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Contacts Are Too Obvious to Patent, Fed Cir Rules

By Casey C. Sullivan, Esq. on September 04, 2015 | Last updated on March 21, 2019

Contact manufactures can't patent a method for making contact lens material, the Federal Circuit ruled this week. That's because the process used is simply too obvious to be eligible for patent protection, the court found.

The court's ruling came 35 years Dome filed a patent for a method of making lenses which had increased oxygen permeability. When the patent was filed in 1980, contact lens makers were still struggling to move away from the unbreathable plexiglass lenses which were standard in the 70s. While a breakthrough, flexible, breathable polymer lenses were also so obvious at their time of invention that anyone could have made them.

Reexamining the 35 Year Old Patent

Dome's patent only came back before the USPTO and courts as a result of its attempt to enforce it against contact manufacturers. In 1997, Dome sued six manufacturers, one of whom moved for the Patent Office to reexamine the validity of the original patent. Dome sued in 2007 to enjoin the Patent Office from cancelling the patent.

Dome's tactics seemed to have fully backfired. The district court ruled that Dome's patent was invalid, since the process Dome patented "would have been obvious to a person of ordinary skill at the time of filing." Indeed, any one who looked at the patent's references -- including a patent for making oxygen-permeable lenses -- would have been able to develop the same method Dome had patented.

Nothing Inventive in the Invention

Under patent law, only "non-obvious subject matter" is patentable. Obviousness is a legal standard based on four prongs:

  • The scope and content of prior art
  • Differences between prior art and claims
  • Level of skill involved
  • "Objective indicia of nonobviousness"

Here, all the elements of Dome's patent had already been established in other patents. Almost anyone of ordinary skill could have combined those references in the same way as Dome's patent did, with a reasonable expectation of success, the court found. Further, they would have been motivated in the same manner that Dome was. There was nothing particularly insightful about looking for more oxygen-permeable lenses, the Federal Circuit found. Dome's patent was doomed because the invention it sought to protect simply wasn't very inventive.

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