presented sufficient evidence of an intent to mislead on the part of Ms. Greiner. In fact,
Ms, Greiner disclosed a document describing the Joly Marion bowl titled, “Description
of Previously Marketed Product on Sale Prior to Invention by the Applicant” to the
Patent Office, and also disclosed a color brochure with a photograph of the Joly Marion
Bowl from which it is clear that the Joly Marion bowl was very similar structurally to the
claimed invention. P1.’s Rep. Mem. In Sup. of Mot. for Prelim. Inj. at 10. Given the
extent of Ms. Greiner’s disclosure, it is unlikely that NSI’s argument that her failure to
disclose even more was with intent to deceive the Patent Examiner will succeed.
CONCLUSION

Because NSI has raised a substantial question regarding the validity of FYEO’s

‘211 patent, this Court declines to adopt the magistrate judge’s R & R, and the motion for

preliminary injunction is denied.

So Ordered. Entered:

/of3of 03—

Ronald A. Guzman
United States Judge

43


discretion of the district court. See Amazon.com, Inc., v. Barnesandnoble.com, Inc., 239
F.3d 1343, 1350 (Fed. Cir: 2001). The moving party has the burden of showing four
factors: “(1) a reasonable likelihood of success on the merits, (2) irreparable harm if an
injunction is not granted, (3) a balance of hardships tipping in its favor, and (4) the
injunction’s favorable impact on the public interest.” Jd. No single factor is a sufficient
condition for an injunction, but the first two factors—a reasonable likelihood of success
and irreparable harm—are necessary conditions. See id.
FYEO’s Likelihood of Success on the Merits

Of the four preliminary injunction factors, NSI objects only to the magistrate
judge’s finding that FYEO has a reasonable likelihood of success on the merits. (See
Def.’s Objections at 1.) In order to succeed on the merits at trial, FYEO will have to
prove that NSI infringed upon the ‘211 patent, and the patent must withstand NSI’s
challenges to its validity. See Amazon.com, Inc., 239 F.3d at 1350. Therefore, for the
purposes of this motion, if NSI raises a substantial question regarding infringement or
validity of the ‘211 patent—that is, if it raises a defense that FYEO cannot prove “lacks
substantial merit”—then the preliminary injunction should not issue. Amazon.com, Inc.,
239 F.3d at 1350-51 (quoting Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364
(Fed. Cir. 1997)).

NSI does not object to the magistrate judge’s finding that its BeautiFills line
likely infringes upon the ‘211 patent. (See Def.’s Objections at 1.) Rather, NSI objects to
the finding that its invalidity defense lacks substantial merit. NSI raises two main

invalidity challenges: the first alleges that the ‘211 patent is obvious, the second alleges


present invention to provide a vessel which makes possible the easy and free
exchange of decoration.” See U.S. Patent No. 5553735 (issued Sept. 10,
1996); Exhibit 3 of the Declaration of Jay Bondell. The inner cavity can be
filled with two dimensional objects like pictures, or “Three-dimensional
objects such as dried flowers, small stones, pieces of metal, glass, ceramics,
plastic, wood, leaves and so on.” Similar to the bottom plate of the Fill-A-
Bowl, the Kimura mug uses a threaded bottom closure.

3. “The Kadjevich Mug”: The mug is decorative and fillable. It features an inner
container and an outer container. The user can remove the inner container,
piace photographs or other decorative material on a cardboard placard that fits
into the cavity, and then seal the mug by a twisting action that attaches a stud
on the inner container to a receptacle on the bottom of the outer container.
The decoration placed in the cavity can be changed. See U.S, Patent No.
5040317 (issued Aug. 20, 1991); Exhibit 1 of the Declaration of Jay Bondell.

4. “The Yeh Mug”: The mug also contains a removable inner container that
allows the user to decorate the cavity between the inner and outer containers.
Unlike the Kimura and Kadjevich mugs, the Yeh mug is non-plastic, but the
decorative interior cannot be changed. See U.S. Patent No. 5894948 (issued
Apr. 20, 1999); Exhibit 2 of the Declaration of Jay Bondell.

Contrary to the magistrate judge’s R & R, the prior art cited by NSI is in the same
field as the Fill-A-Bowl line: decorative, changeable containers. Because the prior art
references are sufficiently related to one another and to a related and common art, two

questions determine whether it is appropriate to combine them to support an obviousness


argues, the prior art shows motivation or suggestion to combine the Joly Marion bowl
with other prior art references to include the removabilty limitation.

In support of its first argument, NSI cites the Manual of Patent Examining
Procedure Section 2144.04, which allows an examiner to make an obviousness
determination based only on “sufficiently similar” caselaw.? But, “[i]f the applicant has
demonstrated the criticality of a specific limitation, it would not be appropriate to rely
solely on case law as the rationale to support an obviousness rejection.” Jd. Section
2144.04 provides several examples of “common practices which the court has held
normally require only ordinary skill in the art,” one of which is “making separable.”
MPEP § 2144.04(V)(C). The case cited in subsection (V)(C) is Jn re Dulberg, 289 F.2d
522, 129 USPQ 348 (C.C.P.A. 1961). In Dulberg, the court considered a lipstick holder
that was fully met by the Peterson patent except for a removable cap (which allowed
access to the bottom end of the tube for easier removal and replacement of lipstick). See
id. 289 F.2d at 523. The court upheld the rejection of the patent, holding that “if it were
considered desirable for any reason to obtain access to the end of Peterson’s holder to
which the cap is applied, it would be obvious to make the cap removable for that
purpose.” Id,

On the one hand, the Fill-A-~Bowl® products are distinguishable from the lipstick
holder in Dulberg. A lipstick holder with a removable cap remains amere lipstick holder.

A Joly Marion bowl with a removable bottom plate remains a bowl, but it is also a craft

? The MPEP is not binding on this Court, but it is entitled to judicial notice as long as it
does not conflict with the statutes and regulations interpreted therein, See Litton Systems,
Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439 (Fed. Cir. 1984).

3 The Dulberg court held that “[nJo specific prior art teaching would be necessary to show
this operation.” Dulberg, 289 F.2d at 523. Nevertheless, for good measure the court also
combined Peterson and a patent structurally similar to Peterson (the Noble patent), which
contained a removable cap. Jd.


that Ms. Greiner failed to disclose prior art and otherwise acted improperly before the
PTO.

Although FYEO’s ‘211 patent is presumed valid, NSI is entitled to raise an
invalidity defense based on any of the conditions for patentability in Part II of Title 35.
See 35 U.S.C. § 282 (2002). Here, NSI argues that the ‘211 patent is invalid because “the
differences between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a) (2002). To resolve a question of obviousness, “the scope and content
of the prior art are to be determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the pertinent area resolved.”
Graham v, John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). The Court must also
look at “Such secondary considerations as commercial success, long felt but unsolved
needs, failure of others, etc.” because “[a]s indicia of obviousness or nonobviousness,
these inquiries may have relevancy.” Jd. at 18. Where, as in this case, the subject matter
of the patent and the prior art are easily understandable, a determination of the level of
ordinary skill in the art is unnecessary. See Chore-Time Equipment, Inc. v. Cumberland
Corp., 713 F.2d 774, 779 (Fed. Cir. 1983).

NSI’s obviousness defense is two-part. First, it argues that the claims of the ‘211
patent are fully met by the Joly Marion bowl, except for the addition of a removable
bottom plate, which, under the Manual of Patent Examining Procedure, Section 2144.04,
is prima facie an obvious modification unless FYEO establishes the “criticality” of the

removability limitation. Second, even if the removability limitation is critical, NSI


cannot make an invention,” it does at least bring into question the nonobviousness of the
‘211 patent.

Nevertheless, because the removability limitation is critical to the ‘211 patent, it
would not be appropriate, under MPEP 2144.04, to rely solely on Dulberg for an
obviousness rejection. Therefore, Dulberg alone does not raise a substantial question
regarding the validity of the ‘211 patent. The prior art, however, does raise a substantial
question.

NSI argues that the following patents could be combined with the Joly Marion

bowl to render the Fill-A-Bowl obvious:

1. “The Yellin Bowl”: The bowl is intended for users to decorate by filling
cavities between an inner and outer bowl! with sand. The bowl is
distinguishable from the Fill-A-Bowl because the decorative cavity is left
open at the top to allow access to the cavity for decoration. See U.S. Patent
No. 3992811. (issued Nov. 23, 1976). However, NSI contends that the Yellin
bowl provides motivation to include access to the inner cavities of the Joly
Marion bow! because it teaches the person of ordinary skill in the art the
advantage of a changeable appearance in a decorative bow] with inner and
outer cavities. From that lesson, NSI argues it is a short—and obvious—trip to

the removable bottom plate of the Fill-A-Bowl.

2. “The Kimura Mug”: The mug is decorative and has one fillable cavity. The

material in the decorative cavity can be changed. “It is an object of the


Minute Cer Form (06/97)

United States District Court, Northern District of Illinois

sere Marae Judge Ronald A. Guzman “than Aged Sse
CASE NUMBER 02 C 1584 DATE 10/30/2002
CASE FOR YOUR EASE ONLY, INC. vs. NATURAL SCIENCE INDUSTRIES, LTD.
TITLE
{In the following box (a) indicate the party filing the motion, e.g,, plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.)
DOCKET ENTRY:
qd) oO Filed motion of [ use listing in “Motion” box above.}
(2) a Brief in support of motion due
(3) o Answer brief to motiondue___. Reply to answer brief due__.
(4) oO Ruling/Hearing on setfor att
(5) oO Status hearing[held/continued to] [set for/re-set for]on__——sset fora
(6) o Pretrial conference[held/continued to] [set for/re-set for]on___——ssetfor___—_at.
(7) a Trial[set for/re-set for]on___ at
(8) QO [Bench/Jury trial] [Hearing] held/continued to___—_at
(9) 0 This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OFRCP4(m) (Local Rule 41.1 CFRCP41(a)(1) OO FRCP41(a)(2).

ao) i [Other docket entry) ENTER MEMORANDUM OPINION AND ORDER: Because defendant
has raised a substantial question regarding the validity of Plaintiff's ‘211 patent, this Court declines to
adopt the magistrate judge’s Report and Recommendation, and the motion for preliminary injunction is

denied.

(i) (For further detail see order attached to the original minute order.]

No notices required.

Mail AO 450 form.

S| Copy to judge/magistrate judge.

No notices required, advised in open court.

Notices mailed by judge's staff. OV o 1 2002

Notified counsel by telephone

date docketed,
V | Docketing to mail notices. Ch ()

TBK

umber of notices

JekerinyOfuny Trials

date mailed notice

courtroom
deputy’s
initials

oo

" Date/time received in
central Clerk's Office mailing deputy initials



piece” similar to that on the Fill-A-Bowl. The benefits of decorative, fillable vessels, and
the benefits of sealing the interior of such vessels at the bottom place in question the non-
obviousness of the combination of these features embodied in the Fill-A-Bowl patent.
FYEO cites McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir.
2001), which warns against a hindsight analysis when determining the obviousness of a
patent where the prior art is relatively simple. McGinley is of no avail to the plaintiff
because the issue in that case is readily distinguishable from the issue here presented.
McGinley involved a patent for a baseball with specific “finger placement indicia”
designed to teach students how to throw different pitches. The patented baseball was
very similar to another baseball patented 30 years earlier. Jd. at 1343. However, the
question presented in the McGinley case is far different than that presented here. In
McGinley, the Court reviewed the trial court’s granting a judgment as of matter law after
the jury had returned its verdict, The jury had decided that the patent was non-obvious,
and the judge set the verdict aside. Thus, the question was whether no reasonable jury
could have decided that the patent was obvious. The Federal Circuit ruled that though
the similarities between the prior art and the patent were “striking,” it could not say that
no reasonable jury could find the innovation to be non-obvious. Jd. at 1345, It was
within this context that the McGinley Court offered its hindsight analysis warning. The
situation in this case is easily distinguishable because the question is not whether no
reasonable jury could decide that the ‘211 Fill-A-~Bowl patent is non-obvious, but
whether a jury is likely to decide that the ‘211 patent is non-obvious. For the reasons

outlined above, the Court finds that the arguments against the ‘211 patent’s non-

ii


rejection: (1) “whether a combination of the teachings of all or any of the references
would have suggested (expressly or by implication) the possibility of achieving further
improvement by combining such teachings along the line of the invention in suit,” and
(2) “whether the claimed invention achieved more than a combination which any or all of
the prior art references suggested, expressly or by reasonable implication.” Jn re
Sernaker, 702 F.2d 989, 994 (Fed. Cir. 1983).

The Fill-A-Bowl is essentially a combination of different elements of the prior
art. The Fill-A-Bowl patent’s first claim is a “decorative container for displaying items
in internal cavities.” The Joly Marion bowl and all four patents cited above accomplish
the same goal. The Joly Marion bowl is nearly identical structurally to the Fill-A-Bowl
as embodied in the ‘211 patent. The only exception is the inability to change the content
of the Joly Marion bowl’s internal cavities, which is accomplished in the Fill-A~-Bowl by
the removable bottom plate. However, the prior art provides motivation for such
improvement; the Yellin bowl demonstrates the advantages of a decorative bowl with
fillable internal cavities that can be changed. Thus, the only claimed innovation over the
prior art of decorative bowls with changeable, internal cavities is the Fill-A-Bowl’s
particular method of accessing the internal cavities. Rather than an open cavity at the
top, as in the Yellin bowl, the Fill-A-Bowl patent claims openings at the bottom that are
closed with a plate.

NSI has raised a valid question of whether the particular innovation of the Fill-A-
Bowl patent, a removable bottom plate allowing access to the internal cavities, is non-
obvious. Both the Kimura and the Kadjevich mugs feature internal cavities that are

closed by fixtures at the bottom of the mugs. The Kimura mug even contains a “closure

10


project: it allows the user to engage in a creative activity. Therefore, while the removable
cap in Dulberg is, in the language of MPEP Section 2144.04, a “routine expedient,” the
removable bottom plate of the Fill-A-Bowl is a critical limitation.’

Similarly, the claims of the ‘211 patent are distinguishable from the claims
considered in Dulberg, which were directed only toward the structure of the proposed
invention, not the method of removing the lipstick (which was to push the old lipstick out
with “a pencil or similar instrument”). Dulberg, 289 F.2d at 523. In contrast, the ‘211
patent is directed “to a decorative container . . . and to a method for decorating a
container.” (See U.S. Patent No. 6,325,211 B1, Field of the Invention.) For example,
Claims 1, 26 and 29 describe containers “for displaying items in an internal hollow
region,” and Claim 21 describes “a wand configured to assist with positioning items in
the internal cavities.” Unlike the claims in Dulberg, therefore, the claims of the ‘211
patent involve method, not only a simple structural change.

On the other hand, Dulberg does state that “if it were considered desirable for
any reason to obtain access to the end of Peterson’s holder to which the cap is applied, it
would be obvious to make the cap removable for that purpose.” And, although FYEO

correctly argues that Dulberg does not “espouse a general principle that removability

*NSI insists that a limitation is only “critical” if it “leads to a new result which would not
be expected by those of ordinary skill in the art.” (Def.’s Objections (quoting Jn re Reni, 419
F.2d 922, 925 (C.C.P.A. 1970)). This Court agrees with FYEO that NSI’s definition of
“criticality” is limited to cases “where patentability is predicated upon a change in a
condition of a prior art process, as a change in concentration or the like. ...” Inre Reni, 419
F.2d at 925; see also In re Dillon, 919 F.2d 688, 692-94 (Fed. Cir. 1990) (denying patent,
in part, because of the absence of unexpected results in the amount of fuel additive necessary
to reduce particulate emissions). In contrast, a “critical limitation” is customarily understood
as “one essential either to the operativeness of the invention or to the patentability of the
claims.” Storchheim v. Daugherty, 410 F.2d 1393, 1396, 56 C.C.P.A. 1147, 1150 (C.C.P.A.
1969); see also Black’s Law Dictionary (7th ed. 1999) (same definition). The removable
bottom plate is essential to the operativeness of the Fill-A-Bow!® line and, if patentable, to
its patentability.


disclosed. Thus, NSI reasons that because Ms. Greiner had the Joly Marion bowl in her
possession while she was amending her patent claims to differentiate her invention from
the prior art in the Examiner’s possession but not differentiating it from the Joly Marion
bowl, her failure to disclose the bowl must have been intentional. Mem. Opp. to Pl.’s
Mot. Prelim. Inj. At 4-5.
DISCUSSION

When a motion for preliminary injunction is the subject of an R & R, the district
court is required to conduct a de novo review of those portions of the magistrate judge's
R & R to which specific written objections have been filed. See 28 U.S.C. §
636(b)(1)(B); Fed. R. Civ. P. 72(b). Nevertheless, de novo review does not require a de
novo hearing; the district court is not required to conduct another hearing to review the
magistrate judge’s findings and credibility determinations. See United States v. Raddatz,
447 U.S. 667, 675 (1980); Goffman v. Gross, 59 F.3d 668, 671 (7th Cir. 1995); United
States v. Severson, 49 F.3d 268, 273 (7th Cir. 1995). Rather, the district court has
discretion to “accept, reject, modify, in whole or in part, the findings or recommendations
made by the magistrate judge.” 28 U.S.C. § 636 (b)(1)(C) (2002). If the district court is
satisfied with the magistrate judge’s findings and recommendations, it may in its
discretion treat those findings and recommendations as its own. Raddatz, 447 U.S. at 675.
Standard for Preliminary Injunction

The law of the Federal Circuit Court of Appeals governs the issuance of
preliminary injunctions for patent infringement under 35 U.S.C. § 283. See Hybritech
Inc. y. Abbott Laboratories, 849 F.2d 1446, 1451 n.12 (Fed. Cir. 1986). Under the law of

the Federal Circuit, the decision to grant a preliminary injunction is within the sound


the bowl is easily removable, the hollow region can be filled with decorative items (even
perishable items, such as candy, dried flowers, freeze-dried vegetables, etc.), allowing the
user to change the appearance of the bowl for different occasions.

Lori Greiner, President of FYEO, began selling her decorative bowls in early
2000 and applied for a patent on June 2, 2000. As a result, Ms. Greiner was issued a
patent that is currently being re-examined and is not at issue in this case, U.S. Patent No.
6,253,918. The first patent did, however, allow Ms. Greiner to file a continuation
application on January, 9, 2001, which resulted in the issuance of the ‘211 patent before
this Court. Ms. Greiner later assigned the ‘211 patent to FYEO.

The Fill-A-Bowl® has enjoyed great success on QVC, reaching “key item” status
and over 300,000 sales. In addition, Ms. Greiner has sold her line of products in retail
stores, A.C. Moore & Crafts, in particular. Although the Fill-A-Bowl tested well at A.C.
Moore, FYEO lost the contract to NSI and its less expensive BeautiFills Product line in
April 2002. The BeautiFills line is very similar to the Fill- A-Bowl® Product line.
Prosecution History

NSI argues that it has raised a substantial question that the ‘211 patent is invalid
because Ms. Greiner intentionally misled the Patent Office while prosecuting the patent.
Specifically, NSI claims that Ms. Greiner withheld information regarding the prior art. It
charges that Greiner did not properly disclose the Joly Marion bowl to the Patent Office.
NSI further alleges that Greiner amended her patent claims in response to the patent
Examiner’s concerns, but the amended claims, while distinguishing the claimed Fill-A-
Bowl structure from the prior art in the possession of the Examiner, did not in any way

distinguish the Fill-A-Bowl from the Joly Marion bowl which Greiner had not fully


UNITED STATES DISTRICT COURT 4
NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION DOCKETED

NOV 0 4 2002

FOR YOUR EASE ONLY, INC.,
an Illinois Corporation,

Plaintiff, Civil Action No. 02 C 1584

v. Judge Guzman
Magistrate Judge Levin
NATURAL SCIENCE INDUSTRIES, LTD.,

a New York Corporation,

Defendant.

MEMORANDUM OPINION AND ORDER

Defendant, Natural Sciences Industries, Ltd., ("NSI"), has filed written objections
to Magistrate Judge Levin's Report and Recommendation ("R & R") entered on June 12,
2002. In his R & R Magistrate Judge Levin considered a motion for preliminary
injunction filed by the Plaintiff, For Your Ease Only, Inc., ("FYEO"), against Natural
Science Industries, Inc., (“NSI”) seeking equitable relief from an alleged infringement of
its '211 patent. He recommended that this Court grant the injunction. For the reasons set
forth below, this Court declines to adopt the R & R.

I. BACKGROUND'

This matter arises out of NSI’s alleged infringement of FYEO's U.S. Patent No.
6,325,211. The ‘211 patent covers a series of products in FYEO’s Fill-A-Bowl® line.
The Fill-A-Bowl® is a transparent decorative bowl consisting of a smaller inner bowl
within a larger outer bowl with a hollow perimeter region between the two bowls. The

hollow perimeter is divided into sections by a series of dividers. Because the bottom of

' NSI objects to many of the factual findings in the magistrate judge’s R & R, but the

following facts are undisputed.
! WD


obviousness are strong enough to seriously question the jury’s likelihood of deciding that
the patent is non-obvious.

The plaintiff argues that objective factors of nonobviousness, primarily
the commercial success of its patent and NSI’s imitation of its patent are indicative of the
patent’s non-obviousness. However, these secondary indicators of obviousness “cannot
overcome the strong evidence of obviousness.” Brown & Williamson Tobacco Co. v.
Phillip Morris Inc., 229 F.3d 1120, 1131 (Fed. Cir, 2000). Although the Fill-A-Bowl has
enjoyed considerable market success, and there is strong evidence that NSI willfully
imitated the bowl, the ultimate determination of obviousness is based on a totality of the
evidence. Jd. at 1131. Furthermore, of the secondary indicators listed in Graham, FYEO
has cited only the market success of the Fill-A-Bowl, and has presented no evidence of
“long felt but unsolved needs,” or the “failure of others.” In this case, the objections to
the patent’s nonobviousness based on the prior art are potentially strong enough to
outbalance the secondary consideration of the Fill-A-Bowl’s market success.

Despite holding that NSI has presented a question about the validity of FYEO’s
patent sufficient to deny the motion for the preliminary injunction, the Court also
addresses NSI’s assertion that the ‘211 patent is invalid because of Ms. Greiner’s
prosecutorial misconduct. The Court finds NSI’s allegation in this regard unlikely to
succeed on the merits. For a patent to be invalidated due to inequitable conduct during
prosecution, it must be on a showing of (1) material prior art, (2) knowledge chargeable
to the patent applicant of the prior art and its materiality, and (3) the applicant’s failure to
disclose the prior art to the patent office with an intent to mislead. Fox Industries Inc. v.

Structural Preservation Systems, Inc., 922 F.2d 801 (Fed. Cir. 1990). NSI has not

12