Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1409

NOTICE by Eolas Technologies Incorporated, The Regents of the University of California re 1367 MOTION for Judgment as a Matter of Law UNDER RULE 50(b) THAT THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT ARE NOT INVALID, OR IN THE ALTERNATIVE FOR A NEW TRIAL UNDER RULE 59 MOTION for Judgment as a Matter of Law UNDER RULE 50(b) THAT THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT ARE NOT INVALID, OR IN THE ALTERNATIVE FOR A NEW TRIAL UNDER RULE 59 NOTICE OF SUPPLEMENTAL AUTHORITY (Attachments: # 1 Exhibit A)(McKool, Mike)

United States Court of Appeals
for the Federal Circuit
__________________________
NEIL MINTZ AND
JIF-PAK MANUFACTURING, INC.,
Plaintiffs-Appellants,
and
MARCUS MINTZ,
Plaintiff,
v.
DIETZ & WATSON, INC. AND
PACKAGE CONCEPTS & MATERIALS, INC.,
Defendants-Appellees.
__________________________
2010-1341
__________________________
Appeal from the United States District Court for the
Southern District of California in Case No. 05-CV-1470,
Judge M. James Lorenz
___________________________
Decided: May 30, 2012
___________________________
ROBERT P. ANDRIS, II, Ropers, Majeski, Kohn & Bentley, of Redwood City, California, argued for plaintiffsappellants. With him on the brief was LAEL D. ANDARA.

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JONATHAN HANGARTNER, X-Petents, APC, of La Jolla,
California, argued for defendants-appellees.
__________________________
Before RADER, Chief Judge, NEWMAN, AND DYK, Circuit
Judges.
RADER, Chief Judge.
The United States District Court for the Southern
District of California granted Package Concepts & Materials, Inc.’s (“PCM”) motion for summary judgment on
invalidity and non-infringement against Neil Mintz,
Marcus Mintz, and Jif-Pak Manufacturing, Inc. (collectively, “Mintz”). This court affirms the non-infringement
determination and vacates the invalidity holding with a
remand to the district court for further proceedings.
I.
Marcus and Neil Mintz appear as co-inventors on U.S.
Patent No. 5,413,148 (filed Jan. 6, 1994) (“the ’148 patent”). The ’148 patent claims a casing structure for encasing meat products. Claim 1 recites:
1. An elongated tubular casing structure for encasing meat products, said elongated structure
having a longitudinal direction and a transverse
lateral direction, said casing structure comprising:
a stockinette member comprising a closely
knit tubular member formed of closely
knit threads and having a first stretch
capacity;
a knitted netting arrangement having a
second stretch capacity and comprising
a first plurality of spaced strands extending in said longitudinal direction

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and a second plurality of spaced strands
extending in said lateral direction;
the longitudinal and lateral strands of
said netting arrangement each intersecting in locking engagement with one
another to form a grid-like pattern comprising a plurality of four-sided shapes;
said strands of said netting arrangement
being knit into the threads of said
stockinette member, whereby said netting arrangement and said stockinette
member are integrally formed so that
said casing structure comprises an integrally formed structure;
said first stretch capacity being greater
than said second stretch capacity;
whereby, when a meat product is stuffed into
said casing structure under pressure,
said meat product forms a bulge within
each of said four-sided shapes to thereby
define a checker-board pattern on the
surface thereof, said stockinette member
forming a shield to prevent the adherence of adjacent meat product bulges
over said strands of said netting arrangement.
’148 patent col.5 l.39 – col.6 l.18 (emphasis added to the
disputed claim term).
The ’148 specification describes prior art meat encasements, which use a netting that allows meat to bulge
between the netting strands and produce a desirable
checkerboard pattern on the meat’s surface. But, in the
prior art encasements, the meat would bulge and cook
around the netting strands, causing difficulty in peeling
the netting off the cooked meat. The prior art tried to

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solve this problem by using a separate layer of collagen
film, or stockinette, underneath the netting. This solution, however, required a two-step stuffing process that
was labor intensive and expensive.
The ’148 patent integrates a stockinette into a netting
to make a new kind of meat encasement. The integrated
stockinette has more stretching ability than the netting.
The patent therefore solves the adherence problem without the higher cost of the two-step stuffing process while
still allowing some bulging to create the desirable checkerboard or grid-like pattern on the meat surface.
Mintz designs and manufactures knitted meat encasements for processed meat manufacturers. Mintz
asserts that the ’148 patent covers its Jif-Pak knitted
meat encasement products.
PCM, previously a distributor of Mintz’s Jif-Pak
products, now sells products that directly compete with
Mintz. After their distribution agreement ended, PCM
began selling certain knitted meat encasement products
that Mintz alleges infringe the ’148 patent. Mintz now
accuses PCM’s bubble netting (BN), collagen replacement
(CR), and cubic netting (CU) product lines of infringement.
In 2005, PCM filed a declaratory judgment action
against Mintz in the United States District Court for the
District of South Carolina. Also in 2005, Mintz filed a
patent infringement action against PCM in the United
States District Court for the Southern District of California. After consolidation of the separate suits, the California district court conducted a Markman hearing and
issued a claim construction order. The district court
construed “locking engagement” as “fixed at each intersection.” The parties filed cross-motions for summary judgment on validity and infringement. The district court

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granted PCM’s motion and denied Mintz’s. Mintz filed a
motion for reconsideration, which the district court denied. The district court also denied Mintz’s motion to
exclude the testimony of PCM’s expert in the knitting
arts.
This court has jurisdiction under 28 U.S.C. §
1295(a)(1).
II.
This court reviews a district court’s grant of summary
judgment without deference, ICU Med. v. Alaris Med.
Sys., 558 F.3d 1368, 1374 (Fed. Cir. 2009), the decision to
allow expert testimony for an abuse of discretion, FlexRest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1357 (Fed. Cir.
2006), and determinations on the factual inquiries underlying the obviousness analysis for clear error, Eli Lilly &
Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1377
(Fed. Cir. 2006).
III.
Under 35 U.S.C. § 103, a patent claim is invalid as
obvious “if the differences between the subject matter
sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art.” This statutory test requires factual
inquiries: (1) the scope and content of the prior art; (2) the
level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4)
objective evidence of nonobviousness. Eli Lilly & Co. v.
Teva Pharm. USA, Inc., 619 F.3d 1329, 1336 (Fed. Cir.
2010).
As to the second factor, this court has held, “Factors
that may be considered in determining level of skill
include: type of problems encountered in art; prior art

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solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and
educational level of active workers in the field.” See
Custom Accessories, Inc. v. Jeffrey-Allen Indus., Inc., 807
F.2d 955, 962 (Fed. Cir. 1986).
In this case, the prior art, the problems giving rise to
the invention, and the invention itself featured the meat
encasement art. The district court, however, discounted
the importance of familiarity or experience with meat
products. Instead, the district court opined that the
person of ordinary skill would have familiarity with the
knitting art but no familiarity with the meat encasing art.
Without some understanding of meat and meat encasement technology in various settings, the artisan of ordinary skill would not grasp many aspects of the invention.
Therefore, entirely omitting the meat encasement art led
the validity search astray.
The ’148 patent specification repeatedly focuses on the
meat encasement art. The patent’s Title, Field of the
Invention, and Summary of the Invention all define the
invention as a “casing structure for encasing meat products.” ’148 patent, at [54], col.1 ll.14-15, col.2 l.41. Similarly, claim 1 recites a “casing structure for encasing meat
products” and further recites “a meat product is stuffed
into said casing structure” and the stockinette is “to
prevent the adherence of adjacent meat product.” Further, the prior art’s meat adherence problem solved by the
claimed invention concerns meat encasement, not knitting. The first line in the ’148 patent’s Description of
Prior Art states, “It is known in the meat encasing art …”
and goes on to discuss the prior art meat encasements
and their problems. ’148 patent col.1 l.20. Accordingly,
the level of ordinary skill in the art of the claimed invention includes the meat encasement art.

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As to the first factor, the district court’s obviousness
ruling rests on U.S. Patent No. 698,499 (filed Mar. 28,
1901) (“Hirner”), U.S. Patent No. 1,981,057 (filed Oct. 29,
1931) (“Lombardi”), and U.S. Patent No. 9,001,395 (filed
June 19, 1990) (“Henricus”). Hirner and Lombardi claim
inventions related to knitted fabrics for products such as
socks; Henricus, on the other hand, teaches various
knitted encasements for meat.
Hirner discloses a method of knitting where two horizontal lines connect vertically at spaced intervals. That
connection is not created by a separate vertical thread but
instead by a loop from the bottom horizontal line thread
being looped with a loop from the top horizontal line
thread.
Lombardi discloses a method of knitting fabric using a
series of drop stitches while preventing the problem of
runs in the fabric. A “special yarn” is woven horizontally
into the fabric. At the last loop in the regular fabric
before beginning the drop stitch series, the special yarn
forms a vertical, perpendicular long loop that hangs from
the rear of the fabric and secures the regular fabric loop,
as shown in Fig.1. Lombardi also discloses an embodiment in which the special yarn loops are not hanging but
instead the top of the loop is “caught in the regular knitting,” as shown in Fig.4. The special yarn loop creates a
visual vertical line perpendicular to the horizontal special
yarn woven in the regular fabric.
Henricus discloses a meat encasement using two
separate layers: a netting with a fine mesh underneath a
number of strengthening threads. The strengthening
threads are not completely interwoven with the netting
but instead are looped only at select points.
An issued patent enjoys a presumption of validity,
and prior art may have different probative weight for the

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non-obviousness analysis for reasons including prior
consideration before the PTO. 35 U.S.C. § 282; Am. Hoist
& Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 135960 (Fed. Cir. 1984); Microsoft Corp. v. i4i Ltd. P’ship, 131
S.Ct. 2238, 2251 (2011) (citing Am. Hoist). In this case,
the examiner considered during prosecution all the prior
art cited by PCM against the claimed invention. Thus,
the examiner found that the prior art applied in this case
had not precluded patentability even before the clear and
convincing standard came into play. This court also
observes that the inclusion of meat encasement art within
the understanding of a person of ordinary skill in this art
does not preclude the use of the knitting references as
analogous to the claimed invention.
As to the third factor, the district court correctly
found all limitations of claim 1 in the prior art except the
“intersecting in locking engagement” claim limitation.
During prosecution, Mintz added that claim limitation to
overcome the examiner’s obviousness rejection over Henricus in view of Lombardi. Contrary to Mintz’s assertions
on appeal, the mere existence of different stretch capacities is not sufficient to distinguish the claimed invention
from the prior art. The prior art is not limited to a uniform stretch capacity. The PTO specifically identified
prior art references with two different stretch capacities.
The district court made a clear error, however, in its
unsubstantiated reliance on “a common sense view” or
“common sense approach” to hold that it would have been
“obvious to try” a locking engagement. The mere recitation of the words “common sense” without any support
adds nothing to the obviousness equation. Within the
statutory test to determine if a claimed invention has
advanced its technical art field enough to warrant an
exclusive right, “common sense” is a shorthand label for
knowledge so basic that it certainly lies within the skill

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set of an ordinary artisan. With little more than an
invocation of the words “common sense” (without any
record support showing that this knowledge would reside
in the ordinarily skilled artisan), the district court overreached in its determination of obviousness.
At this juncture, the district court’s reliance on the
perspective of an artisan in the knitting arts is especially
problematic. The basic knowledge (common sense) of a
knitting artisan is likely to be different from the basic
knowledge in the possession of a meat encasement artisan. Moreover, the district court emphasized that the
problem in the prior art was merely forming a checkerboard or grid-like pattern. To be specific, the district
court erroneously phrased the issue as whether it would
have been obvious to simply “fix each point of intersection” of each strand in order to solve that problem.
This statement of the problem represents a form of
prohibited reliance on hindsight. The district court has
used the invention to define the problem that the invention solves. Often the inventive contribution lies in defining the problem in a new revelatory way. In other words,
when someone is presented with the identical problem
and told to make the patented invention, it often becomes
virtually certain that the artisan will succeed in making
the invention. Instead, PCM must prove by clear and
convincing evidence that a person of ordinary skill in the
meat encasement arts at the time of the invention would
have recognized the adherence problem recognized by the
inventors and found it obvious to produce the meat encasement structure disclosed in the ’148 patent to solve
that problem.
As to the fourth factor, the district court made a clear
error in not considering or making any findings as to
Mintz’s evidence showing objective indicia of non-

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obviousness. This court has repeatedly emphasized that
the objective indicia constitute “independent evidence of
nonobviousness.” Pressure Prods. Med. Supplies, Inc. v.
Greatbatch Ltd., 599 F.3d 1308, 1319 (Fed. Cir. 2010).
Indeed, objective indicia “may often be the most probative
and cogent evidence of nonobviousness in the record.”
Ortho-McNeil Pharm. V. Mylan Labs., Inc., 520 F.3d
1358, 1365 (Fed. Cir. 2008); see also Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed.
Cir. 1985) (Objective indicia “may be the most pertinent,
probative, and revealing evidence available to the decision
maker in reaching a conclusion on the obviousness/nonobviousness issue.”). Such evidence “may often
establish that an invention appearing to have been obvious in light of the prior art was not.” Simmons Fastener
Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984).
These objective guideposts are powerful tools for
courts faced with the difficult task of avoiding subconscious reliance on hindsight. See Crocs, Inc. v. ITC, 598
F.3d 1294, 1310 (Fed. Cir. 2010) (Objective indicia “can be
the most probative evidence of non-obviousness in the
record, and enable the court to avert the trap of hindsight.”). These objective criteria help inoculate the obviousness analysis against hindsight. The objective indicia
“guard against slipping into use of hindsight and to resist
the temptation to read into the prior art the teachings of
the invention in issue.” Graham v. John Deere Co., 383
U.S. 1, 36 (1966). This built-in protection can help to
place a scientific advance in the proper temporal and
technical perspective when tested years later for obviousness against charges of making only a minor incremental
improvement. “That which may be made clear and thus
‘obvious’ to a court, with the invention fully diagrammed
and aided by experts in the field, may have been a break-

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through of substantial dimension when first unveiled.”
Uniroyal, Inc. v. Budkin-Wiley Corp., 837 F.2d 1044, 1051
(Fed. Cir. 1988).
These objective criteria thus help turn back the clock
and place the claims in the context that led to their invention. Technical advance, like much of human endeavor,
often occurs through incremental steps toward greater
goals. These marginal advances in retrospect may seem
deceptively simple, particularly when retracing the path
already blazed by the inventor. For these reasons, this
court requires consideration of these objective indicia
because they “provide objective evidence of how the patented device is viewed in the marketplace, by those directly interested in the product.” Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir.
1988); see also Spectralytics, Inc. v. Cordis Corp., 649 F.3d
1336, 1344 (Fed. Cir. 2011) (“The objective considerations
reflect the contemporary view of the invention by competitors and the marketplace.”); Continental Can Co. USA,
Inc. v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991)
(“The significance of a new structure is often better measured in the marketplace than in the courtroom.”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed.
Cir. 1985) (“Recognizing the difficulty of casting one's
mind back to the state of technology at the time the
invention was made, courts have long recognized the
usefulness of evidence of the contemporaneous attitude
toward the asserted invention. A retrospective view of the
invention is best gleaned from those who were there at
the time.”). Obviousness requires a court to walk a tightrope blindfolded (to avoid hindsight) — an enterprise best
pursued with the safety net of objective evidence.
Mintz presented considerable record evidence on objective indicia, including unexpected results, expert
skepticism, copying, commercial success, praise by others

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(even from the accused infringer PCM), failure by others,
and long-felt need. Inexplicably, the district court erroneously stated, “Plaintiffs do not appear to offer any objective evidence of nonobviousness.”
The record also shows that Mintz gave the district
court an opportunity to correct this error by noting this
oversight in its motion for reconsideration. In denying
that motion, the district court acknowledged that Mintz
did present such evidence in its opening summary judgment brief. Nonetheless, the district court dismissed
without consideration that presentation as “scant.” To
the contrary, the district court should have proceeded to
analyze the evidence.
The district court seemed to believe that it need not
fully weigh objective indicia evidence. This court has
consistently counseled otherwise. See, e.g., Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Contractors
USA, Inc., 617 F.3d 1296, 1305 (Fed. Cir. 2010) (“We hold
that the district court erred by failing to consider Transocean’s objective evidence of nonobviousness. … To be
clear, a district court must always consider any objective
evidence of nonobviousness presented in a case.”); Custom
Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
955, 960 (Fed. Cir. 1986) (“When present, such objective
evidence must be considered. It can be the most probative
evidence of nonobviousness in the record, and enables the
district court to avert the trap of hindsight.”). This obligation is not waived, as the district court seemed to
suggest, by some procedural requirement that ducks
consideration of evidence presented in the opening brief
but not pursued in a reply brief or in an oral argument
that veers in a different direction.
Indeed, where the invention is less technologically
complex, the need for Graham findings can be important

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to ward against falling into the forbidden use of hindsight.
Simply because the technology can be easily understood
does not mean that it will satisfy the legal standard of
obviousness. In fact, objective consideration of simple
technology is often the most difficult because, once the
problem and solution appear together in the patent disclosure, the advance seems self-evident. Instead, the
proper analysis requires a form of amnesia that “forgets”
the invention and analyzes the prior art and understanding of the problem at the date of invention.
Here, Mintz presented substantial evidence of unexpected results, expert skepticism, copying, commercial
success, praise by others (even from the accused infringer
PCM), failure by others, and long-felt need. See PowerOne v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir.
2010) (“[P]raise from a competitor tends to indicate that
the invention was not obvious.”); Gambro Lunda AB v.
Baxter Healthcare Corp., 110 F.3d 1573, 1579 (Fed. Cir.
1997) (Before the litigation, the accused infringer recognized the technology “as a significant advance” and
“touted the advantages.” The accused infringer’s “recognition of the importance of this advance is relevant to a
determination of nonobviousness.”); Heidelberger Druckmaschinen AG v. Hantscho Commercial Prod., Inc., 21
F.3d 1068, 1072 (Fed. Cir. 1994) (“Indeed, the litigation
argument that an innovation is really quite ordinary
carries diminished weight when offered by those who had
tried and failed to solve the same problem, and then
promptly adopted the solution that they are now denigrating.”); Continental Can Co. USA, Inc. v. Monsanto Co.,
948 F.2d 1264, 1273 (Fed. Cir. 1991) (“Thus when differences that may appear technologically minor nonetheless
have a practical impact, particularly in a crowded field,
the decision-maker must consider the obviousness of the
new structure in this light. Such objective indicia as

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commercial success, or filling an existing need, illuminate
the technological and commercial environment of the
inventor, and aid in understanding the state of the art at
the time the invention was made.”).
For example, when PCM was the distributor of JifPak products covered by the ’148 patent (for 8 years),
PCM sent customers many letters and brochures praising
the benefits of the Jif-Pak products. Once Mintz terminated the distribution agreement, PCM began selling the
products accused of infringement in this case. Similarly,
other companies have been accused of infringement by
Mintz and either requested to license the ’148 patent or
were found to infringe a related European patent. Mintz
has been granted similar patents in other countries and
has sold embodiments of the ’148 patent in 20 countries.
Additionally, despite the old elastic netting having
been sold on the market for over 30 years and the collagen
film for over 10 years, before Mintz’s claimed invention,
the prior art disclosed no solutions to the problem of meat
adherence without the laborious two-step process or the
higher expense. Mintz presented an example of a competitor who tried to solve the problem but failed. Since
their introduction over 15 years ago, the Jif-Pak products
have become the industry standard. Mintz has sold over
$70 million of the Jif-Pak products in the United States
alone.
Having identified several errors in the district court’s
obviousness analysis, this court vacates and remands to
the district court. See Bausch & Lomb, Inc. v. BarnesHind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986)
(“This court, as an appellate court, may not make the
required Graham factual findings, and must therefore
remand that determination to the district court. The
district court should not ignore the four-part analysis the

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authorities require.”). In light of the following section on
the issue of infringement, however, this court leaves to
the district court to decide whether any further proceedings are necessary. The district court may proceed if the
parties are still contesting validity of the ’148 patent.
IV.
The district court correctly found the accused PCM
products do not infringe the ’148 patent. The PCM products do not satisfy the “intersecting in locking engagement” claim limitation. The longitudinal strands in the
PCM products are always separated by at least one row of
regular loops.
BN

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CU

CR

As shown in the figures above, the longitudinal
strands are represented vertically. Each longitudinal
strand is made of long loops. The loops of the regular
fabric are much smaller than the long loops that make up

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the longitudinal strand. In each figure, there are two
longitudinal strands.
For each longitudinal strand,
starting from the bottom, the figure shows the top of one
loop, then the entirety of another loop, and finally the
bottom of another loop. Each longitudinal strand is
separated from the one below and above by rows of regular loops (three rows in the BN netting, two rows in the
CU netting, and one row in the CR netting). The gaps
(made of regular loops) between the loops of the longitudinal strands preclude the longitudinal strands from
“intersecting in locking engagement.”
Indeed, the PCM products have the same gap (made
of regular loops) between each longitudinal strand that
Mintz argued the prior art Lombardi showed as distinct
from the claimed invention:
In the embodiment shown in Fig. 4 … in
Lombardi, each loop of special yarn extending in
the longitudinal direction does not intersect in
locking engagement with each special yarn extending in the lateral direction to form a grid-like
pattern. This is also apparent from Fig. 6 of
Lombardi, where the aligned long loops of special
yarn are each separated from one another by a
row of regular loops.
Appendix at A2944.

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As shown in Fig.4, the top of the single loop in special
yarn 40 and the two loops in special yarn 42 are looped
with a regular fabric loop. There is a gap (made of regular fabric loops) between the top of the loop in special yarn
40 and the horizontal line of special yarn 41. Similarly,
there is a gap (made of regular fabric loops) between the
top of the loops in special yarn 42 and the horizontal line
of special yarn 43.

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As shown in Fig.6, the longitudinal strands are represented by short vertical darker lines. Each vertical line is
separated from the one below and above by a gap of white
space, representing the regular fabric loops.
Mintz’s argument for why Lombardi lacks the “intersecting in locking engagement” claim limitation applies
similarly to explain why PCM’s accused products also lack
that claim limitation. This court affirms the district
court’s holding of non-infringement.
VACATED-IN-PART, AFFIRMED-IN-PART,
AND REMANDED.