## Facts

- Panduit developed improved one-piece plastic cable ties through a nine-year research program costing several million dollars, led by inventor Jack E. Caveney.
- The prior art posed a tradeoff: rigid locking devices produced high withdrawal force but required high insertion force; flexible devices allowed low insertion force but had low withdrawal force.
- Panduit’s patents (including the later-issued ’538 patent) claimed a cable-tie configuration intended to achieve both low insertion force and high withdrawal force through the cooperation and geometry of the frame, strap, and locking member.
- Panduit began selling the improved tie in 1970; the ’538 patent issued in 1976.
- In 1976, Dennison copied Panduit’s tie design and marketed a competing product.
- Panduit sued for infringement of claims from three patents (’146, ’869, and ’538); Dennison principally asserted invalidity for obviousness.

## Issues

1. Whether the asserted claims of the ’146, ’869, and ’538 patents were invalid as obvious under 35 U.S.C. § 103 in view of the prior art.
2. Whether the asserted claims of the ’538 patent were invalid for obvious-type double patenting over Panduit’s earlier patents.
3. How commercial success, long-felt need, and failure of others should be weighed in the § 103 analysis on this record.

## Decision

- The Federal Circuit reversed the district court’s judgment that the asserted claims were invalid for obviousness under § 103.
- The court held the asserted claims nonobvious, concluding the prior art did not teach or suggest the claimed structural combination producing the claimed performance results.
- The court reversed the ruling that the ’538 claims were invalid for obvious-type double patenting, finding the ’538 claims reflected a patentably distinct advance rather than an obvious variant of earlier claims.

## Legal Principles

- Obviousness under § 103 is determined using the *Graham* framework: scope and content of the prior art, differences between the prior art and the claims, and level of ordinary skill, with objective indicia considered as part of the analysis.
- A court may not find obviousness by hindsight reconstruction or by assembling selected features from separate references without an adequate showing that a skilled artisan would have been led to make the claimed combination at the time of invention.
- Objective indicia—commercial success, long-felt but unmet need, and failure of others—can corroborate nonobviousness when tied to the claimed invention.
- Obvious-type double patenting does not apply where later claims reflect a patentably distinct improvement rather than an obvious variation of earlier claims.

## Conclusion

The Federal Circuit held Panduit’s asserted cable-tie claims valid, reversing determinations of obviousness and obvious-type double patenting because the prior art did not teach the claimed combination achieving low insertion force and high withdrawal force, and because objective indicia supported nonobviousness.


Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082 (Fed. Cir. 1985)