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No Amount of Prior Art Obviates Inquiry of Secondary Considerations of Non-Obviousness

In a short opinion, the US Court of Appeals for the Federal Circuit affirmed an obviousness conclusion, explaining that a court must consider secondary indicia of non-obviousness even in the face of voluminous prior art teaching the claimed features. American Innotek, Inc. v. United States, Case No. 17-1178 (Fed. Cir., Dec. 19, 2017) (Taranto, J) (non-precedential).

American Innotek asserted that the United States infringed a patent related to “fluid containment bags” when it procured allegedly infringing bags from one of American Innotek’s competing suppliers. After making factual findings related to the scope and content of the prior art, the differences between the prior art and the asserted patent, motivation to combine and objective indicia of non-obviousness, the trial court determined that the asserted patent was invalid as obvious. American Innotek appealed.

The Federal Circuit affirmed, but clarified that the trial court was wrong to imply a categorical rule that objective indicia could never overcome a strong showing of obviousness in situations where multiple combinations of prior art were applied according to their expected functions. The Federal Circuit reiterated that secondary considerations are case-specific and such an assessment requires that “[o]bjective indicia of nonobviousness must be considered in every case where present.”

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About this Author

Brian Jones patent litigation and prosecution attorney McDermott Will Chicago

Brian A. Jones is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm's Chicago office.  He focuses his practice on patent litigation and prosecution.

Brian has industry experience in electronic circuit design, systems integration, and quality assurance, spanning the industries of wireless communication systems, electronic control systems, and automotive electronics.  Brian has represented clients in federal district court actions, inter partes reviews before the Patent Trial and Appeal Board, Section...

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