SECONDARY CONSIDERATIONS DON'T SAVE OBVIOUS INVENTION

Friskit, Inc., v. Realnetworks, Inc., [2007-1583] (January 12, 2009) [BRYSON, Linn, Prost] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of obviousness after defendant renewed its motion after the Supreme Court decision in KSR.
DISCUSSION: Friskit acknowledged that it did not invent streaming media, playlists or media players, but emphasized that its patents “deliver the glue to put existing technologies together into a single application.” Federal Circuit said that that characterization of the claimed invention did not overcome the showing of obviousness, however, because, as the Supreme Court noted in KSR, the “predictable use of prior art elements according to their established functions” is likely to be within the grasp of one of ordinary skill in the art. After the renewed motion for summary judgment, Friskit shifted its non-obviousness argument, but the Federal Circuit still found that asserted feature to be in the prior art. The Federal Circuit rejected Friskit’s assertion of secondary considerations, noting that Friskit failed to show that the success of those products was attributable to the subject matter that it contends is nonobvious. The Federal Circuit also attached little significance to copying by the accused infringer in the absence of evidence of failed development efforts by the infringer, or that the copied technology fell within the scope of the asserted claims.