Subject:
Day 10 Self Study Course:
summarized by Tatsuo Yabe
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Outline
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Chapter 11 continued:
Pages 544 to 596
E. Obviousness
35 U.S.C. 103(a)
Graham
v. John Deere (
1.
The Scope and Content
of the Prior Art
Hindsight is not Permitted
Analogous Arts
Hypothetical Person Knows All the Art
Patentee’s Rebuttal Evidence
1.
Motivation to combine
2.
Reference Teaches Away
from the Claimed Invention
3.
Section 103(c)
2.
The differences Between
Prior Art and Claimed invention
3.
The Level of Ordinary
Skill in the Art
4.
Objective Evidence of
Obviousness
KSR
v. Teleflex Inc.
Sup Court 2007
Teleflex – Patentee
KSR – Accused Infringer
35 U.S.C. 103
Graham
v. John Deere
District Court
Fed Cir
Sakuraida
v. Ag Pro (Sup Court: 1976)
DyStar
v. C.H. Patrick Co. (Fed Cir 2006)
Notes
F. The Specification is
Inadequate
35 U.S.C. 112
1.
Best Mode Requirement
Chemcast
Corp v. Arco Indus. (Fed Cir 1990)
Skip pgs 571 to 580
2.
Enablement Requirement
In
re WANDS (Fed Cir 1988)
3.
Written Description
Requirement
Gentry
Gallery Inc. v. Berkline Corp (Fed Cir 1998)
4.
Definiteness
Datamize
LLC v. Plumtree Software (Fed Cir 2005)
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Summary
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E. Obviousness
35 U.S.C. 103(a):
Conditions for
patentability; non-obvious subject matter
(a)
A patent may not be
obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
Raising obviousness as
a patent infringement defense, Def must prove by clear and convincing evidence
that the prior art renders the claimed invention obvious to one skilled in the
art.
The Q of obviousness is a Q of law. However, the
underlying factors in the obviousness inquiry are factual Qs.
Thus, obviousness is a Q of law based on underlying facts.
à Judge
versus Jury: Who should decide the Q of Obviousness?
Petition for a writ of certiorari filed
Fed Cir will review a jury’s obviousness finding by
presuming that the jury found facts in favor of their verdict and then consider
de novo whether the patent is obvious.
Graham
v. John Deere (
This court articulated the test for obviousness. To
determined whether a patented invention is obvious or not, the court must
determine:
(i)
the
scope and contents of the prior art;
(ii)
the
difference between the prior art and the claims at issue;
(iii)
the
level of ordinary skill in the pertinent art; and
(iv)
the
objective or secondary consideration tending to prove obviousness or
non-obviousness.
1. The Scope and
Content of the Prior Art
Basically, all of the prior art under the section 102,
except the art under 102(c) and 102(d), are available references for obviousness
test.
Hindsight is not Permitted
Most inventions are a combination of old elements.
The more references that need to be combined to yield the claimed
invention, the less likely that the invention is obvious.
Analogous Arts
Hypothetical Person Knows All the Art
Pretend that the hypothetical person has all of the prior
art references taped up on the wall in front of him when he is determining if an
invention is obvious.
Patentee’s Rebuttal Evidence
1.
Motivation to combine
KSR v. Teleflex has
rejected a bright-line requirement for motivation to combine, although the Court
acknowledged that such a motivation is still relevant in assessing the
obviousness.
2.
Reference Teaches Away
from the Claimed Invention
A reference may be said
to teach away when a person of ordinary skill, upon reading the reference, would
be discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.
3.
Section 103(c)
The patentee can argue
that the section 102(e), (f), or (g) prior art owned by the same person or the
same corporation at the time of invention is not available as prior art for
obviousness purpose.
2.
The differences Between
Prior Art and Claimed invention
3.
The Level of Ordinary
Skill in the Art
The patentee wants to prove that the level of ordinary
skill in the art is low whereas the accused infringer wants to prove that the
level of skill in the art is high.
4.
Objective Evidence of
Obviousness
-
(i)
commercial success of the invention; (ii) long felt need for the invention;
(iii) failure of others; (iv) licenses showing industry respect for the
invention; (v) skepticism by others in the filed that the invention would
work;….
-
The
patentee must demonstrate ‘a nexus’ between the commercial success and the
patented invention for commercial success to be relevant to the obviousness
determination.
-
Def
(accused infringer) may want to show that the commercial success of the
invention was due to advertising and marketing or a feature of the invention
other than the patented one.
KSR
v. Teleflex Inc.
Sup Court 2007
Teleflex – Patentee
KSR – Accused Infringer (a Canadian company,
manufactures and supplies auto parts, including pedal systems and was chosen by
GM to supply adjustable pedal systems for Chevrolet and GMS light trucks that
used engines with computer-controlled throttles).
35 U.S.C. 103
Graham
v. John Deere
District Court:
-
Granted
summary judgment in KSR’s favor. Found Claim 4 obvious in light of the prior
art.
-
Found
that Asano reference taught all the elements recited in Claim 4 except the use
of a sensor to detect the pedal’s position and transmit it to the computer
controlling the throttle.
-
Held
KSR had satisfied the TSM test. It
reasoned that the state of the industry would lead inevitably to combinations of
electronic sensors and adjustable pedals.
Fed Cir:
-
Relying
heavily on the TSM test, the court reversed the District Court ruling.
-
Ruled
that the District Court did not apply the TSM test strict enough.
Sup Ct:
-
rejecting
the rigid approach of the Fed Cir;
-
The
Three cases decided after Graham illustrated the
application of this doctrine.
-
the
Court considered the obviousness of a “wet battery” using water instead of
the acids and the electrodes made of different materials.
-
When
a patent claims a structure that was already known in the prior art that was
altered by the mere substitution of one element for another known in the field,
the combination must do more than yield a predictable result.
-
Corollary
principle: When the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely to be
non-obviousness.
-
the
Court considered the obviousness of a device combining two pre-existing
elements: a radiant burner and a paving machine.
-
The
Court concluded that the device did not create some new synergy.
-
The
two in combination did no more than they would in separate, sequential
operation.
-
While
the combination of old elements performed a useful function, it added nothing to
the nature and quality of the radiant-heat burner already patented.
Sakuraida
v. Ag Pro (Sup Court: 1976)
-
the
Court concluded that when a patent simply arranges old elements with each
performing the same function it had been known to perform, and yields no more
than one would expect from such an arrangement, the combination is obvious.
The Fed Cir applied the TSM test too rigidly.
The question is not whether the combination was obvious to
the patentee (as Fed Cir considered) but whether the combination was obvious to
a person with ordinary skill in the art.
Common sense teaches that familiar items may have obvious
uses beyond their primary purposes.
A person of ordinary skill is also a person of ordinary
creativity, not an automaton.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within his
technical grasp.
Fed Cir was right in applying the TSM test in DyStar
v. C.H. Patrick Co. (Fed Cir 2006), but this decision is not now before
the
The District court was correct to conclude that it was
obvious to a person of ordinary skill to combine Asano with a pivot-mounted
pedal positioning sensor at the time the subject matter in claim 4 was made.
In automotive design, as in many other fields, the
interaction of multiple components means that changing one component often
requires the others to be modified as well.
Technological developments made it clear that engines using
computer-controlled throttles would become standard.
Teleflex has not shown anything in the prior art that
taught away from the use of Asano.
Teleflex has not shown secondary factors to dislodge the
determination that claim 4 is obvious.
Proper application of Graham and the
Notes
F. The Specification is
Inadequate
35 U.S.C. 112
(1st
paragraph)
The specification shall
contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention.
(2nd
paragraph)
The specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.
5.
Best Mode Requirement
Chemcast
Corp v. Arco Indus. (Fed Cir 1990)
Claim 6 of USP4081879 (‘879 Patent) is the only claim in
suit.
Claim 6:
The grommet as defined in claim 1, wherein the material
forming said base portion has a durometer hardness reading of less than 60 Shore
A and the material forming said locking portion has durometer hardness reading
of more than 70 Shore A.
District Court: Held
that Claim 6 of the USP’879 was invalid as failing to comply with the best
mode requirement under 112(1).
Fed Cir disagreed to the reasoning of the
Fed Cir says that the focus must be that (i) the inventor
knew of and (ii) concealed a better mode than he disclosed.
Fed Cir goes on to say that a proper best mode analysis
has two components:
-
first
is whether, at the time the inventor filed his patent application, he knew of a
mode of practicing his claimed invention that he considered to be better than
any other.
This
inquiry is wholly subjective.
-
Second
part of the analysis is whether the disclosure adequate to enable one skilled in
the art to practice the best mode. This
inquiry is largely objective and depends upon the scope of claimed invention and
the level of skill in the art.
Fed Cir has said that the best mode requirement was
violated in the most cases where an inventor failed to disclose non-claimed
elements that were nevertheless necessary to practice the best mode of carrying
out the claimed invention.
Here there is no dispute that the inventor did not know
the precise formula, composition, or method of manufacturing of R-4467,
the section 112 obligated the inventor to disclose the specific supplier and
trade name of his preferred material (the claimed grommet) to the extent
that the inventor had known.
An inventor need not disclose manufacturing data if that
information is not part of the best mode of practicing the claimed invention,
but the converse also is true.
If the information is part of the best mode of practicing
the claimed invention, regardless of the nature of the information, i.e., even a
trade secrets, the information must be disclosed.
Notes:
(i)
Why
do inventors not want to disclose their best mode?
(ii)
Hiding or burying the
best mode:
Fed Cir allowed to list
several modes which include the best mode without identifying which one is the
best mode. Randomex v. Scopus
(Fed Cir 1988)
(iii)
Later discovered better
modes:
The best mode at the
time of filing an application must be disclosed.
(iv)
Production vs.
manufacturing details:
(v)
Claims determine what
must be disclosed:
The best mode does not
require an applicant to disclose a non-claimed element of the invention when the
element is not necessary to the operation of the claimed invention.
Applied Med. Res v.
(vi)
Company is aware of a
better mode:
Fed Cir held that the
test for best mode is subjective and based on what the inventor knew at the time
of filing the application, not the best mode having contemplated by the
inventor’s company.
6.
Enablement Requirement
In
re WANDS (Fed Cir 1988)
Skip pgs 571 to 580
7.
Written Description
Requirement
To fully identify what is claimed, the patent application
is required to include a clear and concise written description.
The description may be embodied in attached drawings and diagrams or the
original claims. In the past, the
written description requirement under 112(1) was used to prohibit the applicant
from adding new matter to an original application.
However, in the recent years, the Fed Cir has expanded the historical
rile of the written description requirement, as shown in the following case.
Gentry
Gallery Inc. v. Berkline Corp (Fed Cir 1998)
Gentry Gallery: an owner of USP5064244
Berkline: accused infringer
|
US 5064244 (A) |
|
|
A sectional sofa
having one sofa section that includes a pair of reclining seats that are
separated by a console on which push button controls are mounted that
separately control the movement of the reclining seats from the upright to
the reclined positions. |
|
Claim 1 does not limit the location of the control means
(buttons 34 & 36). However,
there is an only one embodiment, showing the control means being located on the
center console 24. It is true that a claim need not be limited to a preferred
embodiment. However, in this case,
the scope of the right to exclude may be limited by a narrow disclosure.
Gentry relied on In re Rasmussen in which it was
decided that a broad scope of claim “adheringly applying one layer to an
adjacent layer” was admitted. However,
in Rasmussen, one skilled in the art would clearly understand that it is not
important how the layers are adhered, so long as they are adhered.
However, in this case, one skilled in the art would clearly understand
that it was not only important but essential to Sproule’s (Gentry’s)
invention, for the controls to be on the console.
Here, Sproule’s (Gentry’s) disclosure clearly limited
the location of the controls to the console.
Thus, the district court clearly erred in finding that Gentry is entitled
to claims in which the recliner controls are not located on the console.
The Fed Cir, therefore, reverse the judgment by the
district court that claims were not shown to be invalid (The Fed Cir believes
claims are shown to be invalid).
-----------------------------------
Fed Cir granted En Banc
Review on “Written Description Requirement”.
Ariad
Pharmaceuticals, MIT, and Harvard v. Eli Lilly.
The Fed Cir has granted Ariad’s motion for an en banc
hearing of its case. The motion
boldly asks whether the written description requirement should be eliminated as
a doctrine that is separate and distinct from enablement.
The questions are:
a.
Whether 35 U.S.C. ? 112, paragraph 1, contains a written description requirement
separate from an enablement requirement? and
b.
If a separate written description requirement is set forth in the statute, what
is the scope and purpose of the requirement?
Notes:
(i)
Many
believe that the Gentry Gallery case dramatically expanded the scope of
the written description requirement when it held a genus claim for a simple
mechanical invention was invalid for failure to disclose each possible species
in the original specification.
Even the Fed Cir is
split on the nature of the written description requirement.
See Lizardtech v. Earth Res. Mapping Inc. (Fed Cir 2006).
In Lizardtech, judge Rader says “This court’s written
description jurisprudence has become opaque to the point of obscuring other
areas of this court’s law.”
(ii)
Enablement
requirement is independent requirement from Written Disclosure requirement.
Thus, satisfying the enablement requirement does not automatically
satisfy the written description requirement.
Note that for enablement, the patent need not disclose things that one
skill in the art would already know. The same is not necessarily true for
written description.
(iii)
Note
that those claims held invalid under 112(1) (‘failure to meet the written
description requirement’) were added after the original filing date, when the
patentee saw a competitor’s product that has controls other than on the
console. If
these claims had been present in the originally filed application, would the
patent still be invalid for failure to satisfy the written description
requirement? (see pg 588)
8.
Definiteness
Datamize
LLC v. Plumtree Software (Fed Cir 2005)
The issue at Fed Cir is the definiteness of the claimed limitation
“aesthetically pleasing” as it is used in the context of claim 1 of
USP6014137.
Fed Cir concludes that “aesthetically
pleasing”, as it is used in claim 1 of the ‘137 patent, fails to
“particularly point out and distinctly claim the subject matter which the
patentee regard as his invention.” Under 112 (2).
Thus, Fed Cir affirmed the district court’s grant of summary judgment
of invalidity of all claims of the ‘137 patent.
Problems:
(pg 596)
Problem 2.
Ms.
Smith’s invention: A new type of chain for use on a bicycle.
Spec:
one preferred embodiment in which the new chain is used on a bicycle.
Claim:
A bicycle with two wheels, comprising the new chain, pedals, a seat, and
handle bars.
Novelty
Bikes selling tricycles, unicycles, and tandem bikes using Ms. Smith’s
patented chain.
How would you advise Ms. Smith?
Hints:
(a)
Broadening Reissue…possible?
(b)
How the claim was drafted?
Transitional phrase…open ended?
(c)
DOE applicable? File
history…any narrowing amendments?
Defenses
available to Novelty Bikes?
①
112 (1) – best mode X; written description requirement
under Gentry Gallery?; enablement?
②
112 (2) –X
-------------------------------------------------------------------------------------
(a)
A
broadening reissue
is possible if it is still within 2 years from the issuance date.
-
freedom of claim amendment during the reissue application
process?
①
So long as clear support exists in the original spec, the
amendment may be done.
(b)
How
the claim/spec was drafted?
-
Is the transitional phrase open ended?
-
Preamble is not limiting (one of the canons for claim
interpretation);
-
No specific emphasis on the use of the chain on bicycle in
the spec? Advantage rule.
(c)
DOE applicable?
-
DOE
coverage:
①
Graver Tank: 3 way-test (function, way, result)
②
③
Johnson and Johnston:
Disclosed but unclaimed subject matter
-
File
Wrapper Estoppel?
①
Philips v. AWH (reliance on intrinsic evidence)
②
Warner-Jenkinson:
narrowing amendment without reason – No DOE
③
Festo: narrowing amendment for the reason of patentability –
No DOE
Rebutting
presumption – i) unforeseeable; ii) tangential relation; iii) others
④
………
(d)
Other considerations:
-
Defense
available
by Novelty Bikes
①
112(1) best mode Req.?
②
112(2) enablement Req.?
③
112(3) written description requirement based on Gentry
Gallery
④
112(2) definiteness Req.?
Problem 3. (pg 596)
Rob
designed a new videophone while working for BIG company.
BIG
is the assignee of the USP5,000,000 patent claiming the videophone.
Dec 01, 1997, the
You are attorney for RC Electric Company.
BIG has sued RC for patent infringement arguing that RC’s videophone
which uses the RC imaging chip infringes the USP5000000 Patent.
-----------------------------------------------------------------------------------
During the discovery,
two memos were discovered:
●
A first memo:
Linda to BIG’s president June 15, 1997
The
videophone worked better with a DAX BIG imaging chip rather than the RC imaging
chip being used by Rob. The memo cc’d Rob.
● A
second memo:
Big’s president to Linda June 16, 1997
Instructing
Linda not to communicate any of her observation to Rob and to start working on a
commercial prototype using the superior DAX BIG chip right away.
--------------------------------------------------------------------------------------
The
test result by Linda during Sep 1997
confirmed that the DAX BIG chip would
work better with the videophone. BIG
had the product ready for mass production by Dec 1998 (Christmas time).
---------------------------------------------------------------------------------------
Deposition of Rob:
Rob
says that he received the memo (1st
memo) from Linda but he disagreed with her claim that the DAX BIG chip would
work better. Rob says that the DAX
BIG chip would work at all and that he thought it would require a massive design
change of his videophone to use the chip.
As of June 1997, Rob believed the only chip that would not work was
the RC chip. However, after seeing BIG’s commercial product using the DAX BIG
chip, Rob agrees that it is superior to the RC chip.
Do you have any 112 defense?
Hints:
■
112(1) best mode requirement defense available?
The
issue is whether Rob knew the better mode than what is disclosed in the
application, on or before
(a)
Subjective belief by Rob about his only workable mode
(‘best mode’) enclosed in the US Application?
(b)
Rob’s knowledge of Linda’s idea that DAX BIG worked
better before filing the application. Does
this affect the defense?
(c)
Company’s knowledge before filing the application that the
DAX BIG worked better. Does this
affect the defense under 112(1)?
■
112(1) written description requirement defense?
Seems
it is possible to rely on Gentry Gallery as claim is broad but the spec
only discloses one embodiment.
■
112(1) enablement requirement defense?
-
not enough facts to determine if this defense is possible or not.
■
112(2) definiteness requirement defense?
-
not enough facts to determine if this defense is possible or not.
