Orion v Hyundai on Novelty: Expanding the Scope of a Printed Publication with Oral Testimony

Orion IP v. Hyundai Motor America (Fed. Cir. 2010)

Orion sued Hyundai and twenty other automobile manufacturers for infringement of its patent covering a “computer-assisted parts sales method.” The invention took computer and database technology available in 1988 and applied that technology to a specific solution. All of the defendants settled except Hyundai who was stuck with a $34+ million verdict jury. On appeal, the Federal Circuit reversed — holding that the asserted patent is invalid as anticipated by a promotional publication for an electronics parts catalog.  Note, this post deals with the anticipation issues. I will discuss inequitable conduct in a separate post.

The asserted prior art is a brochure for the IDB2000 system that was distributed by Bell & Howell at least one year prior to the Orion priority date.* [DTX133.pdf (5979 KB)] The brochure does not specifically state that the system generates a customer proposal as required by claim 1 of Orion’s patent.  However, at trial, Hyundai presented evidence that the IDB2000 system was “designed to, and did” generate customer proposals.  The Federal Circuit latched-onto this testimony regarding the prior art system and used it to expand the coverage of the prior art brochure — holding that the “testimonial and documentary evidence regarding the Electronic Parts Catalog reference establish that the Electronic Parts Catalog reference anticipates claim 1 of the ’627 patent.”

I have genuine problems with the analysis in this opinion.  The appellate panel expanded the scope of the asserted anticipatory prior art reference by relying on testimonial evidence of how the associated system was used at the time. There are two separate problems. First, the scope of a “printed publication” should be examined for what it disclosed to one of skill in the art rather rather than to how underlying prior art systems were used at the time. Contemporaneous use would be important for an analysis of whether the invention was “in public use” more than one year before the filing date. However, this decision’s doctrinal focus is solely on anticipation by the prior art brochure as a printed publication. If the IDB2000 system itself anticipated the patent then the defendants should have presented evidence under the public use prong of 102(b).  The second problem with the court’s decision is that the oral testimony relied on here opens the door to potentially self-serving testimony that is not ordinarily allowed in invalidity/priority proceedings because it does not satisfy the clear and convincing standard. 

  • * The asserted prior art reference was apparently printed after the Orion filing date. However, Hyundai presented oral testimony that a very similar brochure had been distributed earlier.

70 thoughts on “Orion v Hyundai on Novelty: Expanding the Scope of a Printed Publication with Oral Testimony

  1. where the patent owner offer rebuttal evidence and opinion.

    The Circuit’s position was (apparently) that the rebuttal evidence, even if believed, did not support the argument that the brochure was not an anticipation.

    For the purposes of the anticipation question, that doesn’t really count as rebuttal evidence at all.

  2. Give me a copy

    You mean “tell me what it discloses”? Because they did that at trial.

    isn’t it more proper to call the prior art “public knowledge?”

    Public knowledge of a printed brochure? If you like, but I don’t see what difference it makes.

  3. INANE, what 1987 brochure? Give me a copy and let’s discuss.

    When the evidence goes to show that a brochure existed and it contents were known, isn’t it more proper to call the prior art “public knowledge?”

  4. 6, sure, I think the reason is that it gets into the realm of obviousness. The Feds could not clearly overturn both a jury verdict and a lower court ruling of obviousness where the critical evidence is established by testimony where the patent owner offer rebuttal evidence and opinion.

  5. Why did you avoid mah question Ned?

    Furthermore note that as the commenter above noted that the Fed’s do not care whether or not the customer actually saw the info, thus the contending testimony is irrelevant (because of what the claim actually requires). Also ask yourself what would be implicit to a posita if a reference said something about “thus the data can be printed, as you normally would do”. Would the posita understand that in any method involving this piece of equipment then a method involving printing is implicity disclosed? Methinks yes.

    You have forgotten your thinking cap this morning and apparently yesterday too. The testimony wasn’t just about prior use, it was about WHAT THE REFERENCE TAUGHT POSITA. jebus.

  6. I remain bothered by the conclusion that the 1991 brochure itself is anticipatory prior art. I disagree that it is prior art at all.

    Nobody is saying the 1991 brochure is prior art.

    The 1987 brochure is prior art. Testimony established the contents of the 1987 brochure, apparently to the satisfaction of the court. The 1987 brochure anticipates as a printed publication.

  7. Paul, The brochure is very good corroborative evidence to the extent it is reliable. It corroborates that a brochure existed in 1987 and it corroborates the nature of the public use catalog system. But, it itself bears a “revision” date of 1991, a couple of years after the critical date of November, 1988. The 1987 copyright date does indicate it is a successor to an earlier publication, but what was in that earlier publication is somewhat left to speculation as we have very little information as to what was added from the 1987 publication to generate the 1991 publication. Something was added, changed or deleted. That we know from the document itself.

    We have the testimony of Otto, the salesman, that the brochure was produced in 1987. But we are still left to wonder what was added between 1987 and 1991. Who has the burden on this? Clearly the infringer. Has he carried it? Not really, as none of us can say with any confidence that the critical elements were in the 1987 version, including the illustration of customer viewing the computer screen with the parts salesman.

    I remain bothered by the conclusion that the 1991 brochure itself is anticipatory prior art. I disagree that it is prior art at all.

  8. When I get such a tasty invitation as Ned’s:

    “Turning now to Europe, Max, does Europe allow uncorroborated testimony of prior use to invalidate a patent? Will you allow some old coot to testify that he publicly used the invention some years ago to stand, uncorroborated?”

    I find it hard to ignore.

    The EPO is ill-equipped to handle witnesses of fact. No discovery. No cross-examination, So, no fear. So, why not lie your head off.

    So it funks it. It requires the Petitioner to prove the asserted prior use “up to the hilt”.

    However, a plausible case of prior use might nevertheless bring down the patent. This when the tribunal is convinced of it but can’t face the thought of basing its reasoned revocation decision on the prior use fact matrix.

    So, instead, it revokes on the basis of prior publications (which, on their own, would not have been enough).

    Bit like the USA really, eh Ned?

  9. One of the best comments in the above notes is that the [present and as yet unchallenged] CAFC “clear and convincing evidence” requirement to invalidate a patent refers to the evidence as a whole, not individual testimony. A printed publication of this very high content relevance, dated shortly after the patent’s filing date, and long before suit, is about the most credible evidence possible. Thus adding a little additional supporting deposition evidence does not violate this evidentiary rule under these circumstances. It would be admissable even in an interference priority contest.

  10. Max, the presumption of validity primarily relates to the kind of evidence needed to make a case.

    Ned, I think you’re confusing “burden of proof” and “standard of proof”.

    Every jurisdiction has a presumption of validity, because you can’t logically prove that your patent is valid. The only difference in the US is how much evidence you need to invalidate it.

    If the brochure were prior art, it could be used as the basis for a reexamination. But it cannot. Why?

    Because the procedures for introducing evidence in court and in re-exam are different. And, as you point out, the brochure in evidence was not prior art.

  11. OK, INANE, take the testimony away of any prior use of a similar brochure. What do you have?

    A brochure printed too late to be prior art.

    The brochure is not prior art but corroborating evidence of something that was prior art, but only based on testimony that it existed and was used in demos.

    If the brochure were prior art, it could be used as the basis for a reexamination. But it cannot. Why?

    Because its date is not early enough. That is why.

  12. The date of the brochure was not early enough. The brochure was not prior art. The only testimony that supported the opinion was testimony of public use, including that an earlier brochure, not in evidence, was used in demos to a number of dealers.

    How is an earlier brochure “prior use”? The testimony established that the earlier brochure was a prior art printed publication that looked more or less like the brochure in evidence.

    The Circuit was explicitly considering the question of “whether the prior art Electronic Parts Catalog reference meets the ‘proposal’ element.” The prior use testimony corroborated that the system in the publication was designed to be used in a particular way.

  13. Max, the presumption of validity primarily relates to the kind of evidence needed to make a case. Because we have prior invention, many times in the past an infringer would get some old coot to testify that he had invented the invention first, long ago. Rules of corroboration were established, including the presumption of validity, in order to require a very high standard of proof to prevent this.

    In Europe, most everything is based on printed publications. These per see meet the high qualities of evidence without more. Credibility determinations, for example, play no role in assessing the evidence.

    Turning now to Europe, Max, does Europe allow uncorroborated testimony of prior use to invalidate a patent? Will you allow some old coot to testify that he publicly used the invention some years ago to stand, uncorroborated?

  14. JJ, you add some facts not discussed in the opinion. All I am going on is the opinion.

    According to the opinion, the legal theory and evidence subject to the JMOL was public use. The brochure showed a customer looking at the screen. If so, why all the public use testimony?

    The date of the brochure was not early enough. The brochure was not prior art. The only testimony that supported the opinion was testimony of public use, including that an earlier brochure, not in evidence, was used in demos to a number of dealers. Printed publication? Of what? All the relevant testimony was of public use.

    So the Feds framed the issue as what the brochure taught. But that in many regards was a red herring as the brochure was only supporting evidence, secondary at best, of what was a public use case.

  15. So what do we have? We have testimony that the final parts list and prices were shown to the customer by swiveling the computer monitor. We have contrary testimony by independent 3rd parties that this did not happen.

    It appears the Circuit’s position is that whether the customer actually saw the on-screen display is irrelevant to whether the screen displayed information intended for conveyance to the customer. That sounds to me like the correct determination. Even if the prior art system had displayed information to a mechanic or salesperson who proceeded to tell it to a customer, that would have been enough.

    The argument breaks down as follows:

    Claim: … display information intended for conveyance to a customer …
    Defendant: The prior art system displays information that customers eventually find out about.
    Plaintiff: But the customer might not actually see the screen!
    Circuit: That’s not relevant, and you’ve presented no evidence that actually supports your contention of no anticipation.

  16. The “brain trust” that is troubled with this case needs to pay more attention to the actual dispute addressed by the Federal Circuit. “For purposes of the anticipation analysis, the only dispute is whether the prior art Electronic Parts Catalog reference meets the “proposal” element,” namely, was it ever shown to the customer. The undisputed evidence (a picture) was that the EPC sat on the parts counter and had a swivel base. Orion’s only argument in regards to the question decided by the Federal Circuit was that the IDB 2000 could also show the wholesale price, and that therefore it did not generate a proposal for the “customer,” but Orion then argued that wholesale part sales should be included in the damages! It is clear that Orion was doing what plaintiffs always do – using a broad construction of the relevant term “customer” for damages and infringement and a narrow construction for validity. This case is about the construction that claim term, and hand-wringing whether any “lines” have been “blurred,” the make up of the panel, or the identity of the patent owner are red herrings.

  17. which cannot be overturned constitutionally when there is evidence on both sides of an issue.

    Unless, as is the case here, the overturning is by point of law, rather than point of fact, which in all non-IMHO-Ned-Law worlds is still constitutional (Or is that (C)onstitutional, Ned?).

  18. Ned, as I understand it, some folks exhort the USPTO to “Do your Job” and then say that, if only they were to do that, the Presumption of Validity would be vindicated.

    Europe says that a PTO cannot possibly know all the evidence and that, in the interests of public policy and balance between patent owners and their competitors, validity post-issue should be decided on a “preponderance” standard.

    But when it comes to the question whether the List of Parts was ever shown to a customer back then (if that is the point that decides validity), well then the civil law European standard “balance of probability” might have something to commend it. no?

    Otherwise, in the absence of a “balance of probability” test, a court will just have to distort the law, to get to a fair outcome, no?

    No, I suppose not. Silly question. Sorry.

  19. 6, if the “expert” witness testifies that a final parts list “could be” printed and shared with a customer or shown to the customer, it this sufficient to prove that it was?

    He testified:

    “. . [A]nd we see that you can print the list, as you normally would, using your computer. And so you end up with a list of parts, with prices, with diagrams that you can actually hand to a customer, or you can show them on your screen by swiveling it around.”

    If this were sufficient by itself, the Feds should have stayed away from the public use testimony. But, obviously, it was not. What he said in his testimony amounted to an obviousness argument. The public use testimony that it actually was shared with the customer cinched the case.

    So what do we have? We have testimony that the final parts list and prices were shown to the customer by swiveling the computer monitor. We have contrary testimony by independent 3rd parties that this did not happen. We have a jury verdict that the patent was valid. We have a district court judge that refused to overturn the verdict because enough evidence on each side of this issue was submitted to justify the verdict. Finally, we have a Federal Circuit who decides the case on a legal theory not argued below, mixing public use testimony in with a printed publication in a manner that is highly questionable legally, and overturning a jury verdict, which cannot be overturned constitutionally when there is evidence on both sides of an issue.

    This stinks.

  20. CB Here, instead of finding that the document did not anticipate because it did not necessarily describe an infringing system, the court found that it did anticipate becasue of evidence of a prior use in an infringing manner.

    Best comment in the thread, I think, but it wasn’t only the evidence of prior use that nailed it but the expert testimony regarding what one would have understand the document to have taught. The evidence of prior use merely affirmed the experts beliefs.

    Why does this matter if the patent could have been defeated on “public use” or “on sale bar” grounds? It might not matter to the parties, but it does matter to the rest of us who have to apply 102 in practice, and now have this case to blur the lines between the differnt prongs of 102.

    You say that like it’s a bad thing.;)

  21. They say that bad facts make bad law – sometimes it is just bad law that makes bad law.

    6,

    It’s OK to admit that you are jealous – don’t be stodgy like Ned. You see how bitterness can warp somebody.

  22. I can’t help but wonder if the Fed. Cir. just couldn’t stomach the thought of Orion getting $34M in damages for this patent which just seems so, well, obvious!

    The court’s decision plainly rests on the “printed publication” prong of 102. See pg. 8-10.

    I have to agree with Dennis that (i) the court blurred the line between printed publication and prior use and (ii) that blurring is troubling.

    The disupted issue was whether the catalog described a system that generated a “proposal” as required by claim 1 (information to be conveyed to the customer). It appears that the four corners of the document were ambiguous on that point – the system produced information that may or may not have been suitable for relaying to the customer. The court took into account evidence about how the system was used, and determined that prior art uses included that claim element.

    The court’s analysis seems to be contrary to the doctrine of inherency, which holds that a document can anticipate if a missing claim limitation is inherent to its disclosure. Here, instead of finding that the document did not anticipate because it did not necessarily describe an infringing system, the court found that it did anticipate becasue of evidence of a prior use in an infringing manner.

    Why does this matter if the patent could have been defeated on “public use” or “on sale bar” grounds? It might not matter to the parties, but it does matter to the rest of us who have to apply 102 in practice, and now have this case to blur the lines between the differnt prongs of 102.

  23. “Ex parte: If the a requestor in a reexam supplied the critical element through an affidavit of a person, self-interested, that the device as actually implemented had or was used in a manner such that the missing element was demonstrated, I would suggest to you that the reexamination would be improper on the grounds that it was not based on printed publications.”

    Ok, that situation is nowhere near how it went down in this case, even disregarding that it is an ex parte reexam.

    Consider:

    Ex parte: If the a requestor in a reexam supplied the critical element through an affidavit of a person, self-interested, that the device as shown in a reference was understood by those of skill in the art to have had or was used in a manner such that the missing element was demonstrated what then would you suggest?

  24. Ah, 6. We now get to Dennis and my difficulties with this case, do we not?

    Ex parte: If the a requestor in a reexam supplied the critical element through an affidavit of a person, self-interested, that the device as actually implemented had or was used in a manner such that the missing element was demonstrated, I would suggest to you that the reexamination would be improper on the grounds that it was not based on printed publications.

  25. “Indeed, IANAE, I think the publication did corroborate the testimony of prior use. But the brochure was actually silent on the critical point, the “proposal.” What, if anything was communicated to the customer?”

    You say it was silent, the experts say implicitly disclosed.

    “What, if anything was communicated to the customer? Here testimony of prior use was used to prove this point, not testimony of what one skilled in the art would understand the brochure to mean.”

    Here those two things were one and the same.

  26. “Thanks Ned – dontcha know that with any language, especially English, you can always come up with two or more plausible interpretations. ”

    Doncha know that you cannot always come up with two or more plausible interpretations. I have plenty of cases that you can’t come up with two or more plausible interpretations of (actually you probably couldn’t come up with even one because you’re a re tard). Just because all of your scamtastic cases involve such claims doesn’t mean that all claims must be that way, or that the english language permits alternate interpretations in any group o words.

  27. If a claim has two or more equally plausible interpretations, the claim must be indefinite.

    Thanks Ned – dontcha know that with any language, especially English, you can always come up with two or more plausible interpretations. Language just ain’t that perfect to have one and only one plausible interpretation of any group o words.

    That’s it. It’s official, Ned has spoken, jus close the patent doors, business all done here.

  28. On Enzo Biochem, I agree that Plager made a very good point. If a claim has two or more equally plausible interpretations, the claim must be indefinite.

    I once had a case where the novelty lay in a measure. The claim said: roughness within a range. The art recognized at least two measurement techniques for measuring roughness, “peak to valley” and “average.” They were different and both were specified in the specs for the product. Generally, peak-to-valley roughness was 10 times that of average roughness for a given measurement.

    The specification seemed to suggest the intended roughness was average, but dependent claims and the prosecution history tended to suggest that “peak to valley” was intended. It was quite obvious that the prosecutors did not know the difference between the two terms and used them somewhat interchangeably.

    So, what was claimed?

    I always felt the claims were indefinite.

  29. Indeed, IANAE, I think the publication did corroborate the testimony of prior use. But the brochure was actually silent on the critical point, the “proposal.” What, if anything was communicated to the customer?

    Here testimony of prior use was used to prove this point, not testimony of what one skilled in the art would understand the brochure to mean.

    There is a difference and this is the point, I believe, that Dennis is concerned about as well.

  30. Actually, Paul, on reconsideration, the testimony was in fact disputed. The defendant presented testimony that the system was intended for back room use, and the inclusion of both wholesale and retail price would tend to suggest that the information generated would not be shown to the consumer as “suggested” by the photo on the brochure.

    What happened here is clear. Disputed testimony, heavily weighted as it was in one direction, was resolved against the patent owner and against the jury verdict by the courts. This really is inconsistent with the requirements of the 7th Amendment.

  31. 6,

    No need to get bitter about being scooped.

    As to “provided no reason for anyone to actually check out the random looking link“, the link itself says Plage on indefiniteness, and the link was provided by me – that alone gives more than enough reason for everyone to check it out.

    Get out of the cave every once in awhile Sunshine.

  32. Ned, it doesn’t sound to me like this was ever a prior use case. It looks like the testimony established that a publication conspicuously similar to the one in evidence had existed prior to the critical date, and the publication happened to describe a system that was in use at the time, but this was really about what could be understood from the publication itself.

    It probably would have been a lot harder to show evidence of what system was actually in use. At least with a publication you know what it says, and there’s only the insignificant matter of pretending it’s considerably older than its date.

  33. Paul, granted. But that “purpose” was established by testimony. The brochure supported the testimony regarding prior use. The feds flipped it on appeal.

  34. The decision states that “Orion challenged Hyundai’s anticipation evidence on the sole basis that the IDB2000 system did not generate a customer “proposal” as required by claim 1, step (d). The district court had construed the term “proposal” to mean “information intended for conveyance to a potential customer.” ”
    In other words, every single element of the claim was admitted to be anticipated except for offering to sell a customer a part. Since that is the whole point of a parts selling system, it seems about as inherently taught as anything could be.

  35. Not to be a nit, but Hyundai argued,

    “On JMOL, Hyundai had argued that the evidence presented to the jury established that the ’627 patent was anticipated by prior art electronic parts catalogs, specifically the Bell & Howell IDB2000 system. Bell & Howell developed and sold the IDB2000 system in 1987.”

    This is prior use. The evidence argued on JMOL both before and after the jury found the patent not invalid went to prior use. The brochure was not dated early enough and did not, by itself, have enough information to anticipate the claims. It did not clearly call for any information be conveyed to a customer.

    The prior use information established and corroborated by the brochure was sufficient to anticipate. The Fed. Cir. decision appears to be correct in substance, but just as Dennis Crouch states, allowing evidence of prior use to help prove that a brochure anticipates can only lead to massive confusion down the road. This panel needs to reconsider its opinion.

    But further than this, what are the requirements of a preliminary JMOL motion to satisfy the 7th Amendment. Does it require one to argue not only the evidence, but the legal theory that entitles him to judgment? Can the legal theory that sustains the JMOL be different and still satisfy the 7th Amendment — because that is what appears to be the case here. The legal theory before the jury verdict was prior use, but the JMOL was sustained on a hokey printed publication theory that nobody ever heard of before.

  36. “Everybody knows the CAFC decides de novo on questions-of-fact of law.” — INANE

    True. But most of that is claim construction where at least they had the common decency to overtly twist factual determinations into determinations of law and build an entire paradigm around their hocus-pocus.

  37. Your “scoop” provided no reason for anyone to actually check out the random looking link you provided.

    learn2scoopbetter

  38. Just a little bit late 6:

    Posted by: 6 | May 26, 2010 at 02:11 PM

    See: But this is some hammer for the Office beign formed by Plager:

    link to 271patent.blogspot.com

    Posted by: ping | May 26, 2010 at 12:55 PM

    On the Michel thread. – scooped ya by over an hour.

  39. 6, thanks for alerting to that. The CAFC has managed over the past several years to effectively destroy any requirement for “definiteness” by applying an absurdly weak test. Plager’s dissent from the en banc hearing is right on and ultimately his view will prevail, for the very reasons he sets forth.

  40. It was just a dissent from no-rehearing en banc. This wasn’t exactly the best case to take up imo. It’s just nice to see that the voice of reason re indefiniteness is present on the court even if it hasn’t been given it’s full day in court just yet.

  41. “http://271patent.blogspot.com/2010/05/judge-plager-on-indefiniteness.html”

    A great piece over at 271 about indefiniteness of claims in the district courts and on appeal therefrom. Judge Plager has apparently brought a keen eye right smack dab over the problem. He has also announced that the PTO was certainly, in his view, correct in Miyazaki. He know announces that he feels the court could do more to abolish indefiniteness from litigation procedings.

    More power to this guy!

  42. “Has there ever been an invalidity decision you didn’t have “serious concerns” about, EG?

    Malcolm,

    You’re off the subject of this thread, but actually I don’t view all patents/patent applications as valid. Here are some recent examples:

    U.S. Pat. Nos. 5,827,698 and 6,040,160 in in Ajinomoto Co., Inc. v. International Trade Commission (for failure to disclose the “best mode”).

    U.S. Pat. No. 6,410,516 in Ariad Pharmaceuticals v. Eli Lilly & Co. (for lack of “written description”).

    The Bilski application (for reasons such as “lack of enablement” and “indefiniteness, not because it’s “patent-ineligible” under 35 USC 101).

    Does that respond to your comment?

  43. Germany has great difficulty with the borderline between what is “not novel” and what is “novel but obvious”. One of the great strengths of the European Patent Convention is its Art 54(3) which defines the state of the art for novelty different from the state of the art for obviousness attacks. This because it forces everybody to be crystal clear, all of the time, whether the legal issue under debate is obviousness or lack of novelty. It keeps the EPC caselaw nice and clear.

    And as a by-product prevents an obviousness attack being somehow seen as “inequitable”.

  44. “I have genuine problems with the analysis in this opinion. The appellate panel expanded the scope of the asserted anticipatory prior art reference by relying on testimonial evidence of how the associated system was used at the time. There are two separate problems. First, the scope of a “printed publication” should be examined for what it disclosed to one of skill in the art rather rather than to how underlying prior art systems were used at the time. Contemporaneous use would be important for an analysis of whether the invention was “in public use” more than one year before the filing date. However, this decision’s doctrinal focus is solely on anticipation by the prior art brochure as a printed publication. If the IDB2000 system itself anticipated the patent then the defendants should have presented evidence under the public use prong of 102(b). The second problem with the court’s decision is that the oral testimony relied on here opens the door to potentially self-serving testimony that is not ordinarily allowed in invalidity/priority proceedings because it does not satisfy the clear and convincing standard. ”

    Your “genuine” concerns are in re the court’s most recent attempt to drag the patent system kicking and screaming into the 21st century so that it does not fall even more into disrepute.

    “First, the scope of a “printed publication” should be examined for what it disclosed to one of skill in the art rather rather than to how underlying prior art systems were used at the time. ”

    You might consider those may very well be one and the same in instances like the instant case. When one of ordinary skill used the system, and then read the pamphlet, he would understand it most clearly. And we certainly want to understand what a POSITA would understand when he understands the reference most clearly amirite?

    “The second problem with the court’s decision is that the oral testimony relied on here opens the door to potentially self-serving testimony that is not ordinarily allowed in invalidity/priority proceedings because it does not satisfy the clear and convincing standard. ”

    Idk about that.

    Oh and Boundy, implicit information is implicit information. All of this could very well have gone down in the PO before an examiner with all these references and given the fact the examiner wouldn’t give them such a narrow claim construction. A factual finding of implicit information requires no special “opinion” giving by the PTO.

  45. ” scope of a “printed publication” should be examined for what it disclosed to one of skill in the art rather rather than to how underlying prior art systems were used at the time.”

    excellent point

  46. Actually, the brochure corroborated the public use, making it clear and convincing.

    Might have been a little more comforting, then, to decide the case on the basis of public use rather than wasting all that ink on the nuances of printed publications.

    Interestingly, I might be missing something, but that public use appears to have been by a non-party to the case. How clear and convincing do you find it now?

  47. This is a cheah attempt to simultaneously do an end-run around both the all elements requirement for 102 and the Graham/Bilski requirements for 103.

    Should be straightforward, then, to point out why neither set of requirements is satisfied by the rejection.

    Still, it’s better than getting only a 102, and later getting a 103 of dubious finality.

    The headline should read: CAFC Hijacks Another DC Jury Verdict.

    The headline can’t say that, because that’s not news. Everybody knows the CAFC decides de novo on questions-of-fact of law.

  48. “Yes, perhaps technically this should have been a 103 rather than a 102 appeal to avoid your concern and get the same result. However, CAFC panels are often more interested in getting just results in deterring recoveries on invalid patents, especially broadly claimed business methods, than technicalities.” — PFM.

    Jeez, Paul, you sound like an examiner. Since when is the distinction between a 102 rejection and a 103 rejection (even a single-reference 103 rejection) a technicality?

    I keep getting these annoying rejections that say the claim is either anticipated under 102 or obvious under 103 in view of such-and-such. And no more. This is a cheah attempt to simultaneously do an end-run around both the all elements requirement for 102 and the Graham/Bilski requirements for 103. Sounds like a tactic the CAFC is warming up to here.

    102: ALL of the elements and limitations have to be explicitly stated or inherent in a single reference — and in the same order claimed. The difference between this standard and obviousness is not a “technicality.”

    “What is truly disturbing to me is that this panel appears to usurp the role of the district court judge in determining whether this proffered testimony was sufficient to support a JMOL.” — EG

    Holy chicken-gizzards, EG! Where have your been the last 5 years? Most of these CAFC panels have absolutely no respect for a jury verdict — that’s what’s disturbing.

    I’m with Dennis on this one. The headline should read: CAFC Hijacks Another DC Jury Verdict.

  49. EG also have serious concerns with this Federal Circuit panel analysis, especially in support of a JMOL.

    Has there ever been an invalidity decision you didn’t have “serious concerns” about, EG?

    Nothing to see here. This patent was stillborn and was going down one way or the other. I don’t see anything in the holding or in dicta that represents a change in the law.

  50. I was all set to post a soaring disagreement with Dennis, but I see that others already have.

    DC: “…the scope of a “printed publication” should be examined for what it disclosed to one of skill in the art rather rather than to how underlying prior art systems were used at the time.”

    A printed publication can disclose to one of skill in the art how an underlying prior art system was used at the time. Not a problem.

    Expert testimony? Well, the scope of the PA needs to be construed, as does the scope of the claim. No problem.

    For a change, I found the language of the decision fairly articulate. Nice.

  51. i don’t see how Hyundai’s oral testimony could be considered “prior” art.

    The testimony wasn’t prior art, any more than the inventor’s sketch of a seam in that other case was prior art.

    The testimony was to the effect of “here are some things that I, the world’s expert on this art, claim were prior art at that time”. In other words, the testimony was evidence of prior art. That’s how testimony works.

  52. Hyundai’s oral testimony was presented after the filing date of the patent application, so i don’t see how Hyundai’s oral testimony could be considered “prior” art.

    Post application filing oral testimony cannot add to prior art evidence since it is not prior.

    Disclaimer; I have neither read the court’s opinion nor read AB 1070, but, like a politician, I have an opinion on both.

  53. Yep writes “judges and juries loathe invalidating under 103 beacuse of its somewhat inequitable feeling”

    For a European, that remark is startling. Does 103 “feel” inequitable also to readers here, I wonder. If so, is that a problem for the health of the patent system?

  54. I’m sympathetic. I think that one of the factors here is: TWENTY years passed since the filing date. If anyone has ever tried to dig up technical documents regarding software that outlines in specific detail the functionality of software systems from 20 years ago, they’d know that that burden is huge. Specialized systems are probably even harder. The difficulty is further increased when the documents give general description of how to do things, but a reasonable person can use it to perform some step of a claim (e.g., to use a word processor to print out a list of customers, etc.).

    It is bad for the patent system when the patents can remain valid because you’re unable to uncover the prior art documents that you know should exist. In this case, it appears that there is a system that clearly would meet 102, but the only documentary evidence doesn’t quite, so if you were playing by the rules, you’re forced to argue a less desirable obviousness standard to fill the gaps — whatever the the commenters on here may think, I find that judges and juries loathe invalidating under 103 beacuse of its somewhat inequitable feeling.

    And, to Dennis’ point regarding public use (or on sale), it doesn’t make much difference if you can make a public use argument if you can’t substantiate that the system itself had all the elements. That almost, by necessity, requires that you have some sort of document to back it up–the obvious exception is when the on-sale/public use is for a system embodying the patent itself.

  55. Also important is that oral and expert testimony is court evidence, sworn and subject to cross examination.

    As Judge Newman noted last week, in In re Vaidyanathan, link to cafc.uscourts.gov, Patent Office employees are subject to administrative “substantial evidence” law, and can’t offer personal opinion as if it were sworn-subject-to-cross evidence.

  56. Les,

    Then don’t use the word ‘comprising’ in your claim instead pick ‘consisting of’. Or have the negative limitation ‘without C’ in the claim if you want to use comprising.

    Although Karp was not clear he probably meant the claim ‘Comprising A and B.’ which is clearly anticipated.

  57. Mr. Karp -
    I’m not sure what you’re referring to here, but if the current cure for cancer were administering A, B and C and deal with the side effects of nausea and your hair falling out and someone discovered that ya don’t actually need C and if you leave it out your hair doesn’t fall out and you have 50% less nausea, would the method that involved A,B and C really anticipate A and B?

    Seems to me it teaches away from A, B and C.

  58. The second problem with the court’s decision is that the oral testimony relied on here opens the door to potentially self-serving testimony that is not ordinarily allowed in invalidity/priority proceedings because it does not satisfy the clear and convincing standard.

    I’m having a little trouble following this argument. I thought that the evidence for invalidity as a whole has to be clear and convincing. Are you suggesting that each individual piece of evidence has to meet that standard?

  59. Dennis,

    I also have serious concerns with this Federal Circuit panel analysis, especially in support of a JMOL.

    There are actually 2 questions here: (1) what was actually described in the 1987 version of the Electronic Parts Catalog?; and (2) when was that Catalog disseminated/accessible to the “target audience” (as defined by the Federal Circuit in the 2004 case of In re Klopfenstein)? Regarding the first question, as far as we can tell from the sparse description in the opinion, it doesn’t appear that there was a copy of the 1987 version of the Catalog introduced into evidence. Instead, we have the testimony of one witness as to what this Catalog described in 1987 (20 years before the trial took place). That’s not necessarily conclusive evidence to support a JMOL.

    Regarding the second question, as for as when the 1987 version of the Catalog was disseminated, we have is a vague statement by the one witness that he demoed the IDB2000 system in accordance with the Catalog “hundreds of times starting from late 1987.” That’s also not conclusive evidence that the Catalog was disseminated/accessible to the “target audience”, at least prior to the critical date of November 10, 1987, and is inconsistent with the position taken in the 2009 case of In re Lister where the Federal Circuit required more certain proof of the asserted “printed publication” being disseminated/accessible prior to the critical date to the “target audience.”

    What is truly disturbing to me is that this panel appears to usurp the role of the district court judge in determining whether this proffered testimony was sufficient to support a JMOL. In fact, this panel seems to make this quantum leap based on Orion not rebutting this witness testimony. So what? Isn’t it for the district court judge who was there when the testimony was given to evaluate whether he believed the witness or not? And if this judge was unwilling to grant a JMOL based on the testimony of one witness about what was described in a Catalog printed 20 years prior to the trial, isn’t that the district judge’s call, not the reviewing appellate court (i.e., Federal Circuit).

    Yes Dennis (and sorry Michael), I’m with you on this being a troubling analysis of the sufficiency of the evidence to support a JMOL.

  60. If the patent owner was an operating company instead of a notorious NPE would the outcome have been the same? If the panel had Newman and Mayer instead of Gajarsa and Linn would the outcome have been the same?

  61. When a printed publication is technical its teaching (which includes its suggestions)is, as you note, what it teaches to a person of ordinary skill in that art. How can that POSITA understanding be proven other than by expert testimony? Especially since KSR made it clear that a POSITA is not a robot, and would use common sense, etc.?
    Yes, perhaps technically this should have been a 103 rather than a 102 appeal to avoid your concern and get the same result. However, CAFC panels are often more interested in getting just results in deterring recoveries on invalid patents, especially broadly claimed business methods, than technicalities.
    No doubt the patent owners have already made more than ample recoveries from all the other defendants who chose to pay to escape having to jump through multi-million dollar jury trials and appeals to get a more serious prfessional review of the prior art versus the claims. If the PTO would conduct reexaminations as rapidly as their statute intended they would not be put into that Hobsons Choice.

  62. “However, Hyundai presented oral testimony that a very similar brochure had been distributed earlier.”

    Sounds clear and convincing to me…

  63. I’m sorry to disagree with you Dennis. I agree that there’s a lot of talk about public use, but I think it is there to corroborate the finding that the publication disclosed all steps to someone with skill in the art. The key testimony they point to makes clear that the use simply shows what the document taught:

    “This shopping list, he explained, constituted the last step in the IDB2000 system, as described in step 9 of the Electronic Parts Catalog reference.”

    “Also, former Reynolds & Reynolds manager, Stephen Otto, showed the jury the Electronic Parts Catalog reference depicting direct customer interaction.
    Q: And would you describe the picture that’s in the upper right-hand corner.
    A: That’s a picture representing a parts counterperson interacting with the consumer to identify parts.
    Q: And it looks like both the customer and the counterperson are looking at a monitor?
    A: Yes.”

    In the face of a dispute that the catalog did not, in fact, teach the “proposal,” I think testimony explaining that everyone knew what the document said because the system did the same thing is just fine as corroborating evidence of the document’s meaning.

  64. I’m always amazed by would be patent applicants who fail to believe the concept that A+B+C anticipates the A+B that they invented.

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