To qualify as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it 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.” Mere ancillary considerations are not sufficient to define the “problem” that the inventor was attempting to solve.
Background / Facts: The patents in this case relate to commercial blenders that are used to make blended beverages. They claim a “blending jar” that comprises “four side walls” and a “fifth truncated wall” that effectively cuts off one of the corners. The benefit of the claimed geometry is that it alters the flow pattern of the liquid during blending in a way that reduces cavitation, which occurs when a pocket of air envelops the area surrounding the blender blade during blending. Vita-Mix’s attempted design-around, an admitted copy of K-TEC’s five-sided container, simply rounded out the fifth truncated wall so that it was no longer “flat” but became curved. Vita-Mix argued that their container was accordingly a three-walled container with one overly large curved wall, rather than a five-walled container with one small truncated wall. Citing ample support in the specification and prosecution history for a broad construction of a “wall,” along with the mere trivial change in Vita-Mix’s design, the district court easily disposed of literal infringement on summary judgment and further imposed willfulness liability. The appeal focused primarily on invalidity.
Issue(s): Whether two prior art references directed to ornamental design concerns, and admittedly not from the same field of endeavor, nevertheless qualify as analogous art in light of the inventor’s comments that he needed to design a jar that would fit within a particular dimension.
Holding(s): No. For a reference outside of the patent’s field of endeavor to qualify as “analogous art” for an obviousness analysis, the reference must be reasonably pertinent to the particular problem with which the inventor was 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.” The inventor here testified that he sought to create a blending jar that “would reduce or prevent cavitation when blending frozen drinks.” While the inventor’s testimony also mentioned that, in developing the patented jar, he wanted the resulting jar to fit within his company’s existing quiet box, there is no question that creating a smaller jar was not the “problem” he set out to solve because K-TEC’s existing jars already fit within the quiet box. Thus, physical size was an ancillary consideration and not the “problem” being solved. (The court found Vita-Mix’s analogous art arguments equally trivial, and maintained the finding of willful infringement.)