IP Law Survey

1
IP Law Survey

• Patent lesson 6
• Fall 2009
• Prof. Loren

2
Calendar Notes

• The Patent Bar Exam
• Date Tuesday, October 13
• Time  500 - 600 pmLocation Classroom 7 (Wood
  Hall)
• Mark Dighton, PLI director of Law School
  Relations Director of PLIs Patent Bar Review
  Course
• Pizza provided

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Leftover from last class

• Statutory Bars 102(b)
• One year prior to date of filing
• Some activity occurred, either by patentee or by
  others, that anticipates the claimed invention
• Relevant Activity
• Publication, patent (anywhere)
• On sale or in use in this country

4
Experimental use

• Can negate an otherwise barring
• Sale
• Public use
• Proving it..well, thats another matter

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GM v. GE (Fed Cir 2005)

• Fed Cir affirms on-sale bar summ judg
• Rejects experimental use negation of the bar
• Undisputed that there were pre-critical-date
  sales of claimed bearings
• Patentee put bearings in engines shipped to
  customers
• GM?
• It was our field testing phase
• No express confidentiality agreements
• No use restriction or obligation, or test
  protocol
• No data collection or reporting obligations

6
GM contd

• Inquiry whether the primary purpose of the
  sale . . . was to conduct experimentation.
  Allen, p. 23
• Testing durability can be valid experiment
• Even if durability is not a claim limitation (if
  inherent)
• City of Elizabeth, and other cases
• Objective evidence of experimental use?
• Allen Engg (2002) 13 factors
• But some factors are more equal than others
• We conclude that control and customer
  awareness ordinarily must be proven if
  experimentation is to be found.
• GM had no effective controls
• GMs evidence of customer awareness insufficient

7
Nonobviousness

• Why Test for Obviousness?
• Inventions are solutions to problems
• What kind of solutions will artisans make?
• 1. Things in the art not new
• 2. New things that are obvious to ordinary
  artisan
• 3. New things that take more skill and ingenuity
  than it takes to follow ordinary practice
• Were likely to get 1 2 even without reward
• Dont pay extra if youll get it for free
• Also without a non-obvious requirement
  Independent creators will be infringers and
  there will be lots of them!

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Obviousness Tests

• 1851 Hotchkiss
• must show more ingenuity and skill than possessed
  by an ordinary mechanic acquainted with business
• 1941 Cuno Engg
• must reveal the flash of creative genius
• 1950 Great AP Tea
• Caution when invention combines existing elements
• 1952 Congress enacts 103
• 1966 Graham v. John Deere
• Relationship of 103 to
• Constitution, Art. I, 8, cl. 8
• Cases such as Cuno, Great AP Tea

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35 U.S.C. 103(a)

• A patent may not be obtained 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. Patentability shall not be
  negatived by the manner in which the invention
  was made.

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Graham v. John Deere (1966)

• Constitutions constraint
• cl. 8 is both a grant of power and a limitation
• Congress may not restrict free access to
  materials already available
• Congress can choose the policy which in its
  judgment best effectuates the constitutional aim
• Jefferson which things are worth to the public
  the embarrassment of an exclusive patent ?
• Lincoln adding the fuel of interest to the
  fire of genius

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Graham contd

• S. Ct. precedent prior to 1952
• The Hotchkiss test laid the cornerstone .
• First part of 103 is strongly reminiscent of
  the language in Hotchkiss
• So 103 is merely a codification
• no change in the general strictness with which
  the overall test is to be applied
• What about Cuno flash of creative genius ?
• Final sentence of 103 is meant to abolish such
  a test

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Graham contd

• Nonobviousness Ultimately a question of law
• Based on several basic factual inquiries
• the scope and content of the prior art
• differences between the prior art and the claims
  at issue
• the level of ordinary skill in the pertinent
  art
• nonobviousness determined accordingly
• Secondary considerations can be helpful
• Long-felt unmet need, commercial success
• Licensing and acquiescence

13
Nonobviousness

• The inquiry is retrospective
• would have been obvious
• Vulnerable to the hindsight bias
• Now that it has succeeded, it may seem very
  plain to any one that he could have done it as
  well. This is often the case with inventions of
  the greatest merit.
• Loom Co. v. Higgins, 105 U.S. 580, 591 (1881)

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Federal Circuits Suggestion Test

• Suggestion evidence guard against bias
• the best defense against the subtle but powerful
  attraction of hindsight-based obviousness
  analysis is the rigorous application of the
  requirement for a showing of the teaching or
  motivation to combine prior art references
• In re Dembiczak (Fed Cir 99)

Jack-o-lantern trash bag Problem solved
unsightly trash bags placed on the curbs of
America and its festive, too!
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Pre-KSR Federal Circuit

• Teaching, Suggestion or Motivation (TSM) to
  Combine or Modify test
• Just prior to invention, Prior Art must have
  provided
• Suggestion, teaching, or motivation to combine or
  modify prior art references to make invention,
  AND
• Reasonable expectation of success
• Remixing known components without TSM is
  nonobvious
• FEDERAL CIRCUITs PHOSITA
• A person of ordinary skill in the art is also
  presumed to be one who thinks along the line of
  conventional wisdom in the art and is not one who
  undertakes to innovate Standard Oil v. Am.
  Cyanamid (Fed. Cir. 1985)

16
Prevent Hindsight
Suggestion Test
Dullard PHOSITA
17
(No Transcript)
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KSR v. Teleflex (S. Ct. 2007)

• Claim 4 of the 565 patent
• Combined (a) adjustable gas pedal, (b) sensor for
  computer-controlled throttle
• D. Ct.
• Summary judgment of invalidity - obvious
• Fed. Cir.
• Reversed fact question on suggestion test

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KSR contd

• We begin by rejecting the rigid approach of the
  Court of Appeals.
• How did the invention arise?
• marketplace created a strong incentive to
  convert mechanical to electronic pedals
• How could have the invention arisen?
• Phosita could have combined Asano with a pedal
  position sensor in a fashion encompassed by claim
  4, and would have seen the benefit of doing so.

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KSR contd

• S. Ct.s view of the phosita?
• A person of ordinary skill is also a person of
  ordinary creativity, not an automaton. (p.16)
• a court can take account of the inferences and
  creative steps that a person of ordinary skill in
  the art would employ (p.15)
• Phosita is good at remixing components
• will be able to fit the teachings of multiple
  patents together like pieces of a puzzle

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History BreakGreat Atlantic Pacific Tea (S.
Ct. 1950)

• Strikes down claim to grocery store counter
  invention
• Combination claims are presumptively unpatentable
  for obviousness
• Courts should scrutinize combination patent
  claims with a care proportioned to the difficulty
  and improbability of finding invention in an
  assembly of old elements. / rather severe
  test
• This case is wanting in any unusual or
  surprising consequences from the unification of
  the elements here concerned .
• Right approach if a phosita is good at remixing
  old elements

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KSR contd

• Fate of Great Atlantic?
• Neither the enactment of 103 nor the analysis
  in Graham disturbed this Courts earlier
  instructions concerning the need for caution in
  granting a patent based on the combination of
  elements found in the prior art. (emphasis
  added)
• (then, quote from GA, p.13)
• a court must ask whether the improvement is more
  than the predictable use of prior art elements
  according to their established functions (p.14)

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KSR contd

• Social cost of mistaken grants
• Granting patent protection to advances that
  would occur in the ordinary course without real
  innovation retards progress and may, in the case
  of patents combining previously known elements,
  deprive prior inventions of their value or
  utility.
• the results of ordinary innovation are not the
  subject of exclusive rights under the patent
  laws (emphasis added)

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KSR contd

• Likely would have been obvious
• Combination of familiar elements according to
  known methods, with predictable results
• Substitution, in a known structure, of one known
  elements for another, with predictable results
• Likely would not have been obvious
• Prior art teaches away from the combination
• Elements work together in an unexpected way

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Balancing Errors
Sup Ct
Fed Cir
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Social benefit from patents ?
Fed Cir ?
Social benefit
S Ct
Number of patents
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KSR smaller issues

• Presumption of validity when some prior art was
  not before the PTO?
• Teleflex had dedicated certain of its patents to
  the public why? how?
• Should it matter that KSR was an independent
  creator, not a copier?

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PTOs 103 Rationales (Oct 07)

• Combining prior art elements according to known
  methods to yield predictable results
• Substituting one known element for another to
  obtain predictable results
• Using known technique to improve similar items in
  the same way
• Applying known technique to known item thats
  ready for improvement to yield predictable
  results
• Obvious to try - choosing from a finite number
  of identified, predictable solutions, with
  reasonable expectation of success
• Varying known work in one field for use in the
  same, or a different, field in response to market
  forces, in predictable ways
• Modifying or combining prior art based on a
  teaching, suggestion, or motivation from the
  prior art

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Ortho-McNeil v. Mylan Labs(Fed. Cir. 2008)

• Maryanoff invents topiramate big
• While hes looking for anti-diabetes drug
• Unexpectedly, he that this particular
  intermediate had powerful anticonvulsant
  properties.
• KSRs obvious to try ? a finite number of
  identified, predictable solutions
• Fed Cir - small number, easily traversed
• Everything was unexpected here
• And experts were skeptical

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• Error in Experts testimony?
• Hindsight bias concern still looms large
• As this court has explained a flexible TSM
  test remains the primary guarantor against a
  non-statutory hindsight analysis such as occurred
  in this case. (p.21)
• Suggestions a tellingly broad term
• Motivations an equally broad term
• As KSR requires, those TSMs need not always be
  written references but may be found within the
  knowledge and creativity of ordinarily skilled
  artisans

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Now that you know.

• Go back and review
• Obviousness rejection embedded in Nystrom
• Obviousness rejection in Titanium Metals (claim 3)