Using the Non-Analogous Art Doctrine to Combat Obviousness

September 6, 2012

Jennifer J. Wang

What This Means To You

  • If faced with an obviousness rejection based on a reference that either is from a different field of endeavor or solves a different problem than your invention, consider arguing that the reference is non-analogous art.
  • Consider including the field of endeavor of the invention and the problems the invention solves in the specification to preserve the ability to make a strong non-analogous art argument.
  • When describing the details of your invention to your patent attorney, identify the problems your invention solves, commercial spaces of interest to you, and spaces unlikely to be relevant to your invention.

Overview

In K-TEC, Inc. v. Vita-Mix Corp., the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) upheld the validity of K-TEC’s blender jar patents, holding that the pitchers cited by Vita-Mix did not constitute prior art because they were non-analogous art.

Under the non-analogous art doctrine, if a reference is not in the same field of endeavor as the invention and is not reasonably pertinent to the problem addressed by the invention, the reference cannot be used to invalidate a patent on an obviousness basis.

Case Background

Vita-Mix was accused of infringing K-TEC’s patents to a specific blender jar shape: four side walls and a fifth truncated wall disposed between two of the four side walls. K-TEC’s patents stated that the specific blender jar shape helped to reduce cavitation, which is the formation of air pockets during blending that reduce the speed and efficiency of the blender.

Vita-Mix attempted to argue that K-TEC’s patents were invalid, since pitchers with a very similar shape already existed in the prior art. In response, K-TEC argued that the pitchers cited by Vita-Mix do not qualify as prior art because they constitute non-analogous art.

Under the non-analogous art doctrine, to qualify as prior art for an obviousness analysis, a reference must be either from the same field of endeavor as the invention or reasonably pertinent to the particular problem with which the inventor is involved. The Federal Circuit previously explained in Innovention Toys v. MGA Entertainment that a reference is reasonably pertinent if it “logically would have commended itself to an inventor’s attention in considering his problem”.

In this case, the parties’ dispute focused on whether or not pitchers are reasonably pertinent to the problem with which the K-TEC blender jar shape is involved. K-TEC argued that the problem addressed by the K-TEC blender jar shape is cavitation, a problem that is not relevant to pitchers. In contrast, Vita-Mix argued that the problem being solved by the K-TEC blender jar shape is the problem of fitting the jar within a particular dimension, a problem that is relevant to pitchers.

Decision Analysis


The Federal Circuit sided with K-TEC’s argument, holding that the pitchers were, in fact, non-analogous art. The Court looked to K-TEC’s patent specification to define the problem being solved by the invention, and the specification specifically identified cavitation, blender speed, safety, and blending frozen ingredients as problems in the prior art.

The Court reasoned that, since an inventor would not have looked to pitchers to solve these problems, the pitchers were non-analogous art and could not be used to invalidate the K-TEC patents on an obviousness basis.

Takeaways

Non-analogous art is a potentially viable argument against obviousness and should be considered whenever a reference is not in the same field of endeavor as the invention or is not reasonably pertinent to the problem addressed by the invention.

In this case, the Federal Circuit looked to the patent specification to define the problem being solved by the invention. Consider identifying in the specification the specific problems in the prior art that the invention addresses and are of commercial interest to you to limit the field of prior art that can be used against your patent.