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April 24, 2009


Mind Enterprises successfully sued Vast Resources for its patent claiming a lubricious glass rod with a bulbous tip, the patent titled "Sex aid".  On appeal, the defendant was able to convince the CAFC that there was nothing new to getting nude with attitude, even if the gist had a probing assist. The legal gist: mere substitution of materials is obvious.

Steven D. Ritchie and H. David Reynard v. Vast Resources (CAFC 2008-1528, -1529)

7th Circuit Judge Posner, writing the CAFC panel opinion, felt the need to get clinical by definition. While odd, Judge Posner ties the analogy in later, albeit oddly.

Both firms produce what the parties call "sex aids" but are colloquially referred to as "sex toys." A more perspicuous term is "sexual devices," by analogy to "medical devices." The analogy lies in the fact that, like many medical devices (thermometers for example), what we are calling sexual devices are intended to be inserted into bodily orifices, albeit for a different purpose.

A different purpose indeed. On to the technology at hand, though Judge Posner cannot entirely conceal a surreptitious thrill.

The devices are generally in the shape of rods of various curvatures and are made out of rubber, plastic, glass, or some combination of these materials. Until the plaintiffs began manufacturing their patented sexual devices, glass sexual devices were made out of soda-lime glass, the most common form of glass. The plaintiffs' patent (U.S. Patent No. Re 38,924, the 2005 reissue of No. 6,132,366, filed on April 1, 1999) claims a "sexual aid...fabricated of a generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial absorptions." Glass that contains boron oxide is called "borosilicate glass." The "silicate" is a reference to the fact that like most glass, the predominant component of borosilicate glass is silica.

By "lubricious"--a word whose primary meaning, appropriate for a sexual device, is "lecherous"--the patent means only "slippery," which is the secondary meaning of the word. The patent's use of the word in that sense is confusing, because glass is smooth rather than slippery. But what is meant is that the glass, because it contains oxide of boron, is smoother than soda-lime glass and therefore becomes slippery with less lubricant than a device made out of soda-lime glass. The patent's use of the term "appreciable amount" of oxide of boron is also troublesome, because it is vague. But apparently all that is meant is that the plaintiffs are claiming that their invention uses glass that has the amount of boron oxide usually found in borosilicate glass.

Borosilicate glass is the glass out of which Pyrex glassware was originally made, and is sometimes still made. Corning Glass Works (now Corning, Inc.), the original manufacturer of Pyrex glassware, now makes its kitchen glassware (still under the trade name Pyrex) out of tempered soda-lime glass, except in the European Union, where it continues to make it out of borosilicate glass.

That glass has the properties that the patent claims for it, and one can see how those properties (even resistance to electricity, see M. Klintschar, P. Grabuschnigg & A. Beham, Death from Electrocution During Autoerotic Practice: Case Report and Review of the Literature, 19 Am. J. Forensic Med. Pathology 190 (1998)) might enhance the utility of sexual devices made out of it. Nevertheless, though the plaintiffs' invention is useful (setting aside any qualms that one might have about sexual devices in general), it is not patentable if it would have been "obvious," not of course to the average person but to a person having the relevant technical skills. Given that it has commercial value, as heavily emphasized by the plaintiffs, and given that Pyrex, made originally as we said from borosilicate glass, has been sold by Corning for almost a century (and it was sold under other names beginning in 1893, when borosilicate glass was first invented), to call its use in a sexual device "obvious" may seem the triumph of hindsight over insight. Commercial value is indeed one of the indicia of nonobviousness, Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575-76 (Fed. Cir. 1984), because an invention that has commercial value is likely to come on the market very shortly after the idea constituting the invention (in this case the use of borosilicate glass in a sexual device) became obvious; if the invention did not appear so soon despite its value in the market, this is some evidence that it wasn't obvious after all. But for a variety of reasons commercial success is deemed a "secondary" indicator of nonobviousness. E.g., Graham v. John Deere Co., supra, 383 U.S. at 18; Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483-84 (Fed. Cir. 1997). The commercial success of a product can have many causes unrelated to patentable inventiveness; for example, the commercial success of an "invention" might be due not to the invention itself but to skillful marketing of the product embodying the invention.

Among the inventions that the law deems obvious are those modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value (otherwise they would not be undertaken) but do not involve sufficient inventiveness to merit patent protection. This class of inventions is well illustrated by efforts at routine experimentation with different standard grades of a material used in a product--standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable. This is such a case.

Was Judge Posner suggesting it to be routine experimentation to try sticking a Pyrex baking dish up the ass?

A manufacturer might change the composition of a type of glass, such as borosilicate glass, by adding or subtracting types or amounts of the various components; and the change might not be obvious in any sense. The plaintiffs' patent, however, with its vague reference to "appreciable amounts" of oxide of boron, does not claim any variant of off-the-shelf borosilicate glass. And since that is a standard product with well-known properties--including the properties listed in the patent--to experiment with substituting borosilicate glass for ordinary glass in a sexual device was not a venture into the unknown. That is in contrast with inventing medical devices, which require testing for safety and efficacy and approval by the Food and Drug Administration before they can be sold. Medical Device Amendments of 1976, 21 U.S.C. § 360c, et seq.; see Medtronic, Inc. v. Lohr, 518 U.S. 470, 475-77 (1996).

Ah, here's where the earlier definitional analogy to medical devices comes in: some obscure reasoning that devices requiring government approval are by definition of a higher caliber of inventiveness than something you just have to be over 18 to walk into a shop and buy.

Composition substitution is terminal electrocution for any patent, even if greater utility is realized, and no one else had thought of it for a very long time. Note that there was no analysis of the claims. The patent was simply dismissed out of hand. Facile and loose jurisprudence here.

This case thus exemplifies the Supreme Court's analysis in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." Id. at 417 (emphasis added). (The last sentence describes our case to a tee.) There was, the Court continued, no need for the district court to "seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. See also Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326-27 (Fed. Cir. 2008).

Another case on point is Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 992-93 (Fed. Cir. 2009): "The combination of putting feet on the bottom of the candle holder and using the cover as a base for the candle holder was a predictable variation.... The combination of a cover-stand and feet on the bottom of the candle holder was obvious to try in an effort to minimize scorching, as the combination would further raise the bottom of the candle holder above the supporting surface. The resulting, and desired, decreased heat transfer between the candle holder and the supporting surface from the combination would have been entirely predictable and grounded in common sense."

And if more is required to make our point, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR Int'l Co. v. Teleflex Inc., supra, 550 U.S. at 406, 415, which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle). Other substitution cases in which patentability was denied on grounds of obviousness include Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535-38 (Fed. Cir. 1983); Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740, 749-50 (7th Cir. 1982), and Lyle/Carlstrom Associates, Inc. v. Manhattan Store Interiors, Inc., 635 F. Supp. 1371, 1381-83 (E.D.N.Y. 1986), aff'd, 824 F.2d 977 (Fed. Cir. 1987).

Reversed. Dead patent.

Posted by Patent Hawk at April 24, 2009 4:38 PM | Prior Art


What? The notorious free-marketeer rubs one out Sakraida-style using KSR as a mouthpiece? I'm shocked. SHOCKED. What a shocker.


Posted by: anonymouse at April 25, 2009 1:47 PM

This is just too good to pass up.

First, now I understand why that chick kept calling me "lubricious". I thought she was complimenting my . . . well, technique. Thank you, Judge Posner, for clearing that up.

Second, the good judge advises us that thermometers and sexual devices are inserted into orifices for different purposes. No doubt. But there is a gold mine here for some hungry inventor first to file (under the new system) on a dildo-thermometer. The potential market is mind-boggling, as is this whole "art field."

Third, Mind Enterprises was scooped anyway. I remember when I first went to work in an ER in the late 60's how shocked I was at how often doctors have to retrieve glass objects, including light bulbs, from the lower alimentary canals of perverts. Some of these glass perversion "devices" must have been borosilicate or at least rendered borosilicate-perversion obvious.

Finally, if anyone can get a link to that Am. J. F. Med. Path. article the judge was reading up on, we would all appreciate it.

BTW -- is there no mention of the new use for existing composition in this case. Sounds like a good application of the principle, particularly if ER visits are not considered public disclosures.

Posted by: Babel Boy at April 25, 2009 5:49 PM

Babble Boy

I suppose by chick, you mean the guy with the hairy legs, stubble, and wig? And word has it that you volunteered to assist with those tricky extractions every chance you got. As you have demonstrated, you can't "pass up" the chance to tell us all about it.

Posted by: Just sayin' at April 26, 2009 6:57 AM

Well, another post of mine deleted in the corresponding article over at Patently O-so-lame. I commented that what better evidence do you need that Mooney might really be Dennis than a post that mentions both sex toys AND cow shit. I said all that's missing is the white wine.

My post was no worse than many of the posts that this type of topic dredges up, but of course since it suggested the link between Mooney and DC, then of course it was deleted. What is funny is that DC doesn't seem to think anyone notices or can put two and two together, like he's getting away with something. Yeah right.

To me (and apparently to many others), its all quite "transparent."

Posted by: Just sayin' at April 26, 2009 4:36 PM

Or, then again, maybe it's because nobody wants to hear your perverted accusations, conspiracy theories, and profanity. You have yet to add anything of substance to any discussion on either blog.

Wonder when Hawk will wise up and boot you off of this one.

Posted by: Babel Boy at April 27, 2009 8:12 AM

Babble Boy,

I guess I added enough for you to comment. Apparently you don't mind hearing Mooney talk about dog crap and glory holes. Guess it makes you feel comfortable and familiar.

But I'm the one talking making perverted accusations? Personally, I don't want to hear about your torrid experiences in the ER pulling stuff out of peoples A$$es.

Posted by: Just sayin' at April 27, 2009 5:06 PM

"nobody wants to hear your perverted accusations,"

Apparently many do, and many agree with my theory. I guess you are satisfied to remain in the dark like a good little liberal idiot. Or better yet, like an object deeply implanted, as you put it, in the alimentary canal.

Maybe Obama will save you from yourself.

Posted by: Just sayin' at April 27, 2009 5:17 PM

Gentlemen (using the term loosely):

This is a patent blog, not an ad hominem garbage heap. A tad more decorum, please.

At the least, if you are going to slag one another, please polish it with a little wit. At least then it may have residual entertainment value for other readers.

Thank you.

- The (Boring) Management

Posted by: Patent Hawk at April 27, 2009 7:51 PM

Sorry Hawk,

On the other hand, you have to expect at least some garbage with a topic like this...

Boring commenter...

Posted by: Just sayin' at April 30, 2009 5:09 AM