Arkie Lures, Inc. v. Gene Larew Tackle, Inc.

• Decision Date: 08 July 1997
• Docket Number: No. 96-1239,96-1239
• Parties: ARKIE LURES, INC., Plaintiff-Appellee, v. GENE LAREW TACKLE, INC., Defendant-Counterplaintiff/Appellant, v. Bob D. CARNES, Counterdefendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 953

119 F.3d 953

43 U.S.P.Q.2d 1294

ARKIE LURES, INC., Plaintiff-Appellee, v. GENE LAREW TACKLE, INC., Defendant-Counterplaintiff/Appellant, v. Bob D. CARNES, Counterdefendant-Appellee.

No. 96-1239.

United States Court of Appeals, Federal Circuit.

July 8, 1997.

Rehearing Denied; Suggestion for Rehearing In Banc

Declined Sept. 11, 1997.

Boyd D. Cox, Fayetteville, AR, argued for plaintiff-appellee and counterdefendant-appellee. With him on the brief was Michael H. Mashburn, Mashburn & Taylor, Fayetteville, AR. Of counsel on the brief was Bill Putman, Jr., Mashburn & Taylor, Fayetteville, AR.

Gary Peterson, Pray, Walker, Jackman, Williamson & Marlar, Oklahoma City, OK, argued for defendant-counterplaintiff/appellant.

Before ARCHER, Chief Judge, NEWMAN and MICHEL, Circuit Judges.

Opinion for the court filed by Circuit Judge PAULINE NEWMAN. Dissenting opinion filed by Circuit Judge MICHEL.

PAULINE NEWMAN, Circuit Judge.

Gene Larew Tackle, Inc. (herein Larew) appeals the summary judgment of the United States District Court for the Western District of Arkansas, ¹ declaring invalid United States Patent No. 4,530,179 (the '179 or Larew patent) entitled "Salt Impregnated Fishing Lure." We reverse the judgment of invalidity and remand for determination of the remaining issues.

BACKGROUND

Gene Larew, a retired engineer, set out to make a plastisol fishing lure that would have a salty taste for a prolonged period in water, as compared with the salty baits then known. It is explained in the Larew patent that a striking fish will retain a salty-tasting lure for a longer time, thereby improving the fisherman's chance to set the hook.

Mr. Larew's attempts to develop and manufacture a plastic salty lure encountered great skepticism within the fishing lure trade. Although he had made samples by hand he was rebuffed by manufacturers of plastic lures, who expressed strong doubts Upon extreme persistence by Mr. Larew the product was eventually produced. The first commercial salt-impregnated plastic lure was called the "Gene Larew Salty Frog." It was an immediate commercial success. Arkie Lures copied the Larew lure and, declining Mr. Larew's offer of a license, brought this declaratory judgment action. The district court granted Arkie Lures' motion for summary judgment of invalidity, concluding that Larew's invention was "not sufficiently different" from the prior art as to render it nonobvious. This appeal followed.

about the feasibility of manufacturing such a device, as well as doubts about its properties if it could be made. Two such manufacturers testified on Larew's behalf in response to Arkie Lures' motion for summary judgment. They explained that salt is an undesirable additive for a plastic lure because it tends to roughen the smooth texture of the surface of the lure; that the presence of salt reduces the tensile strength of the plastic, rendering the lure susceptible to tearing and interfering with its flexibility; and that it is unsafe to mix chemicals such as salt with plastic, because such mixing can cause violent explosions.

DISCUSSION

A. Standard of Review

An issue may be decided by summary judgment when no material question of fact is in dispute, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 2511-12, 91 L.Ed.2d 202 (1986), or when it is shown that the nonmovant can not prevail even on its version of the facts, thus rendering a trial futile. Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986); Allied Colloids, Inc. v. American Cyanamid Co., 64 F.3d 1570, 1573, 35 USPQ2d 1840, 1841 (Fed.Cir.1995). The party moving for summary judgment bears the initial burden of coming forward with evidence that demonstrates the absence of a genuine material question of disputed fact and establishes that the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986). When the movant has met this initial burden the non-movant must come forward with sufficient evidence to show that, on the non-movant's evidence, the movant is not entitled to judgment as a matter of law. Id. at 322-24, 106 S.Ct. at 2552-53. We review de novo the district court's grant of summary judgment. Celotex, 477 U.S. at 323, 106 S.Ct. at 2552-53; Seal-Flex, Inc. v. Athletic Track and Court Construction, 98 F.3d 1318, 40 USPQ2d 1450 (Fed.Cir.1996).

B. The Obviousness Criteria

The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966) explained that in determining obviousness under 35 U.S.C. § 103 four kinds of factual inquiries are conducted: the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the field of the invention, and any objective indicia such as commercial success, long felt need, and copying. In Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 872, 228 USPQ 90, 98 (Fed.Cir.1985) the Federal Circuit elaborated:

In patent cases, the need for express Graham findings takes on an especially significant role because of an occasional tendency of district courts to depart from the Graham test, and from the statutory standard of obviousness that it helps determine, to the tempting but forbidden zone of hindsight.

Larew states that the district court failed to consider all of the Graham factors, improperly found facts on summary judgment, and erred in its conclusion. Arkie Lures responds that there was no genuine dispute as to any of the Graham factors, but only a dispute as to the legal conclusion of obviousness. We review the subject matter before the district court in order to ascertain whether summary disposition was available and, if so, whether it was correctly granted.

1. Scope and Content of the Prior Art

The district court determined, and we agree, that there was no dispute as to the scope and content of the prior art. The use of salty bait to catch fish was known, plastisol lures were known, and the prior art showed the use of organic fish attractants in plastic lures (while cautioning against insoluble attractants). No reference showed or suggested a plastisol salty lure.

Included in the prior art was a 1972 article entitled "Spice Up Your Lures," which stated that fish "taste" the lure before biting. The Modern Book of the Black Bass, published in 1972, described the use of salted pork rind as bait. United States Patent No. 3,079,722 to Greenlee described a fishing fly formed from squirrel hair with yeast and salt baked in, and explained that salt is an attractant to fish. United States Patent No. 2,979,778 to FitzSimons described a plastic lure containing an organic fish attractant, preferably rhodinyl acetate; this reference warned against the use of insoluble additives in plastic lures. A patent to Orn suggested as lure additives fish attractants having "the flavor or odor of natural bait." The record states that frozen salted minnows have been used to catch trout. The literature on fishing lures is apparently quite extensive, but despite the long use of salty lures and plastic lures, no reference was cited that showed or suggested this combination.

2. Differences Between the Prior Art and the Claimed Invention

Larew stressed four principal differences from the prior art: 1) the Larew lure works not by odor, like the attractant-carrying lures of the FitzSimons and other references, but because of its salty taste whereby it is mouthed by a striking fish for a longer period of time, thereby increasing the chance to hook the fish before it rejects the bait; 2) the salt-impregnated plastisol retains its salty taste for the life of the lure and does not spoil, unlike known salty baits such as pork rind, which lose their salt in water and rot in storage; 3) manufacture of the salt-impregnated plastisol was widely thought to be unfeasible or unsafe, and the prior art warned against the addition of solid additives; and 4) the salt was expected to roughen the surface of the plastic as well as change its texture, making it susceptible to tearing and also reducing the action of the lure.

There was no material dispute as to the nature of the differences between the prior art and the claims of the '179 patent. ² Although the evidence was not free of argument, it was not disputed that no prior art reference showed a plastic salty lure, and that the differences that are reported are factually correct.

3. Level of Ordinary Skill in the Field of the Invention

The decision of obviousness vel non is made not from the viewpoint of the inventor, but from the viewpoint of a person of ordinary skill in the field of the invention. Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1574, 230 USPQ 81, 86 (Fed.Cir.1986); see generally Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697, 218 USPQ 865, 868-69 (Fed.Cir.1983) (identifying criteria relevant to determination of the level of ordinary skill). The purpose is to assure an appropriate perspective of the decisionmaker, and to focus on conditions as they existed when the invention was made. Good ideas may well appear "obvious" after they have been disclosed, despite having been previously unrecognized.

Larew submitted the affidavit testimony of two persons skilled in the manufacture of plastic lures, Glen Carver and Hugh Harville. Carver was described by the district court as having "an M.S. in biology and chemistry and a Ph.D. in biology and was the head of the biology department at McNeese State." In the 1970s Dr. Carver was a consultant to the fishing tackle industry and helped develop the injection-molding process that is the dominant process for producing soft-bodied plastisol fishing lures. Despite Carver's high level of skill, he described his extreme skepticism of the feasibility of Larew's idea, and his belief that a satisfactory...