No Love For Nipple Cover Patent

Posted on | October 28, 2008 | 1 Comment

2008-1590 Randi Black v. Ce Soir Lingerie
ED/TX 2:06-cv-544
Judge John Love

Plaintiff Randi Black appeals from the summary judgment decision and order of Judge John Love finding her 7,152,606 patent invalid as obvious.  The patent essentially claims a pad covering at least 1/2 of a breast and tapered in thickness to a relatively thin outer edge that would not be readily noticeable under clothes.  The accused product is the NuBra®, and defendants also include retailers Dillard's, Federated, Victoria's Secret, Gap, Neiman Marcus and Nordstrom.

Claim 1 of the '606 claims:

1. A method of covering a nipple on a human breast, the nipple cover
having a center and comprising a flexible material for conforming to a
human breast, the method comprising the steps of:

placing
the nipple cover directly on a human breast so as to cover at least
about one half and less than all of the breast, with the center of the
cover proximate the nipple;

the
nipple cover having a first thickness proximate the center and a second
thickness proximate a periphery thereof, and the thickness of the
nipple cover gradually tapering from the first thickness to the second
thickness, wherein the method further includes the step of bending the
nipple cover on the breast such that the periphery of the cover blends
smoothly with a curved portion of the breast while concealing a nipple
shape.

The court provides a comprehensive, 30 page opinion analyzing obviousness under the factors of Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), specifically:

1. the scope and content of the prior art;
2. the differences between the claimed invention and the prior art;
3. the level of ordinary skill in the art; and
4. any relevant secondary considerations that give light to the circumstances surrounding the origin of the subject matter sought to be patented, such as commercial success, long-felt but unsolved needs, failures of others, and the presence of lack of motivation to combine or avoid combining in the prior art.

Level of Skill.  The court first determined that the level of ordinary skill in the art was "low," and equivalent to a "backyard inventor"–the subject matter of the patent was merely a method of wearing an article of clothing.

Prior Art.  The court then provides a brief history of the prior art of nipple covers and breast pads (a field described as "broad and highly nuanced"), including patents not cited during prosecution, and concludes that a relatively small number of patents disclose all of the limitations of the '606.

Difference with Prior Art.  The court found these differences "minuscule," noting also that during prosecution the "plaintiff found great difficulty in distinguishing her application from the vast field of prior art."  The one difference that was asserted is, however, found in the uncited prior art.

Secondary Consideration.  The court has a nice discussion on secondary considerations, and particularly on plaintiff's argument that the commercial success of defendants' NuBra supports non-obviousness.  The court criticizes the theory and factual support, finding no nexus between the success of the NuBra and the claimed invention:

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