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CAFC Weekly: Week of February 4, 2011

by Orlando Lopez

This week yielded only one precedential patent related opinion, Tokai Corp. v. Eaton Enterprises, Inc.  Tokai owns patents that have claims directed to utility lighters with automatic child-safety mechanisms and sued Easton for selling products allegedly infringing those claims.  Easton countersued for invalidity of the asserted patents.  After the District Court interpreted the claims, Easton agreed that the accused products infringed all but one of the claims as interpreted by the Court.  Tokai asked for summary judgment of validity and Easton countered by asking for summary judgment of invalidity.  In support of its motion for summary judgment, Tokai provided two expert declarations, one of which was produced by an employee.  Since Tokai had not previously provided written reports from the experts during discovery, the two reports were not accepted.  Based on four references, some of which have been considered by the USPTO during the prosecution of the Tokai patents, the District Court found these claims to be invalid due to obviousness.  Tokai presented secondary indications of non-obviousness commercial success and copying by Easton.  The Court found that the secondary indications were not persuasive, since the Court did not find a connection between the commercial success and the characteristics of the invention that were not in the prior art, and the stipulation of infringement is not sufficient evidence of copying by another.  The CAFC upheld the decision of the District Court.

There are a number of interesting issues in this opinion.  The fact that obviousness was decided in summary judgment is a reminder that a determination of obviousness is a matter of law, with an underpinning of facts.  The CAFC  also stated that, although when a party challenges validity of a patent  based completely on references that were already considered by the USPTO, deference has to be given to the USPTO decision granting the patent, that deference  does not apply when the sum of the references being used in the invalidity argument were not considered by the USPTO.


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