Arkie Lures, Inc. v. Gene Larew Tackle, Inc.
119 F.3d 953 (1997)
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Rule of Law:
Objective indicia of nonobviousness, such as commercial success, copying, and the skepticism of skilled artisans, must be considered as part of the whole analysis and may be the most probative evidence of nonobviousness, capable of overcoming a prima facie case of obviousness based on a combination of known prior art elements.
Facts:
- Gene Larew, an engineer, sought to develop a soft plastisol fishing lure that would have a salty taste for a prolonged period in water.
- Larew believed a salty taste would cause a striking fish to retain the lure longer, improving a fisherman's chance to set the hook.
- Manufacturers in the fishing lure trade expressed strong skepticism about Larew's idea, citing technical challenges.
- These experts believed that adding salt to plastisol would roughen the lure's surface, reduce its tensile strength and flexibility, and could potentially cause violent explosions during the manufacturing process.
- Despite the skepticism, Larew persisted and successfully developed the product, which became an immediate commercial success known as the "Gene Larew Salty Frog."
- Arkie Lures copied Larew's lure.
- Larew offered Arkie Lures a license to produce the lure, but Arkie Lures declined the offer.
Procedural Posture:
- Arkie Lures, Inc. filed a declaratory judgment action against Gene Larew Tackle, Inc. in the U.S. District Court for the Western District of Arkansas, seeking to have U.S. Patent No. 4,530,179 declared invalid.
- Arkie Lures moved for summary judgment on the issue of invalidity.
- The district court (trial court) granted Arkie Lures' motion for summary judgment, holding the patent invalid for obviousness.
- Gene Larew Tackle, Inc. (appellant) appealed the district court's judgment to the United States Court of Appeals for the Federal Circuit.
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Issue:
Is a patent for a salt-impregnated plastisol fishing lure invalid for obviousness under 35 U.S.C. § 103 when the separate elements of the invention were known, but the prior art taught away from the combination and strong objective indicia of nonobviousness exist?
Opinions:
Majority - Newman
No. A patent is not invalid for obviousness where strong objective indicia weigh in favor of nonobviousness, even if the individual components of the invention existed in the prior art. The court must apply the four factual inquiries from Graham v. John Deere: the scope of the prior art, differences between the art and the invention, the level of ordinary skill, and objective indicia of nonobviousness. While salty bait and plastisol lures were known separately, the prior art and expert opinion actively taught away from their combination, warning of product degradation and manufacturing dangers. It is insufficient to establish obviousness that separate elements existed; there must be a teaching or suggestion to combine them. The objective indicia—widespread skepticism from experts, immediate commercial success, extensive licensing, and copying by Arkie Lures—are highly probative and compelling evidence that the invention was not obvious to a person of ordinary skill at the time.
Dissenting - Michel
Yes. The patent is invalid for obviousness because the only new element was the addition of salt, a known fish attractant, to a conventional plastisol lure. The prior art overwhelmingly established that fish are attracted to tastes and that salt, specifically, was a known attractant. The majority's reliance on the 'teaching away' doctrine is misplaced, as the prior art merely suggested that miscible additives were 'desirable,' not that insoluble ones were forbidden or unworkable. The anecdotal testimony from witnesses about their fears is insufficient to overcome the strong documentary evidence of obviousness. While secondary considerations must be reviewed, in this case they are not compelling enough to overcome the strong showing that combining known elements to achieve a predictable result was obvious.
Analysis:
This case strongly reinforces the critical role of 'secondary considerations' (objective indicia of nonobviousness) in patent law. It clarifies that these factors are not merely tie-breakers for close cases but are integral to the obviousness analysis under the Graham framework and can be the most persuasive evidence of an invention's patentability. The decision serves as a powerful caution against using hindsight to invalidate a patent, emphasizing that skepticism from those skilled in the art and 'teaching away' in the prior art are potent evidence of nonobviousness. It protects inventors, particularly small ones, whose seemingly simple combinations solve problems that others in the industry either missed or deemed unsolvable.
