Circuit Check v. QXQ, Inc.: Analogous Art Doctrine

By Jason Rantanen

Circuit Check Inc. v. QXQ Inc. (Fed. Cir. 2015) Download Opinion
Panel: Louie, Dyk, Moore (author)

Although it shows up only occasionally in the Federal Circuit’s opinions, the analogous arts doctrine can play an important role in structuring and limiting obviousness determinations.  Here, it is a key component of the Federal Circuit’s reversal of the district judge’s grant of Judgment as a Matter of Law that the patents-in-suit were obvious.  An important limitation of this decision, of course, is that the consequence is to reinstate the jury verdict that the patent was not obvious.  Put another way, although the Federal Circuit uses the analogous arts doctrine to restrict the scope of obviousness here, the procedural posture of its review maintains   some degree of indeterminacy.

While obviousness determinations often invoke the hypothetical person having ordinary skill in the art sitting at a lab bench on which is arrayed every existing prior art reference, the analogous art doctrine functions to limit those references.   The basic elements are well established:

To be considered within the prior art for purposes of the obviousness analysis, a
reference must be analogous. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). Whether a reference is analogous art is a question of fact. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve. Id.

Here, there was no question that “the disputed prior art—rock carvings, engraved signage, and Prussian Blue—is not part of the field of circuit board testers and test figures.”  Slip Op. at 6.  Thus, the issue was whether the prior art “is reasonably pertinent to the particular problem solved by the inventor.”  The Federal Circuit concluded that a reasonable jury could  have found that it was not:

Although “familiar items may have obvious uses beyond their primary purposes,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007), a reference is only reasonably pertinent when it “logically would have commended itself to an inventor’s attention in considering his problem,” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The jury heard testimony that a person of ordinary skill in the art would not have thought about rock carvings, engraved signage, or Prussian Blue in considering how to mark interface plates. J.A. 1387–88, 1397, 1430–32, 1434, 1443–44, 1447. The jury was entitled to weigh this testimony, find that an ordinarily skilled artisan would not find that the disputed prior art “logically would have commended itself to an inventor’s attention,” and thus find the disputed prior art not analogous. See In re Clay, 966 F.2d at 659.

The district judge’s opinion also referenced the idea of keying a car, noting that “any vandal who has ‘keyed’ a car knows that stripping the paint with a key will result in
the underlying metal color showing through.”  Slip Op. at 4 (quoting district court).  But

Just because keying a car, for example, is within the common knowledge of humankind does not mean that keying a car is analogous art. An alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method. The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand. Here, Circuit Check put forward evidence that an inventor would not have considered the disputed prior art when trying to improve marking. It is not hard to arrive at that conclusion. Even though an inventor may be aware of rock carvings, it is not surprising that the inventor would not have looked to rock carvings to improve the process of painting small dots on interface plates for expensive circuit board testers. And, even though an inventor may work in an office with engraved signage, the inventor would not necessarily have considered using the techniques disclosed in engraved signage to solve the problem of marking circuit board tester interface plates.

The Federal Circuit also found substantial evidence to support the jury’s presumed finding of substantial differences between the prior art and the claims, and in support that objective considerations support nonobviousness.

60 thoughts on “Circuit Check v. QXQ, Inc.: Analogous Art Doctrine

  1. 8

    Sometimes there’s a man, and I won’t say a “hero,” ‘cause what’s a hero? But sometimes there’s a man, an’ he’s the man for his time and place. He fits right in there. And I’m talkin’ about the Dude, here, in Los Angeles.

    Or, the Stranger could have been talking about the USDC judge in WI that botched this case. He fits right in there with most of the other 700 federal judges who have no business judging patent cases. But Moore, Lourie, and Dyk got this case absolutely right. Even though Moore did note for the record that the court had some doubts about the patents at issue, they got the law right.

    According to Moore, here’s what the USDC judge found when overturning the jury verdict:

    1. QXQ (the defendant) did not cite examples of prior art in the applicable field.

    2. There was no “nuance” discussion about the level of ordinary skill in the field.

    3. Any layman could have made the invention upon reading the three references in dispute.

    4. It made no difference that QXQ presented no evidence that additional limitations of dependent claims would have been obvious, the limitations were too “trivial to support nonobviousness.”

    And, of course, there was the brainded comment about keying a car, which Jason provides above. That in-and-of-itself was enough to establish that this judge does not have what it takes to be judging patent cases. Here’s the way Moore put it – she doesn’t tend to cuss like I do, at least not in her opinions:

    Just because keying a car, for instance, is within the common knowledge of humankind does not mean that keying a car is analogous art. An alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method.

    That is not news. That is not judicial activism. Part of the kick in inventing is to see an invention in something everybody else has been staring at for years. Just because information exists doesn’t make it PA in any particular case, as a number of folks here seem to think.

    And as for the DC judge overturning the jury verdict on the dependent claims by looking at individual “trivial” limitations and concluding that those “trivial” limitations rendered the claims obvious, Moore noted her disapproval of the judge shifting the burden to the patentee to prove the validity of an allowed patent claim.

    Anybody who doesn’t know that would not get past the PTO bar exam, and yet these people are appointed to USDCs and make a mess of the patent system, day in, day out. One botched case at a time.

    My point is this: The country is full of federal judges like this one who have no business sitting on patent cases. There are hundreds of them across the country – maybe all of them. Some are on the CAFC, and some are on the USCCt. And we wonder why the system is such a mess.

    Abide, man.

    1. 8.1

      Great comment, especially noting that much of invention is created from well known elements that are in plain view. Others can say what they will about the TSM test, but at least it was an ethos.

    2. 8.2

      Just because information exists doesn’t make it PA in any particular case

      That depends very much on what outcome the judge is looking for. Again: it’s fascinating to see how readily this quintessential example of “judicial activism” is gleefully gulped down by the same crew who insists upon strict, mindless adherence to “the statute” whenever their favorite junk claims are tanked.

      The teaching in the prior art is relevant for all purposes. Here the prior art was relevant to show that engraving as a form of marking was old and well understood.

      Had this brilliant jury not found the claims non-obvious (LOL), these claims would be dead and the CAFC would just have issued another Rule 36 affirmance.

      Going forward, the patentee here will very likely have little luck “monetizing” these claims against another defendant (assuming anyone else actually uses the claimed method — anyone have any idea?) given that the roadmap for invalidating the claims is now plainly drawn.

      Moore: Just because keying a car, for instance, is within the common knowledge of humankind does not mean that keying a car is analogous art.

      In fact, marking a car by engraving it is exactly analagous to marking any other engravable object by engraving that object. If there is teaching in the art that the object can not be engraved, that’s another question. Was there such teaching in the art here? Moore doesn’t point to any.

      Gee, I wonder why.

      An alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method.

      That’s nice. But here we’re talking about marking an object by engraving it, which is exactly the type of marking that is recited in the claims. All that’s new in the claim is the identify of the object being so marked. The issue isn’t whether “marking by engraving” is “analogous art” — of course it’s analogous and Moore can do backflips all day long and we can all cheer her dexterity. Yay! The issue was (and remains) whether there was teaching away in the art with respect to marking by engraving this particular object and/or whether there are unexpected results flowing from the claim.

      1. 8.2.1

        That depends very much on what outcome the judge is looking for.

        Absolutely the wrong way to apply statutory law.

        But then again, you already knew that, didn’t you?

        The teaching in the prior art is relevant for all purposes.

        As far as that goes- yes, of course. What you fail to include though is the difference of the world of prior art for 102 purposes and the world of art for 103 purposes.

        We both know why you omit that (inconvenient) detail. That pesky thing about addessing all of the claim elements and all (well, at least those not in front of that “magical” “Gist/Abstract” sword that can cleave away claim elements as if they were never, well, claimed).

        In fact, marking a car by engraving…

        Gee, that is exactly the same logic as “in fact, configuring anything by arranging electrons, protons, and neutrons…

        Lastly, you over-emphasize (and thus wrongly apply) the teaching away as some sort of only option. Hmmm, yet another instance where things of option under the law do confuse your understanding of the law.

        Maybe less ranting from you and more basic study of patent law….

      2. 8.2.2

        What are you spewing, Moonbeams? The invention was not engraving. It was applying two layers of color and removing the outer layer around the holes to be used or avoided. CAFC sh-canned the engraving PA b/c it was non-analogous.

        It’s really not all that complicated that you shouldn’t be able to get it. Read the case, dude, then spew.

        1. 8.2.2.1

          Babs,

          This is the same guy that thought it was perfectly reasonable to construe the term “laminate” so as to include the layers of his eyes, which have been clenched tight for so long now…

          Asking him to read the case is not enough.

          You would also need to ask him to BOTH understand the case AND put aside his short script.

          After all, Malcolm is also the guy who volunteered an admission as to knowing and understanding the exceptions to the judicial doctrine of written matter, and yet he spews constantly in pretending that the law is something else.

        2. 8.2.2.2

          The invention was not engraving. It was applying two layers of color and removing the outer layer around the holes to be used

          Try to believe it, folks.

        3. 8.2.2.3

          BB: CAFC sh-canned the engraving PA b/c it was non-analogous.

          Again: “non-analogous” is g0bbledyg00k. The prior art taught what it taught: engraving, i.e., removing a layer to create a marking. The PHOSITA was aware of that art.

          If the citing of that art (and other art) wasn’t enough for some reason, then those reasons should have been articulated in the context of the other “judicial activist” rules created to make it easier for patentees to defend their claims as non-obviousness. Maybe it was the defense team’s fault here for not finding closer art or making better arguments. But “non-analogous” art isn’t the problem. It pretty much never is.

          1. 8.2.2.3.1

            And yet again Malcolm dives into FAIL by not recognizing the different worlds of prior art between 102 and 103.

            This is NOT “judicial activist” rules.

            If you don’t know this patent basics, why the H are you commenting here?

              1. 8.2.2.3.1.1.1

                Ah yes, the return of the vap1d short script meaningless response.

                Prof. Crouch must be just so proud of you.

      3. 8.2.3

        Like nobody in the electronics art ever engraved anything with a Dremel. Sheesh. Is there anyone over age 60 left in the world?

  2. 7

    Following up on PatentBob’s comment below:
    Preamble carries patentable weight, see MPEP 2111.02 and July 2015 Update to subject matter eligibility examination guidelines, example 23 (GUI for relocating obscured textual information – the difference between claim 2 & 3) – when a limitation refers to items in the preamble, such a limitation gives “life, meaning and vitality” to the preamble, and therefore, the preamble is construed to further limit the claim.

    In this case:
    A method of identifyingspecific holes in a non circuit board interface guiding plate said plate intended to receive contact pins to pass through said specific holes, the method comprising

    a) making a probe plate having first and second determined colorants the first colorant atop the second at least surrounding each of said holes;
    b) removing the first colorant generally circumferentially around selected holes which are to be left populated or conversely unpopulated with pins, so that holes can be distinguished from each other;
    c) populating as a group either the selected or unselected holes with pins; and
    d) visually verifying that holes which are to be populated with pins are present in the appropriate holes and absent in all others as determined by the presence or absence of colorant.

    So proceeding to the 101 analysis:
    Step 1: Process – method steps (within 4 categories)
    Step 2A: Abstract idea – identify which holes will receive pins

    Step 2B – Part 1 – Each limitation by itself:
    As you noted above, a) is merely a well-understood and conventional activity (I would include “in the art” but that has no place in the analysis, we don’t need to do an analogous art determination [because we don’t need to figure out what a POSITA would understand] – at best it means before priority, but I am not even sure about that)

    [Obviously simplified because the next few claim elements invoke the colorization of step a) but that IS how this game works]

    b)-c) is selecting, marking, and populating the said holes – grab a 3-year old, a set of different shaped objects, and the associated peg-holes. Wait to see if even they can figure out the well-understood and conventional activity.

    Is this were Flook fails and Diehr is okay? Flook said determining (could be construed to mean data only from computer – but eventually, ya know, the chemical process properties do have to be determined – they aren’t just pulled from the ether) whereas Diehr was actively sampling the thermocouple (analog sensing device). What sort of substantial difference is that? It’s a drafting difference. And yes, MM, information per se is not patentable. I am not looking at that. My point being that physical limitations don’t save you – yes, lots of cases talk about standard computer systems and processes but it applies to ALL fields of technology. Ask the biotech and pharma patent attorneys. I guess rephrased: a computer doing computer things or DNA replication carries no eligible weight; there is nothing stopping an examiner or a judge from saying well the policy is conventional and well-understood, therefore standard optic elements, mechanical linkages, and fasteners all get relegated to insignificant weight in the 101 analysis

    d) is checking your work – everyone does that (whichmeans it well-understood and conventional in ANY art)

    Okay – so each element individually is well-understood and conventional activity.

    So 2B, part 2 – the standardless “ordered combination test”:
    By what metric do I determine “as an ordered combination”?

    Is this where I argue an inventive application? What substantive test do I apply? Is it novelty? Is it utility? Is it something in the ether? ?Do I try to patent something, and hope the judge thinks my combination, as an ordered combination, satisfies the test?

    How about I just keep the idea a trade secret – the hell with spending money and disclosure.

    Lastly: The rule that information is unpatentable as such is completely agreeable and proper. I agree with it. The idea that information that is processed with the conventional (computers, doing computer things) is unpatentable as such IS what I take issue with. An application of the unpatentable idea necessarily must take shape in some physical feature. It is for Congress to decide that IDEA + COMPUTER is not enough. In the meantime, we all must walk about with the legal fiction that idea + computer is still = idea. Moreover, for Ned, going to back to the Supreme Court classics (pre 1940’s) actually supports the idea that all one must do to get past the threshold-101 is append the conventional. As is often admonished, read the classics. For example, Neilson v. Harford (the hot blast cases) started a line of cases on both sides of the Atlantic, which we followed for a hundred until 1948 in Funk Brothers and in 1978 in Flook, when we diverged from the simple premise: to be patent eligible you must at least include the application of __ (abstract idea, discovered natural product or principle). Constraining the invention to the application (which merely required the conventional) did not cause problems.

    1. 7.1

      The “Gist/Abstract” sword cleaves away all of those pesky things like claim elements and gets to what (some black robes individual) thinks that your claim “is really to” – never mind that Congress already dictated what that was (the claim – duh – as a whole).

      But following Congress cuts out the power-addicted Justices, don’t you know?

    2. 7.2

      patentbob2 there is nothing stopping an examiner or a judge from saying well the policy is conventional and well-understood

      That’s false (but keep saying it! repeating b.s. like that has been working so great for you guys so far!). In fact, the nature of the elements recited in the claim routinely stop examiners and judges from saying that the recited limitations are “conventional and well-understood.” The strongest patents, for instance, invariably recite new physical structure in objective structural terms, and those new physical structures yield unexpected improvement relative to the structures disclosed in the prior art. Welcome to Patenting for Grown-Ups!

      An application of the unpatentable idea necessarily must take shape in some physical feature.

      That’s not true of a mental process, unless the “physical feature” is some neuronal wiring (and that’s never described in the claim — not that it would make a difference).

      It is for Congress to decide that IDEA + COMPUTER is not enough.

      Or a judge can use common sense and reason to get there. [shrugs] Say, s0ckie, can you show everyone where you railed against judges deciding that “old kit plus new instructions is not enough”? Or “old book plus new idea is not enough”? Because you’re really principled about this “it’s for Congress” business. Right? Sure you are.

      1. 7.2.1

        Your mere declaration of “that’s false” is itself patently false.

        The Court did NOT give any limits to its “Gist/Abstract” sword. Instead of the Red Queen style of mere assertion, why don’t you do the (gasp) legal argument move of making (gasp) a legal argument complete with citation?

        Don’t worry, we can pause the “I-only-post-two-hours-a-week” clock for you to go and do some basic legal legwork.

        1. 7.2.1.1

          a legal argument complete with citation

          Because “anon” is all about the “legal argument with citations.”

          ROTFLMAO

          Pull your head out your behind and maybe you’ll make some progress, “anon.” Or you can just keep pounding sand and get even crazier than you already now. More laughs for everyone. Your call.

    3. 7.3

      PatentBob2, re: Nielson, the rule is that the abstract idea must be applied to produce a new or improved physical result. That certainly was the case with the heated box in Nielson. It is not true when a computer calculates the improved number.

      Regarding abstract: the courts clearly are using the term to apply to non statutory subject matter such as information processing of any kind. See, Bilski. Second, the courts are using it when the novel subject matter in the claim is effectively claiming a result, as in Rubber-Tip Pencil.

      Thus, when one is dealing with otherwise statutory subject matter, such as the claim in this case, one first must determine what is new, what is the invention? One cannot simply pick anything one wants from the claim and call that the abstract idea.

      1. 7.3.1

        The invention is the claim as a whole – just like Congress said it was.

        That really wasn’t that difficult, was it Ned?

      2. 7.3.2

        One cannot simply pick anything one wants from the claim and call that the abstract idea.

        Why not?

        I mean, besides the obvious.

        Do you have a cite from Alice or Prometheus or Bilski to back you up?

        What’s that? Did you say that the Court refused to define “abstract”…?

        Can’t hear you Ned. How can you tell me with a straight face what can or cannot be done with a term for which the Court refused to define?

        Face it – the “Gist/Abstract” sword was handed down without limits. With all due respect, who the F are you to say what the limits are?

        1. 7.3.2.1

          Anon, since forever, the courts have been focus on the “invention,” and that means, what is new in the claim.

          You guys are poking fun where the joke is on you.

          1. 7.3.2.1.1

            Ned – the joke is on you – patent law is statutory law and NOT meant to be written by the Court.

            Congress is the branch sanctioned by the constitution to write that statutory law and Congress is the one that has defined invention as the claim as a whole.

            You really do have a hard time with that concept…
            You keep on wanting to pretend that 1952 and the stripping from the Court the common law tool of defining invention did not happen.

            It did.

            When you want to be inte11ectually honest and join a real dialogue on the merits, let me know. T he law as actually written by Congress in 1952 will still be here. The Supreme Court are not above the constitution.

            By the way, have you checked your attorney’s oath lately? – Be so kind, check it and print it here. Are you willing to do that? Let me know why you would choose not to.

  3. 6

    Not to dispute the actual decision on those facts, but since the controlling authority on this legal issue of non-analogous art (as well as 103 in general) is the Sup. Ct. KSR decision [not their own prior decisions] I find it surprising that they so very briefly cited, and did not further discuss, KSR?

    1. 6.1

      Paul, good question, that about KSR. Do you think the decision at bar is in conflict with KSR in any way? (I thought the remarks about being “inventor problem centric was a bit off the mark from KSR.)

    2. 6.2

      One of the problems with KSR is that it contains many sweeping statements which can be taken out of the context of the facts of the case. There, the prior art was related to either pedal mechanisms or sensors (e.g., rotary shaft encoders) which had also been used specifically in cars and trucks one way or another. It is hard to dispute that these are analogous art as defined in this case. However, you are right; I wish this had been pointed out.

    3. 6.3

      The Fed Cir often does this and it’s disconcerting. Especially when it’s so clear that KSR displaced their caselaw, see Plas-Pak Indus v Sulzer Mixpac (Fed. Cir. 2015).

      “Where “a patent claims a
      structure already known in the prior art that is altered by
      the mere substitution of one element for another known in
      the field, the combination must do more than yield predictable
      results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
      398, 416 (2007). However, combinations that change the
      “basic principles under which the [prior art] was designed
      to operate,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or
      that render the prior art “inoperable for its intended
      purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
      1984), may fail to support a conclusion of obviousness.”

      Way to quote KSR directly on point and then override it with your own pre-KSR caselaw.

        1. 6.3.1.1

          Random, when is something a “mere” substitution and when is it not?

          The cite as a whole is plain as paint, Ned.

          Where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). However, combinations that change the “basic principles under which the [prior art] was designed to operate,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or that render the prior art “inoperable for its intended purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to support a conclusion of obviousness.”

          If you’ve got a specific example in mind where you are having difficulty applying the cite, just show it to everyone (along with a description of all the relevant prior art).

          1. 6.3.1.1.1

            MM, I agree here with the passage. I think it was Random that was having a problem with the caveats.

  4. 5

    In other CAFC news, Newegg was deemed a “prevailing party” for fee shifting purposes in a case where the patent troll dismissed its case against Newegg with prejudice and a covenent not-to-sue, but before any claim construction or resolution of summary judgment motions.

    link to arstechnica.com

  5. 4

    Analogous Art – More CAFC Mumbo Jumbo

    1. “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993).”

    Therefore, in obviousness determinations, prior art equals analogous art and analogous art equals prior art.

    2. “Whether a reference is analogous art is a question of fact. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).”

    Therefore, analogous art is a determination to be made by the jury according to clear and convincing evidence.

    3. “Prior art is analogous if it is from the same field of endeavor…”

    Not according to assertion number 1 above.

    3. “or if it is reasonably pertinent to the particular problem the inventor is trying to solve. Id.”

    Not according to the PHOSITA standard for determining prior art.

    Conclusion: Doesn’t matter what these idiotic CAFC cases say. This is just double-speaking blather and the “analogous arts” doctrine is an emperor without clothes.

    1. 4.1

      This is just double-speaking blather and the “analogous arts” doctrine is an emperor without clothes.

      No doubt. But as long as it regularly used to uphold the validity of otherwise obvious patents, the super dooper “principled” people who rail endlessly about “judicial activism” are never going to make a peep about it. Go figure.

      1. 4.1.1

        Go figure indeed – that you are misrepresenting what is Congress and what is “activism.”

        The world of prior art for 102 has ALWAYS been different than the world of prior art for 103.

        You really should know that basic fact of patent law.

        1. 4.1.1.1

          To establish unexpected results, patent owner must compare its invention with the closest prior art. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

          1. 4.1.1.1.1

            Thanks OIoAAN,

            Does not address my point that the world of prior art for 102 purposes has never been the same world of prior art for 103 purposes, but I have no quarrel with your addition.

            1. 4.1.1.1.1.1

              To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354 (Fed. Cir. 1998).

              single = closest

              1. 4.1.1.1.1.1.1

                Now I do have an issue, as you are stretching things out of context.

                Here, the “single” does not in fact carry the “identity” function you wish to implicate.

    1. 3.1

      Haven’t read the case, but nothing in Jason’s summary of the case bothers me. I’ve said all along that the question is whether a combination makes sense to the person of skill in the art. I think the issue in the other thread was about whether different classifications indicate non-analogous references. I still say that that is really weak evidence.

      I’ll have to read the case, if for nothing else but to find out what “keying a car” could possibly have to do with circuit board testers.

      1. 3.1.1

        Thanks for the clarification. If I recall, your previous comment was a bit broader – as to the doctrine itself.

  6. 2

    Without getting into the rightness or wrongness of the jury’s finding or why it turned out the way it did (probably one of the testifying experts looked or acted more “authoritative”), the cited references were surely chosen by the defendant not because “one skilled in the art would have looked to them for guidance” but to illustrate the fact that the idea of engraving an object for the purpose of marking it was in the prior art and well-understood. And of course the answer is: yes.

    The real issue here and the issue that made all the difference was whether this method yielded unexpected results. The patentee’s argument was that the skilled artisan would have expected the claimed engraving method to create gunk that would render the process less useful and desirely but (allegedly) it doesn’t. Query whether the alleged surprising clean-ness of the process requires unclaimed steps, or whether anyone (including the defendant) prefers this method …

    1. 2.1

      MM, I agree. I don’t think the issue was how to mark something using two layers having different colors and then scratching off a top layer. That clearly was known and was within the skill in the art.

      The question rather is why anyone would employ this method here — to mark a plate in a circuit board environment? Further, what was the improvement, as you say, focusing on unexpected results. Why was this method an improvement of the prior methods, and what problems did it solve.

    2. 2.2

      Query whether the alleged surprising clean-ness of the process requires unclaimed steps

      In fact, I seem to recall from the oral arguments that the “trick” to making the process work cleanly was to choose the right kind of paint — something that the patentee asserted was within the skilled artisan’s abilities (and which wasn’t recited in the asserted claim). Go figure.

      1. 2.2.1

        What a nice case, as a template for testing the EPO way of handling obviousness. And what a nice discussion between MM and Ned, to set up the issue for further debate.

        So, does anybody know if there is an EP in the patent family? If anybody can supply it, the EP number please.

        Meanwhile, MM, Ned, I see that Moore J writes:

        “…would not have considered the disputed prior art
        when trying to improve marking….”

        Is she entitled to assume that the claimed subject matter really does do what she thinks it does, namely “improve” marking. From what you and Ned write, it doesn’t.

        Echoes of that other case explored recently in these columns. The one with the old sensor stack and the faster math (that wasn’t included in the claim). That claim failed, because the feature that made the patentable difference wasn’t in the claim. Same here, I should have thought.

        1. 2.2.1.1

          “So, does anybody know if there is an EP in the patent family? If anybody can supply it, the EP number please.”

          Are you not capable of going to espacenet and finding that out for yourself? And you’re a European practitioner?

          Lordy.

          There are no foreign equivalants of the 3 U.S. patents in the suit.

          1. 2.2.1.1.1

            I see that now. But you are right. One should be able oneself, to do all the things one otherwise, in the office, asks assistants to do. Especially those tasks that are, as you point out, so quick and easy.

            I’m just very old.

              1. 2.2.1.1.1.1.1

                Thanks. Duly posted to “Favourites”.

                Grandpa? If only I were one, young man, I might have acquired better computer skills by now.

                1. My dad is old.

                  He dislikes computers.

                  He would have checked something that could be checked though.

                  Don’t mistake laziness for old age.

  7. 1

    Let’s have fun with Alice! Here is claim 1 from 7,749,566:

    1. A method of identifying specific holes in a non circuit board interface guiding plate said plate intended to receive contact pins to pass through said specific holes, the method comprising a) making a probe plate having first and second determined colorants the first colorant atop the second at least surrounding each of said holes; b) removing the first colorant generally circumferentially around selected holes which are to be left populated or conversely unpopulated with pins, so that holes can be distinguished from each other; c) populating as a group either the selected or unselected holes with pins; and d) visually verifying that holes which are to be populated with pins are present in the appropriate holes and absent in all others as determined by the presence or absence of colorant.

    Let’s define the “abstract idea” as ” identifying specific holes in a non circuit board interface guiding plate said plate intended to receive contact pins to pass through said specific holes”. Once you do that, the rest of the claim limitations are merely limitations that implement the “abstract idea”. No computer system itself is improved and nothing is physically transformed from one state to another. Therefore, this claim is invalid.

    It seems to me that you can invalidate any claim that does not improve the operation of a computer (whatever that means) or that does not transform something from one state to another. You just have to wrap more into the “abstract idea”: the more you put here, the less can be used to provide the “something more”.

    1. 1.1

      Maybe instead of “having fun” with Alice, PB, you could tell everyone what your idea is for a reasonable test for evaluating the subject matter eligibility of “innovations” that are “on a computer”. If you don’t have one, then maybe just stop acting like you were born yesterday and you have no idea what Alice was about or, indeed, how any law is applied.

      the rest of the claim limitations are merely limitations that implement the “abstract idea”.

      That’s not the Alice test. The nature of the “rest of the limitations” is important. For example, limitations that require physical changes to materials that weren’t previously described are kind of important (as opposed to limitations that are themselves abstractions such as categorizing data as a “legal contract” or “a credit card number”).

      How you can continue to manage to misunderstand this basic stuff is a real mystery.

      1. 1.1.1

        How you can continue to manage to misunderstand this basic stuff is a real mystery.

        Oh, the irony….

        Tell me again (or rather for the very first time), how does [old box] come to have new capability if [old box] is in fact not changed with the addition of a machine component called software? Tell me using that proper legal argument of inherency.

        Yes, the usual short script nonsense is expected from you Malcolm – or silence; just not any inte11ectually honest attempt at a bona fide legal reply, like one might (should?) expect on America’s leading patent law source.

        Also won’t stop the drive-by monologue repeat of the same tired script item from you on pretty much each and every thread, no matter the actual topic of the thread, but hey, that’s how you “swagger,” isn’t it?

    2. 1.2

      Yes Bob –

      Don’t you see. The nonsense in Alice will only be applied to applications for patents that MM doesn’t like. So its ok. Don’t worry, be happy.

      1. 1.2.1

        Same question for you, Les:

        you could tell everyone what your idea is for a reasonable test for evaluating the subject matter eligibility of “innovations” that are “on a computer”. If you don’t have one, then maybe just stop acting like you were born yesterday and you have no idea what Alice was about or, indeed, how any law is applied.

        Oh right: if the claim says “machine” or “process” that’s the end of your analysis. Well, we all know that’s a non-starter so maybe you can tell everyone your fallback position.

        1. 1.2.1.1

          How much more do we need to put up with Malcolm’s nonsense?

          Clearly the other portion of 101 comes into play – utility.

          And yes, that means the utility covered by the Useful Arts – and yes, that means that Malcolm’s ad infinitum, ad nauesum attempts to dissemble with examples of non-Useful Arts are exactly the type of thing that makes the “ecosystem” here so very fragrant (that’s not in a good way).

          Seriously – any supposed attorney who attempts to make an argument based on examples from the non-Useful Arts is either:
          a) so excessively ignorant as to be not allowed to be sharing legal views, or
          b) so excessively dissembling (since notice has been nearly continuously given as to the impropriety of such “advocacy”; or
          c) both.

          Isn’t it about time to pick the low hanging fruit in an attempt to instill some minimal level of inte11ectual honesty here?

          101 was meant to be a wide open welcoming gate. It is beyond clear that philosophical/political forces have attempted to h1jack that gate.

    3. 1.3

      PatentBob, why did you choose the preamble to be the abstract idea?

      Second, why is identifying holes in a plate abstract?

      1. 1.3.1

        Kind of depends on the definition of “abstract,: eh Ned?

        Let’s play the Royal Nine game and tell you directly that we are just not going to define that.

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