Dystar Textilfarben GMBH & Co Deutschland KG v. C.H. Patrick, Co., et al.
The Claimed Subject Matter Was Obvious as It Was The Work of a Skilled Chemist, Not of an Inventor.
Dystar originally sued Patrick for allegedly using Dystar’s patented process of dyeing yarn (U.S. Pat. No.5,586,992 or the ‘992 patent) . Also a party was Bann Quimica (“Bann”), who manufactured and sold the dye to Patrick. On appeal from the district court (D.S.C), Patrick and Bann challenged the finding of infringment and the refusal of the district court to hold the claims invalid for lack of enablement, anticipation or obviousness. After a detailed discussion of obviousness standards, the CAFC reversed and found Claims 1-4 of the ‘992 patent invalid as obvious.
The technology at issue relates to a process for dyeing textile materials with catalytically hydrogenated leuco indigo (a water-soluble white form of indigo pigment). With respect to the obviousness argument (my exclusive focus for the purposes of this summary) Bann argues the claims are obvious based on the combined Brochet, Wimmer (BASF), and Chaumat (BASF) patents. In particular, the critical issue was whether stabilizing catalytically reduced leuco indigo in solution form, rather than in powder form coated with molasses, for example, renders the claimed process nonobvious to one of ordinary skill in the art?
First, the CAFC reiterated the policy behind the TSM test. The TSM test “prevent[s] statutorily proscribed hindsight reasoning when determining the obviousness of an invention.” Furthermore, the CAFC repeated the earlier theme from Alza v. Mylan that “the suggestion test is not a rigid categorical rule.” The motivation does not need to be in the references, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself. The suggestion to combine need not be express, but may come from the prior art as filtered through the knowledge of one skilled in the art (a PHOSITA).
The CAFC characterized disagreement over the relevance of prior art as a disagreement over the level of ordinary skill in the art. The CAFC also disagreed with the district court jury that the PHOSITA was a dyer with no knowldge of chemistry; instead finding that substantial evidence supported a PHOSITA having higher skill in the art than just “flipping the switches,” for example knowledge of chemistry and systems engineering.
Using this understanding of the PHOSITA, the CAFC determined that a dyeing process designer would have been aware that reducing leuco indicgo in-house was time consuming, expensive and environmentally undesirable, and that buying pre-reduced indigo would be a better option. From his chemistry background, he would have known from Brochet and Chaumat how to stabilize leuco indigo solution and devise a “cheaper, faster, and more convenient” dyeing process. The use of vacuum packaging, also, was merely the exploitation of a well-known principle, thus making the subject matter of the patent the work of a skilled chemist and not of an inventor.
It is interesting to note that Ag Pro, Inc. v. Sakraida and Anderson’s -Black Rock, Inc. v. Pavement Salvage Co., two opinions of particular relevance to the upcoming KSR v. Teleflex case, were discussed by the CAFC here. From Sakraida, the court noted that there is no need for “evidence” of a motivation to combine a prior art reference with a universally-known physical principle. And from Anderson’s-Black Rock, the court stated that no explicit suggestion to combine references is necessary if the invention merely improves the efficiency of an already-known process through the use of another already-known method – both of which would have been common knowledge to ordinary artisans in the field of the endeavor.
JW Note: The CAFC appears to be using this case to bolster its arguments FOR the so-called teaching-suggestion-motivation (TSM) test for obviousness, in light of the upcoming Supreme Court consideration of KSR v. Teleflex. Practically speaking, however, this opinion is just one of a line of recent opinions by the CAFC where the court provides rationale for why TSM is a “good” test. See, for example, Alza Corporation v. Mylan Laboratories, Inc., et al., Ormco Corporation, et al. v. Align Technology, Inc. and In re Leonard R. Kahn.