Obviousness II Class Notes: February 11, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

Obviousness IIObviousness II

Class Notes: February 11, Class Notes: February 11, 20032003

Law 677 | Patent Law | Spring 2003Law 677 | Patent Law | Spring 2003

Professor WagnerProfessor Wagner

2/11/032/11/03 22Law 677 | Spring 2003Law 677 | Spring 2003

Today’s AgendaToday’s Agenda

1.1. Defining Prior Art for § 103Defining Prior Art for § 103

2.2. Determining the Scope of the Prior ArtDetermining the Scope of the Prior Art

3.3. The PHOSITAThe PHOSITA

4.4. Secondary ConsiderationsSecondary Considerations


Review: The Review: The GrahamGraham Framework Framework1. The ultimate question of obviousness is

one of law (for the court)

2. The analysis requires three factual considerations:

a) Scope and content of the prior artb) Differences between the prior art and the

inventionc) The level of ordinary skill in the pertinent art

3. ‘Secondary Considerations’ are to be balanced against showings of obviousness from the references.


Solving the Graham FrameworkSolving the Graham Framework

The Key Problem for 103 Analysis: The Key Problem for 103 Analysis: HindsightHindsight

Ways to combat hindsight:Ways to combat hindsight:

1. Carefully define appropriate prior art

2. Restrict the combining of references

3. Evaluate secondary considerations


The Scope of the Prior ArtThe Scope of the Prior ArtWhat art is appropriate for § 103?What art is appropriate for § 103?

Basic point: all ‘prior art’ defined by § 102Basic point: all ‘prior art’ defined by § 102• 102(a): publications, ‘known or used’• 102(b): publications, ‘known or used’, on sale• 102(e): prior patent application by another• 102(f): ‘derivation’ from prior invention [?]102(f): ‘derivation’ from prior invention [?]• 102(g): prior “invention” by another

• 102(c): abandonment• 102(d): overseas patenting• 102(f): derivation


The Scope of the Prior ArtThe Scope of the Prior Art

What art is appropriate for § 103?What art is appropriate for § 103?

Problem 1: Problem 1:

§ 103 allows references to be combined§ 103 allows references to be combined• Concerns about scope of inquiry

Analogous (or ‘pertinent’) Art Analogous (or ‘pertinent’) Art requirement.requirement.• Only art that is analogous to:

o The field of inventiono The types of problems to be solved


The Scope of the Prior ArtThe Scope of the Prior Art

What art is appropriate for § 103?What art is appropriate for § 103?

Problem 2: Problem 2: The problem of organized researchThe problem of organized research

§ 103(c):§ 103(c):Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person


The Content of the Prior ArtThe Content of the Prior Art

What does the prior art describe?What does the prior art describe?

Do you see a potential problem here:Do you see a potential problem here:1. § 103 allows references to be combined at

will to ‘knock out’ the claims2. § 103 presumes that all art related to the

field or to the problems to be solved are ‘fair game’

3. But we know that ‘we stand on the shoulders of giants’ – given (1) and (2), is there likely to be anything ‘nonobvious’?


The Content of the Prior ArtThe Content of the Prior ArtThe Limitation on Combining ReferencesThe Limitation on Combining References

In re Dow Chemical (1988)In re Dow Chemical (1988)• Invention: combine A + B + C to yield high strength

and heat resistance• Prior Art #1 (PA1): combine A + B to yield high

strength• Prior Art #2 (PA2): combine B + C to yield heat

resistance

• Key question: can you combine PA1 + PA2?• What test does the court offer for determining an

appropriate combination?



Pro-Mold & Tool Company (1996)Pro-Mold & Tool Company (1996)• Invention: card holder (transparent, rectangular,

friction-fit), sized slightly larger than the card• PA1: all elements except for the size• PA2: sized slightly larger than the card

• Can you combine PA1 + PA2? Why? (Is this ‘fair’?)• Where does the court find the ‘teaching or

suggestion to combine’?

• Note: does Pro-Mold lose the patent?



Basic rule: must find a “teaching or suggestion Basic rule: must find a “teaching or suggestion to combine references”to combine references”

Sources of ‘teaching or suggestion’:Sources of ‘teaching or suggestion’:• References themselves (explicit or implicit)• Knowledge of POSITA• Teachings of special references in the field• From the ‘nature of the problem to be solved’ (Pro-Mold)

Notes:Notes:• Standard of ‘teaching’: reasonable expectation of success• Evidence of ‘teaching away’ is important

o What if reference 1 provides a ‘suggestion’, but reference 2 provides a ‘teaching away’/discouragement?


The PHOSITAThe PHOSITA

Attributes of the PHOISTAAttributes of the PHOISTA• ‘Ordinary Skill’

o Educational level of inventoro Type of problems in the fieldo Prior solutions to the problemso Sophistication of the technologyo Educational level of workers in the field

• Knowledge (and recall) of all pertinent referenceso The hypothetical workshop from Winslowo Does this requirement make sense?


Secondary ConsiderationsSecondary Considerations

Note the Federal Circuit in Note the Federal Circuit in StratoflexStratoflex::‘jurisprudentially inappropriate’ to exclude

consideration of secondary factors

The factors:The factors:• Commercial success• Long-felt need / failure of others• Evidence of copying• Skepticism (prior to invention) / praise

(after invention)• Licensing/acquiescence to the patent



Commercial SuccessCommercial Success

Pentec v Graphic ControlsPentec v Graphic Controls (1985) (1985)• GC’s “Series 39” pen: commercially successful• Pentec introduces an infringing (“Series 390”)

unit• Why does the court reject the commercial

success as evidence of nonobviousness?• What sort of evidence would be required?

• Is commercial success a relevant secondary consideration?



Commercial SuccessCommercial Success

The key showing in Commercial Success: The key showing in Commercial Success: NexusNexus• Windsurfing Int’l: nexus was achieved,

despite some evidence to the contrary• What is the standard? What should it be?• Note a recent trend at the Federal Circuit:

tightening up the nexus requirement.



Long-Felt Need / Failure of OthersLong-Felt Need / Failure of Others

Why is this factor seen as especially pertinent?o Do you agree?

What is meant by the ‘need’?

Where do you find the ‘long-felt need’?



CopyingCopyingHow relevant is this factor?

Skepticism/PraiseSkepticism/PraiseHow relevant is this factor?Where would one look to find it?

Licensing/AcquiescenceLicensing/AcquiescenceHow relevant is this factor?


Parting ShotsParting Shots

Consider:Consider:

1.1. Is the Federal Circuit overusing Is the Federal Circuit overusing secondary considerations?secondary considerations?

Trend: tightening up the nexus requirement

2.2. How does the obviousness standard How does the obviousness standard relate to other ‘objective’ standards in relate to other ‘objective’ standards in the patent law?the patent law?


Next ClassNext Class

Obviousness IIIObviousness IIIClass ExerciseClass Exercise

Documents

Obviousness II Class Notes: February 11, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner