Nonobviousness II: Requiem for the Suggestion Test

1
Nonobviousness II Requiem for the Suggestion Test

• Patent Law Prof Merges
• 10.20.09

2
Federal Circuit Post-Graham

• Elevation of secondary factors to 4th Graham
  factor
• Reasonable expectation of success standard ex
  ante perspective
• Development of Suggestion Test may be reviewed
  by Supreme Court

3

• Tthe 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.

4
KSR Intl v. Teleflex

• The claimed invention at issue in this case is a
  straightforward combination of (i) a pre-existing
  type of adjustable pedal, and (ii) a
  pre-existing type of electronic control that is
  commonly used on newer cars.

5
(No Transcript)
6
Claim 4

• A vehicle control pedal apparatus (12)
  comprising
• a support (18) adapted to be mounted to a vehicle
  
• structure (20)
• an adjustable pedal assembly (22) having a pedal
  arm (14)
• moveable in force sic and aft directions with
  respect to said support (18)

7

• a pivot (24) for pivotally supporting said
  adjustable pedal assembly (22) with respect to
  said support (18) and defining a pivot axis (26)
  and
• an electronic control (28) attached to said
  support (18) for
• controlling a vehicle system
• said apparatus (12) characterized by said
  electronic control (28) being responsive to said
  pivot (24) for providing a signal (32) that
  corresponds to pedal arm position as said pedal
  arm (14) pivots about said pivot axis (26)
  between rest and applied positions wherein the
  position of said pivot (24) remains constant
  while said pedal arm (14) moves in fore and aft
  directions with respect to said pivot (24).

8
(No Transcript)
9
298 F.Supp.2d 581, 592 (ED Mich 2003)

• The Court finds little difference between the
  teachings of the prior art and claims of the
  patent-in-suit. Asano teaches the structure and
  function of each of the claim 4 limitations,
  except those relating to an electronic pedal
  position sensor. Specifically, Asano teaches an
  adjustable pedal assembly pivotally mounted on a
  support bracket with the pedal moving in a fore
  and aft directions with respect to the support
  and the pivot remaining in a constant position
  during movement of the pedal arm. Thus, Asano
  "fairly suggests" the same mechanical assembly
  design asserted in claim 4 of the patent-in-suit.

10
Dist ct. opinion, contd

• The electronic pedal position sensor asserted in
  claim 4, however, is fully disclosed by other
  prior art references. Both the 503 Series pedal
  position sensor and the '068 patent teach an
  electronic pedal position sensor being responsive
  to the pedal pivot shaft and causing a signal to
  be sent to the engine to increase or decrease
  engine speed based on the rotation of the pivot
  shaft.

11

• It is undisputed that in the mid-1990's more cars
  required the use of an electronic device, such as
  a pedal position sensor, to communicate driver
  inputs to an electronically managed engine. It is
  also undisputed that adjustable pedal assemblies
  have existed in the art since the late 1970's.
  Clearly it was inevitable that adjustable pedal
  assemblies would be joined with an electronic
  device to work in conjunction with modern
  electronically controlled engines.

12

• The Court finds that Defendant has offered
  sufficient evidence of a suggestion to combine a
  pivotally mounted adjustable pedal assembly with
  an off-the-shelf modular pedal position sensor to
  solve the problem of designing a less expensive,
  less complex, and more compact adjustable pedal
  assembly for use with electronically controlled
  vehicles.
• -- 298 F.supp.2d 594

13
Federal Circuit opinion

• The specification of the 565 patent indicates
  that prior-art pedal assemblies incorporating an
  electronic control suffered from being too bulky,
  complex, and expensive to manufacture. See 565
  patent, col. 1, ll. 48-53. It was this problem
  that the 565 patent set out to address. See id.
  col. 2, ll. 2-5.

14
Fed Cir.

• We agree with Teleflex that the district court
  did not apply the correct teaching-suggestion-moti
  vation test. We also agree that, under that test,
  genuine issues of material fact exist, so as to
  render summary judgment of obviousness improper.
• -- Fed Cir case no. 04-1152, slip op at 10.

15

• Under our case law, whether based on the nature
  of the problem to be solved, the express
  teachings of the prior art, or the knowledge of
  one of ordinary skill in the art, the district
  court was required to make specific findings as
  to whether there was a suggestion or motivation
  to combine the teachings of Asano with an
  electronic control in the particular manner
  claimed by claim 4 of the 565 patent. See
  Kotzab, 217 F.3d at 1371 Rouffet, 149 F.3d at
  1357. That is, the district court was required to
  make specific findings as to a suggestion or
  motivation to attach an electronic control to the
  support bracket of the Asano assembly.

16

• The test requires that the nature of the
  problem to be solved be such that it would have
  led a person of ordinary skill in the art to
  combine the prior art teachings in the particular
  manner claimed. We have recognized this situation
  when two prior art references address the precise
  problem that the patentee was trying to solve. .
  . . In this case, the Asano patent does not
  address the same problem as the 565 patent. The
  objective of the 565 patent was to design a
  smaller, less complex, and less expensive
  electronic pedal assembly. The Asano patent, on
  the other hand, was directed at solving another
  problem.

17
(No Transcript)
18

• A consortium of five major corporations,
  including Microsoft and Cisco have filed as
  amicus supporting the petition.  Their brief
  argues that the current structured test for
  obviousness is too easy a hurdle for patentees
  and that the formalities of the test undermines
  courts ability to truly determine whether an
  invention is obvious to one skilled in the art.

19

• In late May of 2006, the Solicitor General,
  joined by the PTO, filed a brief in support of
  the Petitioner. The brief is sharply critical of
  the Federal Circuit law in the area
• The Federal Circuit has transformed one means of
  establishing obviousness under the Graham
  frameworkproof that the prior art provided a
  teaching, suggestion, or motivation for
  combining separate prior art referencesinto an
  inflexible requirement for determining
  obviousness.

20

• As this case demonstrates, the Federal Circuits
  teaching-suggestion-motivation test extends
  patent protection to non-innovative combinations
  of familiar elements. The issue is important,
  because many patent applications rest on the
  combination of prior art references, and because
  extension of patent rights to obvious
  combinations of familiar elements retards, rather
  than advances, new discoveries.

21

• The Federal Circuits test creates a substantial
  obstacle to showing that a claimed invention that
  simply combines known features without
  substantial innovation would have been obvious,
  because the test requires the party challenging
  the patent to come forward with affirmative
  evidence in the prior art of a teaching,
  suggestion, or motivation to combine the
  features. That showing may be difficult or
  impossible even though the combination, on its
  face, would have been obvious. For example, such
  affirmative evidence may be lacking if the claim
  arose in a newly emerging technical field or if
  the combination was so obvious to persons skilled
  in the art that no one would have had need or
  incentive to record the trivial extension of the
  art.
• Brief of the United States as Amicus Curiae at 9,
  14

22

• The Court should reiterate that the role of the
  hypothetical person of ordinary skill is critical
  in the nonobviousness inquiry and that the person
  is understood to have an ability to combine and
  modify prior art references that is consistent
  with the creativity and problem-solving skills
  that in fact are characteristic of those having
  ordinary skill in the art.  FTC Report, ch. 4,
  at 15.
• SGs Amicus Brief on the Merits at 25.

23

• On June 26, 2006, the Court granted certiorari in
  KSR v. Teleflex, No. 04-1350 (U.S.), which
  presents the Supreme Court with the opportunity
  to decide the following question
• Whether the Federal Circuit has erred in holding
  that a claimed invention cannot be held
  obvious, and thus unpatentable under 35 U.S.C.
  103(a), in the absence of some proven
  teaching, suggestion, or motivation that would
  have led a person of ordinary skill in the art to
  combine the relevant prior art teachings in the
  manner claimed.
• Pet. for Cert. at i, in KSR v. Teleflex, No.
  04-1350.

24
KSR (contd)

• The question is essentially a broad challenge to
  the obviousness jurisprudence of the Federal
  Circuit.

25
KSR impacted the Federal Circuit even before
Court decided case

• Dystar Textilfarben v. CH Patrick, No. 06-1088
  (Fed. Cir. Oct. 3, 2006),

26

• In Dystar and three other cases, the Federal
  Circuit struck down the claims at issue as
  invalid for obviousness. In two, the lower
  tribunals obviousness holding is upheld in the
  other two, the lower tribunals nonobviousness
  holding is reversed.

27
Dystar Textilfarben v. CH Patrick, 464 F.3d 1356
(FC 2006)

• Bringing the person of ordinary skill back into
  the suggestion-motivation test

28

• KSR INTERNATIONAL CO. v. TELEFLEX INC.
• 127 S.Ct. 1727 (April 30, 2007)

29

• The Federal Circuit has employed an approach
  referred to by the parties as the teaching,
  suggestion, or motivation test (TSM test), under
  which a patent claim is only proved obvious if
  some motivation or suggestion to com bine the
  prior art teachings can be found in the prior
  art, the nature of the problem, or the knowledge
  of a person having ordinary skill in the art. --
  casebook p. 666

30
Asano Pedal
31
Sensor prior art

• Pages 667-668 Integrated and freestanding pedal
  sensors, described and claimed in various prior
  art patents

32
P. 670

• Engelgau had not included Asano among the prior
  art references, and Asano was not mentioned in
  the patents prosecution. Thus, the PTO did not
  have before it an adjustable pedal with a fixed
  pivot point.

33
(No Transcript)
34
Supreme Ct. holding

• We begin by rejecting the rigid approach of the
  Court of Appeals. Throughout this Courts
  engagement with the question of obviousness, our
  cases have set forth an expansive and flexible
  approach inconsistent with the way the Court of
  Appeals applied its TSM test here.

35
Highlights from opinion

• US v Adams and teaching away

36
P. 674

• When a work is available in one field of
  endeavor, design incentives and other market
  forces can prompt variations of it, either in the
  same field or a different one. If a person of
  ordinary skill can implement a predictable
  variation, 103 likely bars its patentability.

37

• Often, it will be necessary for a court to look
  to interrelated teachings of multiple patents
  the effects of demands known to the design
  community or present in the marketplace and the
  background knowledge possessed by a person having
  ordinary skill in the art, all in order to
  determine whether there was an apparent reason to
  combine the known elements in the fashion claimed
  by the patent at issue. To facilitate review,
  this analysis should be made explicit. -- p.
  674

38

• A court can take account of the inferences and
  creative step s that a person of ordinary skill
  in the art would employ. -- 674

39

• In many fields it may be that there is little
  discussion of obvious techniques or combinations,
  and it often may be the case that market demand,
  rather than scientific literature, will drive
  design trends. 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.

40

• 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 or her technical grasp.
  If this leads to the anticipated success, it is
  likely the product not of innovation but of
  ordinary skill and common sense. In that instance
  the fact that a combination was obvious to try
  might show that it was obvious under 103.

41
In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988)

• Obvious to try is NOT the appropriate standard

While absolute certainty is not necessary to
establish a reasonable expectation of success,
In re O'Farrell, 853 F.2d 894, 903-04,
(Fed.Cir.1988), there can be little better
evidence negating an expectation of success than
actual reports of failure. A reasonable jury
could conclude from these reports that one of
ordinary skill in the art would not have had a
reasonable expectation of success . . . Life
Technologies, supra.
42

• Merges, Uncertainty and the Standard of
  Patentability, 7 Berkeley High Tech. L.J. 1
  (1993).

43
P. 677

• A person having ordinary skill in the art could
  have combined Asano with a pedal position sensor
  in a fashion encompassed by claim 4, and would
  have seen the benefits of doing so.

44
Graham v. John Deere
Is it obvious to move the hinge plate from
position A under the shank to position 1 above
the shank?
C
3
2
B
1
A
45
Applying KSR Leapfrog
46
Leapfrog v. Fisher-Price, 485 F.3d 1157 (Fed Cir
2007)

• Affirming District court (Delaware)
• Deadlocked jury, submitted to judge

47
(No Transcript)
48
Bevan prior art
49
(No Transcript)
50
(No Transcript)
51
(No Transcript)
52

• Fisher-Price argues that claim 25 is nothing more
  than the Bevan device, a toy that teaches reading
  based on the association of letters with their
  phonemic sounds, updated with modern electronics
  that were common by the time of the alleged
  invention. Fisher-Price also responds that
  particularized and specific motivations to
  combine need not be found in the prior art
  references themselves in the context of an
  improvement that arises from a desire to
  generally improve a known device (e.g., to make
  the product smaller, lighter, or less expensive)
  using newer technology. at 1160

53
At 1161

• The common sense of those skilled in the art
  demonstrates why some combinations would have
  been obvious where others would not.

54
Holding

• 861 patent would have been obvious in view of
  the combination of Bevan, the SSR, and the
  knowledge of one of ordinary skill in the art.
  -- 1161

55
At 1162

• We agree with the district court that one of
  ordinary skill in the art of children's learning
  toys would have found it obvious to combine the
  Bevan device with the SSR to update it using
  modern electronic components in order to gain the
  commonly understood benefits of such adaptation,
  such as decreased size, increased reliability,
  simplified operation, and reduced cost.

56

• 25. An interactive learning device, comprising
• a housing including a plurality of switches
• a sound production device in communication with
  the switches and including a processor and a
  memory
• at least one depiction of a sequence of letters,
  each letter being associable with a switch and
• a reader configured to communicate the identity
  of the depiction to the processor,
• wherein selection of a depicted letter activates
  an associated switch to communicate with the
  processor, causing the sound production device to
  generate a signal corresponding to a sound
  associated with the selected letter, the sound
  being determined by a position of the letter in
  the sequence of letters.

57
Applying KSR PTO Guidelines

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office
• Docket No. PTOP20070031
• Examination Guidelines for
• Determining Obviousness Under 35
• U.S.C. 103 in View of the Supreme
• Court Decision in KSR International
• Co. v. Teleflex Inc.

58
At p. 57527

• In certain circumstances, it may also be
• important to include explicit findings as
• to how a person of ordinary skill would
• have understood prior art teachings, or
• what a person of ordinary skill would
• have known or could have done. Factual
• findings made by Office personnel are
• the necessary underpinnings to establish
  obviousness.

59

• Prior art is not limited just to the
• references being applied, but includes
• the understanding of one of ordinary
• skill in the art. The prior art reference
• (or references when combined) need not
• teach or suggest all the claim
• limitations however, Office personnel
• must explain why the difference(s)
• between the prior art and the claimed
• invention would have been obvious to
• one of ordinary skill in the art. p. 57528

60
(No Transcript)
61
In re Kubin

• This case presents a claim to a classic
  biotechnology invention -- the isolation and
  sequencing of a human gene that encodes a
  particular domain of a protein.

62

• Appellants claim DNA molecules ("polynucleotides")
  encoding a protein ("polypeptide") known as the
  Natural Killer Cell Activation Inducing Ligand
  ("NAIL").
• NAIL is a specific receptor protein on the cell
  surface that plays a role in activating the NK
  cells.

63

• Representative claim 73 of appellants'
  application claims the DNA that encodes the
  CD48-binding region of NAIL proteins
• 73. An isolated nucleic acid molecule comprising
  a polynucleotide encoding a polypeptide at least
  80 identical to amino acids 22-221 of SEQ ID
  NO2, wherein the polypeptide binds CD48.

64
Prior Art

• U.S. Patent No. 5,688,690 (Valiante)
  discloses a receptor protein called p38 that is
  found on the surface of human NK cells. The
  Board found (and appellants do not dispute) that
  Valiantes p38 protein is the same protein as NAIL

65
Prior art (contd)

• Valiante teaches that the DNA and protein
  sequences for the receptor p38 may be obtained by
  resort to conventional methodologies known to one
  of skill in the art. 690 Patent col.7 ll.49-51.
  Example 12 of Valiantes patent further
  describes a five-step cloning protocol for
  isolating and identifying the p38 receptor. Id.
  at col.18 l.6-col.19 l.28.

66
PTO Board Holding

• Valiantes disclosure of the polypeptide p38, and
  a detailed method of isolating its DNA, including
  disclosure of a specific probe to do so . . .
  established Valiantes possession of p38s amino
  acid sequence and provided a reasonable
  expectation of success in obtaining a
  polynucleotide encoding p38, a polynucleotide
  within the scope of Appellants claim 73.

67
Federal Circuit

• Insofar as Deuel implies the obviousness inquiry
  cannot consider that the combination of the
  claim's constituent elements was "obvious to
  try," the Supreme Court in KSR unambiguously
  discredited that holding.

68

• The Supreme Court's admonition against a
  formalistic approach to obviousness in this
  context actually resurrects this court's own
  wisdom in In re O'Farrell, which predates the
  Deuel decision by some seven years.

69

• KSR affirmed the logical inverse of this
  statement by stating that 103 bars
  patentability unless "the improvement is more
  than the predictable use of prior art elements
  according to their established functions." 550
  U.S. at 417.