Federal Circuit Affirms Jury’s Invalidity Ruling Against Glamourmom’s Nursing Garment Patent

Holding:

The U.S. Court of Appeals for the Federal Circuit has affirmed a jury’s determination that plaintiff-appellant Line Rothman’s patent for a nursing garment that had invisible support for nursing mothers was invalid for being obvious. The Federal Circuit explained that a particular manner in which an invention is actually made does not necessarily negate patentability. In this case, however, the Federal Circuit saw the simple inventive process used by Rothman as evidence of the predictability and expectations in this field of art. In so stating, the Federal Circuit found no reason to disturb the obviousness holding since a person having ordinary skill in the art would have been motivated to combine an existing tank top with an existing nursing bra to arrive at the claimed invention. Further, the Federal Circuit reversed the jury finding of inequitable conduct. The Federal Circuit reasoned that while the law prohibits genuine misrepresentations of material fact, a prosecuting attorney is free to present arguments in favor of patentability without fear of committing inequitable conduct. The Federal Circuit found no basis to find deceptive intent in the arguments of plaintiff-appellant or his attorney.

Detailed Summary:

By jury verdict, the United States District Court for the District of New Jersey found claims 1, 5, and 12 of U.S. Patent No. 6,855,029 (“the ‘029 patent”) invalid. Opinion, p. 2.

In addition, the jury declined to find infringement by defendant-appellee Motherwear International (“Motherwear”). The jury also found the ‘029 patent unenforceable due to inequitable conduct. The district court sustained the jury’s verdict on all counts, denying Ms. Rothman’s and Glamourmom LLC’s (“Glamourmom’s”) motions for judgment as a matter of law (“JMOL”) and awarded costs to defendants-appellees. Id., citing Rothman v. Target Corp., Civ. No. 05-4829, slip op. at *1-2 (D.N.J. May 6, 2008).

The ‘029 patent claims a nursing garment “with invisible breast support for nursing mothers.” The specification teaches a garment with a smooth appearance and no outer cups that conceals a fully-supportive nursing bra. Id.

On October 7, 2005, plaintiff-appellant Glamourmom filed this lawsuit alleging infringement of the ‘029 patent by defendants-appellees’ products. Defendants-appellees denied these infringement allegations and countered that claims 1, 5, and 12—the independent claims of the ‘029 patent—were invalid due to anticipation and obviousness. Defendants-appellees also alleged prior inventorship by Leading Lady employee Haidee Johnstone and inequitable conduct during prosecution of the ‘029 patent. After the district court issued the assailed final judgment, plaintiffs-appellants filed the instant appeal.

On appeal, the Federal Circuit affirmed the jury’s obviousness finding, but reversed its inequitable conduct holding.

Specifically, the Federal Circuit explained that nursing garment design is a predictable art, as Ms. Rothman herself had acknowledged. The “manner in which the invention was made” does not “negative,” or negate, the invention’s patentability. Id., p. 13, citing 35 U.S.C. § 103(a).

In this case, however, the inventive process shows the predictability and expectations in this field of art. Defendants-appellees were able to present evidence to support a conclusion that the patent-at-dispute would have been obvious at the time of invention. An example of this evidence was the testimony and analysis of defendants-appellants’ expert witness, Walter Burzynski.

Moreover, the record is replete with evidence that one of ordinary skill would have been motivated and able to combine an existing tank top with an existing nursing bra to arrive at the claimed invention. The Federal Circuit cited Ms. Johnstone’s testimony, offered by defendants-appellees,  as a person of ordinary skill, that she arrived at the design for the Leading Lady 460 garment—which the jury found to anticipate the ‘029 patent—by combining her preexisting tank top and shelf bra design with her preexisting nursing bra design.

Finally, the Federal Circuit reversed the inequitable conduct holding. Specifically, the Federal Circuit rejected defendants-appellees’ first inequitable conduct charge, that Glamourmom improperly withheld Leading Lady style 438 from the PTO.  The Federal Circuit reasoned that no substantial evidence showed that style 438 was material to Ms. Rothman’s application. An applicant has no duty to disclose a reference to the PTO if it is cumulative of or less material than references already before the examiner. Id., p. 25, citing Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1443 (Fed. Cir. 1991).

The Federal Circuit likewise rejected defendants-appellants’ charge that Glamourmom committed inequitable for the purported misrepresentations made by its attorney to the examiner during the prosecution of the ‘020 patent.  The Federal Circuit explained that those statements made by the attorney were “legitimate attorney argument.” Id., p. 29.

The Patent Act gives the examiner the discretion to reject or accept an applicant’s arguments based on the examiner’s own conclusions regarding the prosecution record.

In this case, the attorney’s remarks showed an effort to persuade that did not even approach an effort to deceive the PTO or abuse the prosecution process. The first half of the attorney’s statements built toward the point that nursing garments differ from regular women’s wear and maternity garments because nursing bras have “a detachable nursing flap, a structural feature not found in a regular bra.” This conclusion was plainly accurate and in no way misstated any material facts, the Federal Circuit stated.  Id. , p. 30.

Because the award of costs in favor of defendants-appellees was based on the inequitable conduct finding, the Federal Circuit vacated such award.

On the basis of the foregoing, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded.

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