Arkie Lures, Inc. v. Gene Larew Tackle, Inc.

Citations: 912 F. Supp. 422; 1996 WL 34106Docket: Civil No. 95-5037

Court: District Court, W.D. Arkansas; January 27, 1996; Federal District Court

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Arkie Lures, Inc. filed a declaratory judgment action seeking to invalidate U.S. Patent No. 4,530,179, known as the Larew patent, or alternatively, a declaration of non-infringement. In response, Gene Larew Tackle, Inc. filed a counterclaim for patent infringement against Arkie Lures and its president, Bob Carnes. Currently under consideration is Arkie Lures’ motion for summary judgment, asserting that the Larew patent is invalid under 35 U.S.C. § 103 due to obviousness.

The Larew patent pertains to a "salt-impregnated fishing lure," which consists of a body shaped like a small animal, a hook, and an attachment for a fishing line. The novelty of the lure lies in its body being impregnated with salt, enhancing its appeal to certain fish species. The process involves adding salt to a liquid known as plastisol before molding, resulting in a lure that retains its salty flavor throughout its life.

The memorandum emphasizes that patents are granted under the U.S. Constitution to promote progress in useful arts while imposing restrictions to prevent the excessive granting of exclusive rights. For a patent to be valid, it must be new, useful, and non-obvious at the time of invention, as outlined in 35 U.S.C. § 101 and § 103. Arkie Lures argues that the Larew patent does not fulfill the non-obviousness requirement, as the differences between the patented invention and prior art would have been apparent to a person skilled in the relevant field at the time of invention.

The excerpt outlines key legal principles regarding the evaluation of patentability, specifically the concept of "obviousness" under Section 103 of the Patent Act. Courts have referred to the inventive aspect of patents using various terms, including "invention," "creative faculty," and "patentable novelty." The Supreme Court's framework for assessing obviousness involves three steps: determining the scope of prior art, identifying differences between the prior art and the claims, and evaluating the level of ordinary skill in the relevant field. Secondary factors, such as commercial success and long-felt needs, may inform the analysis but cannot render an unpatentable invention patentable.

Additionally, the excerpt addresses the standard for summary judgment under Rule 56(c), stating that judgment should be granted if there are no genuine issues of material fact. The court must favor the nonmoving party when drawing reasonable inferences from the evidence. In patent cases, the validity of a patent can be ruled on via summary judgment, especially concerning obviousness, provided that no factual disputes exist regarding the underlying considerations. The burden of proof for patent invalidity lies with the party alleging it, requiring clear and convincing evidence. Summary judgment is only appropriate when a reasonable person would find the necessary evidence meets this standard.

People skilled in fishing lure design recognize that fish possess highly developed senses of smell and taste, as established by various sources. A 1972 article in *Outdoor Life* emphasizes that fish rely on these senses, advising anglers to enhance their lures accordingly. The article notes that fish have taste buds along their bodies and often sample lures before biting, indicating their sensitivity to taste and smell, particularly to substances like salt and sugar.

Additionally, the long-standing principle that salt acts as a fish attractant is supported by literature, including Byron Dalrymple's 1972 book, which discusses the "science of scent fishing." Dalrymple asserts that salt is a key attractant, providing personal anecdotes of successful fishing using salted bait. He highlights the sensitivity of fish to salinity levels in their environment.

Furthermore, Patent 3,079,722, issued in 1963, illustrates this principle through a lure designed with an inner core containing yeast and salt, which releases an effective odor to attract fish. The patent explains that the lure maintains its odor-producing capability, becoming effective again upon immersion in water after drying.

Salt is established as a taste-based fish attractant in prior art, particularly in Patent 2,979,778 (Simons patent, issued April 18, 1961), which describes a plastisol fishing lure infused with fish attractant to enhance taste appeal. The Simons patent aims to create a lure that mimics the odor and texture of natural bait, noting that fish often return to take the bait after an initial nibble due to its texture and the lure's attractant. It emphasizes that the fish attractant remains effective over the lure's lifespan.

Similarly, Patent 3,579,895 (Orn patent, issued May 25, 1971) also utilizes plastisol with added fish attractant, focusing on creating a lure resembling a cluster of eggs and using various additives to replicate natural bait's flavor and odor.

Gene Larew argues that his invention is non-obvious, claiming that the addition of salt uniquely enhances attraction through taste rather than odor, thereby increasing the likelihood of hooking fish. He references the Simons patent's caution against non-soluble attractants like salt, which purportedly do not leach effectively in water. However, the court finds that the connection between taste and smell in fishing lures is well recognized in the prior art, and the notion that taste is a critical attractant is acknowledged, undermining Larew's argument for non-obviousness despite the Simons patent's technical stance against non-soluble attractants.

Gene Larew argued that his fishing lure product was not obvious due to its indefinite retention of taste, as it does not exude salt. However, the court noted that the long-lasting attractant quality of plastisol lures has been recognized since the Simons patent, contradicting Larew's claim. Additionally, Larew cited safety concerns about mixing salt with plastisol, supported by testimony from prototype maker Hugh Harville, who feared potential hazards. The court countered that the Simons patent inherently involves adding foreign substances to plastisol, and prior art shows that others, like William Edward Chambers and Steve Sims, had already used salt in their lures without incident. 

Larew also claimed that salt could adversely affect plastisol by roughening texture and increasing susceptibility to tearing, which he suggested were significant drawbacks. However, the court maintained that recognizing these drawbacks implies the obviousness of using salt, as Larew merely made a technical judgment familiar to those skilled in the art. The court emphasized that success in using salt does not equate to inventiveness, referencing the doctrine of "substitution of equivalents," which states that merely replacing one material with another that behaves predictably is not patentable.

Larew presented objective evidence of non-obviousness for his product, citing rapid commercial success, instances of copying by others, and licensing agreements. However, the court ruled that secondary considerations cannot transform a clearly unpatentable product into a patentable one, referencing *Anderson's-Black Rock, Inc. v. Pavement Salvage Co.*. The court determined that Larew's product was obvious and unpatentable as the underlying principles were well-known in prior art and had been applied to other lures. The court noted that the use of salt as an attractant in plastisol lures was clear and obvious. It found no need to address additional arguments from Arkie Lures regarding inequitable conduct or prior public use that could invalidate the patent. Consequently, the court granted summary judgment, declaring U.S. Patent No. 4,530,179 invalid and dismissing the case. The court emphasized that there was no clear and convincing evidence of Larew's claims about prior use of salt-impregnated lures, although it affirmed that salt was used in plastic lures, leaving the question of its purpose unresolved. An order and judgment were issued on January 23, 1996.