Judge Posner at the Federal Circuit: Patent on Sex Aid is Obvious

Ritchie v. Vast Resources (AKA Topco) (Fed. Cir. 2009) 08-1528.pdf

Sitting by designation, Seventh Circuit Judge Richard Posner summarily reversed a lower court opinion - finding the asserted patent obvious. This decision offers an implicit reminder as to why the Federal Circuit was formed in the first place. Although Chief Judge Michel and Judge Bryson signed-on to the opinion – it is fairly clear that they would not have approved of the analysis if it had emerged from a district court. The problems: The opinion hardly mentions claim language - or even which claim is being challenged; the court does not construe the claims at issue; although the lower court found the patent valid, there is no mention of the presumption of validity or standards for reversing a decision on obviousness; the level of one of ordinary skill in the art is overlooked; etc. It is, however, quite reminiscent of the Supreme Court's KSR decision. Here, Judge Posner heavily quotes and loosely applies KSR to invalidate the patent.

"Among the inventions that the law deems obvious are those modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value (otherwise they would not be undertaken) but do not involve sufficient inventiveness to merit patent protection. This class of inventions is well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable. This is such a case."

Now, I'm not arguing that the patent is valid – only that Judge Posner's opinion gives me no confidence that the invention was obvious. Ritchie's patent covers a "sex aid," and the patent claimed a particular arrangement of a rod with knobs all made from a "lubricious glass-based material containing … an oxide of boron." The prior art here was an easy-slide thermometer made of the same material, and - according to Judge Posner's opinion, the "invention" merely takes well known sex aids and combines them with the easy-slide material.

"This case thus exemplifies the Supreme Court’s analysis in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417 (emphasis added). (The last sentence describes our case to a tee.) There was, the Court continued, no need for the district court to “seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id.

And if more is required to make our point, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) ... which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle)."

Notes

• Patent No. Re 38,924
• This case may not have much precedential value - at least in cases where the invention involves higher level technology or where courts will laugh off the sex toy case. See Sakraida, 425 U.S. 273 (1976) ("that cow shit case ...").
• Congratulations to Michael Harris at the SoCal law group for winning the appeal. According to him, Ritchie had asked for $70+ million in damages.
• Judge Posner on Inequitable Conduct
• Judge Posner on the Paxil Patent
• Judge Posner and Professor Landes on Intellectual Property