## Facts

- Gene Larew Tackle, Inc. owned a patent claiming a fishing lure made from plastisol with salt impregnated throughout to retain salty taste in water.
- Larew developed the lure after encountering resistance from plastic-lure manufacturers, who viewed adding salt to plastisol as undesirable (rough surface, reduced strength and flexibility) and potentially unsafe.
- Larew marketed the product as the “Gene Larew Salty Frog,” which achieved immediate commercial success.
- Arkie Lures copied the product, declined Larew’s license offer, and filed a declaratory-judgment action seeking rulings of invalidity and noninfringement.
- Larew counterclaimed for patent infringement against Arkie Lures and Arkie’s president.

## Issues

1. Whether summary judgment that the patent was invalid as obvious under 35 U.S.C. § 103 was proper given the record on the Graham obviousness factors and objective indicia of nonobviousness.
2. Whether Arkie was entitled to an appellate affirmance on an alternative ground (noninfringement) despite the district court’s failure to reach infringement after finding invalidity.

## Decision

- The Federal Circuit reversed the district court’s summary judgment holding the patent invalid for obviousness.
- The court remanded for further proceedings, leaving infringement and remaining defenses for resolution in the district court.
- The court declined to resolve noninfringement as an alternative ground on appeal.

## Legal Principles

- Obviousness under 35 U.S.C. § 103 requires fact findings under the Graham framework: (1) scope and content of prior art, (2) differences between prior art and the claims, (3) level of ordinary skill, and (4) objective indicia of nonobviousness.
- Objective indicia (e.g., commercial success, industry skepticism, failure of others, and copying) are part of the obviousness inquiry and must be weighed with the other Graham factors.
- Summary judgment of obviousness is improper where genuine disputes of material fact exist concerning the Graham inquiries, including motivation to combine and reasonable expectation of success.
- Evidence that industry participants believed a proposed combination was undesirable or unsafe can bear on both motivation/expectation of success and secondary considerations.

## Conclusion

The Federal Circuit held that the record contained genuine disputes regarding what the prior art suggested, what a skilled artisan would have been motivated to do with an expectation of success, and how strong objective indicia such as commercial success, skepticism, and copying were; those disputes barred summary judgment of invalidity for obviousness and required further proceedings on remand.


Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953 (Fed. Cir. 1997)