Summary
The United States Court of Appeals for the Federal Circuit reviewed a summary judgment holding that Süd-Chemie's patent for a desiccant container was invalid for obviousness in view of the Komatsu patent. The court held that Komatsu disclosed uncoated films and water-vapor-permeable packaging but did not establish that the relevant inner film surfaces used compatible polymeric materials as required by the patent. The court also directed the district court to consider evidence of secondary considerations, including unexpected results, vacated the judgment, and remanded.
Topics
Practice areas
Questions Presented
- Whether Komatsu disclosed or rendered obvious the claim 1 requirement that the inner surfaces of the microporous and laminate films comprise compatible polymeric materials.
- Whether Komatsu disclosed the use of uncoated microporous and laminate films.
- Whether Komatsu disclosed or rendered obvious water-vapor-permeable packaging material.
- Whether the district court properly considered evidence of secondary considerations, including unexpected results, copying, and commercial success, in determining obviousness.
- Whether the validity of the patent's dependent claims was properly before the Federal Circuit.
Holdings
- Komatsu teaches the use of uncoated microporous and laminate films because it describes heat sealing the films without adhesives and provides no indication that adhesive coatings are required.
- Komatsu discloses water-vapor-permeable packaging material because air-permeable films necessarily permit passage of water vapor, while references to waterproofness and water impermeability concern liquid water.
- Komatsu does not teach the use of compatible polymeric materials on the inner surfaces of the microporous and laminate films as required by claim 1.
- The district court was required to consider evidence of secondary considerations, including unexpected results, copying, and commercial success, as independent evidence bearing on nonobviousness.
- The court would not consider Süd-Chemie's argument that the dependent claims were valid because Süd-Chemie had not raised the validity of those claims in its summary-judgment motions below or in its opening appellate brief.
Key quotations
“Thus, Komatsu teaches the use of incompatible films precisely where the '942 patent requires the films to be compatible.” (554 F.3d at 1007)
“It is therefore evident that even though the patents disclose the same classes of polymeric materials used to form the packaging material, the containers described in Komatsu and in the '942 patent are different in a way that the '942 patent treats as important to the invention.” (554 F.3d at 1008)
Factual background
Süd-Chemie owned the '942 patent, directed to a desiccant container made from water-vapor-permeable, multilayered packaging material. Claim 1 required uncoated microporous and laminate films whose inner surfaces contained compatible polymeric materials. Multisorb sold TranSorb desiccant bags, and the district court found the claimed container obvious over Komatsu, an oxygen-absorbing package using microporous and laminate films. The Federal Circuit determined that Komatsu taught incompatible rather than compatible materials at the relevant inner surfaces and that the district court had not adequately considered evidence of unexpected results and other secondary considerations.
Procedural history
Süd-Chemie sued Multisorb in the United States District Court for the Western District of Kentucky, alleging infringement of the '942 patent. After construing disputed claim terms, the district court granted summary judgment for Multisorb, holding the patent invalid for obviousness in view of the Komatsu patent. The Federal Circuit vacated and remanded for further proceedings.
Remand instructions
Remand for further proceedings consistent with the opinion, including reconsideration of whether summary judgment of obviousness is appropriate after addressing the difference between compatible and incompatible inner-surface materials and considering the evidence of secondary considerations and any contrary evidence.