecution. The panel held that because some the asserted prior art references were not before the examiner, including one of the “key” references, an added burden was not required.  This may foreshadow the approach to be used if the U.S. Supreme Court decides that no enhanced burden is required for uncited art in the pending Microsoft v. i4i appeal.

Judge Pauline Newman dissented.  She noted that Tokai’s patented device is commercially successful, having sold more than 100 million units in the United States.  She further observed that the majority was picking and choosing features from the individual prior art references, while ignoring the differences in each reference that would prevent their use in combination.  In her view, the district court and the majority used the patented device as a template and applied hindsight to find each limitation in the prior art.  In light of the commercial success of the patented inventions, Judge Newman found error in the summary determination of obviousness and would have remanded for a trial on the merits.

It could be argued that the panel’s willingness to combine three prior art references plus predictable variation to invalidate commercially successful claims as a matter of law leaves many patents vulnerable to an obviousness challenge.  Indeed, this case is the farthest this author has seen the Federal Circuit push the 103(a) envelope after KSR.  C.f., Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007)(Invalidating claim based on combination of two references plus finding that “readers were well-known in the art.”)  However, the technology at issue here was extremely unsophisticated.  Indeed, the district court found that a person of ordinary skill in the art to be “an individual showing aptitude in high school shop class, or someone who builds, takes apart, or repairs basic mechanical toys/devices.”  Therefore, the Tokai decision merely evidences a willingness to invalidate claims that, while including a multitude of limitations, simply don’t pass muster under the common sense approach of KSR.

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