ABT Systems and University of Central Florida v. Emerson Electric (Fed. Cir. 2015)
The patent at issue here is owned by UCF and covers a circulating fan system. U.S. Patent No. 5,547,017. Co-Plaintiff (licensee) ABT is the company started by Armin Rudd who is the named inventor on the ‘017 patent.
Prior art systems, such as the one in my house allow for the circulation fan to be left-on even when the air conditioning system is off in order to better distribute conditioned air. The improvement offered by Rudd is to turn on the fan only periodically “after a preselected time period.” That intermittent approach would save “energy and power.”
A jury found that Emmerson’s high-end “Big Blue” thermostats infringe and awarded $300,000 in damages based upon a royalty of $2.25 per unit. The jury also held that Emerson had failed to prove the claims invalid as obvious.
On appeal, the Federal Circuit has reversed – finding that the district court should have granted JMOL on obviousness.
Invalidating a Patent on Obviousness: The question of obviousness asks whether the “differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. 103(a)(pre-AIA). In KSR v. Teleflex, the Supreme Court held that a “combination of familiar elements according to known methods” that “yield[s] predictable results” is likely invalid as obvious.
Here, elements of the patented system were all known in the art as was the motivation of improving circulation at reduced cost. Likewise, one prior art reference disclosed a “single-shot” fan operation that came on one-time after a heating/cooling cycle and another disclosed period fan-only cycles at times when there was no call for heating. The question then is whether it would have been obvious to create the claimed system of periodically activating and deactivating the fan after a predetermined time following a cooling cycle. Applying KSR, the Federal Circuit found that the law requires an obviousness finding.
Commercial Success: ABT had also argued that the commercial success and long-felt need of the invention should provide enough weight to prove the invention nonobvious. Objective evidence of nonobviousness, such as commercial success, long-felt need, failure of others, copying, and unexpected results can each provide evidence for the analysis. On appeal, however, the Federal Circuit was not persuaded that ABT had proven its case. In particular, ABT did not present evidence particularly linking product commercial success to the claimed periodic fan operation. Likewise, there was no particular evidence presented that Emerson’s infringing product market was being driven in any way by the recycling feature. ABT does have a number of patent licensees that weigh in favor of nonobviousness. However, the Federal Circuit held that those licenses were insufficient to overcome the convincing case of obviousness coming from the prior art.
Holding: Patent Claims Obvious
This case demonstrates the likely insufficiency of a negative case for patentability under KSR (that is, merely arguing that the case for unpatentability is flawed, rather than presenting positive reasons as to why the claimed inventions is non-obvious).
It also demonstrates the typical futility of the commercial success rule. Not sure why they bothered raising it.
Why didn’t they just Alice it? Everything these days is invalid in view of Alice. I can write an equation that shows the cost savings through intermittent operation of the fan, and with pencil and paper I can write an algorithm to implement that intermittent operation, so the invention here must be an abstract idea, so no patent. Why do an obviousness analysis when you can club the thing to death with 101?
Dennis, your write-up is fine, but your title ““Rarity: Federal Circuit Reverses Jury Verdict of Non-Obviousness” may be a bit misleading for some readers. The “rarity” has more to do with the fact that Fed. Cir. appeals these days are primarily on issues of non-infringement, damages calculations, 101, etc. Of the relatively few cases where the Fed, Cir. appeal is primarily based on a disputed jury 103 validity finding, I believe you will find that a reversal is not that “rare” since KSR. Since the actual % is of considerable interest, could you provide it, or indicate a data source? E.g., can Professor Janicke provide this data from his long time University of Houston Law Center project?
There’s also a stream of cases where the district court judge has overturned the jury verdict of non-obviousness (finding the claims obvious as a matter of law) and the CAFC has affirmed that finding.
“Rarity” might have been sarcasm.
The defenders of junk like the “periodic control” patent that was tanked in this case are certainly endlessly amusing. But there is a more interesting case that came out today: Hyatt v. Lee, in which Li’l Gil “I Invented Everything” Hyatt gets the smackdown from the Federal Circuit. Folks who have been paying attention will find nothing new here. The petulant zillionaire’s cheerleaders are going to be disappointed, of course, when they discover that their heroic martyr’s cause is given short shrift by the Federal Circuit.
The PTO issued the Requirements because of Mr. Hyatt’s “unusually large number of duplicative and overlapping applications, with such a large number of redundant claims.” J.A. 236. With more than 115,000 total claims spread out among only 12 distinct specifications, each family of applications has an average of 9,583 pending claims. The asserted priority relationships between Mr. Hyatt’s applications are complex, with numerous overlapping applications. As the district court wrote, “[t]he Administrative Record confirms that the circumstances
of [Mr. Hyatt’s] patent applications and his prosecution history are extraordinary.” Hyatt, 2014 WL 2446176, at *6. These circumstances are not just special— they are unique. We are aware of no other applicant with the same volume of claims as Mr. Hyatt, where those claims were filed before June 8, 1995, and where any patent stemming from those claims will have a term of 17 years, beginning from the date of issuance of the patent. ….
Given the extraordinary number and duplicative nature of Mr. Hyatt’s various pending applications, all drawn from the same 12 specifications, it was reasonable for the PTO to be concerned that the claims did not “differ substantially from each other,” and that some claims were “unduly multiplied.” § 1.75(b). In fact, in the Requirements the PTO demonstrates that across these applications, Mr. Hyatt
has in numerous cases filed identical or nearly identical claims. This sort of redundant, repetitive claiming is inconsistent with § 1.75(b).
Just for the record, that behavior is 100% consistent with trying to be a toxic j erk just because you can afford to be one.
The PTO did not abuse its discretion when it found that the special circumstances of Mr. Hyatt’s situation justify the disclosure of the substance of many of Mr. Hyatt’s amendments to his applications. We also note that given the large number of claims at issue, the newly disclosed information is minimal; the
specifications have already been disclosed, as have the filing dates, the serial numbers, and the number of claims in Mr. Hyatt’s pending applications. The PTO did not simply publish the applications in their entirety.
And so the only question left is: how will Li’l Gil waste everyone’s time next? Maybe file a petition with the Supreme Court? That would be consistent with past behavior.
Reminds: when are the smart and reasonable people running the PTO going to create (or propose) some rules to prevent future Gil Hyatts from playing the same game or similar ones (i.e., dropping a massive gear-clogging wrench into the Office simply because it can get away with it)?
There’s many reasonable caps that can and should be put in place to prevent this type of agency harassment. The only people that benefit from the lack of such caps are the Hyatt’s of the world and thankfully there’s not too many of those that we need to worry about (yet).
They like those claims-heavy apps, up to a certain point, due to the large filing fees they receive. Examining duplicative claims is a chore but a cost-efficient one compared to the cost of excess claims.
“They” does not include examiners – they do not get any benefit from additional claim fees.
Do examiners even get any extra credit or reduced quotas for examining applications with large numbers of claims and/or complicated priority claims from multiple continuations, CIPS or divisionls? I doubt it.
Maybe the examiner’s union should know about that…
In practice, for an application with 100 claims you might be able to get an extra hour depending on the SPE. (Which is about 2-5% of a balanced disposal).
Here’s claim 1:
1. A fan recycling control apparatus for a central air conditioning(CAC) system comprising:
a circulating fan;
a central air conditioning system with ducts to distribute cooled and heated conditioned air throughout a building;
a thermostat for activating and deactivating both the central air conditioning system and the circulating fan; and
a recycle control for periodically activating and deactivating only the circulating fan after a preselected time period, since the central air conditioning system or the circulating fan have been deactivated.
Alice step 1: The claim is directed to the abstract idea of deciding whether to activate/deactivate a circulating fan.
Alice step 2: Something more? Are there any “meaningful limitations” here that “ensure that the claims do not preempt” the above-listed abstract idea? Nope! It’s all old stuff that everybody knows about (fans – ducts! – how friggin old are ducts!) plus a functionally-claimed “controller” that does obvious stuff.
Kaboom! Just blew up this patent. You’re welcome.
Step one:
Insert “directed to** abstract idea of” before ANY claim…
BOOM – any and all claims eliminated.
When the exception swallows the rule, you might want to think about whether the exception is justified.
**directed to – add this undefined and limitless phrase to the already undefined and limitless “Gist/Abstract” sword and nothing remains.
…and you want to be thanked…?
It’s all old stuff that everybody knows about (fans – ducts! – how friggin old are ducts!) plus a functionally-claimed “controller” that does obvious stuff.
Your Alice analysis is thin but you almost got the obviousness argument correct. What you seem to be intentionally ignoring is that all of the elements in this fan except for the “periodic control” were in the prior art as claimed. The only “innovation” here was to add the “control” which permittted the “predetermined” periodicity. Such controls, as everybody knows, were also in the prior art and have been for a long, long, long time.
Absolutely zero unexpected results. With facts like that, post-filing considerations such as “commercial success” must necessarily be given the absolute minimal weight.
So good riddance to this junk claim and kudos to the CAFC. What the heck was the jury thinking?
a recycle control for periodically activating and deactivating only the circulating fan after a preselected time period, since the central air conditioning system or the circulating fan have been deactivated.
Alice step 1: The claim is directed to the abstract idea of deciding whether to activate/deactivate a circulating fan.
It’s all old stuff…plus a functionally-claimed “controller”
Not sure whether you’re being facetious or not, but yep, that’s exactly all the analysis you need, and it’s the correct result.
Listen, this is a good idea and one really has to wonder why thermostat vendors did not offer this periodic mode before. That said, the claim just says “do it” without any new method or means for doing it disclosed or claimed. In a sense, this is the Rubber-Tip Pencil case all over again, but handled this time on a KSR basis where the means employed to carry out the idea were all well known.
Listen,…
You want Rubber-Tip to be 101 or 103…?
Better yet, do you realize why this is an important question?
The crux for me is the KSR quote – no synergy, no patent.
If it was obvious, why hadn’t it been done before?
Maybe no one recognized the problem before?
“[A] patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified. This is part of the ‘subject matter as a whole’ which should always be considered in determining the obviousness of an invention under 35 U.S.C. § 103.” In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969).
“In In re Sponnoble, the claim was directed to a plural compartment mixing vial wherein a center seal plug was placed between two compartments for temporarily isolating a liquid-containing compartment from a solids-containing compartment. The claim differed from the prior art in the selection of butyl rubber with a silicone coating as the plug material instead of natural rubber. The prior art recognized that leakage from the liquid to the solids compartment was a problem, and considered the problem to be a result of moisture passing around the center plug because of microscopic fissures inherently present in molded or blown glass. The court found the inventor discovered the cause of moisture transmission was through the center plug, and there was no teaching in the prior art which would suggest the necessity of selecting applicant’s plug material which was more impervious to liquids than the natural rubber plug of the prior art. “
If it was obvious, why hadn’t it been done before?
Are we back to this nonsense argument again?
Wow.
Let me know when you put away your nonsense arguments…
Les,
“If it was obvious, why hadn’t it been done before?”
Along the same lines. At page 18: “In our view, if, at the time of the invention claimed in the ’017 patent [US 5,547,017, filed Jan 5, 1995 ], a person of ordinary skill had looked at Vogelzang [2,953,908, issued Aug 20, 1966], he or she would have found it nearly obvious from that disclosure itself to set the periodic fan to run as a function of when the heating or cooling cycle ended.”
So “nearly obvious” that, 23 years later, Nakatsuno et al., US 5,020,332, priority date April 7, 1989 and assigned to Matsushita Electric no less, could not come up with an invention that anticipated this one.
The problem for the inventor, at page 18: “As pertinent here, ‘this form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.’” Translation: We can understand how to fit the pieces of the prior art puzzle together.
What is actually very rare is for secondary considerations to ever be persuasive, in spite of the lip service, see page 19 et seq.. There is never a nexus because commercial success is always due to some other factor than the invention. Also, apparently, the invention did not have enough market share. The lesson is to wait until you and your infringers (who count) have a commanding market share before filing suit.
President Lincoln’s famous praise for the patent laws as adding “the fuel of interest to the fire of genius, in the discovery and production of new and useful things,” applies much less under a KSR regime. The invention here was new and useful, but that’s not enough. The lesson here is, if you spot an “obvious” way to improve an existing mechanical device, team up with Big Co. and go for first mover advantage. Patents won’t help much.
Troubled: The problem for the inventor, at page 18: “As pertinent here, ‘this form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.’” Translation: We can understand how to fit the pieces of the prior art puzzle together.
Yup. No doubt.
Note that this reasoning applies equally well to functionally claimed logical processing steps because nothing on earth is simpler (even simple mechanical devices have a defined objective structure, at least, if they are properly claimed).
There are never “unexpected results” because, by definition, the claimed function-performing “device” (“controller”, “processor”, “module” etc) performs its function (e.g., “determining” something about something else, usually data). In addition, there are no moving parts recited and there is no reason for anyone to teach away from using logic that is, well, logical.
“and there is no reason for anyone to teach away from using logic that is, well, logical.”
Capt. Kirk and Dr. McCoy taught away from using logic in almost every third episode.
Capt. Kirk and Dr. McCoy taught away from using logic in almost every third episode.
Yes, when dealing with emotional creatures, as even Spock was inclined to admit. By way of contrast, Kirk repeatedly short-circuited dangerous machines (e.g., NOMAD and other robots) via the presentation of paradoxical “problems.”
You do realize that your comment works against you, right Malcolm?
your comment works against you
You really need to lighten up, Francis.
Not sure what “lighten up” has to do with anything, especially here where you just stepped in your own C R P.
Actually, that’s a pretty comic picture that happens a lot.
The “crux” is not the ends, but the means to those ends.
That is why the reasoning is so important.
That is why “chasing” Ned on his IMHO-law C R P curse-ades to highlight the judicial activism at the expense of the actual words of Congress – the branch of our government (the ONLY branch) – that has actual authority to write patent law, is so important.
This will entail some critical thinking.
(your blue raquetball example comes to mind)
No it doesn’t. It recites a recycle control for periodically activating and deactivating only the circulating fan after a preselected time period, since the central air conditioning system or the circulating fan have been deactivated.
One of ordinary skill in the art would understand that such a control comprises a timer and a relay, like the blinker in a car, only slower.
And that is without the spec.
With the spec we have:
Using FIG. 1, the recycle control delay time for the fan system of an entire residence would be set based on the room that is expected to have the smallest ratio of air volume to the number of occupants in the room. For example, if a masterbedroom has a volume of 1,600 cubic feet(ft.3) and two occupants, the volume to occupancy ratio would be 1,600/2=800. Using FIG. 1, a 1,600 ft.3 volume room holding two occupants would have a delay time of 0.5 hours or half an hour. Therefore, the selectable time delay on the fan recycle control should activate the fan only 1/2 hour after the last fan operation. If one person was in the room, the delay time would be approximately 1 hour. Consequently, if a maximum of three people were in the room, the delay time would be approximately 1/4 of an hour.
and:
FIG. 2 shows a first preferred embodiment of the air distribution recycling control system for a CAC system that will always energize the CAC system fan through the fan relay terminal when there is a call for heating, cooling or constant fan mode operation.
FIG. 3 shows a second preferred embodiment of the air distribution recycling control system for a CAC system that does not always energize the CAC system fan through the fan relay terminal on the CAC system terminal block when there is a call for heating or cooling modes.
FIG. 4 illustrates an algorithm for activating and deactivating the air distribution system fan recycling control by a microprocessor.
FIG. 5 illustrates an algorithm for providing the same function as the fan recycling control by a microprocessor control.
This case illustrates (albeit, indirectly) what a horrid state our caselaw is in. So, if you say “a recycle control for periodically activating and deactivating only the circulating fan after a preselected time period”, that’s OK. It’s an “apparatus”. But what if you say “a microprocessor configured to periodically activate and deactivate only the circulating fan after a preselected time period”? What’s the difference and why is the microprocessor “bad” but the “recycle control” good? And heaven forbid you say “means for periodically activating and deactivating only the circulating fan after a preselected time period”; then you must disclose an algorithm, even if every heating/cooling technician in the country could determine what that algorithm is.
Does this make sense to anyone?
It seems to me we have these artificial dividing lines that really do not change the fundamental invention: who cares whether this is done by a “recycle control” or a microprocessor or a means for performing a function? In reality, they’re all the same thing. It’s really nonsense.
PB: who cares whether this is done by a “recycle control” or a microprocessor or a means for performing a function?
Please at least try to use your brain, PB. This has been explained to you dozens of times.
Sometimes it doesn’t matter (because the information processing functionality confered by the microprocessor is known in the prior art but was applied in a different context). Sometimes it does matter (and 101 is necessary to tank the claim) because the information processing functionality was not described in the prior art (e.g., “determining whether X is Y” where Y is some recently discovered or developed object, almost always in the prior art but too “fresh” to be an extensively discussed subject of the literature).
This is basic stuff. Like I said: learn to use your brain.
Your version of “explain” doesn’t.
PB: whether this is done by a “recycle control” or a microprocessor or a means for performing a function? In reality, they’re all the same thing.
In reality, it depends (among other things) on whether you’ve invoked 112P6 and you actually have a corresponding new, non-obvious structure described in objective structural terms in your specification.
This is important. You should know this. It’s been explained to you before.
The canard has now moved to the specification…
I guess that means something.
Ned: one really has to wonder why thermostat vendors did not offer this periodic mode before
Perhaps because people were perfectly content to simply leave the circulating fans on when the central air was deactivated.
As everyone knows: predetermind activation/deactivation control has been available for pretty much every electrically powered device for a long, long, long time. Such controllers are really, really old. They do what they do.
Perhaps because people were perfectly content to simply leave the circulating fans on when the central air was deactivated.
Or because the fans themselves were under control of a thermostat which adequately performed the desired duty (and the thermostates themselves could, of course, be turned on or off manually, or they could be “programmed” to turn on and off at predetermined times like the thermostats in the prior art).
Lack of demand?
I don’t have a programmable controller, but I wonder if even these have this feature today.
I don’t have a programmable controller
When I moved into my house 26 years ago it had a programmable thermostat where you could set not only the temperature but the times during which the thermostate was one or off. Pretty sure it had a separate control for the fan as well. And it wasn’t new fangled then.
But that house didn’t have “central air” (as if that matters for the purposes of the claim here). But it did have a fireplace and 8 windows in the dining room, including some with stained glass — hey, I just got an awesome idea for a patent claim. ;P
Yep, they do. I paid $300 apiece for top of the line HP thermostats (very nice! Touch screen, links to my phone, programmable up to 4 periods per day, with 7 day settings). You’re just not seeing it as ‘cycle fan’, it’s called ‘circulation’ mode and randomly turns the fan on when the AC or Heat is not in use (about 35% of the time) to keep the air circulating.
turns the fan on … to keep the air circulating.
Imagine that. 😉
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