The U.S. Court of Appeals for the Federal Circuit reversed a district court’s summary determination of obviousness of a patent for a desiccant container because, among other things, the lower court failed to give due consideration to evidence relating to secondary considerations. Süd-Chemie, Inc. v. Multisorb Technologies, Inc.,Case No. 08-1247 (Fed. Cir., January 30, 2009) (Bryson, J.).
Süd-Chemie argued that secondary considerations, including evidence of unexpected results, copying and commercial success demonstrated that its patent was not obvious to a person of ordinary skill in the art. The district court did not address Süd-Chemie’s secondary considerations evidence, other than to state that the patent did not employ elements that worked together in an unexpected manner. The Federal Circuit found the district court’s conclusory statement inadequate to support a finding of invalidity. The Federal Circuit instructed the district court to “attend carefully to any evidence of … secondary considerations of non-obviousness.” The Court also reaffirmed that secondary considerations constitute independent evidence of non-obviousness and that such evidence can be quite instructive in the obviousness inquiry.
The Federal Circuit further held that conclusory statements in a patent’s specification cannot constitute evidence of unexpected results in the absence of factual support. In this case, the specification noted the surprising discovery that strong, laminated desiccant packaging materials can be produced from uncoated microporous or nonwoven films as opposed to similar films with coatings. According to the Federal Circuit, this statement alone cannot constitute evidence of unexpected results. The patent, however, included working examples showing that uncoated, compatible films formed seals with stronger bonds than those formed between coated, incompatible films. The patent thus contained specific evidence bearing on Süd-Chemie’s assertion of non-obviousness that must be properly evaluated. The Federal Circuit declined to render a decision on the sufficiency of the secondary considerations evidence. Instead, the Court remanded the case to the district court for further development.
Practice Note: The Federal Circuit made clear that there is no post-KSR analytical shortcut for an obviousness inquiry. A thorough and thoughtful analysis of secondary considerations must still be performed for an invalidity determination to survive appeal.