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Obviousness Is Found Where Motivation To Combine Prior Art Resides In Problem To Be Solved


In Dippin' Dots, Inc. v Mosey (Nos. 2005-1330-1582; February 9, 2007), a Federal Circuit panel affirms a jury';s special verdict finding obviousness of the Dippin' Dots Inc. ("DDI") frozen ice cream patent. Obviousness, says the panel, requires a demonstration of a teaching, suggestion or motivation to combine references, but, the test is a flexible one which may find "motivation to combine… in the nature of the problem to be solved." The Federal Circuit agrees with the jury's finding that DDI's prior sales at the Festival Market, which were more than one year before the filing date of DDI's patent application, were not experimental and therefore were prior art. As prior art, the processes and products disclosed at the Festival Market could be combined with other relevant art to render the claims obvious. The Federal Circuit concludes that although DDI modified the process practiced at the Festival Market, the modifications were obvious elaborations, and the motivation for DDI to make "these trivial modifications" is readily apparent "from the problem to be solved."

The Federal Circuit panel also affirms the finding of unenforceability due to inequitable conduct, but reverses the district court's finding of antitrust liability. The district court had found that DDI withheld a material reference with the deceptive intent required for Walker Process liability. The Federal Circuit reverses, stating that Walker Process fraud requires a higher threshold showing of both materiality and intent than is required for inequitable conduct. A finding of Walker Process fraud, unlike inequitable conduct, can not result from a balancing between materiality and intent; each factor must be proved independently. With the judgment of antitrust liability reversed, the Federal Circuit vacates the grant of attorney's fees under the Clayton Act, and remands for the district court to consider fee awards under 35 U.S.C. § 285.


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