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February 13, 2009

Wardrobe Malfunction

Ms. Rothman bore her first child in March 2000, then "sought out a nursing garment that would conceal her stomach while providing easy nursing access and full breast support. Unable to locate anything more elaborate than "just basically nursing bras," Ms. Rothman undertook the task of designing her own garment." With a design in mind, she sewed together parts from other clothing products, along with additional fabric. Then she patented her "Topless Topnotch Nursing Top." 6,855,029. That done, and no longer nursing, Ms. Rothman, aka Glamourmom, got down to the business of patent enforcement. Alas.

Line Rothman and Glamourmom v. Target, Kohl's Department Stores, J.C. Penny, Leading Lady, and so on (CAFC 2008-1375)

Glamourmom got torn apart by the rag trade.

Appellees denied these infringement allegations and countered that claims 1, 5, and 12 -- the independent claims of the '029 patent -- were invalid due to anticipation and obviousness. Appellees also alleged prior inventorship by Leading Lady employee Haidee Johnstone and inequitable conduct during prosecution of the '029 patent.

After a ten-day jury trial, the jury concluded the patent largely infringed, but also invalid by anticipation and obviousness, as well as finding the Ms. Johnstone indeed had sewn there first, and that Ms. Rothman had done a dirty deed (inequitable conduct).

An outraged Glamourmom appealed.

Despite this court's deferential role in reviewing factual findings made by a jury, Glamourmom offers a highlight reel of testimonial sound bites from Appellees' witnesses in an effort to make the jury's verdict seem unreasonable.

A rare admission of humility by the CAFC, as a set up that it won't rehash the trial, except when it likes, such as with inequitable conduct. Consistency being the hobgoblin of small minds, and all that.

This court "may not weigh the evidence, determine the credibility of witnesses, or substitute [its] version of the facts for the jury's version." Agrizap, 520 F.3d at 1342.


Wishing to sew things up neatly, the CAFC panel, deciding validity, limited itself to the obviousness verdict.

In considering the district court's denial of Glamourmom's motion for JMOL of nonobviousness, "'[t]his court reviews [the] jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence.'" Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007) (quoting LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1353 (Fed. Cir. 2001)). "Those factual underpinnings include the scope and content of the prior art, differences between the prior art and the claims at issue, and the level of ordinary skill in the art." Id. at 1343. In undertaking this review, the factual inferences and credibility determinations predicate to the jury's obviousness determination are drawn in favor of the verdict winner. See C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1351-52 (Fed. Cir. 1998). The essential question is "whether the jury's verdict is sustainable on the evidence presented, not whether [this court] could have or would have gone the other way on the evidence presented." PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1375 (Fed. Cir. 2007).

The predictable answer to Glamourmom's insistence that motivation was lacking, among other things -

To the contrary, this invention falls into a very predictable field. In the predictable arts, a trial record may more readily show a motivation to combine known elements to yield a predictable result, thus rendering a claimed invention obvious. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1731, 1740-41 (2007) (listing "the effects of demands known to the design community or present in the marketplace" and "the background knowledge possessed by a person having ordinary skill in the art" as variables central to any obviousness analysis).

Nursing garment design is a predictable art. As Ms. Rothman acknowledged in her testimony, "[a] shoulder strap is a shoulder strap." Thus, it is hardly surprising that Ms. Rothman, in just one "day into the night" of sewing, combined an off-the-shelf Jockey tank top with a built-in shelf bra and an off-the-shelf Olga nursing bra to arrive at the claimed invention.

Moreover, the record is replete with evidence that one of ordinary skill would have been motivated and able to combine an existing tank top with an existing nursing bra to arrive at the claimed invention.

Glamourmom attempts to overcome this evidentiary cornucopia by cherry-picking individual prior art references and arguing that their combination into a viable nursing tank top would require "numerous creative leaps." This strategy does not rebut the jury's findings.

A reminder that the weight of secondary considerations is wholly dependent upon the strength of the primary finding of obviousness.

Indeed, a strong prima facie obviousness showing may stand even in the face of considerable evidence of secondary considerations. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) ("The district court explicitly stated in its [bench trial] opinion that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious. We have no basis to disagree with the district court's conclusion."); Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997) ("In reaching an obviousness determination, a trial court may conclude that a patent claim is obvious, even in the light of strong objective evidence tending to show non-obviousness.").

Inequitable Conduct

The inequitable conduct finding swirled around Glamourmom's business negotiations with Leading Lady. The judge put the sordid allegations to the jury, who was swayed.

The CAFC would have preferred the judge make the finding, but jury determination is not untoward. The setting of the case law bar on this count was well put. A hat tip to author Judge Rader.

Inequitable conduct is an equitable defense to patent infringement most appropriately reserved for the court. See Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1584 (Fed. Cir. 1995) (noting that "inequitable conduct is a matter for the trial judge, and not the jury"). Nevertheless, district courts occasionally delegate aspects of the inequitable conduct inquiry to juries. See Herbert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). In this case, the parties agreed to submit the pertinent factual inquiries as well as the ultimate question of inequitable conduct to the jury. Although not the preferred course, "[a]bsent a clear showing of prejudice, or failure to achieve a fair trial, the district court's choice of procedure will not be disturbed." Id.

To prevail on an inequitable conduct charge, a defendant must present "evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO]." Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). Both of these factual elements require proof by clear and convincing evidence. Id.

The materiality of a prior art product turns on whether "a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1297 (Fed. Cir. 2008) (quotation omitted). In 1992, 37 C.F.R. § 1.56 was revised to more clearly articulate the materiality standard. Revised Rule 56 provides:

[I]nformation is material to patentability when it is not cumulative of information already of record or being made of record in the application, and (1) it establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) [i]t refutes, or is inconsistent with, a position the applicant takes in: (i) [o]pposing an argument of unpatentability relied on by the Office, or (ii) [a]sserting an argument of patentability.

Intent to deceive, like intent evidence generally, often relies on evidence from surrounding circumstances, but that showing must at all times reach a threshold of "clear and convincing." Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1329 (Fed. Cir. 1998). Indeed this particular intent showing requires intent to deceive, not a mere showing that "that information was not disclosed; [rather] there must be a factual basis for a finding of deceptive intent." Herbert, 99 F.3d at 1116. "[T]he involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive." Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc). Gross negligence, for instance, is not sufficient to show deceptive intent. Eisai Co. Ltd. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353, 1359-60 (Fed. Cir. 2008).

If a defendant succeeds in proving materiality and intent to deceive, the court (or in this case the jury) must weigh these findings in light of all of the circumstances and determine if there was inequitable conduct. See Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). "This requires a careful balancing: when the misrepresentation or withheld information is highly material, a lesser quantum of proof is needed to establish the requisite intent. In contrast, the less material the information, the greater the proof must be." Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1128-29 (Fed. Cir. 2006) (citations omitted).

Because the parties here agreed to submit the entirety of the inequitable conduct query to the jury, the applicable standard of review differs from the usual case. With respect to the factual inquiries relating to materiality and intent, this court "ascertain[s] whether the presumed factual findings of material withholding and deceptive intent were supported by substantial evidence at the trial." Herbert, 99 F.3d at 1115. In evaluating the jury's ultimate conclusion that inequitable conduct occurred, this court must "determine whether there was substantial evidence whereby a reasonable jury could have reached the verdict that was reached, on the entirety of the record and in light of correct instructions on the applicable law." Id.

The inequitable conduct charge was weak, starting with materiality.

Appellees' first inequitable conduct charge, that Glamourmom improperly withheld Leading Lady style 438 from the PTO, fails because no substantial evidence shows that style 438 was material to Ms. Rothman's application.

A piece of prior art is not material to patent prosecution when it is cumulative of information already before the examiner. 37 C.F.R. § 1.56(b) (2008) ("[I]nformation is material to patentability when it is not cumulative of information already of record or being made of record in the application"); .Star Scientific, Inc. v. R.J. Reynolds Tobacco Co, 537 F.3d 1357, 1367 (Fed. Cir. 2008) ("It is well-established, however, that information is not material if it is cumulative of other information already disclosed to the PTO."). An applicant has no duty to disclose a reference to the PTO if it is cumulative of or less material than references already before the examiner. Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1443 (Fed. Cir. 1991) ("[T]he cited references were more pertinent to the Halliburton applications than were the withheld references. Halliburton had no obligation to disclose cumulative references.").

The file history for the '029 patent is replete with nursing bra disclosures, including numerous nursing bras similar to style 438.

Intent to deceive was absent. Lovely of the CAFC to find that "no reasonable jury could have found that [prosecutor] Mr. Jacobson intended to deceive the PTO," when, in fact, a jury had found just that. The "reasonable" adjective hung heavy with shame.

No reasonable jury could have found that Mr. Jacobson intended to deceive the PTO as to style 460 in light of Leading Lady's sharp business practices and Mr. Jacobson's submission of letters discussing style 460 to the PTO. Receipt of threatening letters containing vague descriptions of unsubstantiated prior art at the tail end of a souring business relationship does not create an automatic duty of disclosure. See Herbert, 99 F.3d at 1115-16. Otherwise, every potential patent licensee (and prospective infringer) could subject a patent applicant to the possibility of inequitable conduct sanctions on a whim. Leading Lady's conduct in this case illustrates the point.

Based on Leading Lady's acknowledged conduct, no reasonable jury could attribute deceptive intent to Mr. Jacobson's decision not to disclose style 460 to the PTO. Indeed, as a threshold matter, there was nothing to disclose.

The accusers tried to nab prosecutor Jacobson for arguing to overcome obviousness by stating that "nursing garments are highly specialized garments." The CAFC put out the brass ear hearing that.

Appellees challenge the propriety of these statements because Mr. Jacobson did not have any prior experience with nursing garments when he made them and because he did not consult anyone knowledgeable in the field before submitting them to the examiner.

The boundaries on a patent attorney's conduct are not so narrow, however. While the law prohibits genuine misrepresentations of material fact, a prosecuting attorney is free to present argument in favor of patentability without fear of committing inequitable conduct. See Young v. Lumenis, Inc., 492 F.3d 1336, 1348 (Fed. Cir. 2007) ("We therefore fail to see how the statements . . . which consist of attorney argument and an interpretation of what the prior art discloses, constitute affirmative misrepresentations of material fact."). This court has little basis to find deceptive intent in the routine back and forth between examiner and applicant. Moreover, this court recognizes that the Patent Act gives the examiner the discretion to reject or accept an applicant's arguments based on the examiner's own conclusions regarding the prosecution record. See id.

In this case, Mr. Jacobson's remarks show an effort to persuade that does not even approach an effort to deceive the PTO or abuse the prosecution process. The first half of his commentary builds toward the point that nursing garments differ from regular women's wear and maternity garments because nursing bras have "a detachable nursing flap, a structural feature not found in a regular bra." This conclusion is plainly accurate and in no way misstates any material facts.

Inevitable conduct reversed. As the award of costs was based on inequitable conduct, that too was reversed. Invalidity affirmed. Vacated and remanded.

Posted by Patent Hawk at February 13, 2009 2:50 PM | Prior Art


"Moreover, the record is REPLETE with evidence that one of ordinary skill would have been motivated and able to combine an existing tank top with an existing nursing bra to arrive at the claimed invention.

Glamourmom attempts to overcome this evidentiary CORNUCOPIA by cherry-picking individual prior art references and arguing that their combination into a viable nursing tank top would require "numerous creative leaps." This strategy does not rebut the jury's findings.

Bolded for emphasis so that others may start to see the correct obviousness light.

Posted by: 6000 at February 13, 2009 4:32 PM

Curious case, this. Despite the 100% negative IPRP from the USPTO as IPEA, the EPO granted a patent EP-B-1322193 with full scope claims. True, there were three EPO exam reports, but none of them had any concerns about the prior art. I commend to readers the EPO wrapper, readable in full on epoline. No wonder the owner of the US patent felt aggrieved. No wonder Judge Rader is at pains to emphasise that an appeal court must be reluctant to interfere with the fact-finding that went on at first instance. But, both sides asked for a jury. Perhaps the patent owner can make some money in Europe? So, 6000, care to tell us more about which line on obviousness is the "correct" one?

Posted by: MaxDrei at February 16, 2009 5:19 AM

This opinion is garbage.

"Nursing garment design is a predictable art."

This is not a jury finding -- it is Rader's own opinion that does not seem to be supported by any evidence except for Ms. Rothman's "admission" that "a shoulder strap is a shoulder strap."

"To the contrary, this invention falls into a very predictable field. In the predictable arts, a trial record may more readily show a motivation to combine known elements to yield a predictable result, thus rendering a claimed invention obvious." citing KSR.

What the frick is a "predictable art" or a "predictable field"??? Who, and upon what evidence, defines an entire field as predictable?

Rader's citation to KSR is annoying, if not plain disingenuous. KSR talks about predictable results, variations, use of prior art and solutions, but not a word about a predictable art or field.

Radar uses "predictable art" like it means that any new invention within such an art is prima facie Obzilla-fodder. This is a very dangerous broadening of obviousness.

Also, Rader whines on and on about the fact that Ms. Rothman was a "fledgling inventor" and did all the sewing herself at her kitchen table. So, how is that in anyway relevant to anything??? Don't these judges know that the manner of making an invention is irrelevant? Read the law!!

"Patentability shall not be negatived by the manner in which the invention was made." 35 USC 103.

". . .the verdict gives no indication that the jury predicated its obviousness ruling on the teachings in Clark." When was the last time anyone ever saw a jury give any indication or explanation for it's verdict? Is Rader one of those appointments from academia that has never presided over -- or even seen -- a jury trial?

Rader notes, with approval, that the jury found that the appellee's style 460 anticipated the patent at bar. And yet later he also notes that the provisional application for the 460 style describes the patent at bar as prior art. Would somebody please explain to me how a patent that is listed as prior art in a provisional application can be anticipated by the subject matter of that provisional application?

This jury verdict and Rader's opinion are as mind-boggling as Bilski.

And Dennis Crouch actually nominated Rader as one of his poll-choices for PTO director. Heaven forbid.

Posted by: Babel Boy at February 16, 2009 10:04 AM

But Babel, when an appeal court is under pressure to leave the first instance decision undisturbed, unless it is forced to reverse, and when the first instance, a jury no less, has determined the facts relevant for the obviousness finding, what else can a poor appeal court judge do, than find something to say, that will justify leaving the decision unreversed. Rader's text reveals just how unsavoury that task was for him on this occasion. But methinks the solution to this systemic problem is not to fire Judge Rader but, instead, for the courts to give juries and Examiners a simple and trusty roadmap (better than KSR) for deciding obviousness fairly. As you will have noted, the EPO Exr didn't even make an attempt at an obviousness attack. Probably because he could see that, under EPO-PSA, it just wouldn't fly.

Posted by: MaxDrei at February 16, 2009 2:39 PM

Yeah, Max. We need to take the EPO approach to obviousness, the USPTO approach to new matter, and the Japanese PO approach to software and combine them into a new patent system.

Posted by: Babel Boy at February 17, 2009 9:19 AM

Interesting. Hadn't thought about it that way before, Babel. Have you seen Aharonian today, with his theory about there being no "convergence" in obviousness law in the USA? But who amongst your "we" that "need" to do something is going to make the first move? Come to think of it: the EPO. It is already easing back from its ferocious position on what constitutes "added matter", as realisation gradually dawns, and confidence in English gradually grows, amongst members of DG3.

Posted by: MaxDrei at February 17, 2009 11:12 AM

"But who amongst your "we" that "need" to do something is going to make the first move?"

A most incisive query, Max. Who indeed?

Only IQ=6 or Malcom Moonbeams over at Pat. Obv. have enough time on their hands to tackle this.

I've been planing a patent reform wiki just for over a year, but can't find enough hours in the day to get it rolling.

Posted by: Babel Boy at February 18, 2009 12:18 PM


The more I see the mangling of how to determine obviousness after KSR International, the more PSA looks attractive to me. I've been involved in EPO prosecution and am perfectly comfortable with PSA. At least the determination would bear some objective relationship to the merits of the invention. Right now, USPTO examiner's pull their justification for combining references out of thin air. SCOTUS is completely clueless to (or more likely doesn't care about) the Pandora's Box they've unleashed with KSR.

Posted by: EG at February 20, 2009 12:38 PM