United States Court of Appeals for the Federal Circuit
2008-1528, -1529
STEVEN D. RITCHIE and
H. DAVID REYNARD (as Trustee for the Harlie David Reynard, Jr. Revocable Trust),
Plaintiffs-Appellants,
v.
VAST RESOURCES, INC. (doing business as Topco Sales),
Defendant-Cross Appellant.
Edward P. Dutkiewicz, Edward P. Dutkiewicz, P.A., of Dade City, Florida, argued
for plaintiffs-appellants.
Michael D. Harris, SoCal IP Law Group, LLP, of Westlake Village, California,
argued for defendant-cross appellant.
Appealed from: United States District Court for the Middle District of Florida
Judge Richard A. Lazzara
United States Court of Appeals for the Federal Circuit
2008-1528, -1529
STEVEN D. RITCHIE and
H. DAVID REYNARD (as Trustee for the Harlie David Reynard, Jr. Revocable Trust),
Plaintiffs-Appellants,
v.
VAST RESOURCES, INC. (doing business as Topco Sales),
Defendant-Cross Appellant.
Appeals from the United States District Court for the Middle District of Florida
in case Nos. 8:06–CV–2128 and 8:06-CV–2229, Judge Richard A. Lazzara.
__________________________
DECIDED: April 24 ,2009
__________________________
Before MICHEL, Chief Judge, BRYSON, Circuit Judge, and POSNER, Circuit Judge. ∗
POSNER, Circuit Judge.
The plaintiffs brought suit for patent infringement against the defendant, and
prevailed in the district court, precipitating an appeal that, among other things,
challenges the patent’s validity. Dissatisfied with the amount of relief the court gave
them, the plaintiffs cross-appeal; but on the view we take, the only issue we shall have
∗
The Honorable Richard A. Posner, Circuit Judge, United States Court of
Appeals for the Seventh Circuit, sitting by designation.
to consider is whether the patented invention would have been “obvious” to persons
skilled in the relevant art, as that word is understood in patent law. 35 U.S.C. § 103(a).
The plaintiffs own a manufacturer, called Know Mind Enterprises, and the
defendant, doing business under the name Topco Sales, is another manufacturer. 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.
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
2008-1528, -1529 2
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
2008-1528, -1529 3
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.
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,
2008-1528, -1529 4
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).
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).
2008-1528, -1529 5
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). These decisions, too, support our conclusion that the
judgment must be reversed with instructions to dismiss the suit.
REVERSED
2008-1528, -1529 6