Cohesive Tech v. Water Corp (Fed. Cir. 2008)
Perhaps the most important portion of this case relates to the notion that novelty and nonobviousness are separate and distinct inquiries. And, that a patent may be found anticipated yet nonobvious.
On summary judgment, the district court Cohesive’s HPLC patent might be obvious, but certainly was not anticipated. Water appealed — arguing that the judgment was logically incorrect if anticipation truly is the “epitome of obviousness.” On appeal, however, the Federal Circuit confirmed that novelty and obviousness are separate and distinct — one does not necessarily follow the other.
“While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different.
The court suggested two circumstances where an anticipated claim might still be nonobvious. First, secondary considerations of nonobviousness may exist that are not relevant in an anticipation claim. Second, although inherent elements apply in an anticipation, inherency is generally not applicable to nonobviousness.
“[O]bviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness.”
The court also gives an example —
“Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.”
Judge Mayer dissented — arguing that anticipation is a subset of nonobviousness. “Although a claimed invention can be obvious but not anticipated, it ‘cannot have been anticipated and not have been obvious.’ In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).”
“The majority’s assertion that a claim can be anticipated but not obvious, flies in the face of a long line of precedent to the contrary. Not surprisingly, it is unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that claims at issue are not obvious.”
The practical impact of this case:
- Anticipation still gets to a jury even when the defense has a credible obviousness argument.
- The Majority’s example might be seen to narrow the scope of documents available for obviousness arguments along a temporal axis. (References from a long time ago shouldn’t be combined with more recent references.)
- In some ways, the ‘common sense’ approach of KSR encourages this decision. While anticipation may still be a formal construct, obviousness should focus on what really would have been obvious at the time of the invention.
- Professor Ochoa (Santa Clara) reminded me about the European rule that does not allow “secret” prior art to be used in obviousness (inventive step) analysis. If the US so modified its rules, perhaps the distinction between obviousness and anticipation would begin to ring true.
Hi,
I enjoyed reading this discussion..Obviousness can also be shown with a single reference that is deficient in modest aspects well known in the prior art. That is where obviousness comes closest to anticipation, which also allows for inherency.
Hi,
Nice good one.But obviousness determination is not the result of a rigid formula like TSM and claim interpretation, disassociated from the consideration of the facts of a case.
“Speaks of a ‘Constitutional Right’ given by 271 when indeed 271 bestows no right that has ever been taken away. The only ‘right’ 271 might be said to give is the ‘right’ to never have a court deny relief on the basis that a patentee decided to not license. (Note here that the ability to decide not to license is not a right’ given by the statute, it is an ability which is not prohibited and is thus presumed allowable) Nobody has ever been denied relief under such a reasoning, and thus the only ‘right’ given by 271 has never been taken away. Without 271 bestowing a ‘right’ which has been taken away your argument that the constitution protects it as being a right that shall not be denied has no basis since no ‘right’ has been taken away.”
How are those law school applications coming along? My prayers are with your 1L Legal Writing instructor…
Your assertion:
“According to 35 USC 271, an inventor may refuse to license or use his invention. Under the law, no one should be able to take that Constitutional Right away.”
Speaks of a “Constitutional Right” given by 271 when indeed 271 bestows no right that has ever been taken away. The only “right” 271 might be said to give is the “right” to never have a court deny relief on the basis that a patentee decided to not license. (Note here that the ability to decide not to license is not a “right” given by the statute, it is an ability which is not prohibited and is thus presumed allowable) Nobody has ever been denied relief under such a reasoning, and thus the only “right” given by 271 has never been taken away. Without 271 bestowing a “right” which has been taken away your argument that the constitution protects it as being a right that shall not be denied has no basis since no “right” has been taken away.
And all that I said does not skirt the constitution. All rights given by statute are upheld. All statutes make sense. Everything is right with the world except that you feel you’ve been given a “right” by 271, which you have not. You simply have the ability to refuse to license. You don’t need that ability put in a statute as a “right” when you already possess it. And it has not been.
(©¿®)
Dear e6k & Follow Up,
I’ve addressed all your concern extensively. A thank you would be nice.
As Senator Daniel Patrick Moynihan said:
“Everyone is entitled to his own opinion, but not the facts.”
There is no rhyme or reason to your regurgitating your fantasies. However, far be it from me to hold your opinions against you – you may continue to believe your own opinions, despite the truth, despite the facts, despite reality, that’s your prerogative as an American.
Old Hickory, Andrew Jackson, our 7th President, said:
“Any man worth his salt will stick up for what he believes right, but it takes a slightly better man to acknowledge instantly and without reservation that he is in error.”
Have a nice day.
Dear Follow Up,
Thank you for your comment and further inquiry.
The Congressional statute, to which your argument refers, 35 USC 283, is inconsistent with another such stature, 35 USC 271.
While ’271 is consistent with Article I, §8, Clause 8, our Constitution’s Patent Clause, ’283 is not.
The statute that gives the Inventor “the exclusive Right” is found in the Constitution, the supreme Law of the Land “the mother of all statutes.”
* * * * *
Dear e6k,
Thank you for your comment and further inquiry.
According to 35 USC 271, an inventor may refuse to license or use his invention. Under the law, no one should be able to take that Constitutional Right away. Your argument skirts the clear law laid down by the Constitution, and the Constitution is the supreme Law of the Land – it can only be “skirted” by formal Amendment.
Let’s look at an analogy to prove my point. Using your argument’s faulty logic, Congress could also skirt the express intent of Article I, §8, Clauses 12 and 17.
Clause 12: The Congress shall have Power … “To raise and support Armies, but no Appropriation of Money to that Use shall be for a longer Term than two Years;”
Do you agree that, without Amendment, no military Appropriation for a longer Term than two Years would be lawful?
Clause 17: The Congress shall have Power … “To exercise exclusive Legislation in all Cases whatsoever, over such District (not exceeding ten Miles square) as may, by Cession of particular States, and the Acceptance of Congress, become the Seat of the Government of the United States, …”
Do you agree that, without Amendment, it would be unlawful for the Seat of the Government of the United States to exceed ten Miles square (Washington DC is 68 square miles)?
* * * * *
Dear e6k &Follow Up,
My argument rests on the Constitution’s words “the exclusive right” and the extensive body of many decades worth of common law that created binding precedent that stemmed therefrom (please also see the concurring eBay opinion by CHIEF JUSTICE ROBERTS, with whom JUSTICE SCALIA and JUSTICE GINSBURG joined). Bear in mind that there are more ways than one to achieve the Constitution’s “the exclusive Right” mandate.
A well labored dialogue contrasting the Framers’ use of the words, “the exclusive Right,” to your word, “injunction,” starts on this link and throughout the thread titled “Patent Reform 2008: (fixing constitutional errors)”:
link to patentlyo.com
The Supreme Court’s eBay Opinion is the worst court decision in IP history, the importance of which should not be under estimated by serious IP People.
Also, please see
link to patentlyo.com
“and was not talking *solely* about an injunction”
By the way, my earlier question about whether damages were allowable was to get you to admit that the language in Article. I, §8, Clause 8 granted Congress power to provide multiple remedies and was not talking about an injunction. Why? Because it leads to my main point that Congress can exercise all or less than all of that power by granting all or less than all of those remedies.
The Framers could have mandated that Congress promoted the useful arts, instead of merely granting Congress the power to promote the useful arts. They trusted that Congress would wisely use that power as appropriate. If you want to argue that Congress has not made wise decisions, great. That’s a policy argument that deserves attention. But talking about constitutionality in this context is a waste of time.
JAOI: I don’t have the time to discuss whether Congress has or doesn’t have particular powers under those other clauses.
What I do know that the decision not to exercise the full extent of its power under Article. I, §8, Clause 8 is *not* a constitutional violation.
271 appears entirely consistent JAOI. And it appaears once again that there is no reason for a mandatory injunction. Just because you refuse to license the tech doesn’t mean that you get injunctive relief, it means you get relief. That can take the form of $. Pick your poison, license and get $ or go to court and get $. Either way, you were not denied relief because you refused to license.
groveboy,
As far as I know, there is no explicit requirement of a “recognition” in 103 jurisprudence. KSR did not say that. And inherent does not necessarily mean unrecognized; it just means not specifically disclosed.
Dear e6k,
Re: “Perhaps there is a statute that supports your addition?”
Yes, “the mother of all statutes.”
The Congressional statute, to which your argument refers, 35 USC 283, is inconsistent with another such stature, 35 USC 271.
While ’271 is consistent with Article I, §8, Clause 8, our Constitution’s Patent Clause, ’283 is not.
The statute that gives the Inventor “the exclusive Right” is found in the Constitution, the supreme Law of the Land “the mother of all statutes.”
* * * * *
Dear Follow Up,
Your argument is an excellent, a very clever “lawyer’s argument,” Bravo! However, I think you will be constrained to agree that, upon scrutiny, it is unavailing because it “skirts the law” (i.e., it gets around the expressed intent of the law). Your argument skirts the clear law laid down by the Constitution, and the Constitution is the supreme Law of the Land – it can only be “skirted” by formal Amendment.
Let’s look at an analogy to prove my point. Using your argument’s faulty logic, Congress could also skirt the express intent of Article I, §8, Clauses 12 and 17.
Clause 12: The Congress shall have Power … “To raise and support Armies, but no Appropriation of Money to that Use shall be for a longer Term than two Years;”
Do you agree that, without Amendment, no military Appropriation for a longer Term than two Years would be lawful?
Clause 17: The Congress shall have Power … “To exercise exclusive Legislation in all Cases whatsoever, over such District (not exceeding ten Miles square) as may, by Cession of particular States, and the Acceptance of Congress, become the Seat of the Government of the United States, …”
Do you agree that, without Amendment, it would be unlawful for the Seat of the Government of the United States to exceed ten Miles square (Washington DC is 68 square miles)?
With apologies to Leopold, the application of a little bit of logic would greatly clarify the discussion between MM and pds.
It seems that the two are talking at each other, and simply not talking about the same focal point.
pds: “Once the 102 rejection is good, I don’t care about the 103.” and “the fact that a reference may be applied under 102 does not automatically make it applicable under 103. This is the REAL issue.”
MM: “he’s talking about a reference that ANTICIPATES THE CLAIM AS A MATTER OF FACT.”
So let’s try again with logic (and the law) and use the Venn diagrams that DC has provided.
pds, please provide an example of a 102 reference that occupies the small slice outside of the 103 domain as portrayed in the first Venn diagram. Please use a 102 reference that would actually exist (eliminate the ‘may’). If you do so in short sentences, the logic will be inescapable, even for MM, and all he will have left would be his crack pipe comments. If you cannot, then the logic dictates that indeed MM (and GP) is correct and that the Fed Circuit really blew this one.
“Dear Someone who cares,
And,
(d) No patent owner … shall be denied relief “in the form of monetary damages or injunction or both” … by reason of his having … REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;…” (emphasis added)
becomes
(d) No patent owner … shall be denied relief “in, AT HIS SOLE DISCRETION, the form of monetary damages or injunction or both” … by reason of his having … REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;…” (emphasis added)
Just even finer it seems to me.”
The problem is JAOI, my additions to the writings are merely what the statutes fill in. No statute gives the patentee the right to pick his remedy as your additions add in. In fact, the statute specifically gives the judge discretion over injunctive remedy. You’re never going to get around “may”. It’s impossible.
Perhaps there is a statute that supports your addition?
pds “As case law has amply pointed out, the fact that a reference may be applied under 102 does not automatically make it applicable under 103.”
There you go again. In his hypothetical, Judge Linn is not talking about whether a reference that “may be applied” in a 102 argument “may be” applied in an obviousness argument. Rather (and how many times must I repeat this?) he’s talking about a reference that ANTICIPATES THE CLAIM AS A MATTER OF FACT.
Read they hypothetical. Refresh yourself pdf.
Now tell me: if the prior art teaches every element of your invention as those elements are put together in your claim, how is it that your invention is also not obvious in view of that art? How can you argue that the art is “non-analogous”? How can you argue that there is an “unresolved need”?
Could you theoretically argue that there is some “teaching away” that renders the invention non-obvious in view of the cited art. Not bloodly likely. If the reference does IN FACT anticipate, then it does IN FACT enable and any alleged “teaching away” would be trumped by that finding. Recent case law underscores this conclusion (Rasmussen might have helped you out here — too bad).
“I advise you to read the entire thread, in particular my comments, before launching into a recitation of vague, poorly written “if then” pseudo-axioms.”
Really, I cannot think of anybody better qualified to teach somebody how to write “vague, poorly written ‘if then’ pseudo-axioms'” than MM.
“Once you have identified an anticipatory reference, you can NOT argue that the anticipated invention is ‘non-obvious.’ You simply can’t. Try to do it. You will fail.”
Really … are you that stoopid MM? Nobody cares if there is going to be both a 102 and 103 rejection. Once the 102 rejection is good, I don’t care about the 103. However, the relevance of this issue occurs when the 102 can be overcome and the reference could then be applied as a 103.
As case law has amply pointed out, the fact that a reference may be applied under 102 does not automatically make it applicable under 103. This is the REAL issue. However, since you don’t prosecute patents, your relevant experience as to this issue is minimal, at best, and you are focusing on the non-issue.
As for your “Try to do it. You will fail” assertion, no examiner has given me a chance in a situation in which I can make such an argument. Then again, as 6K evidenced upthread, most examiners are smarter than you and, as a result, would not make a rejection that they cannot justify.
I’ve got a great example today. I’ve got an examiner that is trying to 102 a reference that would be knocked out under 103(c). The examiner knows that the examiner cannot use 103 with this reference so the examiner is trying to shoehorn a really bad claim construction into his rejection. This is going to be easy to dispose of, but the point is that if the examiner could use the reference with 103, the examiner had a much better chance of making the rejection. However, since the examiner cannot use the reference, the examiner is stuck with some bad arguments.
Dear Someone who cares,
And,
(d) No patent owner … shall be denied relief “in the form of monetary damages or injunction or both” … by reason of his having … REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;…” (emphasis added)
becomes
(d) No patent owner … shall be denied relief “in, AT HIS SOLE DISCRETION, the form of monetary damages or injunction or both” … by reason of his having … REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;…” (emphasis added)
Just even finer it seems to me.
Also please see:
link to patentlyo.com
MWW “There is nothing inaccurate about my statement.”
There is nothing clear about it either. It’s gobbledygook. For example, are you talking about a method claim or a composition claim? These facts matter. The outcome is fact-dependent. You say that “the key here is what is meant by the term “enabled” and then you fail to define the term.
Don’t be sloppy. That was Judge Linn’s mistake. There’s a typo in the hypothetical at the core of his argument! Sheesh.
Mr. Mooney:
There is nothing inaccurate about my statement. Would you care to elaborate?
IGNORANCE IS BLISS
I believe the reasoning is that since its their equity at stake in a malpractice suit, not the associate’s . . . .
In my state one is ALWAYS responsible for their own malpractice. In fact the associate is the party sued and the firm is liable vicariously. That is how I remember torts.
Let the associate who wrote it sign it.
No partner here has ever put his or her name on anything I have filed.
Posted by: Lowly | Oct 14, 2008 at 01:32 PM
Interesting. Where I work, the managing partner for the particular client puts their name on the things that are filed. I believe the reasoning is that since its their equity at stake in a malpractice suit, not the associate’s, the managing partner should read what is being filed. Can’t say that this actually happens, but that’s the rationale.
“Why open yourself up to IC charges for work that isn’t even yours?”
Not to change the subject but …. LOLLOLOOLOLOLOL!!!!!!
IC charges. You crack me up. Who has the PTO charged with IC lately and what happened to them? What about the guys who got “caught” in court? What did the PTO do to them? Careers ruined?
I think not.
ManWhoWatches: “The key here is what is meant by the term “enabled”. If the more narrow claimed range shows superior results and the prior art does not show superior results, then the broader range is not enabled for purposes of anticipation. ”
This makes no sense whatsoever. I advise you to read the entire thread, in particular my comments, before launching into a recitation of vague, poorly written “if then” pseudo-axioms.
“… the partner(?!) -drafting the appln- _signing the application cover sheet_ …”
I don’t think you see that happening often in patent prosecution. Why open yourself up to IC charges for work that isn’t even yours? Let the associate who wrote it sign it.
No partner here has ever put his or her name on anything I have filed.
MM”THE PRIOR ART REFERENCE TEACHES EVERY ELEMENT IN THE CLAIM. If that doesn’t render an invention “obvious”, then nothing does.”
Y ssarian: “Wrong Moon-beam, this renders a claim anticipated.”
Wrong. It simultaneously renders a claim anticipated *and* obvious because (as courts have told us repeatedly) anticipation is the epitome of obviousness. Once you have identified an anticipatory reference, you can NOT argue that the anticipated invention is “non-obvious.” You simply can’t. Try to do it. You will fail.
pds “Certain reference may be considered non-analogous prior art under 103. However, something comparable does not apply to 102.”
False: accidental anticipation.
Sorry, pds. I do recommend Mayer’s dissent and Patent Prospector’s summary of the case. They get it.
JAOI: Then argue that, in view of the Framer’s intent, Congress should exercise it’s full power. But put to rest unconstitutionality. It’s a red herring.
DC, how about having a “Recommend comment” function similar to what they have on numerous other websites?
… the partner(?!) -drafting the appln- _signing the application cover sheet_ …
Wow I am shocked at the complete misunderstanding of the quid pro quo for monopoly vis-a-vis the patent. Mr. Mooney pays lip service but still fails to comprehend what is taught in a patent. Let’s take the claimed range cases.
Mr. Mooney takes the example provided by anon:
“For example, the prior art discloses a catalyst composition which comprises between 5 and 95 wt% palladium. Applicant claims a catalyst composition comprising between 13.5 and 14.5 wt% palladium. Assuming Applicant is able to show unexpected results or strong advantage over the art for making a catalyst with the very NARROW claimed range even though such range is encompassed within that very BROADLY disclosed by the prior art, then the argument can conceivably be made that the claimed catalyst composition is NOT obvious ”
Wrong. If the prior art is enabled for the recited range range, it anticipates the composition. End of analysis.
The key here is what is meant by the term “enabled”. If the more narrow claimed range shows superior results and the prior art does not show superior results, then the broader range is not enabled for purposes of anticipation. You see, the claims are merely the metes and bounds of the invention. It is the teaching for which monopoly is granted; you know, advancing the useful arts. The more interesting case is what if the broader range is enabled in the sense that is shows the same superior results as the more narrow range, but the end points lie outside of the actual range in which superior results are obtained. Then a subsequent inventor comes along and says, no the superior results are not obtained over the entire range of the prior art. Rather the superior results are present over the entire range of the subsequently claimed more narrow range. What is the answer to that case?
Simple . . . if proven that the subsequently claimed more narrow range correct provides the superior results and proves the the superior results are not obtained over the entire range of the earlier broader range, public policy mandates that the subsequent patent be granted. The prior patent should then be striken, sua sponte, by the commissioner so as to avoid improper teaching in the public record. In other words, we must avoid having misleading information recited in patents so as to further advance the useful arts. It is what the entire process is about.
JAOI,
“(d) No patent owner … shall be denied relief … by reason of his having … REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;…”.(”
becomes
(d) No patent owner … shall be denied relief “in the form of monetary damages or injunction or both” … by reason of his having … REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;…”.
Just fine it seems to me.
Posted by: pds | Oct 13, 2008 at 02:09 PM
“[A]pparatus claims cover what a device _is_, not what a device _does_.”
Form follows function.
—
Yes, but if the form isn’t disclosed then you miss out on 112(2). And if the form is disclosed in only one embodiment, and isn’t claimed, then Ex says that you miss out on 112(1). Whether or not Ex is correct, the result is to make prosecution more expensive for the client. So it’s always good to throw in a fully-enabled and unquestionably definite narrow claim, along with the broad claim reciting what the invention _does_. You probably know this, but I’ve been working on some transferred files from a bigger firm where the partner(?!) drafting the appln apparently didn’t recognize this basic principle. So I thought I would share the principle with all the readers.
“Please expand slightly the sentence ‘Certain references, even if they qualify as prior art, may not be used under 103.'”
I already did. Certain reference may be considered non-analogous prior art under 103. However, something comparable does not apply to 102.
BTW: This isn’t just 103(c) references, although that is another example.
“It seems that this may be a sticking point, as the logical thread seems to be that anything in prior art must be obvious, since by ‘prior’, it is ‘known’, and if ‘known’, how then can it not be ‘obvious’.”
You seem to be hung up on the “short-form” language. A rejection under 102 and 103 involve two different inquiries. I’ll just repeat the language from this decision:
The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) (“Succinctly put, the various unenforceability and invalidity defenses that may be raised by a defendant—inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under § 103—require different elements of proof.”) Obviousness can be proven by combining existing prior art references, while anticipation requires all elements of a claim to be disclosed within a single reference. Compare MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“To anticipate, a single reference must teach every limitation of the claimed invention.”), with Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991) (“If it is necessary to reach beyond the boundaries of a single reference to provide missing disclosure of the claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousness.”). Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation.
“I’m wondering if the non-analogous art argument has defeated an obviousness rejection since KSR?”
“Yes, Ex Parte Ralph Kurt , Appeal 2007-4172 Nov 30, 2007
link to des.uspto.gov
“___________ is non-analogous art because it is not reasonably pertinent to any problem regarding __________ in the ___________ arts. KSR, 127 S. Ct. at 1742”
Interesting case.
clarity,
I believe pds is referring to the fact that under 103(c), some prior art references available only under 102(e)-(g) cannot be used in a 103(a) rejection.
“It seems that this may be a sticking point, as the logical thread seems to be that anything in prior art must be obvious, since by ‘prior’, it is ‘known’, and if ‘known’, how then can it not be ‘obvious’.”
Ah, but you’re confusing logic with the law. They’re not the same. That’s why people hire patent lawyers to file patent applications for them, rather than mathematicians.
pds,
Short sentences work well.
Please expand slightly the sentence “Certain references, even if they qualify as prior art, may not be used under 103.”
It seems that this may be a sticking point, as the logical thread seems to be that anything in prior art must be obvious, since by ‘prior’, it is ‘known’, and if ‘known’, how then can it not be ‘obvious’.
Thanks
Dear Mr. Follow Up,
Here’s a thought from this comment:
link to patentlyo.com
Without the ability for all patent owners to exclude infringers from infringing, Article I, §8, Clause 8 becomes a compulsory licensing deal for some patent owners and not others – no one can reasonably argue that that is what the Framers intended when they signed this Patent Clause into the Supreme Law of the Land:
Article. I, §8, Clause 8 of our Constitution:
“The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”
So, who are you going to believe?, the Framers?, or some lawyer-wannabees who refuse to acknowledge the clear, explicitly EXPRESSED INTENT of the Constitution’s Patent Clause?
* * * * *
PS: Could 35 U.S.C. 271 “Infringement of patent,” be any more clear as to its meaning?, and isn’t it precisely consistent with the Constitution’s Patent Clause?:
“… (d) No patent owner … shall be denied relief … by reason of his having … REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;…”.(emphasis added)
“If it’s anticipated, then it’s obvious. EOS.”
I’ll try to do this is short sentences so perhaps it’ll be easier to understand.
All references that qualify as prior art can be used under 102.
Certain references, even if they qualify as prior art, may not be used under 103.
Indicia of non-obviousness also apply to 103 rejections.
Ergo, a reference that anticipates a claimed invention may not render, as obvious, the same claimed invention.
“it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different.”
Jury verdicts are not mathematical proofs. While it may be true that in most cases actual non-obviousness does foreclose anticipation, juries don’t make mathematically precise determinations, and might find different evidence credible or not credible regardless of its correlation with some mathematical truth.
The most credible obviousness theory might be that reference A discloses X does not teach Y, but that Y is taught in some reference B that is arguably analogous art. Maybe there is some evidence of teaching away.
On the other hand, the most credible anticipation theory might be that A discloses X explicitly and discloses Y inherently. The contest over anticipation might revolve around a battle of experts over what the terms ‘widget’ and ‘gadget’ really mean.
Given those theories to ponder, a jury might well return inconsistent verdicts on anticipation and obviousness that are each substantially supported by the evidence such that neither should be overturned on appeal.
Is a selection invention anticipated but nonobvious? For example, a narrow genus within a broader genus, which exhibits “unexpected results”.
Mooney says:
“THE PRIOR ART REFERENCE TEACHES EVERY ELEMENT IN THE CLAIM. If that doesn’t render an invention “obvious”, then nothing does.”
Wrong Moon-beam, this renders a claim anticipated.
“Alloy with 5-90% Compound Z is the prior art.
Claim is: Alloy with 40-60% Compound Z.
Element of 40-60 not taught. Not anticipated.”
Nice tautology, GP. Certainly, if “element of 40-60 is not taught” then a claim reciting that element is not anticipated. Everyone agrees.
But a prior art publication that teaches how to make and use alloys that variously comprise between 5-90% compound Z is likely to inherently or expressly anticipate a claim reciting an alloy with the narrower range (a claim to a method that reproducibly yields only the narrower range is less likely to be anticipated).
As pds noted upthread, this range scenario is “fact dependent”. It is not a “rule.”
OK, JAOI/WB
Let’s assume that, under Article I, §8, Clause 8 of our Constitution, Congress is given (1) the explicit power to pass laws that allow inventors to obtain an automatic injunction and (2) the implicit power to allow inventors to obtain other related remedies (in your words “everything else”).
Let’s also assume that Congress opted not to exercise the first power and, instead, under the second power granted money damages and an optional injunction, subject to the court’s discretion under traditional principles of equity. Is it unconstitutional for Congress choosing not to exercise the first power and, instead, opting to exercise the second power? Before you answer that question, consider the president choosing not to exercise his veto power? Is that unconstitutional?
There is no constitutional mandate for an automatic injunction, although I believe Congress could enact laws that mandated such. So why don’t you stop fruitlessly arguing about Constitutionality and start arguing that, in view of eBay, Congress needs to put the teeth back into inventors’ rights?
e6ok,
thank you for your support. please explain it as best you can. we need a little relief from the home front.
Follow up, I tried to explain that to him the other day. He will not be disuaded.
Yo Follow Up,
Let me help you. I think you hit on something – why do we need Congress for anything, they are Just a bunch of crooks. Let’s go to a two branch government, is that what you mean?
what a bizarre thread.
For DC, who wrote, approximately, that disclosure of a broad range anticipates a narrow range, that is untrue.
Alloy with 5-90% Compound Z is the prior art.
Claim is
Alloy with 40-60% Compound Z.
Element of 40-60 not taught. Not anticipated.
Everybody else, try this language:
Anticipated – This means that somebody invented it already.
How does anybody with a reg number allow themselves to be so bent with Legal tortures that he/she actually makes an argument that goes . . .
“Well, if somebody already invented your invention and published that in Document Q here, you inventing the same thing again would not be obvious because . . . ”
Stop yourself.
Seriously.
Think about what “anticipation” means. Forget about 102 and case law.
Anticipated – Somebody already invented it.
Are you really trying to convince yourself that inventing something that somebody already invented would not be obvious?
If it’s anticipated, then it’s obvious. EOS.
If it’s your position that “exclusive right” means an injunction, then money damages isn’t in that definition and Congress lacks the power to award damages.
… let me answer my own question, you infer the ability to award damages as a power of the inventor’s “exclusive right,” on the basis that the “exclusive right” is not synonmous with an injunction. If the exclusive right is not synomous with an injunction, it’s not mandatory.
“It does itemize “exclusive Right” and it leaves the rest to Congress. Perhaps I am missing your point. Please explain.”
Actually, it “itemizes exclusive right” and doesn’t leave anything else to congress. So how do you imply the ability to grant damages?
excuse me, by “anticipation” I meant non-obviousness, and by “obvious” I meant “anticpation” and by “moon walk” I meant “big furry rabbit” aka “you’re not here for the carrots are you…”
JOWR “I’m waiting with big ears and baited carrot breath to he”
Let me guess: you work for Hugh Hefner and that’s not a carrot.
Dear Follow Up.
My boss said,
“Perhaps I am missing your point. Please explain.”
If he is missing your point, maybe he is an asswhole, but if not, maybe it is not him whom is an asswhole.
So, who is? I’m waiting with big ears and baited carrot breath to hear.
ASE: “All it essentially says is that notwithstanding a finding of anticipation, the question of obviousness can go to the jury.”
*Sigh*
The case says the exact opposite: “While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation.”
As someone noted upthread, Lord Crouch’s summary falls short of his usually exemplary standards. Check out link to patenthawk.com for a somewhat more lucid analysis.
Money damages are appropriate for past damages, since they clearly cannot be enjoined. However, as most recognize, the teeth of the “exclusive” part of “exclusive right” is the power of the injunction. Anything less is rationalization.
You sound like a reasonable man, how about we give you a few “money damages” bucks for the government, out of the blue, to allow a private company to set up a natural gas drilling operation in your front yard. Heck, we’d even give you fair market value for your house, e.g. 10% below last year’s tax assessment.
I’m guessing you would quickly be wishing for the power of the injunction.
Dear Follow up,
Please read this:
Article I, §8, Clause 8 of our Constitution:
“The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”
It does itemize “exclusive Right” and it leaves the rest to Congress.
Perhaps I am missing your point. Please explain.
watching man, someone up-thread already picked up on the lesser included range issue. Let go of your pearls, this case won’t wipe out anything – not even the moon walk. All it essentially says is that notwithstanding a finding of anticipation, the question of obviousness can go to the jury.
If this logic holds true, then every claimed range case that includes a lesser included range with superior results is invalid. Chew on that for a while and you can see how this analysis will wipe out tens of thousands of patents issued in the semiconductor art.
…and data is pronounced “day-tah”
Aparrently the same theories of logic that have guided the Executive Branch of government these past 8 years have seemed to catch hold in the Article III branch of government. The Judge’s assertion
“While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different.”
Completely defies the logic I learned or must be premised upon some similar model of logic we see guided the executive policies toward investment banks and regulation in general.
God help this great country if this type of analysis permeates all fabric of our society.
Real prosecutors know that under 102, the prior art discloses, under 103 it teaches or suggests. And there is no such thing as a validity opinion.
“And, that a patent may be found anticipated yet nonobvious.” WRONG!!!!!!! See Hotchkiss v. Greenwood . . . it all started there. It is like this industry constantly has to relearn. WRONG, WRONG, WRONG, WRONG. That is the only way to explain it. You can see Graham v. Deere if you like. That statement is the same as saying 3 is greater than 4. It completely ignores Venn mathematics which is the model of analysis followed for determining the patentability of combination patents.
MM ->”if a reference does IN FACT anticipate, does it also render the claims obvious? The answer has to be yes and Linn is simply wrong.”
pds “If that were true, then the jurisprudence as to non-analogous prior art, indicia of non-obviousness, teaching away, and any other arguments that could be used to remove a reference as prior art (under an obviousness analysis) must be figments of our collective imagination.”
Wrong, pds. And your (and Linn’s) essential misunderstanding is right there in front of you should you wish to see the light. I noted this already upthread: if a piece of prior art does ****IN FACT**** anticipate then (1) teaching away doesn’t remove the prior art; (2) indicia of non-obvious does not remove the prior art; and (3) the art is analogous art *per se* because it reads on the claimed invention.
The jurisprudence you refer to still exists. It is just impossible to properly work that jurisprudence to remove the prior art. Do you understand? Let me put it this way: THE PRIOR ART REFERENCE TEACHES EVERY ELEMENT IN THE CLAIM. If that doesn’t render an invention “obvious”, then nothing does. That is what the phrase “anticipation is the epitome of obviousness” means.
I’ll take it that you and your white rabbit would rather live in a Constitutional Wonderland, where the Constitutional power grant to the Congress is so rigid that less-than-automatic injunctions are not permitted, but somehow flexible enough to permit money damages.
Dear Follow up,
Please allow my boss to refrain from responding today. He is overwhelmed by other factors, e.g., cellebrating our financial rebound today (so he can keep me in spiked carrots), and the stupidness of some other comments remarkable similar to your comment.
In other words, JAOI, it’s inconsistent (if not hypocritical) to argue for a broad interpretation of the Constitution to allow Congress the authority to pass laws that permit money damages and yet argue for a narrow interpretation that says Congress must pass laws that require automatic injunctions. Either “exclusive right” has a narrow interpretation or a broad one, but not both.
The money damages question is important to your argument because it addresses a key issue: whether Congress must provide an all-or-nothing remedy, that is, can Congress provide for money damages and a less-than-automatic injunction or must Congress only provide for an automatic injunction. Your argument apparently assumes that, if Congress acts, it must provide the automatic injunction.
“LOL. Yes, that was really clear from the hypo.”
Yes … it was pretty clear. The hypo gave a huge range for the prior art (i.e., 5%-95%) and a very narrow range for the claim (i.e., 13.5%-14.5%). If the narrow range was enabled, it would have be discussed in the prior art (and thus described in the hypo).
I cannot help it if you read into the hypo more than was actually there.
Hi Follow up,
Very funny, good one. As long as you keep that sense of humor, you’re ok in my book.
JAOI: Have you figured out whether, since the Constitution merely discusses an exclusive right and not money damages, it’s unconstitutional for Congress to give inventors the right to collect money damages for past infringement?
Dear distinction,
Thank you for the distinction. Yes, of course, you are right.
“Based upon the hypothetical given, the new range was not enabled by the prior art.”
LOL. Yes, that was really clear from the hypo. Time for your nap, pds.
“[A]pparatus claims cover what a device _is_, not what a device _does_.”
Form follows function.
“if a reference does IN FACT anticipate, does it also render the claims obvious? The answer has to be yes and Linn is simply wrong.”
If that were true, then the jurisprudence as to non-analogous prior art, indicia of non-obviousness, teaching away, and any other arguments that could be used to remove a reference as prior art (under an obviousness analysis) must be figments of our collective imagination.
Go ahead and tell your client that they shouldn’t be making these arguments when faced with a 103 rejecton from the USPTO (ooops … I forget, since you don’t prosecute, you don’t need to). As for me, I’ll still be using these arguments to remove references, which could be applied under 102, from being applied in an obviousness rejection.
“Yes, pds, and that’s why I went out of my way to mention that the prior art was enabled for the recited range.”
“Wrong. If the prior art is enabled for the recited range range, it anticipates the composition. End of analysis.”
The hypothetical was: “the prior art discloses a catalyst composition which comprises between 5 and 95 wt% palladium. Applicant claims a catalyst composition comprising between 13.5 and 14.5 wt% palladium.”
Based upon the hypothetical given, the new range was not enabled by the prior art. If you are going to change the hypothetical, make it clear that you are doing so. By making your first statement “Wrong,” you are implying that the hypothetical, as given, is wrong, which it is not.
“However, D is a functional limitation of A and is the point of novelty of the claim.”
MPEP 2114 – >While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. n re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) … “[A]pparatus claims cover what a device _is_, not what a device _does_.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
“However, D is a functional limitation of A and is the point of novelty of the claim.”
MPEP 2114 – >While features of an apparatus may be recited either structurally or functionally, claimsanIn re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
The point is this: If a problem is non-obvious but its solution is obvious, then that obvious solution should be, and it is, patentable!
Posted by: Just an ordinary inventor(TM) | Oct 13, 2008 at 12:09 PM
JAOI, your statement is not completely correct. I think it would depend on the claim. For example, if the solution is an old product, I think you could get a claim on “a method of solving the problem, comprising using the old product.” However, you could not get a claim on “the old product.”