Mintz v. Dietz & Watson, Inc.
679 F.3d 1372
| Fed. Cir. | 2012Background
- Mintz and Neil/Marcus Mintz are co-inventors of the ’148 patent, a meat encasement casing with an integrated stockinette and netting that provides a checkerboard surface when stuffed.
- Prior art meat encasements used two-step processes with collagen film or stockinette under netting to prevent adherence of bulges, increasing cost and labor.
- Mintz sued PCM for infringement of the ’148 patent; PCM challenged validity and infringement in the district court.
- The district court construed “locking engagement” as fixed at each intersection and granted PCM summary judgment of non-infringement and invalidity, Mintz seeking reconsideration.
- The Federal Circuit vacated the district court’s validity ruling, remanding for proper Graham factors and consideration of objective indicia, and affirmed non-infringement.
- The court concluded PCM products do not infringe the “intersecting in locking engagement” limitation because gaps of regular loops prevent locking engagement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness standard application | Mintz argues the district court erred by not applying full Graham factors with proper evidence. | PCM contends prior art anticipates or renders obvious the claimed invention. | Remanded for proper Graham analysis. |
| Appropriate scope of prior art and skill level | Mintz asserts meat encasement art must be considered in skill level. | PCM claims knitting references alone show obviousness. | Court recognizes meat encasement art as within skill and remands for evaluation. |
| Intersections in locking engagement limitation | Mintz argues limitation is met by prior art configurations. | PCM argues this limitation is not taught by prior art. | Remand on validity; focus remaining on infringement later. |
| Obviousness evidence and objective indicia | Mintz presented unexpected results, skepticism, copying, and success. | District court failed to consider objective indicia adequately. | Court vacates and remands for proper evaluation of objective indicia. |
| Infringement of the ’148 patent | Mintz asserts PCM’s BN/CR/CU lines infringe. | PCM argues no infringement due to lack of locking engagement. | Affirmed non-infringement; claimed limitation not met. |
Key Cases Cited
- Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010) (district court must consider objective evidence of nonobviousness)
- Custom Accessories, Inc. v. Jeffrey-Allen Indus., Inc., 807 F.2d 955 (Fed. Cir. 1986) (objective evidence must be considered; can be most probative of nonobviousness)
- Graham v. John Deere Co., 383 U.S. 1 (Supreme Court 1966) (framework for evaluating obviousness with four Graham factors)
- Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343 (Fed. Cir. 2010) (praise can indicate nonobviousness; objective indicia are important)
- Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) (objective indicia illuminate the environment of the invention)