Lamb-Weston, Inc. v. McCain Foods, Ltd. And McCain Foods, Inc.

The district court’s rulings of both obviousness and inequitable conduct depend on the court’s application of the law of derivation, 35 U.S.C. § 102(f). The district court found that the prior art lacks a teaching, suggestion, or motivation to combine the references that are necessary to make the invention obvious,1 and then erroneously invoked § 102(f) to provide that motivation. The panel majority finds “motivation” simply in its observation that raw and fully cooked waffle-cut potatoes existed in the prior art, apparently holding that the mere thickness of these known products as compared…