Mintz v Watson
Inventors and patent attorneys know that creating any invention has two parts: (a) identifying a problem; and (b), solving that problem.  To protect the invention by patent, the invention must be ‘non-obvious.’  That is, if two or more prior art patents or other references when taken together teach all of the elements of a patent claim and it is reasonable to combine those elements, then the claim is obvious and not patentable.  The ‘non-obviousness’ requirement is usually the most difficult hurdle for an inventor to cross in obtaining or defending a patent.

Every invention is obvious in ‘hindsight;’ that is, based on the knowledge revealed in the patent application or subsequent to the application.  To avoid ‘hindsight,’ judges and patent examiners are supposed to consider the state of the art at the time the application was filed, not the state of the art at the time the judge or examiner is deciding the question.

The Federal Circuit Court of Appeals recognized in the recent case of Mintz v Dietz & Watson that if either (a) the problem or (b) the solution is non-obvious, then the invention meets the non-obvious requirement for patentability.  Mintz invented a casing to hold a processed meat while allowing the meat to bulge between net strands, avoiding older knitted meat casements.  In an infringement and declaratory judgment action, the trial court found Mintz’s patent on the casing to be obvious and hence invalid. The trial court relied on Mintz’s statement of the problem in the patent application and concluded that Mintz’s invention was an obvious solution to the problem.

The Federal Circuit Court reversed the trial court, holding that the trial court could not look to the patent to define the problem – that was prohibited hindsight.  The Federal Circuit held that an obvious solution to the non-obvious problem identified by Mintz was non-obvious and hence patentable.

–Robert Yarbrough, Esq.