The U.S. Court of Appeals for the Federal Circuit affirmed a finding of patent invalidity of obviousness based on the state of the prior art and the simplicity and availability of the claimed components. Tokai Corp. v. Easton Enterprises, Inc., Case Nos. 10-1057, -1116 (Fed. Cir., Jan. 31, 2011) (Lourie, J.) (Newman, J., dissenting).
Tokai is the owner of a patent on an improved utility lighter (used for lighting barbeques and fireplaces) with a child safety mechanism that is easy for adults to operate, but prevents children from using the lighter. Prior utility lighters did not have a safety device that automatically relocked after the lighter lit, but rather had a manual relocking safety feature or no safety feature. However, prior art cigarette lighters did have an automatic relocking safety feature but, due to space requirements, the locking mechanisms were different from Tokai’s in claimed structure. The prior art also differed in operation due to the sequential use of the thumb and finger to ignite the prior art lighter (while the Tokai device requires the thumb to be pressed before the finger and also allows for concurrent thumb and finger operation). Tokai sold over 100 million of its utility lighters. In addition, Tokai’s claimed safety feature was widely copied in the industry.
On cross-motions for summary judgment on the issue of obviousness, the district court found that the patents in suit were invalid for obviousness. Tokai appealed.
The Federal Circuit affirmed, noting (in its de novo review) that summary judgment for obviousness is appropriate if the requisite factual inquires present no genuine issue of material fact, allowing the court to rule on obviousness as a matter of law.
Four prior art lighters were considered: a utility lighter with no safety feature, a utility lighter with a manual relocking safety feature, a cigarette lighter with an auto-relocking safety feature and a cigarette lighter having a side mounted auto-relocking safety feature.
The Federal Circuit concluded that the claims of two of the patents were rendered obvious by combining the prior art lighters, which disclosed all of the claimed components. As for the other two patents, the Court found that except for the intended position of the thumb and finger for operating the lighter, essential components of the claims were also found in the prior art. However the Court concluded that the finger and thumb positioning “is nothing more than a predictable variation on the prior art.”
The majority concluded by noting that where the “content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors” KSR allows for summary judgment. As to the particular invention, the Court continued that because there was a recognized need for the auto-relocking feature in the art, one of skill in the art would be motivated to combine the analogous auto-relocking cigarette lighters with a utility lighter, particularly because this is a simple mechanical technology. The Court discounted Tokai’s argument that the solution to the problem was not predictable and required radical modifications, noting that the “nature of the mechanical arts is such that identified, predictable solutions to known problems may be within the technical grasp of skilled artisans” and insisted that it would have been obvious to a skilled artisan to combine the auto-relocking safety mechanism of prior art cigarette lighters with prior utility lighters “even if it required some variation in the selection or arrangement of particular components.”
In dissent, Judge Newman argued that the Tokai lighter invention was not obvious, or at least that genuine issues of material fact should have prevented a grant of summary judgment. In Judge Newman’s view, Tokai’s home-grown commercial success and the wide copying in the industry was due to the claimed child safety feature. Additionally, Judge Newman argued that Tokai did not simply take the child safety features from the cigarette lighters and place them in a utility lighter, but created a new structure having operational differences from the prior art. Because the utility lighter field is crowded, Judge Newman concluded that incremental steps should be rewarded because they serve the public interest.