Judge Posner at the Federal Circuit: Patent on Sex Aid is Obvious

Ritchie v. Vast Resources (AKA Topco)pic-23.jpg (Fed. Cir. 2009) 08-1528.pdf

Sitting by designation, Seventh Circuit Judge Richard Posner summarily reversed a lower court opinion – finding the asserted patent obvious. This decision offers an implicit reminder as to why the Federal Circuit was formed in the first place. Although Chief Judge Michel and Judge Bryson signed-on to the opinion – it is fairly clear that they would not have approved of the analysis if it had emerged from a district court. The problems: The opinion hardly mentions claim language – or even which claim is being challenged; the court does not construe the claims at issue; although the lower court found the patent valid, there is no mention of the presumption of validity or standards for reversing a decision on obviousness; the level of one of ordinary skill in the art is overlooked; etc. It is, however, quite reminiscent of the Supreme Court’s KSR decision. Here, Judge Posner heavily quotes and loosely applies KSR to invalidate the patent.

“Among the inventions that the law deems obvious are those modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value (otherwise they would not be undertaken) but do not involve sufficient inventiveness to merit patent protection. This class of inventions is well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable. This is such a case.”

Now, I’m not arguing that the patent is valid – only that Judge Posner’s opinion gives me no confidence that the invention was obvious. Ritchie’s patent covers a “sex aid,” and the patent claimed a particular arrangement of a rod with knobs all made from a “lubricious glass-based material containing … an oxide of boron.” The prior art here was an easy-slide thermometer made of the same material, and – according to Judge Posner’s opinion, the “invention” merely takes well known sex aids and combines them with the easy-slide material.

“This case thus exemplifies the Supreme Court’s analysis in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). “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. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417 (emphasis added). (The last sentence describes our case to a tee.) There was, the Court continued, no need for the district court to “seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id.

And if more is required to make our point, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) … which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle).”

Notes

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

136 thoughts on “Judge Posner at the Federal Circuit: Patent on Sex Aid is Obvious

  1. Hey Noise, believe me, I am all too aware of what you percieve as progress. Your career hinges on it. There’s a lot of investment in patents that people are afraid to let go of.

    Here’s what I believe. A 20 year monopoly is a pretty big deal. So are millions and billions of dollars. To grant patents that can be used to harass people, tie people up in legal fees, burden the courts, etc should be done with considerable discretion. You say the patent office is sealing it’s own fate. What about the Supreme Court issuing KSR? That wasn’t the direct responsibility of the Office was it? We arrive at current state of the system after a long time working out the problems. While there are still problems, for the most part everything is alright.

  2. “Now on to the real advances that promote the progress of science and useful arts.”

    To paraphrase: “Never mind what the Law actually says about patentable inventions (e.g. 101: “…or any new and useful improvement thereof,” or 103: “Patentability shall not be negatived by the manner in which the invention was made.”), we have made our own law based on our perceived policy objective of only applying ourselves to the “real” advances that we know ’em when we see ’em. Don’t bother us. Leave us alone. Stop trying to make us do actual work”

    Jules, your blithe ignorance is stunning and places you (no coincidence) in the same class as 6 and Malcolm Mooney.

    The law of unintended consequences will contune to smack you until you realize too late that what you ask for is not too good for you (or The Progress – but that’s another post).

    I will throw the bone out there once again that with Tafas v Doll, the day of the examiner is drawing to a close. Before 6 get’s all warped out, I will modify my statement to say that not all examiners will see the exit door, just like probably 80% of them. Archaic production standards? greatly reduced incoming funds from applications and annuities? – No big deal – the Office can just mandate ESD style requirements for ALL applications (see, no artifical or arbitrary bias here your honor), and even charge the applicants for work the Office must now pay. With such requirements mandatory (which cna be made to MPEP standards), the office will need only 20% of the current workforce levels to connect the dots.

    I guess the only issue for the Office is, how to make the ESD-style requirement retroactive to cover the backlog and thin that puppy out. Malcolm, let’s task you with that one, or perhaps we can ask the academia to sink their collective teeth into changing the Law to be able to make this happen.

  3. The inventor appears to have found a new use for the vast unused supply of water-based lubricants already pushed on the sex toy market, these water-based lubricants practically useless with rubber-like devices. Now everyone that has what they once thought was a useless, water-based, lubricant at home in their medicine cabinet, can finally use it when they purchase this boron-infused sex toy. That’s a long felt need, among the many others present in this case.

    The broadest claim actually said, “a lubricous glass-based material” which is utterly rediculous lawyer-speak. In all reality, KSR has this case in the bag, regardless of the potential deficiencies in the recent decision. Anyone that refuses to acknowledge that is lying to themselves. KSR is here to stay. Now on to the real advances that promote the progress of science and useful arts.

  4. Mr Mooney writes “Try including some unexpected results in the spec next time, like the grown ups do.”. I have to say, not just grown up Mr Mooney. Also patent attorneys anywhere in the non-American world that you care to choose, including (correct me if I’m wrong Mr Gur) the jurisdiction in which Mr Gur practises. My question is, (following Conor and the TAXOL stent case) would the mention of “lubricious” in the app as filed, together with post-issue evidence just how surprising that is, have been good enough in the USA to have beaten off attacks on validity?

  5. Erez “I believe that sex toys are the best art”

    Of course you do. But who cares? Since when are fact finders limited to using only the “best art” anyway? If we follow your bizarre framework for approaching obviousness we reach the conclusion that nothing is obvious because if you combine a sex toy with something that (allegedly) was not combined with a sex toy before, then the analysis is over. Every other art is non-analogous, right, and can’t be considered. That is your argument in a nutshell.

    There is no way that KSR can be interpreted to require such a restrictive analysis. You (and others in this thread) are advocating for replacing the PHOSITA with a blinder-sporting mor0n who never leaves his workshop.

    Try including some unexpected results in the spec next time, like the grown ups do.

  6. Erez: ‘So does the fact that the toy and a thermometer are placed in the same orifice make a connection? No”

    LOL. Keep digging.

  7. Erez Gur–

    It would have been better had you and I argued the case, conducted the appeal, decided the case, and ultimately drafted the opinion!

    I heard the oral arguments, and I found counsel for the appellant to be inarticulate and at many times unhelpful to the judge–it took him too long to formulate his thoughts, and he seemed to lack the technical knowlege required to present a coherent picture. His silent pauses were filled with mental fumbling.

    I don’t know about the rest of you, but I’ve read many a decision from the CAFC of similar quality.

    But they were all non-precedential.

    To anyone’s knowledge, has the court ever changed a precedential designation to non-precedential, and is it even within their authority, once the precedential designation has been made, and does it really even matter, since non-precedential decisions can now be cited??

  8. “A friend of mine has this problem”, well said: there should have been a factual investigation within the framework outlined by the Supreme Court in KSR and there wasn’t.

    For instance, you believe that rectal thermometers are the best art because they are physically similar, used in the same way for the same purpose for the same result. But these are unsupported attorney arguments.

    I believe that sex toys are the best art, and that thermometers are physically dissimilar, are used in a different fashion, are used for a different purpose and yield a different result. These are also attorney arguments, which as you mention, are unsupported.

    There would have been no problem finding experts in the field who could provide facts and help determine which of us is correct.

  9. Discussing Erez Gur’s specific details:

    “…thermometers would be useless if made of any other glass.” — Do you have any support for this?

    “Does one autoclave these kinds of toys?” — Not essentially relevant, as the spec explicitly mentions autoclaving and heat resistance is an explicit claim limitation.

    “So does the fact that the toy and a thermometer are placed in the same orifice make a connection? No, because the uses and design parameters are entirely different:” — Yes, because they are physically similar, they are used in the same way, for the same purpose, and with the same result. Design differences result in a difference in degree, not in nature. And consideration of design choices should not be relevant to the patentable quality of an item, and hence also not relevant to the consideration of prior art that is read on by those patentable qualities.

    I maintain that rectal thermometers are not only prior art, but the BEST prior art.

    “If you want to use a rectal thermometer as the connecting link between borosilicate glass and the device, the Supreme Court requires that you explain why.” — Done. And your counter-arguments are noted, and it would be up to the trier of fact to resolve the issue.

    Regarding your general question of “…whether there is a level playing field for an Inventor.”, who knows? All this case could tell us is whether or not there was a level playing field for THIS iventor.

  10. Whether athermometer is analogous art may or may not be relevant. However, KSR is relevant.

    In KSR the Supreme Court requires that a motivation to combine be explicitly stated, which means that the problem to be solved must be stated and there must be a discussion of the state of the art.

    If you want to use a rectal thermometer as the connecting link between borosilicate glass and the device, the Supreme Court requires that you explain why.

    Why are thermometers made of borosilicate glass? Because thermometers would be useless if made of any other glass. On the other hand, I imagine that regular glass toys were well known before the invention.

    Does one autoclave rectal thermometers? No, medical thermometers read up to 45C and would explode at 120C of an autoclave or even at 100C of boiling water.

    Does one autoclave these kinds of toys? I doubt any user has an autoclave at home. Rather, these devices are probably cleaned with soap and boiling water.

    The medical literature shows that people use almost anything for pleasure including potatos and frozen mackerel. So does the fact that the toy and a thermometer are placed in the same orifice make a connection? No, because the uses and design parameters are entirely different: small diameter, shallow insertion, short time, static vs large diameter, deep insertion, long time, moving.

    But these are specific details: the argument here is not whether these specific claims should be invalidated but whether there is a level playing field for an Inventor.

    The EPO has the PSA and in an opposition much better prior art would probably have been presented. In KSR the Supreme Court tried to give similar clear guidelines, but in this case the guidelines were not applied.

    What is particularly sad is that the Federal Circuit acknowledges KSR and that the Supreme Court’s decision must be followed.

  11. “Arguing that something is non-analogous art is also pointless and never persuasive.”

    Take it to the bank. You can get better traction at the PTO and in the Federal Circuit by arguing that a PHOSITA wouldn’t combine because the new element was really really expensive.

    It’s legally a pile of crap if the spec doesn’t refer to the low cost of the claimed invention and explain how to get the combination while avoiding the horrific expense suggested in the prior art, but it definitely works.

  12. The material this thing is made of is a design choice and has no patentable weight, unless said material has never been known as a composition.

    Arguing that something is non-analogous art is also pointless and never persuasive. A person having common sense (PHOSITA) would broaden their analysis of design concepts at least to any remotely related art, and should have the analysis encompass those arts which are not even remotely related, just to cover their bases.

  13. Erez Gur–

    “As I wrote on Apr 26, 2009 at 09:36 AM, thermometers and this toy are indeed unrelated.”

    Rectal thermometers ARE analogous art.

    (I just had to say that.)

    Seriously, there is a whole universe of medical fetish pornography out there, with one of the ever-popular themes being the insertion of a rectal thermometer for sexual arousal and stimulation.

    At least according to a sociology researcher I know.

    Anyone doing a prior art search on anal dildos would readily come across the common representation of rectal thermometers used as such.

    And, in medical applications, glass with a low coefficient of thermal expansion is generally used to permit sterilization in an autoclave. Even the patent in question, in the spec I believe, mentions the hygienic benefits of using borosilicate glass, and even mentions autoclaving!

    I know that “lubricious” was a claim limitation, but so was “resistant to heat”.

    The claimed heat resistance, combined with the reference to autoclaving in the spec, could lead one to characterize the invention as being directed, among other things, to a dildo that reduced the likelihood of sexually transmitted or other diseases as a result of its ability to be sterilized.

    Even more than the common use and representation of rectal thermometers as anal dildos, the fact that rectal thermometers represent STERILIZABLE anal dildos renders them not only prior art, but the best prior art.

    In my opinion.

  14. There are claims directed to a kit comprising this sex toy with an additional container of water or oil-based lube. Clearly, there can never be too much lube. The written description goes into detail, “Unlike conventional water-based lubricants used to protect latex condoms which become sticky when used on rubber-like devices, the present invention provides smooth contact with rectal tissues.” That’s right, “smooth” contact, not lubricous. In order for the device to be lubricous, I would almost guarantee that you would have to add a lubricant, where “an appreciable amount of boron”I doubt is appreciably lubricous when compared to water or oil-based lubricants as claimed.

  15. Good point, Mr Gur. Somebody upthread put the corollary, that you wouldn’t expect PTO Exrs to search exhaustively in the sex toys arts, every time they address a claim directed to a thermometer.

    I had supposed that thermometers (should be hygienic) were made of PYREX to minimise the chances of in service fracture (ouch) from thermal shock. But that would open up the whole “one way street” and “bonus effect” line of EPO jurisprudence.

  16. Regular glass is pretty smooth and thermometers have a diameter of about 2 mm. You don’t really need any special lubricious quality, especially not if you use the thermometer with glycerin.

    Thus, is there any evidence that thermometers are made of borosilicate glass because of the alleged lubricious qualities?

    Perhaps thermometers are made of borosilicate glass because the glass interacts less with the indicator fluid?

    Perhaps thermometers are made of borosilicate glass because of its low coefficient of thermal expansion so that the thermometer is more accurate?

    Perhaps thermometers are made of borosilicate glass because of its lower index of refraction so that the thermometer is easier to read?

    Perhaps thermometers are made of borosilicate glass because of its greater thermal conductivity so measurement is taken more quickly?

    The bottom line is that, absent some evidence, thermometers are irrelevant to the claimed device.

  17. Let me put it this way. If I had been lucky enough to discover that adding a special amount of boron to ordinary silicate glass endows that glass with the surprising, remarkable, implausible, incredible “lubricious” effect, wild horses would not have stopped me claiming every lubricious silicate glass thing made by man under the sun. To have confined my claim to the special world of sex toys would truly have been perverse. I might have done that, however, if my glass was, in truth, no more “lubricious” than the conventional glass.

  18. I find this usage of “lubricious” embarrassing. The smooth shaft of a catheter isn’t “lubricious” in any way, until you equip it with a special “lubricious” coating. Water clings to the coating, and makes it really slippery. You know, when I’m doing the (PYREX) dishes, I never had the feeling that Pyrex glass was in any way at all “lubricious”. Smooth, yes. Lubricious, definitely not. Question is: did the draftsperson select the word “lubricious” because he didn’t know any better, or because it was part of a cunning plan to fascinate the Exr and, in the ensuing confusion, slide the app right through to issue, and the prize of a Presumption of Validity?

  19. It is said that hard cases make bad law.

    But in this case it would appear that a sex aid in the form of a cylinder with a knob on it was known. The difference is that the aid is made of borosilicate glass. It appears to have been a matter of common general knowledge that borosilicate glass was a lubricious material, evidence of that being its earlier use on a thermometer. So there was a strong argument that this was not a patentable difference, as the Federal Circuit found.

    I share the view that this should not have been a precedental case because it is not clear what new rule of law was being introduced.

  20. No… but only because I had the good sense to get out of there pretty quickly. Who knows what he got up to outside of work though….

  21. ….and the blower, however inventive in other ways, would never have claimed his vivid conception as an invention. Mind you, however diligent he was, he never went as far as to reduce it to practice. Or did he?

  22. Anyway, I used to work in a chemistry lab, and the very grumpy old glass blower (who (a) only ever worked with Pyrex-type glass and (b) hated me) was forever suggesting that I insert various glass items (that I had politely asked him to repair) into my anal passage… so obviously he was aware that Pyrex is a suitable material for that purpose.

  23. Can I also add that Pyrex is a brand name… not a fixed composition… in fact, look up the Pyrex wikipedia page. Pyrex (as used, for example, in lab equiptment (something glass blowers spend a lot of time making)) merely teaches that Boron oxides (e.g. silicates) can be added to glass – resulting in glass with a certain set of known properties. It would be hard to argue that adjusting the amount of Boron-oxide is non-obvious… as experiments of this kind are well known (and would be to the hypthetical skilled person).

  24. West Coast Guy…
    Just a quick question – I am EP-based and so not fully aware of the definition of PHOSITA in US terms… but isn’t the skilled person supposed to be a hypothetical construct, i.e. a person who is fully aware of everything relevent to his field but not himself inventive.

    As far as I can see, the skilled person is a glass blower and Pyrex is a commonly used type of glass with known properties. Thus, the skilled person takes known Pyrex properties, decides they would be beneficial when applied to items for body-cavity insertion (whether for pleasure or otherwise), and then looks to the wider prior art to determine if this is indeed the case (finding confirmation in the thermometer art).

    It seems to me that your argument revolves around the assumption that glass blowers are typically uneducated… but surely that doesn’t affect the knowledge base of the hypothetical PHOSITA…(?)

  25. Some are now suggesting that this thread is no longer stimulating them, and has exhausted its capacity to amuse and entertain. I can’t believe I’m the only one, however, that would beg for more. More distressing cries, please, from those who think that Mr Posner is hurting the system. More stinging lashes please from Malcolm Mooney in response. For example, I agree with Erez Gur, that Ritchie is indeed a good case for teasing the ultra-tight rules of EPO-PSA. Just as good, in its way, as that other “blue” case, much discussed in Japan, in which the prior art was a (conventional) black ball.

    In short, ladies and gentlemen, is “Squash ball, characterized in that it is blue” obvious i) in the USA and ii) at the EPO?

  26. Malcom,

    As I wrote on Apr 26, 2009 at 09:36 AM, thermometers and this toy are indeed unrelated.

    Examiner Number 9 might be right, that the claims could have been invalidated by following KSR properly which includes finding related art and explicitly stating a credible motivation to combine.

    But that brings us back to Max Drei and the PSA which defines a relatively objective framework for discussing obviousness, what the Supreme Court tried to do in KSR.

  27. 6,

    I said the CRU’s job was easy (overwhelmingly so). I did not say that it was short.

    Stop embarrassing yourself.

  28. Erez “The only evidence presented was that the special surface was used in an unrelated device”

    Anal thermometers are unrelated to anal dildos? With respect to their tissue-contacting surfaces?

    Wow, you heard it here first, folks.

    This is almost as unbelievable as the assertion that real world toolboxes are non-analogous to virtual toolboxes. Let’s call it “creative lawyering” and move right along, shall we?

  29. WCG wrote: “If you listen to the oral argument, it was a glass blower who formed the product. Also, the art is sex aids — not medical devices.”

    Throughout this thread there have been arguments based on the premise that the inventor’s day job or hobby defines what the PHOSITA is. It does not. The inventor may or may not also be a PHOSITA. The inventor’s day job/hobby could possibly be admissible as evidence of the level of ordinary skill, but it is not dispositive of the issue.

    Another practice I’ve seen is the result-oriented definition of “the art” either narrowly or broadly depending on which way the poster would prefer the obviousness issue to be decided. Some of you want “the art” to be hand-made glass objects designed to be inserted in a human anus for sexual stimulation on Tuesdays, and then argue that sex toys designed to be inserted in vaginas on Fridays are non-analogous. Others want “the art” to be “glass objects.” I haven’t once seen anyone justify the narrowness or breadth of his definition.

  30. “Thankfully we have KSR.” Posted by: Malcolm Mooney | Apr 27, 2009 at 02:59 PM

    KSR is a good decision, but it was not applied in this case and that is exactly the point.

    For instance, KSR requires that a reason be found for combining two features, in this case the lubricious-surface material with the modulated-diameter device.

    There is no discussion whether the special surface properties of the material were known to be desirable in this type of device. The only evidence presented was that the special surface was used in an unrelated device with entirely different performance requirements.

    Again, the problem with the decision is that it does not seem that KSR was properly applied.

  31. Ex#9 “He should specify that the amount of Boron Oxide is outside the established ranges of Pyrex in order to overcome it.”

    No doubt. And the claim should recite that range. And the spec should present the data showing the unexpected results achieved thereby.

    Oh, but wait: those standards only apply when the invention is a life-saving therapeutic. This was just a dildo, and therefore falls somewhere between software and children’s board games on the scale of examination rigor.

  32. From the patent, here’s the understatement of the century:

    “The devices are inspected carefully to insure perfect smoothness.”

  33. Pyrex is a borosilicate glass. Which is glass with boron oxide. So yes it does read on Pyrex. He should specify that the amount of Boron Oxide is outside the established ranges of Pyrex in order to overcome it.

    I do agree that the reasoning and the search are kinda lazy for this case.Should have at least established PHOSITA. Not that this would have changed anything.

  34. “I don’t blame Posner for ducking that. Ritchie knows the answer. So does everybody else.”

    Well, eh…not really. From the lower court’s opinion, Plaintiff’s expert says:

    “I don’t know if the exact mechanism of why oxides of boron influence these properties of lubricity are well understood in glass science.”

    Posner and panel avoided holding for non-obviousness of adding an oxide of boron to Pyrex by staying way clear of Philips. By omitting Philips, they deceptively shifted the focus away from slippery-ness (Pyrex + oxides of Boron) to smoothness (Pyrex only), which allowed them to determine the patent invalid.

  35. BigGuy,

    Here’s part of the patent claim:

    “fabricated of a generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious”

    Here it is with Pyrex added:

    “fabricated of a generally lubricious glass-based material [Pyrex] containing an appreciable amount of an oxide of boron to render it lubricious”

    So, he is claiming Pyrex + oxide of Boron.

    According to the facts in the record provided by an expert, the following is taken from the lower court’s opinion:

    “On the subject of lubricity, Stern later testified as follows: I don’t know if the exact mechanism of why oxides of boron influence these properties of lubricity are well understood in glass science, but to my recollection, it is indicated that borosilicate glass, and adding an oxide of boron, have beneficial influence on reduced coefficient of friction along with other items that I had indicated before; porosity, face [phase] shift, grain size, and other issues.

    We’re getting a little bit of my issue which goes to improper claim construction under Philips. Why improper? Because Posner and panel ducked Philips entirely, and because he did, he changed the focus away from the slippery-ness of Pyrex + oxide of Boron to the smoothness of Pyrex.

  36. BigGuy,

    “WCG, are you suggesting that the claim doesn’t read on a Pyrex sexual aid of a similar shape? I bet the patentee thought that it did.”

    Yes, and here’s the lower court’s finding:

    “[I]t is clear that the patented material was tested against Pyrex, a known borosilicate glass, as a comparison. (Id. at Col. 4.) Thus, the patentee thought that borosilicate glass was different from that for which he claimed protection.”

    The patentee thought his claimed material was different from Pyrex. To me, the claim does not read on Pyrex.

  37. “I don’t blame Posner for ducking that. Ritchie knows the answer. So does everybody else.”

    Oh, really? First, you admit Posner ducked the question. Second, I didn’t know. Point to your evidence, please.

  38. Malcolm Mooney,

    “Again: it’s a non-issue because there is nothing unexpected about the use of a glass-based substance versus glass in this context.”

    Where’s this fact in the record, lower court finding, or in the briefs? You’re sounding more and more like Posner as each minute passes. Where’s the evidence that “slippery-ness” was obivious and not merely smoothness?

  39. “But what is claimed is IMPROVES ON SMOOTH of Pyrex into the previously unchartered territory of being ‘lubricious.'”

    WCG, are you suggesting that the claim doesn’t read on a Pyrex sexual aid of a similar shape? I bet the patentee thought that it did.

    The patentee should have defined “lubricious” as “tending to retard the contagion of swine flu.” I bet your prior art sex toys can’t do that.

  40. Subjective USA: Obvious because I, the judge, and now, after the event, say it’s obvious.

    Objective EPO: Obvious because you, the prior art, before the date of the claim, told us already back then that it was the solution to the unique to this claim, objective technical problem.

    Punches: For the EPO, if it isn’t the technical solution to an objective technical problem, it isn’t a patentable invention. In practice, that legal philosophy doesn’t cause a practical problem. There’s in Europe a vigorous debate at the 101 margin, whether something’s patentable or not, but that’s unavoidable, and an irreducible minuimum of legal uncertainty, no?

  41. West Coast Guy “The opinion does not say because [Posner] changed the focus to glass and not glass-based substance”

    Again: it’s a non-issue because there is nothing unexpected about the use of a glass-based substance versus glass in this context.

    “The issue that Posner ducked was whether Ritchie discovered the “slippery-ness” property of borosilicate glass with the “appreciable amount”?

    I don’t blame Posner for ducking that. Ritchie knows the answer. So does everybody else.

    Have you read the patentee’s briefs and the district court case yet? I really suggest you do so. Then you’ll know where to focus your angst.

  42. “Geez, I thought we’d moved past this.”

    MaxDrei apparently hasn’t.

    If this has been earlier argued ad nauseum, I offer my apologies.

  43. Malcolm Mooney,

    Editing correction…

    Malcolm, you missed it. You DID NOT RECITE that question posed by Posner in forming his issue:

    “Did Ritchie discover the “smoothness” property of borosilicate glass? No.”

  44. Malcolm Mooney,

    “Did Ritchie discover the “lubricious” property of borosilicate glass? No. Was it unexpected that such glass could be used to make a dildo? No.”

    Malcolm, you missed it. You’ve recited that question posed by Posner in forming his issue:

    “Did Ritchie discover the “smoothness” property of borosilicate glass? No.”

    The issue that Posner ducked was whether Ritchie discovered the “slippery-ness” property of borosilicate glass with the “appreciable amount”? The opinion does not say because he changed the focus to glass and not glass-based substance, and he could only have done that by omitting the discussion of Philips.

  45. Malcolm Mooney,

    “West Coast Guy “the approach was fair and balanced””

    I see you’re taking the Posner approach of misrepresentation through omission.

    Read the full line and context, Malcom:

    “Whether or not I agreed with the outcome [in the window screen case], the approach was fair and balanced, unlike Posner’s and panel’s treatment in the instant thread.”

    Yes, the opinion provided a good give-and-take analysis of both sides.

  46. West Coast Guy “the approach was fair and balanced”

    The law was ignored and the result was wrong because the law ignored. That’s fair and balanced? Whatever, man.

  47. “Do you acknowledge that PSA is not entirely rational, and that it has subjective and possibly even arbitrary components?”

    OH NO, THERE IS A SUBJECTIVE COMPONENT TO PATENT LAW?!?!?!?!? LIKE AS IF HUMANS DECIDED THE OUTCOMES????!?!?!?

    Geez, I thought we’d moved past this.

    PSA is far more intelligible, less contradictory and easily applied relative to 103 (and the case law arising out of 103). It’s not a debatable point unless you are deeply committed to the Patent Bubble Fantasy Land.

  48. West Coast Guy, when I read your comments I’m reminded of Kevin Noonan’s contortions in that Kubin case. It’s a form of goalpost moving. Because there are so many factors that can be taken into account in an obvious determination, anytime a patent is found obvious you can point to one such factor the opinion that wasn’t “properly addressed” and if it had been “properly considered” and given “appropriate weight” then the case would have come out “right.”

    Thankfully we have KSR. That game need no longer be played when it comes to straightforward inventions like the one at issue here. Did Ritchie discover the “lubricious” property of borosilicate glass? No. Was it unexpected that such glass could be used to make a dildo? No.

    End of analysis.

  49. “Here’s a question: if I go back to the thread on that poorly reasoned (and more importantly: dead wrong) insect screen case, will I find many comments by you bemoaning the lack of attention to the claim language and the law regarding obviousness?”

    In that case, I knew an appellate review was being conducted and it wasn’t a restatement of the infringer’s argument. It presented standards of review, the lower court’s findings, the lower court’s reasoning, and how the court erred. Whether or not I agreed with the outcome, the approach was fair and balanced, unlike Posner’s and panel’s treatment in the instant thread. No problem with the judicial conduct in that case.

  50. MaxDrei–

    I make no pretense as to being in the vanguard of PSA criticism.

    The criticisms I mentioned were conceived not by me, but by others–I simply agreed with the logic in their arguments.

    These criticisms have been repeated, in your words, “a multitude of times”, because they are demonstrable and substantive, and affect the rights at issue.

    That a deaf ear is turned toward these criticisms does not invalidate or address their concerns.

    Do you acknowledge that PSA is not entirely rational, and that it has subjective and possibly even arbitrary components?

  51. Malcolm Mooney,

    “BZZZT!!! There you go again. Do the claims require that the dildo be made of blown glass? They aren’t product-by-process claims and they aren’t method claims.”

    The PHOSITA making the claimed invention is a glass blower according to what I heard in the oral argument. I make no such argument that a glass blower is claimed.

  52. anonymous,

    “The patent’s use of the word in that sense is confusing, because glass is smooth rather than slippery. But what is meant is that the glass, because it contains oxide of boron, is smoother than soda-lime glass and therefore becomes slippery with less lubricant than a device made out of soda-lime glass.”

    Excellent points, but here’s the distinction. “Glass” per se is not claimed. This is what is claimed:

    “generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial
    absorption[.]”

    The claimed material is not glass which is “smooth.” The material is glass-based that is “lubricious.” By avioding Philips and staying within the friendly confines of the patent, it is NOT GLASS. He has gone outside the patent to arrive at smooth. Smooth is easier to understand and snookers us all into thinking that this was just Pyrex applied to sex toys.

    I know that Pyrex is smooth. Each morning, I fix my wife’s Chai Tea Latte using a Pyrex beaker to fill 20-oz of the tea and milk, put it in the microwave, and cook a few minutes. I suspect that Posner and panel know what Pyrex is, too. But what is claimed is IMPROVES ON SMOOTH of Pyrex into the previously unchartered territory of being “lubricious.” Posner confuses the generally understood “smoothness” of glass and not the crux of the invention of having a “lubricious” surface. Where in the prior art of Pyrex does it teach the surface?

    “Regarding “an appreciable amount,” you have a slightly better argument, but I’m not sure that it affects the result here.”

    “Appreciable amount” is defined in the patent. If it defined in the patent, than how can Posner consider it vague. Why? Because he has omitted Philips and he doesn’t have to look at the meaning defined by the patentee acting as his own lexicographer. Posner cannot arrive at “apparently all that is meant is that the plaintiffs are claiming that their invention uses glass that has the amount of boron oxide usually found in borosilicate glass.” Apparently? What apparently if it is defined in the patent. THere is nothing apparent about it unless he can cite where the district erred in sticking to the bounds of the patent. Uses glass? Nope, uses a glass-based substance.

    By omitting Philips, Posner has changed the focus from a slippery-surfaced material to the mere smoothness of glass. By doing this slight of hand, he makes it easier to snooker us into thinking that this is merely applying smoothness of Pyrex to a sex toy when this isn’t the case at all, and since we all might know how smooth Pyrex is, more palatable the determination of invalidity is. And he can only arrive at this conclusion by ducking Philips.

  53. “To Mr. Ritchie, Mr. Reynard (patentees) and Mr. Dutkiewicz (attorney for patentees), I apologize on behalf of the legel profession for the conduct of Posner and panel.”

    Dear West Coast Guy,

    Thank you for your concern. As a token of our appreciation, we would like to send you a complimentary gift: a prototype of our latest sex aid. This device resembles the device in our patent except that the second nodule from the handle is the size of a tennis ball and coated with sandpaper. Interestingly, we also filed a patent application to protect this device and we received a first action Allowance. Issuance is pending.

    We hope you and your friends enjoy the gift.

    Best regards,

    Glass Fantasies, Inc.

  54. West Coast Guy: “Just recogizing the PHOSITA test and recognizing that a person in the art of glass blowing a tube of Pyrex…”

    BZZZT!!! There you go again. Do the claims require that the dildo be made of blown glass? They aren’t product-by-process claims and they aren’t method claims.

    You’re playing a game and trying to fix it. Applicants try to play this game as well, by filing their applications in art units where the Examination is perceived to be more favorable (i.e., less rigorous and thoughtful). Instead of a person skilled in the art of making instruments to be repeatedly inserted into an anus, you want the “skilled artisan” to be glassblower who has no medical knowledge whatsoever and has never seen a porno movie.

    Here’s a question: if I go back to the thread on that poorly reasoned (and more importantly: dead wrong) insect screen case, will I find many comments by you bemoaning the lack of attention to the claim language and the law regarding obviousness?

  55. West Coast guy, if you read what you actually wrote, I’m not sure what your basis is for criticizing the opinion.

    First, you write that the lower court and the patent interpreted “lubricious” to mean “slippery.”

    Then Judge Posner writes this:

    “By “lubricious”—a word whose primary meaning, appropriate for a sexual device, is “lecherous”—the patent means only “slippery,” which is the secondary meaning of the word.”

    Take out the dashed aside, and this seems to be in line with the district court and the patent.

    “By “lubricious[] the patent means only “slippery,” which is the secondary meaning of the word.”

    So far so good, but as Judge Posner explains, glass isn’t “slippery,” and the context indicates that the patentee meant something a bit more nuanced. Perhaps he should have stopped there and interpreted the claim to mean “slippery,” in which case nothing would infringe and we’d have a case similar to that Chef-America v. Lamb-Weston case. Instead, he looks at the context and arrives at this construction:

    “The patent’s use of the word in that sense is confusing, because glass is smooth rather than slippery. But what is meant is that the glass, because it contains oxide of boron, is smoother than soda-lime glass and therefore becomes slippery with less lubricant than a device made out of soda-lime glass.”

    So what’s the problem?

    Regarding “an appreciable amount,” you have a slightly better argument, but I’m not sure that it affects the result here. It certainly doesn’t lead to the necessity of offering a melodramatic apology on behalf of the legal profession.

  56. Malcolm Mooney,

    “Requiring someone to engage in a lengthy exposition that calculates and assigns a magical value and certainty to the likelihood that a dildo maker would have looked to anal thermometers for inspiration is beyond lame.”

    Lengthy exposition? Nope. Calulation? Nope. Assignments of magical values? Nope.

    I would like to know that an appellate review is being conducted and not a restatement of the infringer’s argument. What’s the standard of review, what was the lower court’s findings, what was the lower court’s reasoning, and how did the court err?

    Really, Malcolm, are these expectations are beyond lame? Malcolm, I give you the benefit of the doubt that you are a graduate of law school.

  57. Malcolm Mooney,

    “What possible legal difference could this make? You seem to be implying that the more naive the alleged inventor is, the more likely that the invention will be non-obvious. That’s absurd.”

    Nope, not naivity. Just recogizing the PHOSITA test and recognizing that a person in the art of glass blowing a tube of Pyrex may possess different credentials from one employed in the medical device art (e.g., material science degree).

  58. Malcolm Mooney,

    “Judge Posner, perhaps, is focused more on the efficiency of the system: get rid of crappy patents.”

    It must be. Too bad he’s not focused on the law and the facts and performing an appellate review.

  59. What the hell happened to the discussion of Philips and the patentee being his own lexicographer?

    From the lower court, here are the claims constructions. Note that the claims were interpreted IAW the patent (col., ln. citations in parentheses):

    “(12) “lubricious” means “slippery” (see id. at 58:3);
    (13) “appreciable amount” is an amount “able to be measured or determined” (see id. at 49-53);”

    First, Posner has decided to define “lubricious” with the following:

    “By “lubricious”—a word whose primary meaning, appropriate for a sexual device, is “lecherous”—the patent means only “slippery,” which is the secondary meaning of the word. The patent’s use of the word in that sense is confusing, because glass is smooth rather than slippery. But what is meant is that the glass, because it contains oxide of boron, is smoother than soda-lime glass and therefore becomes slippery with less lubricant than a device made out of soda-lime glass.”

    Here, Posner has committed the cardinal rule of claims construction of Philips. Posner ducks Philips, ignores what the lexicographer defined the term, and instead goes to the secondary meaning of the word to create a “confusion.” Hey, aren’t you supposed to avoid common (i.e., dictionary definitions) if the patent intended a different meaning? Also, how did the lower court err by sticking to the bounds of the patent itself?

    Second, Posner has decided to define “appreciable amount” to be the following:

    “The patent’s use of the term “appreciable amount” of oxide of boron is also troublesome, because it is vague. But apparently all that is meant is that the plaintiffs are claiming that their invention uses glass that has the amount of boron oxide usually found in borosilicate glass.”

    If Judge Posner wants to avoid Philips and avoid going to the patent to see what the lexicographer defined the term “appreciable amount” to be, why not just stop at “vague” and declare the patent invalid as indefinite under 112P2 and avoid the outcome-determinative, one-sided 103 analysis? Also, how did the lower court err by sticking to the bounds of the patent itself?

    To Mr. Ritchie, Mr. Reynard (patentees) and Mr. Dutkiewicz (attorney for patentees), I apologize on behalf of the legel profession for the conduct of Posner and panel. Generally, an opinion provides an ascertainable reason for losing, but you didn’t get one. You deserved a fair and balanced opinion based on all of the relevant law and facts as they applied to the law, but you didn’t get one. Why they avoided the tried and true canon of claims construction under Philips to concock their own definition I don’t know. Usually, you’re treated as your own lexicographer, but you weren’t here.

    Mr. Dutkiewicz: Good luck explaining to your clients the logic of this opinion and the dirty little secret of the law in that you can write an opinion to make it come out your way, and that there isn’t anything you can do about their conduct because Posner and panel have lifelong tenure.

  60. “an examiner of the art unit examining an application for orifice-inserting medical device with far superior composition of materials than Pyrex *MAY and MIGHT SHOULD* look into the art of sex toys to see if the composition of materials was discovered first for sex toys?”

    fixt

    Personally I don’t look into all the 100 fields that are utilized in my art in each and every case to find art, but if I had plenty of time and was going to do a perfect search then sure. As to whether or not it is analogous, mmm, like I said, saying non-analogous is probably going too far, but then again, saying analogous might be going too far as well. It’s in the middle, portions of it are analogous, and portions are not. In this case, it seems the court judged that the relevant portions were, and I personally probably would have made that call as well so I stand behind it. This being mainly because, as the commenter above stated, the field is “objects designed for insertion into human orifices” as opposed to “toys” or “med. devices”. Just because our classification system classifies things in a certain manner does not mean there are not many more ways.

  61. WestCoastGuy: ” If you read the opinion, there is absolutely no give-and-take of the arguments presented by BOTH parties for and against validity”

    You want to see some crappy legal analysis? Read the patentee’s briefs and the district court decision. The worthlessness of the PTO’s Examination of the claims goes without saying.

  62. WestCoastGuy “If you listen to the oral argument, it was a glass blower who formed the product.”

    What possible legal difference could this make? You seem to be implying that the more naive the alleged inventor is, the more likely that the invention will be non-obvious. That’s absurd.

    West Coast Guy and Erez are up to the old patent bullies trick of playing stoopit. Judge Posner, perhaps, is focused more on the efficiency of the system: get rid of crappy patents. Requiring someone to engage in a lengthy exposition that calculates and assigns a magical value and certainty to the likelihood that a dildo maker would have looked to anal thermometers for inspiration is beyond lame. But that’s what West Coast Guy and Erez Gur are asking for.

    Get over it, peeps.

    Too bad the patentee couldn’t come up with any compelling evidence of unexpected results. I wonder why that is?

  63. 6,

    “Nonanalougous is going a little far in this case.”

    If I understand your position, then an examiner of the art unit examining an application for orifice-inserting medical device with far superior composition of materials than Pyrex must look into the art of sex toys to see if the composition of materials was discovered first for sex toys?

  64. Hi Punches. News to me, this “beating” I took elsewhere. Wishful thinking is even more of a plague than hindsight thinking, don’t you find? Certainly PSA is unpalatable, even indigestible, to the as yet unconverted. But that it relies on hindsight I resist, for it is an analysis that begins with only two documents, both of which were written prior to the legal date of the claim in view, namely the app as written, and the D1 reference. Out of the comparison of those two documents, alone, comes the legal question for resolution using the entire prior art universe as fuel for the argument.

    Take the present case. D1 would be a dildo, and NOT a thermometer. The feature that characterizes the claimed subject matter relative to D1 is “borosilicate glass”. What could be the objective problem that was not solved by D1 but is solved by the claimed invention? How to get by with less lubricant? What hints or suggestions were in the prior art, to use borosilicate glass as a means of reducing the amount of lubricant needed? If none, well then the claim’s NOT obvious. But an Opponent in the EPO would be running the argument that, as a fact, the claimed solution doesn’t solve the relied upon objective problem and so the only problem really solved is the lesser one, of finding an alternative to non-borosilicate glass. Is borosilicate glass a known alternative to non-borosilicate glass?

    The arguments you employ have been made by UK visitors to Munich for 30 years already. You have nothing to say that hasn’t been said a multitude of times already. What is happening currently is that PSA is beginning to take hold in the national courts of Europe which, up to now, have steadfastly held out against PSA because for a Supreme Court it is simply impossible to accept that a mere Patent Office can come up with a superior approach to obviousness.

    So where is this thread in which I got my beating?

  65. MaxDrei–

    I followed the beating you took on another thread, and decided to take a quick look at your comments on PSA.

    I must say, commenters opposed to PSA brought up some excellent points, including hindsight and assumed obviousness of the problem.

    The PSA construct relies on legal fictions, hindsight, and conclusory statements to frame the limits of obviousness discourse, which ends up being unpalatable to anybody with a working mind.

    My problem is that I don’t know that there can be ANY obviousness inquiry that doesn’t embody these qualities, be it PSA, TSM, inventive step, obvious-to-try, whatever.

    I have tried to work up an obviousness analysis framework from “first principles”, and it has proved very difficult.

    Having said that, I don’t know that PSA is inherently any better or worse than TSM, etc., but it may be better in its real-world implementation. If everybody involved agrees on the framework for analysis and on the legal fictions and assumptions, then it seems to me that the system could work very smoothly.

    Of course, the same thing might be said for any obviousness test.

  66. “Shifting a question to you, do you really think that a PHOSITA would look to the non-analogous art of medical thermometers becase both are inserted into bodily orifices? ”

    Nonanalougous is going a little far in this case. Medical devices, hmmm, I could think of a few toys that could be classified as such.

  67. “The request was 100+ pages long”

    “CRU’s job couldn’t possibly have been any easier”

    Look guys! Oxymorons in adjacent sentences.

    I also see that my extended post to EG (iirc) did not post before my small post saying I’d confused Rader with Bryson.

  68. You’ve effectively ‘claimed the void.’
    There was, but now, there is no ‘test’ for obviousness; the statutory presumption of validity was supplanted by the gobblydegook viewfinder, and the connect-the-dotted-references overlay; and for now, if it ‘seems or sounds’ obvious, then presumptively it is.

  69. Alan McDonald,

    Posner makes that link without factual support. He assumed it and formed his opinion thereon without factual support.

  70. Alan McDonald,

    “One skilled in this art should look to medical devices designed for that purpose, not to the glass blowing art.”

    If you listen to the oral argument, it was a glass blower who formed the product. Also, the art is sex aids — not medical devices.

    Even if I were to assume you premise, then where in the record does Judge Posner find support for your premise? The oral argument said glass blowers and that experts said PHOSITA would not have looked to Pyrex.

  71. I haven’t read the opinion, but from the discussion and the initial post, it seems as though Posner might be up to the same trick as in the Paxil opinion – deciding the case based on the policy issues and massaging the law and the facts to get the outcome to come out the “right” way, even if the law (as in the Paxil case) or the facts (as in this case, perhaps) are not on his side.

  72. The longer this thread continues, the more admiration I have for those who devised (30 years ago) the EPO’S Problem and Solution Approach to obviousness, which sets up a structured way to explore the obviousness issue objectively and founded on prior art evidence. In this case, the evidence would have been right there, on paper, right from the get go. Had the app been drafted in Europe, we would have seen it in the app as filed. But even for a case drafted outside Europe, we would have seen the evidence emerge when Applicant had to put together a written reply to the EPO FAOM. To repeat, the Teleflex (KSR) app died in Europe when Applicant couldn’t even put together a reply to the EPO FAOM. From Europe, it’s embarrassing watching judges trying to decide obviousness, when they don’t have the structure of EPO-PSA available as the framework of their reasoning.

    To my critics: I am not guilty of “boosterism” for anything and everything European. One of the very few European things I do boost however is EPO-PSA. Because it’s that good.

  73. What am I missing here.

    The “art” is things to be stuck in body orifaces. One skilled in this art should look to medical devices designed for that purpose, not to the glass blowing art.

    Since it was known to use this type of glass for the purpose of lubricity for thin objects (thermometers) to be inserted into the body, what is unobvious about using the same material for thicker objects needing the same lubricity property?

  74. watching from overseas…,

    “Do you seriously believe a professional glass blower would not be aware of Pyrex…?”

    I don’t know, but substituting your common knowledge for the PHOSITA is not the test. The test is PHOSITA, and it would be hard to image (but I hold out the possibility until the opposing party introducted some facts to show knowledge the glass blower had) to think that he had not heard of Pyrex. Even if the other side provided facts that he “heard” or “knew” of the “name” Pyrex, had he ever blown glass comprising the material?

    If his knowledge is like mine, then I am aware that it is used in chemistry labs, and that it withstands heat well. But had he even blown glass of Pyrex let alone in the shape of a dildo? Had he ever known that Pyrex, besides withstanding heat well, makes a great “lubricious glass-based material containing … an oxide of boron[.]”

    Shifting a question to you, do you really think that a PHOSITA would look to the non-analogous art of medical thermometers becase both are inserted into bodily orifices? Why I don’t rule out the possibility, facts are needed — clear and convincing evidence (i.e., facts)– which the lower court found. Unfortunately, Posner failed to make that link by omitting any factual basis from the record below. That’s the rub.

    If you read the opinion, the term of art “clear and convincing evidence” is not used once. If you read the opinion, there is absolutely no give-and-take of the arguments presented by BOTH parties for and against validity. Here is a patentee who presumably possesses a valid patent, and he is being shafted by Posner and panel with a wholly, one-sided opinion, eh…, make that, with the infringer’s argument and turning it into a presumed judicial opinion. The opinion lacks the fairness that the patentee is due and doesn’t discuss why the lower court found for validity. Instead, Posner makes this illogical leap of reasoning without explaining where in the record the opposing side put forth the facts to support that:

    medical devices + inserted into bodily orifice = PHOSITA in the art of glassblowing dildos.

    The opinion lacks neutrality and reads like the infringer’s argument. The patentee deserves a heck of a lot better from the judges of our judicial system like avoiding the appearance of partiality. Instead, there can be no other reason to explain the absense of argument and supporting facts than that the judges thought this as a sleazy case, and decided to get just as sleazy by issuing a completely one-sided opinion without the appearance of fairness.

    That being said, I am not sure of the validity, but my issues lie with the judges of the judicial system. When you read such lopsided opinion, you know (with a wink-and-nod) that such an opinion was outcome determinative from the start, and that one of the parties didn’t stand a change of receiving a fair and non-partial panel.

    The wink-and-the-nod is so plainly apparent here, and it truly sucks.

  75. Sorry for the aside, but–

    500k spent for a re-exam request?

    If that’s how much they paid, for how much was the invoice???

    I need to find some clients like that!

  76. “The USPTO serves no purpose…”

    The USPTO provides jobs for thousands of people, and is a major source of revenue for the public coffers. As such, it is an invaluable part of our country’s infrastructure.

  77. 6,

    I’ll go on even further because this particular case was so offensive to me. The request was 100+ pages long and was the most immaculate legal document I’ve ever seen. Each reference was mapped multiple times in multiple formats. The CRU’s job couldn’t possibly have been any easier. The client spent upwards of 500k preparing the request.

    The CRU came back with an extremely short (less than 10 page) response that (1) failed to address almost every issue and (2) included a cursory analysis of one of the references that was expressly contradicted by the reference on its face (i.e., examiner says the reference doesn’t teach “XYZ” when the reference plainly says “XYZ” in multiple places).

    Disgraceful. Absolutely disgraceful. The USPTO serves no purpose and should be eliminated.

  78. 6,

    The request was 100+ pages long with each limitation specifically mapped in table format.

    Nice try though.

  79. The Wikipedia page is only relevant if by “current” is meant prior to 1 April 1999, and if the mentioned sex toys have the “modulated diameter” of the invention.

    An added point is that one might assert that if in 1999 no such product was made from borosilicate glass (invented 1893) and in 2009 suddenly many such products are made from borosilicate glass, maybe there is something pretty amazing to the invention.

  80. Not my area of expertise, but according to Wikipedia:

    “Many current glass sex toys use high grade Pyrex/Borosilicate glass. The toys are generally created from a single piece of glass, which make them much more durable than blown glass.”

  81. “You’ve made my point. Assume that you’re a glass blower of dildos, you glass blow as a hobby part-time, and you’ve been making them with only one material composition. You have a general high school diploma that doesn’t require chemistry and have not taken one college class. Someone comes to you and asks you to form the product out of this tube of Pyrex. You say okay, and after it has been formed, you discover it is a better quality product.”

    Do you seriously believe a professional glass blower would not be aware of Pyrex…? It’s like arguing that a maker of pine furniture would not be aware of oak!

  82. 6, usually I don’t agree with you, but your suggestion to include ” a detailed draft version of an OA addressing all limitations so he could have copy pasted” sounds good.

  83. Smoke, should have included a detailed draft version of an OA addressing all limitations so he could have copy pasted. Would have saved you all a lot of trouble :) Why didn’t you take it up with the SPE/director if this is a billion dollar case? For that matter, why not take it to trial? If it is that clear that the ref says x then surely a judge/jury wouldn’t miss it. I’ve often wondered how much interaction you guys can have in an inter partes.

  84. “I’ll bet”,

    Do you seriously trust the reexam unit? If so, are you out of your mind?

    We filed a reexamination about a year and a half ago for a client with 5+ CLEAR 102s on each disputed claim. The reexam unit came back and rejected some of the claims over ONLY ONE of the references and DIDN’T ADDRESS THE OTHERS. Moreover, the examiner said that the remaining claims were patentable over a reference because it didn’t teach “X” when in face that reference EXPRESSLY SAID X.

    It was absolutely amazing. Don’t trust the CRU under any circumstances. I wish I could post the Control No. without outing myself. The client, btw, is in licensing negotiations for BILLIONS of $ right now.

  85. I’ll bet that this is one of those situations where counsel for Vast Resources could have saved his client alot of money by filing a reexam to have the patent invalidated.

  86. Actually that wasn’t Rader, that was Bryson. My bad. I get those two mixed up. Still Rader did the exact same thing not a few weeks ago.

  87. Thanks Erez, but I wasn’t being entirely serious. The point about the thermometer shaft is that it has a constant diameter. I’m guessing, but I feel fairly sure that an essential, indispensible feature of the claimed device is that its diameter is NOT constant. The whole point (I guess) is that the modulation of diameter delivers 100% of the sought-after sensation. In between successive swellings along the shaft, by contrast, it should be as smooth as a baby’s proverbial, and slidy please, just like the best available thermometer shaft. Same problem, solved with the same means, therefore obvious.

    But this should all have been thoroughly explored in the pleadings, and at trial, and in the Decision, no? As Erez Gur appreciates, and as I keep banging on about so boringly, that would be the first thing that would have happened at the EPO, in the FAOM and the Applicant’s retort, as the Problem and Solution Approach works its way through the obviousness issue.

  88. 6,

    “WTF kind of properties would they be aware of if not different types of the materials that are commonly used to make dildos?”

    You’ve made my point. Assume that you’re a glass blower of dildos, you glass blow as a hobby part-time, and you’ve been making them with only one material composition. You have a general high school diploma that doesn’t require chemistry and have not taken one college class. Someone comes to you and asks you to form the product out of this tube of Pyrex. You say okay, and after it has been formed, you discover it is a better quality product.

    Now, did you go out and research the glass qualities or composition of Pyrex beforehand? Did you know of other glass compositions other than the one you’ve been blowing? Or did you just stumble across something that worked, and then learned of why it worked after the fact (like the folks that invented “Post It” pads)?

    Judge Posner’s opinion fails to discuss this and the oral argument doesn’t point to any facts in the record to show that the glass blower knew of the composition of Pyrex. Where is the factual evidence? There are facts discussed in oral argument to show that experiments were made, but these experiments went to the shape of the product and not to the composition.

    Instead, without pointing to any facts in the record, Posner makes this tenuous link between the glass blower of dildos and those who make medical devices out of Pyrex, with the only link between the two is that both are inserted into orifices. But where are the facts to connect that a PHOSITA in glass blowing dildos would know the composition of Pyrex, look to the art of medical devices, or even crack open a science book to research the composition of glass materials BEFORE going out to develop that better dildo?

    “evidence to rebut an already made prima facie case is not always sufficient to rebut it.”

    This is not patent prosecution. This is courtroom activity where there is a presumption of validity (i.e., non-obviousness) which can be rebutted with clear and convinving evidence.

    6,

    WWRPD makes a great point about this being a case similar to the dyer or a chemist. If the PHOSITA of a glass blower of dildos is the same PHOSITA as a material scientist or maker of medical thermometer, Posner has failed to cite to the facts in the record or oral argument.

    Instead, in my opinion, Posner, Michel, and Bryson found this to be a sleazy case, and instead of upholding the integrity of the judicial process, decided to get as equally sleazy and write a sleazy opinion absent any discussion or support in the record (e.g., deposition testimony, trial testimony, expert declarations, etc…) to show what a PHOSITA would have found obvious. They bent the patentees over and stuck to the them where the sun doesn’t shine with their own invention.

  89. I have to agree with Michael F. Martin and Max Drei that KSR may have been misapplied and that the claims should not have been invalidated.

    The prior art relates to a smooth-shaft thermometer (small diameter, shallow insertion) to measure the temperature of infant or a child. Borosilicate glass reduces sensation.

    The claimed device includes a large variable-diameter shaft for deep insertion in an adult who presumably has repeated experience in this type of activity. The use of a specific material must produce a desired sensation.

    The decision to invalidate the claims was made without mention of the problem to be solved, without a motivation to combine made explicit and with no discussion of the state of the art. This is peculiar because the Supreme Court required these in KSR.

    Instead, on page 5 of the decision KSR is quoted “a person of ordinary skill in the art would recognize that it would improve similar devices in the same way” and it is then concluded that this sentence describes the case to a tee, despite the fact that the prior art was of a dissimilar device and the improvement was not “in the same way”.

  90. 6, MM – Perhaps we are talking across each other because we should back up and decide who the phosita is here. And also, I know almost nothing about this case, thanks to Judge Posner, and these are factual questions. So maybe you are correct. But anyway, consider the Dystar case, where the CAFC discussed the impact of whether the phosita was a dyer or a chemist. Likewise there may be a difference between a glassblower who makes dildos and a materials scientist who makes dildos.

  91. Are there any materials that have NOT been used for a dildo, before the date of the claim. I guess long service, now-retired, members of Hospital Accident and Emergency Departments could testify to that. Ought the 103 court to be interesting itself in any surprising or unexpected technical effects, when fashioning the thing out of thermometer glass? Malcolm maybe one reason why top class, clinical grade thermometer glass hasn’t been used before is because of the embarrassment of choice for more mundane materials that will do the job?

  92. “Also, why would an ordinary dildo designer be aware of the properties of different glass materials?”

    WTF kind of properties would they be aware of if not different types of the materials that are commonly used to make dildos? Seriously. Think before you speak.

    “Section 103(a) is based on a PHOSITA. From oral argument at about 34:45, the experts testified that it would not have been obvious to the PHOSITA to look at adding material containing an oxide of boron:”

    For the UMPTEENTH time, evidence to rebut an already made prima facie case is not always sufficient to rebut it. In the end, it is a judgment call. As always. As it will always be. There is substantial evidence to weigh on the side of obviousness just the same as the experts testimony on the side of non-obviousness.

    They omitted the facts because they are on their face apparent to anyone familiar with the case it would seem. Some were recited at oral arguments.

    I will admit though, it is very strange that nobody had used this for a dildo before. I smell bad searching going on.

  93. “There are laws that prevent patenting of certain methods and articles.”

    “There need to be more such laws to cure the stoopit that has taken over the USPTO.”

    Please explain, Mr. Mooney.

  94. West Coast Guy “Certainly, drug companies would disagree with your argument”

    Really? Because my argument has nothing to do with drug companies. As I set forth expressly above, it has to do with dildos and, alternatively, methods of making a profit (i.e., pure business methods of the sort Bilski destroyed).

    “It deserves patent protection just like any other apparatus having a usefulness.”

    News flash: “every other apparatus” having “a usefulness” is not patentable. There are laws that prevent patenting of certain methods and articles. There need to be more such laws to cure the stoopit that has taken over the USPTO.

  95. WWRPD: “why would an ordinary dildo designer be aware of the properties of different glass materials”

    I’m always amazed at how deep some folks can bury their heads in the sand when they disagree with the invalidation of a patent.

  96. Section 103(a) is based on a PHOSITA. From oral argument at about 34:45, the experts testified that it would not have been obvious to the PHOSITA to look at adding material containing an oxide of boron:

    link to oralarguments.cafc.uscourts.gov

    Talk about three judges hijacking the facts in evidence for their own beliefs of what would have been obvious. What a dreadful opinion. They have provided no facts in the record to support their personal notion of what would have been obvious to a PHOSITA at the time of the invention.

    Posner and panel rely on KSR, but at least in KSR, the PHOSITA had knowledge of electrical sensors because they were used in the art and that he/she would look to COTS electrical components to make the invention.

  97. I can’t make heads or tails of this opinion. What is the point of issuing a precedential opinion if we can’t figure out what it stands for?

    How did Posner dispose of the fact that pyrex and dildos have been around since 1893, but this invention wasn’t made until recently? Also, why would an ordinary dildo designer be aware of the properties of different glass materials? And are we to understand that medical devices are less likely to be obvious because they require testing and approval?

    Good luck to mechanical inventors, wow.

  98. Malcolm,

    Two points of disagreement.

    First, “[f]or the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”

    To invalidate, a PHOSITA “would recognize that it would improve similar devices in the same way….” The similar devices mentioned in this case are medical devices because such devices are inserted into a body orifice.

    It is NOT obvious that a glass blower of dildos would look to the production of thermometers based on bodily orifice insertion. The obviousness of such a comparision of the underlying facts is a issue for the trier of fact. Posner has made no effort to tie a PHOSITA to knowing about medical devices or why he/she would look to the medical device art. Here, Posner has made a tenuous link at best and fails to meet the clear and convincing evidence standard.

    Second, “[l]ike methods of turning a profit, the incentive to innovate in this area is not promoted by the issuance of patents.”

    This is a nonsensical argument. This issue is not “turning” a profit but “maximizing” a profit through a patent’s monopoly. Certainly, drug companies would disagree with your argument because the patent affords the ability not only to turn profits but to turn “maximum” profits with a legal monopoly.

    Face it, the patent provides utility in that enhances personal pleasure for both women and men (think back to your comment about gay California marriages a few months ago). It deserves patent protection just like any other apparatus having a usefulness.

  99. Posner: “For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”

    Absolutely correct. Too bad Posner wasn’t around to set the Federal Circuit straight when they issued that ridiculous insect screen decision. Now *that* was a poorly reasoned case.

    This case? Whatever. Until the PTO proves that it has a searchable database of the last century of pornographic video, they have no business issuing utility patents on such articles. Moreover, there is absolutely no point in doing so. Like methods of turning a profit, the incentive to innovate in this area is not promoted by the issuance of patents.

  100. From the opinion:

    “Commercial value is indeed one of the indicia of nonobviousness.”

    What a fortuitous draw of Judge Posner in the three-judge panel did the infringer get to defeat or minimize the commericial value argument.

  101. Discussion around 23:00 are important. I can’t stand seeing words like “appreciable” or “substantial” in a claim. He could have argued that better.

  102. Thank you so much for posting the oral arguments for this case. The comments at 14:40 are thought provoking. Comments around 16:30 discuss 5 foot long pyrex rods and experimentation. Now is that 5-foot long, or 5 foot-long rods?

  103. If the two parties argued the case solely through oral argument perhaps the Judge didn’t understand what the invention was for.

  104. “Isn’t there inherent evidence of long felt need in this particular case?”

    I hope this is snark and not a re-appearance of this bogus zombie argument.

  105. “I’m surprised that Mooney hasn’t noticed the position of this sex toy article behind the article entitled “Prescriptions for Drafting Ass(ins)ertable Claims””

    Bwahaha.

  106. Take a listen to how the inventor — the PHOSITA — discovered the use of Pyrex for these toys at around 16:00:

    link to oralarguments.cafc.uscourts.gov

    A glass-blower took a 5 foot long tube of Pyrex and formed the sex aids. Apparently, there was no experiementation to how much boron oxide should into the glass. Experimentation was done with respect to other operational characteristics.

    Quoting from KSR, Judge Posner states:

    “For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”

    As glass blower of dildos is the same PHOSITA those who manufacturer of medical devices?

    There needs to be clear and convincing evidence that a glass blower would look to Medtronic, but there is no discussion by Posner.

    DC – I agree with you. This is not a good decision.

  107. While I’m on the Justice Thomas kick, do you think perhaps hairs stick to a “lubricious glass-based material containing … an oxide of boron” as they do with Coke cans?

  108. The judges got a snicker when the dicussion turned to electrical current at around 14:40 into the oral argument:

    link to oralarguments.cafc.uscourts.gov

    At 14:57, “I never thought of that.”

    Dirty old men? Can’t take the boy out of the man? Guys will be guys? Probably, or maybe just following the footsteps of Mr. Clarence Thomas before his “Justice” phase in life?

  109. Dennis’s critique of Posner’s opinion is on point. And like Dennis also says critiquing this opinion isn’t the same as saying the patented invention was unobvious. In fact, from the clues we get in this opinion, including the quote from the Hotchkiss case, it looks like a classic of relying on substition of different material for patentabillity which generally doesn’t do it.

    But clues is all we’ve got from this opinion as to what the allegedly infringed claim(s) covered . Posner is known for his eloquence in legal opinions, but here he needs to do a better job of communicating some basic facts (like the what claims were involved and what they cover). All Posner had to do was tell us what claim(s) were and everything would have been fine, including Posner’s usually top notch prose.

  110. I’m surprised that Mooney hasn’t noticed the position of this sex toy article behind the article entitled “Prescriptions for Drafting Ass(ins)ertable Claims”

  111. I’ve thought about this overnight (but not all night). I’m thinking about the “technical effect” produced by that feature of the claim that gives novelty over the prior art starting point (important for obviousness at the EPO).

    Imagine that prior art easy-slide thermometer relied upon here. Its packaging might say “Slides in and out without your even noticing, thanks to its magic coating.”

    Can you imagine that on the packaging of the device here under contemplation by the venerable judges of the CAFC? I bet the packaging would assert exactly the opposite technical effect (otherwise, it wouldn’t sell too well).

    So, do we have here a coating that, surprisingly, achieves in the claimed device the opposite of what the prior art would tend to suggest? If so, then maybe I could get Richie a valid patent in Europe (only joking).

    But if I were to represent Richie, I would be mindful that the three EPO Appeal Board judges fancy themselves as the PHOSITA. So, I might think it a good idea to send them samples (in sealed original packing, of course). Somebody upthread assets that the blessed thing “doesn’t work”. I suppose he has tested it exhaustively. Maybe those three EPO judges would wish also to find out for themselves. At this point, I had better stop.

  112. “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.”

    In my opinion, this language blithely eliminated the doctrine of equivalents without even acknowledging doing so. Clearly, it imputes to one with ordinary skill in the art of a particular field knowledge of the advances of every other field (and thereby links “common sense” to omniscience).

    This is undoubtedly why the present opinion felt it could make a mere conclusory assertion of analogy without any supporting analysis.

    KSR made everything obvious and completely dismissed the act of the invention. “Market forces” drive almost all invention; given that potential for profit is the new test for obviousness, all inventions are obvious.

  113. no truth (I think) to the rumor that 6 was an original examiner on the case, but had to be dismissed when he kept asking the inventor for “samples”.

  114. Just back.
    Numeral Six, I’ll try to respond to you response on the other thread tomorrow.

    I haven’t read this article, but (no pun intended) is that what I think it is?

    Shame, shame, shame on you!, is nothing sacred?

  115. The examiner did a poor job, the district court judge did a terrible job, and Posner while reaching the correct conclusion (IMHO) did a poor job explaining and justifying it, as Dennis points out.

  116. anonymous,

    I’m whining about the strain in the obviousness law that holds that the solution to a problem in what field can render obvious the solution to a different problem in a different field, which is exemplified by the following quote in Judge Posner’s opinion:

    “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.”

    What are the “design incentives and other market forces” that Judge Posner conjures up to carry out these supposedly variations? Are they not the rewards of patenting? What else might they be?

    Some people might say that increased reputation alone might be sufficient. That’s why I pointed out what I did about academics. Most academics don’t look outside their own field of endeavor for solutions to problems — it’s too risky without some additional incentive that reputation alone doesn’t seem to provide.

    It’s not just this opinion. It’s all of the opinions that trivialize the work that inventors do. Like Dennis, I don’t want to judge this decision wrong — I don’t know enough of the facts of the case to be the judge; and anyway doubt I would do better than Judge Posner. But I wish that Courts would take more seriously the hindsight bias that makes creative work look trivial. That is all.

  117. Mr. Martin, your comment doesn’t make a lot of sense. I can’t tell much about what you’re trying to say other than that there’s something you don’t like about this opinion. As far as I know, Judge Posner hasn’t asked for a patent on any applications of economic analysis to legal question, and the opinion doesn’t hold that it’s always obvious to take things from one “field” and apply them to another.

  118. Is there an EPO patent family member? There was in the KSR case. There, the application lapsed when Applicant failed to reply to the obviousness objection set out in the FAOM, using the Problem and Solution Approach. Only saying.

  119. If it’s so obvious to take theories from one field and apply them in an other than why don’t academics do it? Aren’t they smarter than inventors?

    I guess Judge Posner should be excluded from that kind of criticism because he did take economics and apply it to law. But does that mean his life’s work is obvious?

  120. Dennis: “Judge Posner’s opinion gives me no confidence that the invention was obvious.”

    If anyone needs a judge or an Examiner to tell them that this invention is obvious, then they have been living an isolated existence.

    I’d like to see this appealed to the Supreme Court. We’d finally get to hear Clarence Thomas ask a question.

  121. I disagree with much of the criticism of the opinion in the post.

    Dennis writes: [The opinion hardly mentions claim language – or even which claim is being challenged; the court does not construe the claims at issue; ]

    Perhaps not enough to satisfy everyone, but there is some discussion of claim language and the meaning of “lubricious” at 2-3 and “appreciable amounts” at 4-5.

    Dennis writes: [“although the lower court found the patent valid, there is no mention of the presumption of validity or standards for reversing a decision on obviousness; the level of one of ordinary skill in the art is overlooked”]

    There’s no need to include these sorts of incantations if the decision doesn’t turn on them.

    Dennis writes: [Now, I’m not arguing that the patent is valid – only that Judge Posner’s opinion gives me no confidence that the invention was obvious. Ritchie’s patent covers a “sex aid,” and the patent claimed a particular arrangement of a rod with knobs all made from a “lubricious glass-based material containing … an oxide of boron.” The prior art here was an easy-slide thermometer made of the same material, and – according to Judge Posner’s opinion, the “invention” merely takes well known sex aids and combines them with the easy-slide material.]

    Perhaps the real complaint is just with the glib summary of the evidence or the writing style employed.

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