In K-Tec, Inc. v. Vita-Mix Corp., the Federal Circuit affirmed the district court’s finding that two design patents relating to pitchers were non-analogous art to utility patent claims relating to a blender jar. The Federal Circuit’s analysis focused on the problem being solved by the invention, and differs from a decision of the U.S. Patent Office Board of Appeals and Interferences, which focused on similarities between the functions of pitchers and blender jars.
The Patents At Issue
The patents at issue were K-Tec’s U.S. Patent 6,979,117 and U.S. Patent 7,281,842, directed to blender jars. The Federal Circuit identified claim 1 of the ‘842 patent as representative:
1. A blending jar apparatus, comprising:
a blending jar having a blending element which rotates on a central axis, the jar to hold at least one foodstuff to be blended, the blending jar comprising:
a bottom wall;
four side walls extending from the bottom wall, the four side walls defining an opening having a generally rectangular shape, the opening being configured to receive the at least one food-stuff;
a fifth truncated wall disposed between two of the four side walls;
a handle secured to the blending jar adjacent to the fifth truncated wall;
wherein the fifth truncated wall is positioned closer to the central axis than corners formed by the four side walls.
As depicted in the patent figures, the “truncated wall” in effect cuts off one corner of the otherwise square-shaped blender jar. As explained by the Federal Circuit:
As a result of this geometry, the vortex created when blending liquid inside the container moves away from the central axis and toward the truncated wall. … The shifted vortex creates a flow pattern in which, during blending, the liquid will climb up the corner opposite the truncated wall and will be lower at the truncated wall. … flow pattern reduces cavitation in the container, increasing the speed and efficiency with which smoothies and other beverages can be made.
The Non-Analogous Art
The prior art references found to be non-analogous art to the blender jar claims were two design patents, to Hobbs (U.S. Design Patent 163,117) and Grimes (U.S. Design Patent 227,535). Each of these relates to an ornamental design for a pitcher, each of which has a truncated wall that cuts off one corner of otherwise square-shaped pitchers.
The Federal Circuit Decision
The Federal Circuit explained the test for “analogous art” as follows:
[The reference] must satisfy one of the following conditions:
(1) the reference must be from the same field of endeavor; or
(2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved.
A reference is reasonably pertinent if it, as a result of its subject matter, “logically would have commended itself to an inventor’s attention in considering his problem.”
Vita-Mix conceded that the design patents were not in the same field of endeavor, but argued that they nonetheless were “reasonably pertinent,” based on “the inventor’s deposition testimony that the problems he confronted during the development of the patented jar included designing a jar that would fit within a particular dimension.” Vita-Mix also noted that during the USPTO reexamination of the ’117 patent, the Board held that both Hobbs and Grimes were analogous art.
K-Tec argued that the ornamental designs of the pitchers “had no bearing on the inventor’s cavitation problem,” which was unique to blenders. K-Tec also noted that the size of the container was not a “problem” in the prior art.
The Federal Circuit agreed with K-Tec and affirmed the district court’s determination. In particular, the Federal Circuit found that Vita-Mix had “failed to raise a genuine issue of material fact that the references would have been reasonably pertinent [to] the inventor in considering his problem.” The Federal Circuit cited statements in the patent regarding “four prior art problems that the invention solves: blender speed, safety, cavitation, and the blender’s ability to blend frozen ingredients. The Federal Circuit found these statements to be consistent with the inventor’s testimony at trial that “he sought to create a blending jar that ‘would reduce or prevent cavitation when blending frozen drinks.'” Although he also mentioned a desire that “the resulting jar .. fit within K-Tec’s existing quiet box,” there was “no dispute that creating a smaller jar was not the problem he set out to solve because K-Tec’s existing jars already fit.”
The Federal Circuit found that the Board’s decision did “not raise a genuine issue of material fact.” First, the Board’s opinion was not issued until well after the district court entered final judgment. Further, “it was Vita-Mix’s burden before the district court to proffer evidence such that a reasonable juror could find the ’117 and ’842 patents invalid under the clear and convincing standard of proof.” As noted by the district court, where Vita-Mix’s expert’s report was “silent on the question of why [the inventor] would have looked to non-blending containers” that burden was not satisfied.
The Board Decision
The Board decision cited by Vita-Mix was rendered in Reexam Control No. 90/008,814.
Initially, we do not agree with Patent Owner, that the pitchers of Hobbs and Grimes would not be considered analogous art to formulating blender jars. … As pointed out by Requester, both pitchers and blenders perform similar functions, such as holding a fluid. … Moreover, both pitchers and blenders are used to dispense liquids in similar manners, such as pouring a frozen beverage into a glass. The field of endeavor can be correctly determined “by consulting the structure and function of the claimed invention as perceived by one of ordinary skill in the art” with “reference to explanations of the invention’s subject matter in the patent application.” In re Bigio, 381 F.3d 1320,1325-26 (Fed. Cir. 2004) (affirming Board’s finding that prior art toothbrush was in same field of endeavor as patentee’s hairbrush where Board concluded that “the structural similarities between toothbrushes and small brushes for hair would have led one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes”).
Thus, it appears that the Board reached its decision under the first prong of the analogous art test, while the Federal Circuit decision rested on the second prong.
(Despite its decision on this issue, the Board affirmed the Examiner’s decision to not reject the claims of the ‘117 patent, and Vita-Mix has since dropped its appeal of that decision to the Federal Circuit.)
Developing The Facts, Framing The Issues
The decisions here underscore the factual underpinnings of a non-analogous art determination, and also demonstrate the importance of framing both the “field of endeavor” and the “problem solved” by the invention. From the patentee’s perspective, these issues should be framed as narrowly as feasible.
This decision follows In re Klein, where the Federal Circuit also reversed a Board determination that the cited references were analogous art, again focusing on the problem solved by the invention.