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January 30, 2009


5,743,942, owned by Süd-Chemie, claims a desiccant container. "Desiccant containers are frequently used to maintain a dry environment for products during storage or shipping." Süd-Chemie sued Multisorb for infringement. In summary judgment, the district court Obzillaed the patent in light of 4,487,791 (Komatsu). On appeal, Süd-Chemie cited three unmet limitations. Only one was found non-obvious. But the patent survived.

Süd-Chemie v. Multisorb (CAFC 2008-1247)

Süd-Chemie asserts that the district court erred in concluding that the Komatsu and '942 patents teach identical containers that differ only as to the absorbent substance encapsulated by the packaging materials. Specifically, Süd-Chemie contends that Komatsu fails to teach three of the limitations pertaining to the desiccant container that are recited in claim 1: (1) the use of uncoated microporous and laminated films; (2) the water-vapor-permeable character of the packaging materials; and (3) the use of "compatible" polymeric materials (as that term is defined in the specification of the '942 patent) on the inner surfaces of the microporous film and the laminated film. We agree with Multisorb that Komatsu teaches the first two elements. However, we conclude that the evidence before the district court does not support the court's conclusion that Komatsu discloses the use of compatible polymeric materials, and for that reason, we conclude that the court's summary judgment order must be vacated.

'942 survived because Komatsu had failed to teach "compatible" layered materials. The district court essentially didn't care. The number of combinations of possible materials in layers is quite large, and hence unpredictable. Komatsu hadn't resolved that technical issue.

"[C]ompatible" materials have similar melting or softening temperatures, while incompatible materials have dissimilar softening points. The district court reasoned that "[t]he Komatsu patent does not identify the inner surfaces of the films as comprised of compatible polymeric materials, but that does not mean[] that they are not." However, the Komatsu specification does identify the relative softening points of the various polymeric films that constitute the package material, and an analysis of those softening points indicates that Komatsu teaches the use of incompatible materials for the inner surfaces of the containers, whereas the '942 patent requires the use of compatible materials for those surfaces.

The district court looked only to the classes of materials described in the patents and did not examine the softening points of the materials. It therefore failed to recognize that Komatsu discloses the use of incompatible materials where the '942 patent requires compatible materials, and it therefore incorrectly concluded that Komatsu teaches the same container as that claimed in the '942 patent.

It's been said that consideration of secondary evidence of non-obviousness has withered. Here, the CAFC scolded the district court for not paying attention to that.

Süd-Chemie contends that secondary considerations, including unexpected results, copying, and commercial success indicate that the invention of the '942 patent would not have been obvious to a person of skill in the art. The district court did not explicitly address any of the secondary consideration evidence, other than to state that the '942 patent did not employ elements that worked together in an unexpected manner. As we have repeatedly emphasized, evidence relating to secondary considerations "constitutes independent evidence of nonobviousness" and can be quite instructive in the obviousness inquiry. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008). The district court should therefore attend carefully to any evidence of these secondary considerations of nonobviousness on remand. See Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000) (district court erred in failing to consider or discuss evidence of secondary considerations).

Vacated and remanded. More careful consideration may result in sustainable invalidation by the trial court.

Posted by Patent Hawk at January 30, 2009 11:17 AM | Prior Art


Odd that the CAFC would publish this opinion, without it having any discussion of KSR.

Posted by: Thom at February 1, 2009 1:21 PM

Bizarre is the Decision of the Technical Board of Appeal (TBA) of the EPO, to refuse the same claims, based on the same prior art, in sister app EP-A-831033, in that the attorneys for Süd-Chemie admitted to the TBA that Komatsu et al discloses the very features which the CAFC found to be absent from Komatsu. Whatever were they thinking? Is this another example of German inability to divine the true "disclosure" of a document, with consequent unfortunate muddling of novelty and obviousness? Seems to me that the CAFC has written a much better Decision than the TBA. The TBA Decision can be read on www.epoline.org (if any reader feels compelled to take a look).

Posted by: MaxDrei at February 2, 2009 7:40 AM