Obviousness Is Found Where Motivation To Combine Prior Art Resides In Problem To Be Solved
Client Alert | 1 min read | 02.21.07
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.
Insights
Client Alert | 8 min read | 10.01.25
On September 29, 2025, the U.S. Department of Commerce Bureau of Industry and Security (BIS) announced a sweeping Interim Final Rule (IFR), (the “Affiliates Rule”) expanding which entities qualify as Entity List or Military End-User entities, thereby subjecting those entities to elevated export control restrictions under the Export Administration Regulations (EAR). U.S. export restrictions applicable to entities on the Entity List, Military End-User (MEU) List, and Specially Designated Nationals and Blocked Persons (SDN List) now apply to foreign affiliates that are, in the aggregate, owned 50% or more by one or more of the aforementioned entities. An entity that becomes subject to these restrictions because of its ownership structure will be subject to the most restrictive controls that attach to any of its parent entities, regardless of ownership stakes.
Client Alert | 2 min read | 10.01.25
CPSC Shutdown Plan: Continue Enforcement, Pause Public Engagement and Civil Penalties
Client Alert | 2 min read | 10.01.25
Client Alert | 2 min read | 09.30.25
CARB Issues Preliminary List of Entities Covered by California Climate Disclosure Laws