It is common for patent applications to have a background section that discusses, among other things, the unmet needs that the claimed invention addresses.  A recent Federal Circuit opinion shows how a statement regarding unmet needs can be used against a patent applicant or owner.  Therefore, when drafting patent applications, it may be prudent not to discuss the unmet needs addressed by the claimed invention.

In affirming a ruling that the patents in dispute were obvious and therefore invalid, the Federal Circuit in Tokai Corp. v. Easton Enterprises, 2011 U.S. App. LEXIS 1915 (Fed. Cir. Jan. 31, 2011) relies in part on language in one of the disputed patents.  Tokai states that the invention involves simple mechanical parts, but that this alone does not render the invention obvious.  Id. *28, citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).  But Tokai notes that, "it is also undisputed that a need for safer utility lighters was recognized in the art as of the priority date."  Id.  For support, Tokai cites a statement in one of the patents that, "a need exists for a lighting rod having enhanced safety characteristics***."  Id. citing '775 Patent, col.1 ll.20-25 (Bold added). 

Tokai then rules the patents obvious and invalid, stating:  "Accordingly, the undisputed facts in this case—including the state of the prior art, the simplicity and availability of the components making up the claimed invention, and an explicit need in the prior art for safer utility lighters—compel a conclusion of obviousness as to the subject matter of each of the asserted claims."  Id. citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 419-420 (Bold added). 

It is quite possible that these patents would have been held obvious and invalid even without the explicit statement of need in at least one of the disputed patents.  The point made here is that the statement in the patent did not help.  In light of Tokai, those now drafting patent applications may want to consider not discussing the needs that the claimed invention seeks to alleviate.