Wyers v. Master Lock

Is "obviousness" a question of law or fact?  The rote answer is that it's both: it's a question of law based on underlying findings of fact.  Drawing that line, however, can be tricky, especially when the jury issues a general verdict.  In addition to addressing this issue, the case discussed below is also noteworthy due to its commentary on KSR on the subject of  motivation to combine. 

Wyers v. Master Lock Co.
(Fed. Cir. July 22, 2010)
Wyers involved three patents relating to trailer hitch locks.  Trailer hitch locks are mechanisms used to secure trailers to towing vehicles.  It was undisputed that the prior art disclosed the use of dumbbell-shaped locks for this purpose, so the case turned on the the patentee's modifications to these types of locks.  The following images illustrate the prior art:

Wyers 1 Wyers 2

Wyers' patents claimed dumbbell-shaped locks with two additional elements: a series of sleeves that could be placed over the center section (the "shank") in order to increase its diameter, and an external seal designed to keep dirt out of the locking mechanism.  The only issue before the jury was whether it was obvious to add these two elements to the prior art locks.

The jury concluded that it was not, and issued a general verdict of nonobviousness. After the district court denied Master Lock's motion for Judgment as a Matter of Law, Master Lock appealed. 

Opinion of the Court
Drawing heavily on KSR, the Federal Circuit concluded that the patents were obvious as a matter of law.  The court considered each of the factual questions before it: whether the art was analogous, whether there was sufficient motivation to combine the reference, and the secondary considerations of nonobvious, and concluded that none favored the patentee.

In reaching this conclusion, the Federal Circuit gave no deference to the jury.  On each issue of fact, the panel found that no evidence supported nonobviousness.  For example, when addressing the issue of whether the prior art was analogous, the court reasoned that it was "clearly within the same field of endeavor as the sleeve patents," and was pertinent as a matter of law.

Particularly interesting, however, were the panel's views on motivation to combine.  While recognizing this as an important aspect of the obviousness inquiry, the panel applied the "common sense" approach outlined in KSR:

"We conclude that it was a matter of common sense to combine the Down patent with the prior art barbell locks in order to arrive at the invention claimed in the ’115 and ’426 patents, and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so."

Slip Op. at 23. Furthermore, "where all the limitations of the patent were present in the prior art references, and the invention was addressed to a 'known problem,' 'KSR … compels the grant of summary judgment ofobviousness.'"  Id. at 17.  Such an approach is particularly appropriate when the technology is "easily understandable." 

Finally, on the issue of secondary considerations, the court concluded that, even if Wyers had established the requisite nexus, it would have been insufficient:

Moreover, secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness.

Slip Op. at 28

Concurrence
Judge Linn concurred with the opinion, but wrote separately to warn parties of the dangers of general verdicts.  He noted that although the law permits general verdicts, verdicts involving special interrogatories are encouraged in the obviousness context due to the mixed question of law and fact.  He further noted that, while the court must presume that the jury resolved the underlying factual disputes in favor of the verdict winner when there are no special interrogatories,

"[b]ecause there is no way to determine from a general verdict on obviousness the specific findings of fact made by a jury on the factual questions underlying its verdict, the court in examining the first part of the obviousness question is left to infer whether substantial evidence existed from which the jury could have made the factual findings necessary to support the verdict. Here, the majority examined the record and after considering the factual inferences concluded that support was lacking and that the claims at issue would have been obvious as a matter of law."

Slip op., concurrence at 4-5.  In other words, when a general verdict is give, the Federal Circuit has to attempt to reconstruct the underlying findings of fact.  Here, it could not discern anything that might reasonably have been in dispute, and thus judgment as a matter of law was appropriate. 

169 thoughts on “Wyers v. Master Lock

  1. 169

    “Judge Linn concurred with the opinion, but wrote separately to warn parties of the dangers of general verdicts.”

    The judge pays a lip service and then supports the decision based on the same hindsight bias…this is ridiculous…

  2. 167

    How can I ever forget that I am posting to an American blog, ping? I do it deliberately, because this blog is more lively than any I know in Europe.

    Why am I not surprised that you engage in deliberate ignorance?

    Keep the chuckles coming Sunshine.

  3. 166

    Blimey: a Blimey with “continental ways”. How many of them do you know, ping? Are you alluding to the presence or absence of a doctrine of Binding Precedent, and the clever lawyering that doctrine tends to encourage?

    How can I ever forget that I am posting to an American blog, ping? I do it deliberately, because this blog is more lively than any I know in Europe.

    You are perfectly free not to care one jot or tittle about my pet aversions. I am just as free, in Europe, to care just as little for yours.

    Readers, above I resorted to the expression “clever lawyering”. It seems to have upset ping. I had thought the expression had a taint of the derogatory about it. ping’s irritation seems to confirm it. But does it?

  4. 165

    Maxie,

    What a Blimey – the daft comment is in reagrds to your continental ways and forgetting that you were posting to an American blog.

    I care not what your particular aversions may be.

  5. 164

    Be that as it may, ping, I think that “clever lawyering” has an adverse effect on public respect for the law. My aversion to it increases with the elevation of the legal expert who resorts to it. If that be “daft”, so be it.

  6. 163

    In that sentence, with “They”, I was of course referring to the judges, not the advocates. Judges are also lawyers, are they not?

    Not in their role as judges you daft Blimey.

  7. 161

    Allow me to copy from my previous comment about this case in another thread. From the decision:

    “The unambiguous language of the asserted claims, as well as the disclosure in the specification, requires an added spring element that moves the safety guard toward the tip of the needle.”

    Furthermore, if the hinged arm and spring means are not separate structures, then the asserted claims are clearly invalid as obvious over the prior art. See Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712 (Fed. Cir. 1990) (”[C]laims are generally construed so as to sustain their validity, if possible.”).

    That’s some truly horrifying dicta … at least I hope it’s dicta.

    The Federal Circuit spent time in Phillips and in numerous cases for YEARS thereafter driving home the point that construing a claim to preserve its validity was something that was only proper under a very rarified set of circumstances (namely when, after applying the usual canons, a claim term was still susceptible to one of two competing constructions, only one of which preserved validity). The reason the Federal Circuit did this was because district court judges were constantly being misled by defendants into adopting ridiculous constructions that “preserved the claims’ validity” but which flew in the face of Phillips.

    If in fact the applicant made arguments or amendments in view of the prior art that support a particular construction, then the court should simply point this out as evidence supporting the construction. But such evidence has nothing to do with “construing a claim to preserve its validity.”

    The cite from Whittaker Corp. is nonsense that should never be seen again in a Federal Circuit decision, unless it’s being trashed.

    Is this what happens when the Federal Circuit clerks are too young to have lived through the debacle the first time?

  8. 160

    When I wrote, in the context of my rant on the subject of aberrant claim construction rulings:

    “They can avoid all that unpleasantness by clever (!) lawyering, by imposing on the claim a construction that finesses away from a finding of infringement.”

    In that sentence, with “They”, I was of course referring to the judges, not the advocates. Judges are also lawyers, are they not?

    ping read it differently. May I ask, did anybody else?

  9. 159

    goes without saying

    Then why did you say it and say it on only side Maxie? If you be looking for a reason considering the action of the court, that would be by the judge and not by either side’s clever (!) lawyering, wouldn’t it?

    Me thinks it was a gratuitous slam on lawyer folk that me busted.

    Plus, Ida echo Cole and Quixote when it comes to the notion of “Common sense”.

  10. 157

    Tell me more please ping.

    That both sides can have access to the finest lawyering money can buy goes without saying. That, in my opinion, is beside the point. I’m looking for the reason why courts so often put a strained construction on the claim in suit. What is it that inhibits them from just getting on and doing a common sense job on the claim?

    BTW, Ned, how springy is a spring? Can a diamond ever be a spring? Does it not depend on what the spring is for? In Wyers, what was the purpose of the spring in the claim?

  11. 156

    ping, stop it.

    Wassa matta Ned? – Do you find Judge Linn’s statement too difficult to understand? Is it too nuanced for you? Did you miss that statement (which I referenced more than once) in your hurry to post your IMHO-Ned Law? Or do you find it too humbling to once again admit that my position is correct? Are you stuffed from eating your words?

    Maxie,

    The wonder of your proposed idea is that both sides can each obtain that clever (!) lawyering.

  12. 155

    So why is it, Malcolm, that American courts are so reluctant to conclude that the asserted claim is not valid? Here’s my idea.

    Ignorant people, mischief-makers and rabble-rousers say: “The Government sells you a product, for loads of money. It even has the gall to tell you to presume it is valid. It is supposed to give you the right to exclude. And it did: the beggar was found to have infringed. What I didn’t know till now was that this much-vaunted product was already broken, even as I took delivery of it. F— the Government, I say.”

    They can avoid all that unpleasantness by clever (!) lawyering, by imposing on the claim a construction that finesses away from a finding of infringement.

    Or is there another explanation? I seem to recall that, in your book, it is NOT the c+c standard needed for a finding of invalidity.

  13. 154

    Ned: Max, yes I read the Becton v. Tyco decision; but I was not so upset with that one. …

    This particular point — whether the court should construe a claim narrowly to avoid invalidity — was somewhat left open in the Phillips case.

    That’s some horrifying dicta in the Becton v. Tyco case … at least I hope it’s dicta. The Federal Circuit spent time in Phillips and in numerous cases for YEARS thereafter driving home the point that construing a claim to preserve its validity was something that was only proper under a very rarified set of circumstances (namely when, after applying the usual canons, a claim term was still susceptible to one of two competing constructions, only one of which preserved validity). The reason the Federal Circuit did this was because district court judges were constantly being misled by defendants into adopting ridiculous constructions that “preserved the claims’ validity” but which flew in the face of Phillips.

    Is this what happens when the Federal Circuit clerks are too young to have lived through the debacle the first time?

  14. 152

    Ned,

    Why should I answer your questions when you don’t answer mine? Ya shouldn’t call people clueless, when you be the one not knowing what’s being talked about.

    What do you think Judge Linn was talking about?

  15. 151

    ping, just in case you still do not understand, I will repeat: What is the question you would have asked the jury to answer? Until we identify the exact question, we have no clue as to what you are talking about.

    You see the question the court asked. I think it was the wrong question as it did not include all the limitations of element (e) of the claim. Rather, it was a paraphrase; and the paraphrase was directed such that, given Down, only one answer was possible: Obvious.

    But, ping, back to you. You insist on questions for the jury to answer. What questions would you ask?

  16. 149

    I be pretty sure that I don’t need big D’s permission to have the Linnster blog here if he be feelin like it.

  17. 148

    Wow Ned, in your eagerness, you’ve just forgotten one thing – you lookin at the wrong thing and you still be wrong.

    Take a deep breadth, relax, take another deep breadth. Now, howza bout you talk about what the Linnster and I be saying?

  18. 147

    Just to illustrate: The Feds said this:

      “Wyers also asserts that the pin in the Down patent is not designed to fit tightly through a metal eye, while in the ’115 and ’426 sleeve patents, it fits snugly. However, we do not find these slight distinctions to be material.”

    the problem with this statement is that the distinctions were material because they were claim limitations:

      (e) a sleeve for selective engagement with said hitch pin shank to selectively vary the thickness dimension thereof to match the size diameter of the hitch bar and the receiver apertures to per-mit snug engagement therewith;

    Also, compare the claim limitation with the question presented to jury to decide

      Thus, as the district court described, the relevant question for the jury’s consideration with respect to the asserted sleeve patent claims was “whether Master Lock presented clear and convincing evidence that the use of a sleeve to adjust the operative thickness of a shank would have been obvious.”

    Note the neat omission of any requirement to fit the aperture sizes snugly. Phrased as it was, the Down patent did disclose changing the shank sizes.

  19. 146

    Ping, when the degree of difference is what remains to be decided, what is the question?

  20. 145

    Ned,

    I love how exasperated ya get – but ya still be wrong:

    we now get to the crux of the matter as to whether the degree of difference is sufficient

    is not so much the issue, as the fact of the matter in that the jury didn’t show the facts behind their conclusionary verdict. This was a matter of appeal and it was the appeal court that had to reconstruct for themselves the fact pattern in order to apply the law, cause the fact pattern wasn’t there.

    Your statement of Their verdict was clear. It was supported by the facts” is plainly wrong – if ya don’t believe my words, believe Judge Linn:

    [b]ecause there is no way to determine from a general verdict on obviousness the specific findings of fact made by a jury on the factual questions underlying its verdict, the court in examining the first part of the obviousness question is left to infer whether substantial evidence existed from which the jury could have made the factual findings necessary to support the verdict.

  21. 144

    ping, what really was in dispute were the differences between Down and the claimed invention. The court noted the differences, but dismissed them as insignificant. When there are differences between the prior art and the claimed invention, we now get to the crux of the matter as to whether the degree of difference is sufficient. This, my friend, is a mixed question of law and fact which the Supreme Court — read in the concurring opinion — has said must go to the jury. It did in this case, and the jury found the claims nonobvious over the prior art.

    There was no need in this case for special interrogatories to parse the jury verdict. Their verdict was clear. It was supported by the facts. It was not inconsistent with law. Under the applicable authority, this verdict should not have been overruled.

  22. 143

    ping, as always, you have no clue. Why you are allowed to even participate in this forum is beyond me.

    Dennis?

  23. 142

    I see your point, Ned, on Becton v. Tyco, but no matter what you think, when all’s said and done, did not the jury conclude that there was indeed the requisite claimed “spring” in the Magellan step. It must have had a good reason for that conclusion.

    As to Wyers, I am intrigued by the CAFC preoccupation with shelf space at WalMart. I had thought that, with obviousness, we ought to be concerned with what engineers find obvious, not accountants. Should patent claims stand or fall in dependence on WalMart’s policy on how many lines to offer for sale?

  24. 141

    As I noted above, the evidence was known.

    And also as noted – their was no evidence provided by the jury – the reviewing court had a blank slate.

    Just what could the jury have said in a verdict form that would have prevented

    …maybe a short list of facts that supported their conclusion…?

  25. 140

    Just one more question to you, ping. Just what could the jury have said in a verdict form that would have prevented the court from deciding this case as a matter of law based on the undisputed evidence?

  26. 139

    KSR: “Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.”

    Ping, there appears to be two issues:

    1) Was there evidence sufficient such that the jury verdict is sustainable given all reasonable inferences in favor of sustaining the verdict; and

    2) given the undisputed facts, was their only one verdict possible as a matter of law.

    The court did not conduct the first analysis. It rested its verdict on the second. Note, neither 1) nor 2) require any analysis of the jury verdict itself, just the evidence they were given.

    I think parsing the jury verdict for the basis of its decision is a red herring. Parsing may be important if the verdict somehow is inconsistent with the evidence in some way.

    As I noted above, the evidence was known. It was a prior art patent that showed a sleeve surrounding a narrow shaft and spanning the space between lugs. There is no suggestion in the reference to insert the sleeve into the lug holes — in fact, such an act would limit the size of the sleeve which in the prior art appeared to be much larger than the lug holes.

    Because there was no suggestion to adapt the prior art sleeve to the size of the lug hole for any reason, there was no suggestion to vary the sleeve size accordingly.

    But the Feds reversed the jury verdict regardless — saying the differences between the prior art and the claimed invention were slight. These are just words. They have no meaning and are smoke to cover the magic of their verdict which was hardly dictated by the evidence.

    Read the except from KSR again. The Supremes would reverse this case as the conclusion of obviousness was not apparent at all from this evidence.

  27. 138

    Once again we have Ned IMHO’ing and hand waiving.

    Ned postulates “But observe that in THIS case, as opposed to Wyers, the Feds rested their opinion (to reverse the jury) on lack of evidence.

    Except, let me quote a scholar and gentleman who posted on this very thread earlier:

    Ned, So quick to jump to the “it’s a farce” route. The driver here is that lack of “captured” facts upon which the jury made their decision. When the appeal came down, the reviewing court had no fact path to follow. It was a mere conclusion. Just as we practicioners like to jump all over Office actions written without facts to back up the examiner’s statements, the reviewers here saw nothing to back up the jury’s view and were thus free to make up their own minds. Such is clearly not a disregard of what the jury thought, but much more so a “there’s no thought” evidenced in the jury decision. The lesson: don’t take shortcuts.

    Posted by: ping | Jul 27, 2010 at 08:42 AM

    That’s right – me quoting me (Ima goin to be so in with the academics)

  28. 137

    MaxDrei, I think the arm did not move one iota when initially unlatched. It is held in position by the living hinges.

    Now, AFTER you release the latch and maneuver the device a bit — apparently you can get device to move on release of the latch. That is probably what happened in the jury room.

    Regardless, there was no evidence at all that the arm moved even one iota on initial latch release. This is why the Feds reversed, and in this case, I think rightly so.

    But observe that in THIS case, as opposed to Wyers, the Feds rested their opinion (to reverse the jury) on lack of evidence. In Wyers they could not do that, but merely substituted their opinion for that of the jury where the evidence was essentially undisputed, but the issue was whether there was any suggestion in the prior art to make the claimed combination or whether the solution was among a limited number of known solutions. Common sense simply is not law; it is a invitation for the courts to invalidate patents arbitrarily.

    I am not sure the Supremes really intended this with their opinion in KSR, which is why I think this case ought to go up to them on the issue of just when a court can overrule a jury verdict as a matter of law when the evidence is quite sufficient to support their verdict.

  29. 136

    Good stuff Paul, and, yes, Ned I see the Becton case as you do, in that the patent owner was (in fact) in a squeeze between infringement and validity.

    To contend that the living hinge provides the “spring means” (or whatever else you want to call it, “spring” for example) renders the claim invalid. But to contend that they are different things leaves Tyco not infringing.

    So, yes, Paul’s right. Best to do claim construction only after the court has gained a full picture that includes in it the prior art and the accused embodiment.

    Ned, a question. How likely is it that, when you release the latch in the Tyco accused embodiment, the needle tip cover moves distally not one iota. Normally, you have to push things, at least just a tiny bit, to latch them. Normally, a residue of that energy remains, even when the polymer components relax into their latched dispositions. My intuition tells me to expect the tip cover to move distally, at least infinitesimally, on release of the latch, to release that residual energy and to ensure that the thing won’t just sleep in its latched disposition. Doesn’t the nurse need a sign that it is indeed “unlatched”?

    My experience tells me that this effect is not inconsistent with the “resists moving away from the latched disposition” averred by the Tyco expert. Tyco told us that nurses did not like a tip cover that springs distally forward. But one that moves distally by an infinitesial amount when unlatched, and then waits for the nurse to push it 99% of the way? How about that? Spring, or not? I guess it alll depends on what you find to be the purpose of the spring i) to urge the cover over the tip or ii) to urge the cover out of its latched disposition. But the claim doesn’t say, does it? What was the writer of the claim using the language of the claim to mean, I wonder. Job for the judge here.

    I don’t have a sample of the accused embodiment to play with. The jury did. Still not a trace of anger Ned?

    Other readers, sorry. All a bit irrelevant to the Myers thread, I guess.

  30. 135

    One of the interesting issues that has come up in the discussion is what is meant by a combination (a thorny issue with as fraught history in the US).

    Here we have two improvements: the sleeve and the washer.

    If they produce a combined effect, then the argument is that they form a true combination. If they produce individual effects, then they are not a true combination and should be considered individually. I think that this principle of law has been known since James Watt fitted a separate condenser to Newcomen’s atmospheric engine.

    Is this an issue of inventive step? Only indirectly. As Lord Hoffmann pointed out recently, it is a question whether there is one invention or two, in the latter case each invention standing on its own merits.

    If Lord Hoffmann is right, it is not an issue of OBVIOUSNESS but is an issue of CLAIM CONSTRUCTION, and possibly the first and most important such issue that should be decided. Is this claim a true combination of features or an aggregation of individual features or groups of features that collectively do nothing new?

    The EPO has hit on the right solution in PSA because it insists on an identifiable technical problem and reconstructs the “objective problem” from the new effect (if any) that the claimed combination of features produces. A bit circuitous, but it gets to the same result.

    And perhaps this explains “obviousness as an issue of law”. In general we would say in England that it is an issue of fact. But the collocation/combination test being when truly considered a matter of CONSTRUCTION is law-based since construction is an issue of law.

    Collocation/combination has been an issue for over 200 years. But it has never been correctly classified legally. Hence the confusion.

  31. 132

    Max, on the infringement portion of the case, I think the majority was correct. Apparently, the accused syringes did not have any arm movement based upon stored energy upon the release of the latch restraining the arm. Energy could be induced into the “living hinges” by moving them back and forth, as was done by the expert witness. But this was not representative of how the “living hinges” operated normally: There was testimony that any stored energy was removed during the manufacturing process by an irradiation step that essentially reset the “living hinges” to its then “latched” position so that any movement away from the latched position was resisted by the “living hinges.”

  32. 131

    Max, I just look at the Becton opinion again. Apparently the case also pivoted on whether whether the term “connected to” requires two structures and excludes a unitary structure.

  33. 130

    Max, yes I read the Becton v. Tyco decision; but I was not so upset with that one. I was hoping that Dennis would post that decision for discussion because it has a what I think a significant point that we should discuss. Apparently what happened in the majority opinion is that it’s construction of the claim was somewhat dictated by patent validity concerns. The majority essentially held that the spring and the arm had to be physically separate components or else the claim would be invalid or the prior art. The dissenting opinion did not agree with the majority’s construction, arguing that there was nothing in the claim or in the specification that required the spring to be a separate component [even though the only examples given where were the spring was a separate component]. The dissent, however, did not address the point that if the construction did not require the spring to be a separate component it would be invalid over the prior art.

    This particular point — whether the court should construe a claim narrowly to avoid invalidity — was somewhat left open in the Phillips case.

    Typically, courts would say that if the claim is susceptible to two constructions, one which leads to validity and one which leads to invalidity, the one that maintains validity should be the one chosen. I don’t think that is what happened here, as the claim itself was not ambiguous. It was a means plus function claim and the claim language did not require that the spring and the arm be separate components. And, just as the dissent maintained, there was apparently nothing the specification that required them to be separate components. This was a limitation incorporated into the claim by the majority — but not from the specification, but completely whole cloth. Had the applicant tried to add such a limitation to the claim during prosecution, it would have been considered “new matter.”

  34. 129

    in this case makes me very, very, very angry.

    I guess that’s better than “vewy vewy vewy angwy.”

    We might confuse Ned with 6.

  35. 128

    Thanks Ned. I’ll read the Decision again, with your promptings in mind. I suspect that the finder of fact lacked a complete picture of the state of the art.

    For the last 60 years or so, agricultural implements trailed behind a tractor are connected by a hitch called a triangular “3 point linkage” in which two pins in the implement respectively engage with two bores on the tractor, to form the base of the triangle. There are two standard diameters, Cat. II and Cat. III. When you need to couple a Cat. II implement behind a Cat. III tractor, what do you do? Would you believe, you put sleeves on the pins?

    BTW, have you yet read the Becton v. Tyco CAFC Decision yet. See Patent Prospector. Another where the jury got reversed. But beware. It might make you even more angry.

  36. 127

    Paul Cole, I am with you buddy. This case is very very very disturbing not only in its rule of law on common sense, but the way the Federal Circuit simply overruled a jury verdict because they disagreed with it.

  37. 126

    Posted by: MaxDrei | Jul 31, 2010 at 05:45 AM

      “Are you serious, Ned? You say that there was NOTHING in the prior art that teaches that a “sleeve” between a pin and a hole should be a “snug” fit in the hole? I had always supposed that a “snug” fit is what a sleeve does. Why else is it in there? Are you asking us to assume a hypothetical PHOSITA who doesn’t know even that? I had always thought many toddlers spend much of their time trying to hammer pins into holes that are the wrong size.

      So, this hypothetical PHOSITA of yours, Ned. On matters within his “art”, is he less knowledgeable than a patents judge? No wonder judges reach for the “common sense” test.”

  38. 125

    I LOL all ya all.

    Can you ask for a more abstract thing than “commom sense”?

    I could be CyNical and point out that the only unversal statement about common sense that could be made is that it dont make no sense, since it truly not be common.

    If it be common, then we should all be able to post a definition that everyone would agree to. I can guarantee that that will never happen.

    Ida go Quixote and the Colester one step more and say that each examiner and each judge each have their own level of common sense.

  39. 124

    CyNical

    You need to look at KSR again.

    Common sense is used five times in the judgment.

    Four times it is used to refer to the applicable test. But unfortunately once, in the passage I quoted above, it is used in relation to the behavior and attitudes of the skilled person. So unfortunately we are stuck with it, unless we can roll it in to being an attribute of routine skill.

    I cannot give you a workable definition of common sense. But then I am not Thomas Payne.

  40. 123

    Cy Nical: “There are no “levels” of common sense

    That’s like saying that there is only one PHOSITA, and we all know that that is simply not true. You are also making the mistake of thinking that the factfinders are of one universal group – you need to read the opinion inthe proper mindset that the factfinders are playing the role of PHOSITA. It is in that role, that the fact finder is judging obviousness, and it is in that role that the application of common sense is being called for. Don’t make the mistake of reading so shallowly.

  41. 122

    It is not a Judge’s common sense that is to be applied, but rather, it is the common sense of the PHOSITA.

    You can keep saying that, but it doesn’t make it true. And talking about “common sense levels” makes no sense (common or otherwise). There are no “levels” of common sense – that’s why it’s “common.”

    Go back and read KSR again – in the half-dozen times the Court uses the term “common sense,” how many times are they talking about the PHOSITA’s “common sense”? (Hint: the answer is zero.) The opinion is quite clear in its distinction between “ordinary skill” (a trait of the PHOSITA) and “common sense” (available to the fact finder). My favorite line: “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”

  42. 121

    Paul: “We should be aware that NO case constitutes a precedent because…

    Really? In the US?

    MaxDrei: “No wonder judges reach for the “common sense” test

    It is not a Judge’s common sense that is to be applied, but rather, it is the common sense of the PHOSITA. There are unresolved questions as to this PHOSITA and her common sense levels. Do simple arts have less (or more) common sense? It is archtypical that brilliant minds in very complicated arts have little to none common sense (as can be demonstrated by such things as the ability to relate to “ordinary” people.

  43. 120

    We should be aware that NO case constitutes a precedent because of its decision on the facts. Facts differ. You might say that the CAFC made a poor decision on this case. Perhaps they will do better on the next one. Not a big issue except for the litigants.

    But of lasting significance is the RULE that is applied to the facts. If there is a new RULE based on an interpretation of “common sense”, that is a far more serious matter since it could propagate and cause a whole series of cases to be messed up.

    On very cursory reading, I am far from convinced that the CAFC made an incorrect decision here. But elevating “common sense” to be a criterion of obviousness independent of the routine skill in the art could be highly damaging.

  44. 119

    Are you serious, Ned? You say that there was NOTHING in the prior art that teaches that a “sleeve” between a pin and a hole should be a “snug” fit in the hole? I had always supposed that a “snug” fit is what a sleeve does. Why else is it in there? Are you asking us to assume a hypothetical PHOSITA who doesn’t know even that? I had always thought many toddlers spend much of their time trying to hammer pins into holes that are the wrong size.

    So, this hypothetical PHOSITA of yours, Ned. On matters within his “art”, is he less knowledgeable than a patents judge? No wonder judges reach for the “common sense” test.

  45. 118

    Paul Cole on common sense: if it is not confined properly, it can be just one man’s opinion, and that varies from one person to the next. As Paul noted, if there are a range of known solutions, a choice among them is within “ordinary skill.” This is what the Supremes meant by common sense. The requirement that the solution be KNOWN eliminates hindsight.

    In the present case, while sleeves were KNOWN, there was nothing in the prior art that provided sleeves that fit snuggly into lug holes, let alone lug holes of varying diameter.

    Now the jury found the claims non obvious. The FEDS ruled that given this prior art, the claims were obvious as a matter of law, secondary consideration be d-amned. Toss ’em on summary judgment and all that. Possibly even award attorney fees as being asked by Lemley and crew.

  46. 117

    IANAE

    If common sense is more than an attribute of routine skill then it is difficult to know what it is.

    In your scenario, if the skilled person using his routine skill can identify several possible solutions, surely his routine skill tells him that he should try all of them and not simply one of them?

    What is worrying is that common sense appears to be gaining credibility as something alternative to and distinct from routine skill. If so, there is a real danger of arbitrary and subjective standards, since one person’s ingenuity is another person’s common sense, especially in hindsight and with money at stake.

  47. 116

    Three cheers for IANAE, who proposes that what is indeed obvious is to try:

    “…. known options for solving a known problem, absent a specific teaching away.”

    Only problem I can see with that as a way to do it is to fix precisely which of the multitude of “known” problems is THE problem relative to which we shall assess obviousness. You see, it has to be a problem that is fair to both the inventor (no hindsight) and to the public (who will be intimidated by an issued claim that embraces obvious subject matter).

    We can be thankful then, that EPO-PSA found a perfect solution to that particular problem, 30 years ago.

    Ladies and gentlemen, the choice is yours. Will it be “common sense” or will it be “the objective technical problem”?

  48. 115

    If “common sense” is here a synonym for “ordinary skill”

    I don’t think it’s a synonym, exactly. I think what they’re saying is that ordinary skill includes the common sense to try a finite number of identifiable solutions that are themselves within the ordinary skill in the art.

    I’m not sure how you would reject that rationale without rejecting all of obviousness, which requires the person skilled in the art to select and combine the teachings of two references from a still finite but much larger set.

    If you think about it, it doesn’t take any inventiveness or creativity to try a handful of known options for solving a known problem, absent a specific teaching away. It’s exactly the sort of thing even the most unimaginative engineer would do.

  49. 112

    Common Sense did not mean the same thing to Thomas Paine as it did to Lord North or George III. It is a subjective test, variable from judge to judge depending on his or her individual education and experience, and a concept to be treated with caution.

    Generally speaking, the words Common Sense in the KSR opinion are used in relation to judicial rules rather than the evaluation of the evidence. But the opinion does contain the following passage:

    “When there is a design need or market pressure to solve a problem and there are a finite number
    of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”

    If “common sense” is here a synonym for “ordinary skill” then the Court should stick to “ordinary skill” which is a topic mandated by Graham to be covered in the evidence, and which even in a decision on the written evidence can be inferred from the documents in the case. If it means more than “ordinary skill” then arguably it is inappropriate and dangerous because it substitutes the previous education and experience of the judge for the education and experience of a person skilled in the art, which the judge is not.

  50. 111

    Shout louder? Good laugh thanks IANAE but no, not much use at the EPO, where cases are won and lost in writing.

    As for oral proceedings, I’m happiest when an Oxbridge hooray Henry is busy deploying his elegant high table English language communication skills at the most sophisticated level he can command. And better still if he can be brought to start shouting at the panel.

    But that isn’t so much different from a jury trial in the USA, is it? Is there much shouting there?

  51. 110

    Max, does Oxbridge English work any better if you speak louder? It seems to do the trick on this side of the pond.

  52. 109

    ping sometimes I think you find fault just for the fun of it. You write:

    “If the EP communication skills were as good as you want to indicate in the post above, then the examiners would be comfortable with the nuances of the language.”

    as if it were self-evident. But it isn’t. One day you should watch how German and Japanese patent attorneys communicate with each other in Munich, both using English as a foreign language. Then fly to London and watch how a Blimey communicates with a Nip, also in English. By comparison with what was going on in Munich, catastrophal levels of communication, because the parties are precisely using different languages. One party is operating in Globish and the other in Oxford (or Cambridge) university English. You would be amazed (as I was, when I first saw it, a long time ago).

    You think German and Japanese patent attorneys are not as exacting as you, or not interested in getting a full quota of enforceable patent rights to be swiftly asserted through the German courts? You think EPO Examiners are not just as precise, when they adjudicate oppositions? It is those who routinely switch between different languages who have the keenest appreciation of where communication is not optimal, because of ambiguities in the meaning of words that go over the heads of the monoglots in the room.

    BTW who, precisely, is your most professional “we”? I don’t understand. Are “we” more professional than all other professions? Or is it that any one of “us” is more “professional” than any professional PTO Examiner?

    And thanks for running the thread on into another day. I particularly liked your nod towards being deliberately “less exact” when “needed”. If you mean “Just as exact, but at a higher level of generality” I agree. However, I suspect you mean “less clear”. regardless of its advantages in your jurisdiction, I would say that it is never a good strategy in mine.

  53. 108

    Max: It keeps it deadly simple (much to the distress of those lawyers who wish that everything could be more complicated).

    I, for one, miss the good old days when all court proceedings were conducted in Latin, and violent criminals who were clearly guilty could be set free on the basis of a simple typographical error.

    Communication has no place in our profession. Here, have a 50-page IDS and a condescending argument about why your rejection is technically insufficient while carefully not actually implying that my claim is patentable.

  54. 107

    Maxie,

    More of your Blimey logic – holding that “good communication skills” help at the same time holding forth that those same communication skills are limiting in that the examiners have to examine in a language that they do not master.

    If the EP communication skills were as good as you want to indicate in the post above, then the examiners would be comfortable with the nuances of the language. It is not a matter of being complicated for its own sake, but rather, it is a matter of being more exact (or less as needed) for the sake of pursuing the applicant’s fullest rights under the law. After all, that is the goal of our profession, and we be most professional here.

  55. 106

    I suppose good communication skills help too. EPO examiners (regardless which EPC Member State they belong to) have to be able to communicate in all three official languages of the EPO (English, French and German). The EPO functions with nearly everybody using English-as-a-foreign-language. This fact has no detrimental effect on the quality of EPO jurisprudence. Quite the opposite. It keeps it deadly simple (much to the distress of those lawyers who wish that everything could be more complicated).

  56. 105

    SteveW, directors of examining divisions at the EPO lament that today (unlike in the good old days) they have so few examiners in their groups with more than a year or two of experience. Most of the patentability opinions (EESR) you get from the EPO, these days, are from newbies. One of the attractions of EPO-PSA is that its steps are so simple that even a newbie, after a rigorous induction period, can crank them out like an old stager.

    Try what I did the other day: sit in on a Hearing of an opposition, at Board of Appeal level, as a member of the public. Listen to the German attorney appearing for the opponent from Japan, as he argues obviousness (in English). Then listen to the arguments on behalf of the American patent owner, again delivered by a German attorney, in English. Then decide. Half an hour later, when the proceedings resume, you will find that you have come to the same decision as the Board. Easy-peasy.

    I know of no other jurisdiction that decides obviousness with so little huff and puff from the lawyers. Secondary considerations are firmly pushed to where they belong: out on the margin.

    I know of no volume user at the EPO who thinks that this procedure is systemically biassed, either in favour of the patentee, or of the opponent.

  57. 104

    MaxDrei,
    I am a big fan of prosecution at the EPO. It feels much more predictable than the USPTO. However, it has always seemed to me to be more of a function of the Examiners rather than the law and procedures. I think if you replaced the long-term, competent folks they have at the EPO with just-out-of school people that have never been in industry and are planning to be gone in 30 months, they would find a way to break your PSA. Likewise, if you saddled the current EPO examiners with Anticipation and Obviousness, I think they would get along pretty well. There are good folks at the USPTO, it just feels more like a crap shoot in general.

  58. 103

    secondary considerations are of exactly the same nature of evidence as synergy.

    I think you’ve got a good point there, but it depends on what the invention is in that particular case, and what the otherwise-obvious combination was.

    If you’re adding two features to a trailer hitch that are both obvious solutions to problems that trailer hitches are known to have, and those two features in combination happen to surprisingly solve a third problem, that sounds like a secondary consideration. Even if nobody knew about the third advantage, they still would have considered it obvious to add a seal for sealing and a sleeve for adapting the diameter of the shank.

    However, if you are looking for a solution to the third problem, and you discover that you can solve it by arranging the first and second features in a particular way, that’s more in the nature of direct evidence of non-obviousness. It’s probably more applicable in re-arrangement or optimization-type obviousness rejections than aggregation-type rejections. For example, if your invention is not merely combining a seal and a sleeve, but positioning the seal right up against the sleeve to make the seal work better, you could more credibly argue that nobody would have found that particular arrangement without being able to foresee the synergistic result. Especially if it was common to space the two apart for some other reason.

  59. 102

    Ping,
    I agree with you. I was making the point that synergy (or unexpected results) is just a secondary consideration (not the Graham term of art) and should not receive privileged treatment over Secondary Considerations (the Graham term of art). The synergy itself is not patentable, but merely evidence that tells the story of why it’s possible, even though all of this stuff is laying around in machine shops, no one has thought to assemble it yet.

    Some of the posters here have this aspect wrong, as they seem to be arguing that synergy is better than other secondary considerations.

    I suspect the Fed Circuit would favor synergy as well. However, anyone who treats synergy (or “unexpected results”) as a better class of evidence than other secondary considerations is making the logical mistake of giving patentable heft to an abstract idea. To use IANAE’s language, the only utility of synergy to the conversation is to answer the question “why didn’t you think of it”.

    None of that is to say that all secondary consideration evidence is good (e.g. sales in response to a marketing campaign); in fact much of it is problematic. However, secondary considerations are of exactly the same nature of evidence as synergy.

  60. 101

    No Steve, what is being patented is an invention defined (in a claim) as a combination of technical features (concrete). The feature combination delivers a technical effect (concrete). There was no hint or suggestion, in the body of published knowledge prior to the date the claim was filed at the PTO, to put together that specific feature combination as a way to deliver that particular technical effect.

    ergo: claim not obvious.

    All concrete. Done on the documents (concrete). No need at all for vague, abstract ideas like “synergy” or “abstract”.

    At least, at the EPO.

  61. 100

    SteveW,

    No – the patent is for the summed parts. The abstract idea of synergy is fighting the abstract idea of obviousness.

    Fighting fire with fire.

  62. 99

    Let’s say that synergistic effects are a requirement for assemblages of prior art parts.

    Assemblages of prior art parts do only what they do, there is no truth to the “whole is greater than the sum of the parts,” because the thing is the sum of the parts. Thus, what is really being patented is the idea that the sum of these parts is greater than what the sum of these parts would have been thought to be. Accordingly, any synergistic argument to avoid a determination of obviousness for an assemblage of prior art parts is really just patenting an abstract idea, correct?

  63. 98

    And yet, we have the Feds here declaring that the claimed combination was obvious as a matter of law, essentially saying that the issue should never have gone to the jury

    I think that’s the part that irks me about this decision. I don’t mind the Federal Circuit doing its best to sort out what facts are necessarily implied by the jury’s conclusory decision, but it seems a little much for them to say that this was never an appropriate issue to put before the jury at all.

    Still, I don’t think they would have so flippantly substituted “common sense” for the sense of a dozen commoners if they were stuck with particular findings of fact that, for example, a particular feature was not taught or suggested in a particular prior art reference. It’s far easier to re-decide a question of mixed fact and law as a matter of law than it is a question of fact.

  64. 97

    Well, IANAE, here the level of skill was well within that possessed by the ordinary public. Expert testimony was held not to be required. Ideally, therefor, the jury was well positioned to make the call, particularly if the issue was common sense, as none of the prior art suggested the combination claimed in the ‘115 patent.

    And yet, we have the Feds here declaring that the claimed combination was obvious as a matter of law, essentially saying that the issue should never have gone to the jury — that the District Court should have decided the issue on summary judgment or at the latest at the close of evidence in response to a JMOL motion.

    I used to see it all the time. I have been in courts and have seen it personally. It was common practice in the days of yore — prior to the formation of the Federal Circuit. The court would hear the evidence presented at summary judgment and would summarily hold the patent invalid — based on “common sense” which, in the end, is only their own opinion.

    That is where we are today with this ruling by the Feds. We are back to the good old days of an unrestrained judiciary, where patent value was at its lowest ebb, the patent system as a whole was not functioning very well, and the need for reform was regarded by all as dramatically necessary.

    Congress responded by creating the Federal Circuit.

    General Markey then single-handedly reversed the course of history by requiring something more than just the opinion of a court that a patent was obvious. But, it appears, that we are now returned to the “good” old days.

    I can only hope the Feds take this case en banc and that, if necessary, the patent owner goes to the Supreme Court. The amount of money involved is not much, but the issues are important.

  65. 96

    If nobody had seen the value of the combination at the date of the claim,

    The point, I think, is that there must be some “value of the combination“. If you just take something that already exists and put a clock in it, each component has its value, but the combination of the two doesn’t add anything synergistic.

    As to secondary factors, (commercial success)

    Patentability over the prior art is not supposed to correlate exactly with commercial success. There has to be a point at which we say that putting two things together because those two things are separately known to be good is not entitled to a patent, otherwise the entire concept of obviousness would have no meaning. There also has to be a point at which we say that selling a lot of the claimed invention (particularly by the defendant) is not determinative, or the case reduces to “I should win because that would get me a lot of money”.

    Secondary considerations are merely facts to back up the retort of “well, if it was so obvious, why didn’t you think of it?” They make good tie-breakers when the parties’ experts can’t agree on what was obvious at the time, but they must always be secondary. The obviousness inquiry is fundamentally based on the knowledge of a person skilled in the art, not whether the general public thinks the product is nifty.

  66. 95

    Malcolm, thanks but “expected” sort of begs the question, doesn’t it. If nobody had seen the value of the combination at the date of the claim, who is it who was doing the “expecting”?

    ping, call it “policy” if it makes you happy. Or “common sense”. What the law ought to be, if not what it is already in some places.

    As to secondary factors, (commercial success) the English case of the ANYWAYUPCUP for toddlers is instructive. Mandy Haberman invented it then went entrepreneurially into production, then had to deal with infringer Jackel (nice name, that). She won, and commercial success swung it for her. The judgement reveals what it takes in England to win on commercial success. A gem, that decision.

  67. 94

    Thinking more deeply about it though, is there really any difference between these two meanings? Putting it another way, “enhanced” relative to what?

    Enhanced relative to the expected sum of the contributions of the two elements that are being combined to make the invention.

  68. 93

    Their blanket dismissal of secondary considerations is worrisome thouogh

    This has happened before and nobody here blinked.

    I don’t see what the big deal is. As IANAE, sometimes obvious is obvious and the secondary considerations are simply not going to be sufficient to rebut the prima facie case.

    Deal with it.

  69. 92

    The above passage clearly suggests that the issue of obviousness is a mixed question of law and fact for the jury to decide,

    You can’t decide the question of obviousness without a jury because it involves questions of fact, but really the jury instruction more or less dictates the “law” part once the jury makes its determinations of fact. The jury is really only called upon to decide whether the facts are sufficient to trigger the application of the law.

    That’s why the appellate court needs to know what facts were decided, so it can re-apply the law to them if the court erred in law without having to remand for another nebulous conclusory jury verdict based on a different jury instruction that “the claim is not invalid”.

  70. 91

    I think Haggy’s on to somethin.

    What purpose do secondary considerations actually serve? At what point do we say, “Yep, thems good enough?”

  71. 90

    As someone said above, a poorly reasoned judgement is bad even if the outcome is correct.

    Dirt gets into these pesky locks and jams ’em – say, maybe some kind of seal would be a good idea?

    We need to make a whole range of these doohickys in different diameters – uh-huh, suppose we make one basic size and a range of adaptors?

    You can sympathise with the Fed. Cir. using “common sense” as a short-cut here, but it doesn’t mean it’s a good thing to do in general.

    Their blanket dismissal of secondary considerations is worrisome thouogh. If something looks obvious as a matter of common sense, necessarily with the benefit of hindsight, (“obviously obvious”) then to me that’s exactly the situation where you need to check any potentially valid secondary considerations to make sure you haven’t missed a trick.

  72. 89

    Maxie,

    Is your disagreement premised on a point of policy, point of law or point of fact?

    Isa got to tell ya – I have the points of fact and law on my side.

    Ned – love your quote – especially the first phrase: “While the ultimate question of patent validity is one of law

  73. 88

    This is where it gets dicey does it not? You clearly suggest that it is the province of the jury to find only the three basic factual inquiries, reserving for the court the issue of obviousness. However, such a procedure would be unique in the law.

    Graham vs. John Deere:

      While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, 87 USPQ at 307, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.

      …What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context. The difficulties, however, are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter, and should be amenable to a case-by-case development.

    The above passage clearly suggests that the issue of obviousness is a mixed question of law and fact for the jury to decide, just as negligence in the case of tort, or scienter in the case of a crime. You cannot divorce the findings of fact from the question of obviousness. The ultimate legal question, the one for the court to decide is validity, not obviousness.

  74. 87

    Was there sufficient evidence for the jury to find the claim not invalid?

    That depends on whether the difference between the claimed sleeve and the Down sleeve is enough to overcome section 103, which I suppose is a question of law. It also depends on what exactly the jury understood the Down patent do teach, which was not at all clear.

    If you really want to be technical, the jury should not be finding the claim invalid or not-invalid at all. The jury should be finding a series of facts that the judge decides are relevant to the outcome of the case, and the judge should be the one to make the ultimate conclusion of law as to invalidity, even if that conclusion is unavoidable on the particular facts that are found, and even if that conclusion comes in the form of a conditional instruction to the jury to “find the claim invalid if you find the following facts”.

    A jury’s function is to find facts. Those findings of fact generally determine the outcome of the case, but the jury is not supposed to be concerned with the outcome of the case per se. All we want are the facts, and all they should decide are the facts.

  75. 86

    What is the job of the court in assessing a jury verdict under JMOL? It is to determine whether there was sufficient evidence submitted that the jury could have decided the way it did.

    Now before we go one step further, can we all agree to answer to ourselves whether the jury had sufficient evidence to hold the claims of the ‘115 patent not invalid?

    The claim at issue required that a sleeve snugly fit into the hole of the “lug.”

    The Down patent showed a sleeve that spanned the space between lugs but did not fit into the respective holes of the lugs.

    Was there sufficient evidence for the jury to find the claim not invalid?

  76. 85

    ping you write:

    “I don’t know about that – it is in the application as filed which means that it is there as of the filing date.”

    We disagree. I think that “it” is not in the app as filed, and IANAE agrees with me.

    To disclose an inventive concept, commensurate with the scope of a useful patent claim, ought to require a tad more in the app as filed than a pinpoint description of every nut and bolt in the concept’s pinpoint Best Mode.

    Why? Because that detailed description, as such, is a description of the “Best Mode” of an infinite number of inventions unclaimed (and undisclosed, as such) in the app as filed.

  77. 84

    But ping, in a sense, Ned is right, isn’t he?

    Maxie,

    Once again you display the stellar logic that I come to expect from a such a blimey.

    To say that Ned is kinda right is akin to saying that I am kinda right with the following:

    The USPTO is all f_ed up because they have a huge backlog and the reason they have such a backlog is because RWA has still not yet returned the r e d p u m p s to their rightful owner Malcolm.

    Now we both know that the Office is indeed f_ed up with a huge backlog – but do you see why any sane person would not trumpet my statement as “kinda right” in any real sense?

    As you say, that invention was not conceived until after the filing date,
    I don’t know about that – it is in the application as filed which means that it is there as of the filing date.

    If you properly instruct a jury, and only ask them “is this obvious Y/N” there are no findings of fact to which the appellate court can defer, even if it wants to.
    Like I got done telling ya.

    The message here is that appellate courts need good findings of fact at trial in order to exercise a meaningful appellate jurisdiction.
    Like I says – don’t take shortcuts.

  78. 83

    Thinking more deeply about it though, is there really any difference between these two meanings? Putting it another way, “enhanced” relative to what?

    The “enhanced” performance is of the whole relative to the sum of its parts. Suppose you put a prior art seal and a prior art sleeve on the same device. If the seal seals just like a prior art seal, and the sleeve adjusts the fit of the shank just like a prior art shank, you have no more than the sum or the parts. Now, if prior art seals simply didn’t work well because of a poor fit around the shank (the seal deflected into the intervening space and let dirt in or got pinched and damaged or something), and the combination keeps the lock nice and clean, you’d at least have an argument for synergistic effect.

  79. 82

    IANAE, that was a nice read.

    I’m glad that you agree with me that the US courts have been over-tolerant of sloppy drafting (only belatedly stating what the inventor saw all along as her “invention”) for far too long.

    As FtF territory looms ever-larger for the common or garden US patent attorney in private practice, perhaps his drafting standards will soon begin to improve?

    I thought I had better check “synergy” in the dictionary. I got a surprise. At first blush, it is ambiguous. Here are two meanings:

    i) working together

    ii) delivering an enhanced performance

    I can imagine an Applicant from Europe arguing that i) is enough but an Examiner at the USPTO insisting on ii).

    Thinking more deeply about it though, is there really any difference between these two meanings? Putting it another way, “enhanced” relative to what?

    I’m coming to the view that the American view of obviousness is very close the the EPO view of what is obvious. The EPO (thanks to the unassailability of EPO-PSA) just gets there quicker, with less shouting and bad temper, and with fewer Affidavits.

  80. 81

    Max: It gets unfair to the public, however, when Applicant replies to the PTO Examiner pointing out that Down lacks “shoulder 212” or whatever, and that this very shoulder, which gives the claim novelty over Down, makes the hitch much more secure, long-lasting (or whatever) than the Down hitch. This is an “invention” that was not made till the FAOM arrived.

    That’s always bugged me about US practice too. It’s too easy to throw a laundry list at the PTO and pick out whatever features you need to distinguish over the art once you see the rejection. As you say, that invention was not conceived until after the filing date, and you’d think it would be dubiously valid under 102(f) (not invented by him at the time) or 102(a) (anticipated by his own publication before he invented it).

    Max: i can imagine an Examiner asserting, for example, that the results that flow from the claimed combination of technical features do not exhibit any “synergy” but only an improvement in performance that was “predictable”.

    I don’t have to imagine an examiner asserting that, I’ve seen it done. But at least when you really do have a synergistic effect you can defend your claim with arguments based on your disclosed utility, affidavits of fact, improper combination of prior art references, and all the other means generally available to traverse an obviousness rejection.

    Ned: As far as I know the jury was properly instructed.

    Properly instructed is a good start, but it’s not everything. If you properly instruct a jury, and only ask them “is this obvious Y/N” there are no findings of fact to which the appellate court can defer, even if it wants to. When the facts aren’t clear, the Circuit can only either decide for itself or remand for a new trial. Neither result is really satisfying, but the Circuit can’t abdicate its responsibility as an appellate court simply because the jury wasn’t asked about every single fact.

    Now, I’m aware of the Federal Circuit’s broad “do-over” jurisdiction in patent matters, but I think they would have at least had to tread more carefully had all the jury’s findings of fact been explicit and specific.

    Ned: It is abundantly clear that the Federal Circuit simply substituted its judgment for that of the jury in this case on an issue of fact.

    An issue of mixed fact and law, if the only determination the jury actually made was as to the ultimate issue in the case.

    Ned: Exactly what is the point of the jury trial then? What a farce!

    The point of a jury trial is the same as the point of a bench trial. To make findings of fact and then apply the law to them. That works much better when you ask the jury what the facts are than when you tell the jury “if the facts are this way, here’s how you apply the law, and come back with a single binary answer the judicial equivalent of an ‘alarm limit’.”

    Max: If the reviewers find themselves still “free”, to make up their own minds on a fact matter of such core importance, because of the failure of the instance below to “capture” of any relevant fact, then it (the course of this litigation, thus far) is indeed a “farce”, no?

    Max, the only other real alternative would be to remand for a new trial on the facts they consider important. That’s not particularly satisfying either because of the delay and expense, particularly when the facts were presumably well pleaded by both sides and lacked only a final determination by the jury.

    The message here is that appellate courts need good findings of fact at trial in order to exercise a meaningful appellate jurisdiction.

  81. 80

    Malcom Mooney:

    “Fully agree with D. Stevinson above – if “obviously” this invention was so “obvious,” why did nobody come up with it before?

    Stoopidest. Argument. Ever.” [Sic]

    Insult seems to become the argument when one has no real legal argument.

  82. 79

    But ping, in a sense, Ned is right, isn’t he? If the reviewers find themselves still “free”, to make up their own minds on a fact matter of such core importance, because of the failure of the instance below to “capture” of any relevant fact, then it (the course of this litigation, thus far) is indeed a “farce”, no?

  83. 78

    Ned,

    So quick to jump to the “it’s a farce” route.

    The driver here is that lack of “captured” facts upon which the jury made their decision. When the appeal came down, the reviewing court had no fact path to follow. It was a mere conclusion. Just as we practicioners like to jump all over Office actions written without facts to back up the examiner’s statements, the reviewers here saw nothing to back up the jury’s view and were thus free to make up their own minds. Such is clearly not a disregard of what the jury thought, but much more so a “there’s no thought” evidenced in the jury decision.

    The lesson: don’t take shortcuts.

  84. 77

    I await the reply with interest. But, Ned, I had thought it abundantly clear that obviousness is a “mixed” question of fact and law. First we ask the jury what acts the PHOSITA would have found obvious at the time (fact) then the court (and only the court) rules (as a matter of law) on whether the various findings of fact take away the validity of the claim.

    If the jury enters a general verdict, the court has it easy, for it is not inhibited from finding the claim invalid for obviousness by a jury finding that some specific act by the PHOSITA was not obvious at the relevant date.

    But I’m no US lawyer. Are you saying the appeal court should instead have remitted, inviting a different jury to come up with a decision on specific PHOSITA acts? Or that a general verdict is dispositive of the obviousness issue?

  85. 76

    IANAE, you say that had the jury verdict parsed the issue of obviousness in some fashion the outcome may have been different here. I’m just a bit puzzled. As far as I know the jury was properly instructed. The Down the reference was argued against the ‘115 patent. The jury held the patent not invalid. The Federal Circuit overturned the jury verdict holding that the claims of the 115 patent were invalid as a matter of law. Federal Circuit said that their holding was a matter of “common sense.”

    I am frankly at a loss as to how you can say that had the jury specifically stated that in their opinion that the claims of the ‘115 patent were not obvious over the Down reference the Federal Circuit would not have held the same way.

    It is abundantly clear that the Federal Circuit simply substituted its judgment for that of the jury in this case on an issue of fact.

    Which raises a very interesting issue: does this case tell us that the Federal Circuit considers the issue of obviousness to be an issue of law and not an issue of fact so that it can substitute its judgment for that of the jury whenever it so pleases? Exactly what is the point of the jury trial then? What a farce!

  86. 75

    Yesterday IANAE asked me:

    “The US just has a different way of expressing itself. They say that both locks are from related fields, and each of the two features is used to achieve its own known advantages, so it’s obvious to combine them.

    What’s your argument against that, exactly? There’s no synergistic effect. The sleeve acts as a size adapter, and the seal acts as a seal, just like in the prior art. It’s textbook obviousness.”

    …and I’ve been thinking about it overnight. In the interim, others have provided further interesting observations. Now I’ll comment.

    I see that people suppose they can defend the validity of the claim by pointing to some feature in it and argue that it is responsible for a great technical effect, like longevity, security, ease of un-hitching, or whatever. Now I have no quarrel with that, provided that, already in the app as filed, that feature is picked out and valued for that very reason. It gets unfair to the public, however, when Applicant replies to the PTO Examiner pointing out that Down lacks “shoulder 212” or whatever, and that this very shoulder, which gives the claim novelty over Down, makes the hitch much more secure, long-lasting (or whatever) than the Down hitch. This is an “invention” that was not made till the FAOM arrived.

    IANAE, I have no quarrel with textbook obviousness. It is just a gut feeling that, from PTO Examiners upwards, the argument as you recite it can and will be used, to deny patents for contributions to the art that a reasonable patent attorney would assess as not obvious. i can imagine an Examiner asserting, for example, that the results that flow from the claimed combination of technical features do not exhibit any “synergy” but only an improvement in performance that was “predictable”.

  87. 72

    If something only costs a nickel and voila is now worth a dollar or 10 dollars isn’t that just as unexpected as a new chemical? And since it is old and easy mechanical stuff, by definition isn’t it unexpected if it adds major value?

    I’m almost sure that economic and value-driven arguments would not carry much weight in an obviousness inquiry. If you’re going to argue “unexpected results”, your argument has got to be based in the science of the thing.

  88. 71

    Sorry to make facts up … but IANAE asks a good question:

    “They say that both locks are from related fields, and each of the two features is used to achieve its own known advantages, so it’s obvious to combine them.

    What’s your argument against that, exactly? There’s no synergistic effect. The sleeve acts as a size adapter, and the seal acts as a seal, just like in the prior art. It’s textbook obviousness.”

    Let’s say the old locks without sleeves and seals would only last 1,000 miles because of all the grit that gets thrown at trailer hitches. And that there were the occasional catastrophic situations where a yacht came loose on the freeway (well, maybe not this one, I guess the lock doesn’t hold the hitch in place?). And that the new sleeves and seals only added 5% to the cost and now a lock would last “forever”. If something only costs a nickel and voila is now worth a dollar or 10 dollars isn’t that just as unexpected as a new chemical? And since it is old and easy mechanical stuff, by definition isn’t it unexpected if it adds major value?

  89. 70

    If this were an appeal from the detailed reasons of a jury, who even half-way meticulously set out the findings of fact, I think it would have ended differently.

    Slightly modified, but no less true.

  90. 69

    Ned: IANAE, it really is a question of who decides. When the issue is common sense, I submit for your consideration, that this is an issue of fact for the jury to decide.

    Oh, absolutely. But when juries are involved you have to make sure to ask the right questions, or you don’t have specific findings of fact that the Federal Circuit can use, and then they have no choice but to reject your reality and substitute their own.

    If this were an appeal from the detailed reasons of a judge sitting alone, who was meticulous in setting out his findings of fact, I think it would have ended differently.

  91. 68

    6, if you were an inventor, no jury would find your inventions obvious; but every elitist SOB whose opinion of himself is about the same level as yours of yourself, would gladly substitute their judgment for that of the jury just for the sake of making you PO’ed.

  92. 66

    Malcolm, you naturally, of course, welcome the rule of the elites. It fits well with your oft-repeated view of the frank stu-pidity and ig-norance of the common man as a “matter of law.”

  93. 65

    IANAE, it really is a question of who decides. When the issue is common sense, I submit for your consideration, that this is an issue of fact for the jury to decide. The only question for the courts was whether there was sufficient evidence submitted that their verdict was incorrect as a matter of law.

    What happened here was NOT THAT. The court simply substituted its judgment for that of jury. This rough justice by the courts was a MAJOR problem before the creation of the Markey court. It was a prime motivating factor behind its creation.

    We seem to be repeating history. We seem to learn nothing from the disastrous mistakes of the past. The pre-Markey era was an era of judicial tyranny where very few patents were held valid and where patents were deemed valueless by the smart money.

    Thank you Federal Circuit for digging up this buried monster to once again reign terror upon the land.

  94. 63

    The claim specifically requires the sleeves to fit snugly in the holes. The Fed. Cir. never directly addressed this limitation in its holding. They poo-pooed the patent owners arguments directed to this limitation as “slight.”

    It’s an obviousness argument, not an anticipation argument. The prior art sleeve is for adapting the diameter of the shank to the diameter of the thing that goes around the outside of the sleeve, and this would be a natural extension of that teaching. So to speak.

  95. 61

    I’ve taken a look at the Down patent. It does not disclose a sleeve that fits into the holes of the “lugs.” Rather, its sleeve simply spans the space between the two lugs. See, Down Fig. 2.

    The claim specifically requires the sleeves to fit snugly in the holes. The Fed. Cir. never directly addressed this limitation in its holding. They poo-pooed the patent owners arguments directed to this limitation as “slight.” Opinion at 22.

    The Jury held the ‘115 patent not invalid over the Down reference. The Feds disagreed — based on “common sense.” They clearly believed they had more common sense than did the jury.

    We now are in a era of judicial tyranny where, without any error of law identified in the jury instructions, the Feds can simply find a patent obvious based on “common sense” when a jury has found the patent not invalid based on “common sense.”

    Regardless of our agreement or disagreement with the facts of this case, what it tells us is that we are returned to the bad old days pre-Markey where courts ran roughshod over patents, finding them invalid if they, the courts, thought them obvious.

    However, let is not blame the Fed. Cir. so much. This mess was created by the Supreme Court itself in KSR.

  96. 60

    ” Re the court’s pronouncement that “secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness”: this makes no sense, read broadly. . . . Posted by: Davy Jones | Jul 26, 2010 at 01:50 PM”

    I think you’re right on this point. It’s kind of careless and a little sloppy for an appellate court to make such a categorical statement when it’s unnecessary for the case at bar. Would have been better opinion drafting to say something like, “secondary considerations of nonobviousness usually cannot overcome a strong prima facie case of obviousness, and that is true here because . . .”

  97. 59

    Re the court’s pronouncement that “secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness”: this makes no sense, read broadly.

    I don’t know, it depends on what you mean by “strong prima facie case”. If the court is saying that a really really convincing case for obviousness can’t be overcome by secondary considerations, there has to be a point where that’s true.

    If Apple makes a plain old computer but makes it blue with their apple logo on the back, and they sell tens of millions of them as a direct and demonstrable result of the blue color, surely that’s not enough to say that a color change is anything but an obvious routine modification of the prior art.

  98. 58

    Might someone be able to explain why costs were awarded to the appellant?

    This appears to be a purely “vanilla” lawsuit, and there is nothing in the opinion by the CAFC suggesting that the patentee engaged in any sort of “nefarious” activity.

  99. 57

    Two thoughts about this decision:
    1. Given the court’s emphasis on “common sense,” I can’t wait to read declarations by experts in future litigations on what does and does not constitute “common sense” in a given field.

    2. Re the court’s pronouncement that “secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness”: this makes no sense, read broadly. For example, one secondary consideration is the failure of others in the art to overcome the technical problem overcome by what is claimed. If the rest of the players in the art failed, sometimes for years and years, a prima facie case of obviousness simply cannot stand up. The court is essentially saying “I don’t care if no one else could figure your solution out – it’s still obvious.” If it were obvious, others in the field would have figured it out a long time ago.

  100. 56

    Obvious: the skilled person would have found it easy to put together the features of the claim.

    The US just has a different way of expressing itself. They say that both locks are from related fields, and each of the two features is used to achieve its own known advantages, so it’s obvious to combine them.

    What’s your argument against that, exactly? There’s no synergistic effect. The sleeve acts as a size adapter, and the seal acts as a seal, just like in the prior art. It’s textbook obviousness.

  101. 55

    Yes, but is there any corelation between the allowance rates of particular PTO art units over 103 vis a vis how well patents from such art units survive patent litigation or reexamination 103 tests?
    I doubt it.

  102. 54

    EG I just worry that if you get too many cases where mechanical-type inventions are deemed obvious based

    You’ve been whining about this for 3 years now. Meanwhile, Dennis reported last month that the PTO issued more patents in a two week period than it had ever issued over the same period in the entire history of the office.

  103. 53

    IANAE writes:

    “Unless those two features were somehow hard to combine on the same device, it doesn’t sound like an invention to me.”

    which will find resonance in Japan, where the standard text with which your application is refused is:

    Obvious: the skilled person would have found it easy to put together the features of the claim.

    I really hope we are not going to get out of the USPTO treatment indistinguishable from that at the JPO.

  104. 52

    As noted, to decide WHO is to have the common sense [and, perhaps how much?] the Court has to decide the average skill level in the art.

    So who is that legally-presumed POSITA for things like this, that are still sometimes invented by someone without any formal education, but these days are more likely to be invented by a professional mechanical engineer emplyed by a company specializing in such products?* It seems to me it has to be the later, as we can’t very well have different 103 standards for what is patentable depending on who the particular inventor was.

    *[Especially since companies do not want to be sued for accidents allegedly caused by design defects.]

  105. 51

    IANAE,

    You could very well be right that this case doesn’t necessarily evidence a bias against mechanical-type inventions when assessing patentability under 35 USC 103. I just worry that if you get too many cases where mechanical-type inventions are deemed obvious based on “common sense” (which is an easier trap to fall into with mechanical v. chemical inventions), we’ll start establishing a “double standard” for obviousness that is inconsistent with what 35 USC 103 says which is that the standard for obviousness is based on the PHOSITA in the involved art, not the type/class of invention involved.

  106. 50

    Looking backwards with the benefit of “hindsight” (as those deciding the matter inevitably must), mech eng is “predictable” but chemistry isn’t.

    I’m not sure you need hindsight to combine two known features of locks into a new lock.

    The real question here, I suppose, is what was really invented. Yes, the mechanical arts are more predictable, but that’s kind of the point. It’s trivial to mix and match mechanical features, and you know in advance that both will still work.

    Do we want people getting a patent and a 20-year head start in the market for combining known features of a known product for their original intended purpose? Unless those two features were somehow hard to combine on the same device, it doesn’t sound like an invention to me. No matter how many of them they end up selling for reasons they can’t link to the novel combination of features.

  107. 49

    IANAE so is it that 2+2 =4 is obvious but 2+2 = 5 is not obvious.

    In that case, patentability in mech is just like in chemistry.

    But it isn’t though, is it? Looking backwards with the benefit of “hindsight” (as those deciding the matter inevitably must), mech eng is “predictable” but chemistry isn’t.

    So, as EG observes, mech eng now has it tougher than the chemists.

    That is, until the PTO adopts EPO-PSA.

  108. 48

    Max: IANAE I agree, but for a jury member it might be quite persuasive, that the very party who would have you believe that the claimed subject matter was screamingly obvious was, earlier, trying his hardest to persuade the PTO to recognise it as brilliantly inventive.

    That’s why rules of relevance become rules of admissibility when there’s a jury involved. If the evidence is persuasive but not relevant, you don’t want the jury hearing it at all.

    LJ Skies: More generally, does this case mean that jury findings really have no real weight in obviousness determinations?

    No, it means that if you want your jury findings of fact to hold up on appeal, you have to specifically ask the jury to explicitly find that fact, rather than simply asking for a conclusory verdict. Because juries unfortunately don’t write reasoned opinions when they’re asked a yes/no question.

    7: the insanity of MM, who thinks every applicant is a cheat, every attorney is a cheat, and that there are always insidious motives for getting a patent.

    Not every applicant or attorney is a cheat, but these systems invariably seem to be designed in response to the cheats, to curtail their cheating so it doesn’t ruin the system for everyone.

    EG: mechanical-type inventions are going to have a much more difficult time passing muster under 35 USC 103 in view of KSR International.

    The problem isn’t with mechanical inventions per se, it’s with mechanical inventions that combine one thing that is known to be a good feature for locks with another thing that is known to be a good feature for locks, to come up with a new lock. That’s exactly what the court found obvious in KSR, and it’s exactly the sort of thing you’d expect a person skilled in the art to come up with.

  109. 47

    To EG: Did TSM suffer from hindsight?

    I ask because EPO-PSA is a specific TSM test, that proceeds in lockstep with the “common sense” of the PHOSITA.

    For the life of me, I cannot see what there is in KSR and the newest CAFC caselaw that would prevent a PTO Memorandum to Examiners, to adopt EPO-PSA lock, stock and barrel.

    Quite the contrary. In KSR, the obviousness analysis is “Starting with Asano…” and “Starting from Rixon…”. In the EPO, it is “Starting from D1..”

  110. 46

    I wonder what a Stevens-like compendium on the dangers of hindsight would look like.

    100+ pages?

  111. 45

    “However, there is something about the judgement which is unsettling.”

    Paul,

    I couldn’t agree with you more. This case “screams out” about the potential danger of using “hindsight” when it comes to mechanical-type inventions. The courts have got to be very careful about using the “common sense” logic of KSR International or we’re going to have some rulings that create an intellectual cul-de-sac for determinations under 35 USC 103.

  112. 44

    Red Monkey,

    Sometimes, asking the right question (on which a search would necessarily come from) is half the effort.

  113. 43

    This is another case in the Leapfrog vein: mechanical-type inventions are going to have a much more difficult time passing muster under 35 USC 103 in view of KSR International. The result here isn’t necessarily wrong (I think the argument made for non-analogous art is pretty weak), but I think it points out the disparity between how mechnical-type inventions are assessed (more “common sense” rulings) compared to chemical-type inventions in determining obviousness under 35 USC 103.

  114. 42

    The problem with obviousness determination is the guy making it sees the answer first, and then the clues (prior art). There should be a way to pose the problem and provide the prior art first, then ask the factfinder to come up with a solution.

    Why can’t they have one examiner do the search, and then give the search results, and a statement of the technical problem to be solved, to another examiner who hasn’t seen the answer yet and ask him what he would come up with based on the search results?

  115. 41

    D Stevinson,

    I realize that you must also appreciate that Malcolm cannot see what even the horse can see because Malcolm is associated with the other end of the animal, away from the hitch.

  116. 40

    … if the claimed invention is so simple that even a former liberal arts graduate [now a judge] can very easily understand it?

    The role of common sense is to the PHOSITA, not to the judge. If the art is simple, then the level of common sense is also simple; likewise, when the art is complex, the level of common sense also changes.

    If any judge thinks that the case depends on her level of common sense, that judge is sadly mistaken.

  117. 39

    If it was commercially successful some people must have thought the improvements were worth the extra buck or two.

    News flash: “pet rocks”.

  118. 38

    Fully agree with D. Stevinson above – if “obviously” this invention was so “obvious,” why did nobody come up with it before?

    Stoopidest. Argument. Ever.

  119. 37

    It does not seem, looking at the patent and the cited prior art that any other judgement was appropriate.

    However, there is something about the judgement which is unsettling. Perhaps it is the reference to deciding according to common sense: on the whole courts should decide according to the evidence. And when the court decides according to common sense, then there is a level of expertise and judgement which is not made public pre-decision and not tested in cross-examination. Common sense is a virtue which, notwithstanding KSR, is best exercised silently.

  120. 36

    Since the Supremes used the term “common sense” in KSR not just once but several times perhaps one needs to look at the context?
    One clear KSR message was that a POSITA of, say, the art of left handed money wrenches, may be presumed to have enough common sense to look into the public body of varous other twisting or tightening arts to find something to add without necessarily becoming an inventor in the patent sense.
    However, it is also hard to disagree with the above suspicion that a jury verdict of “not proven invalid” may be more likely to get reversed on 103, especially after KSR, if the claimed invention is so simple that even a former liberal arts graduate [now a judge] can very easily understand it?

  121. 35

    “New, useful, and non-obvious to a person infused with common sense and having ordinary skill in the art to which the subject matter pertains.”

    I can see, more or less, objective evidence being presented that is directed to “new”, “useful”, and “ordinary skill in the art”. However, the type of evidence one must present regarding “common sense” eludes me. Perhaps, we can avoid the problem by using voir dire to seat juries comprised entirely of PHOSITAs having common sense. In bench trials there would always be the option of filing a motion for recusal.

  122. 34

    The best answer as to the real lesson here:

    1) Master Lock has better connections
    2) Any patent is bad
    3) Secondary considerations are secondary citizens in the world of 2)
    4) 30 years means nothing because common sense is ageless

  123. 33

    Best chuckle in this string is Stevinson’s farm animal.

    Public interest …
    Aren’t we better off with a patent system that encourages inventions like this new hitch lock to make it to market? And for the backers to make a few bucks for their few years of exclusivity? How much was Wyers beating us up for their better lock? If it was commercially successful some people must have thought the improvements were worth the extra buck or two. How is this a bad thing for the public interest?

    And if it was obvious for 30 years shouldn’t MasterLock at least have to make some credible statement about why they were holding back?

  124. 32

    “”…However, the fact that Master Lock claimed that its external seal was novel [in its own patent application] bears no evidentiary significance; Master Lock’s patent application should be treated no differently than a patent application by a third party…”

    Wyers should file a reexamination with MasterLocks whole defense highlighted and annotated on MasterLocks similar patent. Sauce for the goose.

  125. 31

    The US patent system is increasingly becoming a place where a small inventor need not apply.

    Exactly the message the anti-patent, huge conglomerates want you to believe.

  126. 30

    The information we’re missing and probably will never know is whether there was any offer to settle the case before going to trial.

    Obviousness aside, I am troubled by CAFC ignoring a jury verdict when the trial court’s record admittedly lacked the very information needed for CAFC to overrule the jury verdict.

    The US patent system is increasingly becoming a place where a small inventor need not apply.

  127. 29

    So, tell me, Skies, how much more “sparing” should the PTO be, about spewing out patents which limit not only the rights of an individual but the rights of the entire public (except those licensed to operate within the claims).

    How anyway do you “prove” beyond doubt that something, as a fact, is obvious? Obviousness is a matter of law, right?

  128. 28

    “if “obviously” this invention was so “obvious,” why did nobody come up with it before”

    “Maybe they did. How do you know they didn’t?”

    It seems to me that that is turning the law upside down. The burden of proof in this case in on the PTO.

    In other words, an applicant is entitled to a patent UNLESS … and must prove its case, which, it seems to me, it did not. As a judge put it one time in an unrelated situation, a court has extraordinary powers to limit the rights of an individual but should use them very sparingly.

  129. 27

    “This, I submit, is why Applicants are “coming up with” requests for the grant of a patent on stuff like dirt seals and shim/spacers. In earlier times, they would have had more common sense, and more integrity, than to bother.”

    I think it is perhaps less insidious than you think. A company comes up with an improved widget, even if it is a small incremental improvement, and doesn’t want a competitor to be able to just copy it. So they file a patent application.

    You’re an interesting poster, and usually don’t drop into the insanity of MM, who thinks every applicant is a cheat, every attorney is a cheat, and that there are always insidious motives for getting a patent. Don’t start now.

    “Now if the USPTO were to adopt EPO-PSA, such absurd apps would be weeded out in short order, leading to the reduction of the backlog and the return of something approaching sanity in the judgement what is worth filing on.”

    PSA is just as subjective as 103. You always try to make it out to be some objective standard, that will always get any examiner to the exact same result, but that couldn’t be farther than the truth.

    I think the EPO does many things right, but PSA is only slightly less of a pile of rubbish than the current case law on 103.

  130. 26

    I thought it wouldn’t be long before somebody “came up with” that old, old saw:

    “if “obviously” this invention was so “obvious,” why did nobody come up with it before”

    Here, “it” is those ages-old concepts of i)a seal to keep dirt out, and ii) using a shim as a spacer.

    Imagine a PHOSITA “coming up with”:

    “Eureka. That’s cracked it. Of course. A seal. And a shim. Now the company can really motor. Quick, call the patent attorney”

    Or, imagine management calling by, and “coming up with”:

    “Anything that you think might be new, tell us, no matter how uninspired you personally think it is. It is not your job to discount it as being “obvious”. The lawyers take care of that. Fact is, we need as many patents as possible, if only as defence measures and to reassure our investors. When we discuss the price of our shares, they keep asking me how many patents we have got. We need a patent portfolio”.

    This, I submit, is why Applicants are “coming up with” requests for the grant of a patent on stuff like dirt seals and shim/spacers. In earlier times, they would have had more common sense, and more integrity, than to bother.

    Actually, devoting a big budget to patenting obvious stuff is a rational response to the current behaviour of the investors and the courts, isn’t it?

    Looking at things that are today, as a matter of technology, totally obvious, it might not be obvious that to implement them today will increase our profits tomorrow.

    Things that were, up until the 1990’s, obviously not worth filing on have become, today, obviously worth filing a patent application on.

    Now if the USPTO were to adopt EPO-PSA, such absurd apps would be weeded out in short order, leading to the reduction of the backlog and the return of something approaching sanity in the judgement what is worth filing on.

    But much more valuable than that, it would lead to the filing of apps that disclose and enable what was the “real” invention, in the provision of the dirt seal and the spacer in this specific technical field, leading to the due issue of patents that the courts can presume valid, and then find valid.

    But, those of you with a wealth of experience of prosecution of mech. eng. cases at the EPO, argue with me please. I’m here to learn.

  131. 25

    “if “obviously” this invention was so “obvious,” why did nobody come up with it before”

    Maybe they did. How do you know they didn’t?

  132. 24

    “Well, No duh, to a PHOSITA, the technology is always easily understandable ”

    You need to be introduced to some more complex arts. Apparently, you’ve never touched on one. The tech isn’t always “easily understandable” to POSHITA. In fact, that has helped more than one case get approval from me.

    In any case, I have a question for you guys: why has the government not required juries to show their factual findings, at least in the patent infringement context?

  133. 23

    Fully agree with D. Stevinson above – if “obviously” this invention was so “obvious,” why did nobody come up with it before? Why did the jury not see the obviousness of this “obvious” invention? Can you say “hindsight”?

    More generally, does this case mean that jury findings really have no real weight in obviousness determinations? If so, are we back to the eternal question: how can an examiner (who is typically not an attorney) come up with a legal conclusion of obviousness, if factual findings are given no real weight based on this case?

  134. 22

    On a more serious topic, Wyers is a little odd, but perhaps it’s the Supreme Court’ fault for bringing “common sense” into it in KSR.

  135. 21

    stepback, the 3/5 Compromise was, as the title suggests, a compromise, not an appeal to common sense. The slave states wanted slaves counted the same as other citizens when it benefited them (i.e. representation in Congress), but didn’t want to treat them like actual people for other purposes and certainly didn’t want slaves to increase their tax liability. The “compromise” put off the slavery dispute until the Civil War; it wasn’t an appeal to common sense.

    Your underlying point is valid–judicial appeals to “common sense” often misguided assumptions that “I’m obviously right and most people think the way I do,” but the analogy you use undercuts it.

  136. 20

    Well, we’ve been through the way (Bahr) that the USPTO will apply the “abstract” of Bilski. There is just such an easy way for the PTO to apply KSR’s “common sense”, namely, use EPO-PSA to write a “prima facie” argument that the claimed subject matter is “common sense” and therefore “obvious”, and wait for Applicant to rebut it.

    EPO-PSA is useful here because it proceeds in a sequence of steps (honed by 30 years of consistent application in the EPO), each one of which being fully in line with the “common sense” of the PHOSITA.

    One nice thing about it is that it runs as a “TSM” program, which squeezes out any application of hindsight.

    A second nice thing is that it gives the inventor full credit for the description of the invention given on the filing date. It encourages one to be careful what to ask for, and what you say your invention is.

    If an inventor is unhappy about the outcome at the PTO, it is free to appeal.

    But, having read KSR, and now this case, I cannot see where an appeal court is going to quarrel with the result delivered at the PTO by EPO-PSA, provided of course that the USPTO applies it correctly (including confining the “starting point” prior art reference to something that, in the light of the app as filed, would have been “realistic” to the correct PHOSITA at the correct time).

    And it might help with the backlog. Obviousness at the EPO is usually resolved very quickly.

  137. 19

    Common sense is neither common, nor makes sense (in hindsight as one steps back for the moment, as the illustrious Step Back illustrates)

    Hindsight may be 20/20, but so many people cannot see how insidious hindsight is in the patent arena.

  138. 18

    Oh oh.

    Me common sense musta left me.
    I forgot this one:

    It is common sense that dark-skinned persons are subhuman and therefore must be counted as being only 3 fifths of a light skinned person –US Constitution.

    See
    link to en.wikipedia.org

  139. 17

    Does “common sense” differ between those skilled in the art and the ordinary person?

    @curious,

    There is no such thing as common “sense”.

    What does exist is common “nonsense”.

    The first example of common “nonsense” is mass acceptance of the notion that there is such a thing called “common sense” in the first place and that when a first arguer asserts the doctrine of “common sense” it immediately places the second debater in the position of being a drooling id-iota who resides outside the sensibilities exhibited by even the most common (and lowest denominator) of the extant population.

    It is “common sense” that the Sun rises in the East and sets in the West.

    It is “common sense” that you should not punch a man just below the sternum when he is choking on a piece of food.

    It is “common sense” that a piece of light “foam” flung at a metal wing (or ceramic covered wing) can do no harm to the wing, especially when the wing is attached to a mighty vehicle bearing the insignia: “USA Space Shuttle”.

    It is “common sense” that the Titanic is unsinkable.

    Can you think of any more common sen-says like the above?

    How about this one? It is common sense that the chemicals called manganese and magnesium sound alike and therefore they must be substantially equivalent to one another (Graver Tank).

  140. 16

    Wow! Obvious?

    So I’m wondering why did this next evolution of hitch-pin development take 30-years to make it to market, and do so with such great commercial success? I emphasize the “commercial success” aspect because that is why companies either innovate (commercial success) or resist innovating (commercial failure).

    If it is “obvious” that one can make more profit and increase sales by combining two elements – one tends to make that innovation – don’t they? And yet it didn’t happen for 30-years? Hmmmmm? And when it did happen via Wyers, Master Lock suddenly got religion or “obviousness” and stomped on the market making new found millions with an “obvious” idea that they failed to see for 30-years! It is great to be in America where the small innovators can get picked off by behemoths?

    Oh, but today, looking back…yes…yes…yes…it was just soooo obvious that a farm animal well versed in the art of riding in the back of a farm truck looking down at that trailer could have seen it!

    Intermittent wipers were obvious too! Oops! No they weren’t, but that took 15-20 years for the little guy to win. Maybe there is a movie to be made here too?

  141. 14

    and the court can apply its own common sense (and not a PHOSITA’s)

    OH no you don’t – the PHOSITA is the player and the common sense belongs to the PHOSITA (even if it is the court deciding what sense the PHOSITA would find common).

  142. 13

    Such an approach is particularly appropriate when the technology is “easily understandable.”

    Well, No duh, to a PHOSITA, the technology is always easily understandable – that’s a basic component of being skilled in the art.

    Actually Dennis said this; the court didn’t. (Not in this case, anyway.) The “approach” at issue is the use of “common sense” in making the legal determination of obviousness. When the technology is “easily understable,” then expert opinion (on what a PHOSITA would know, which is a question of fact) is not necessary, and the court can apply its own common sense (and not a PHOSITA’s). The Federal Circuit essentially says that the District Court should have done that here.

  143. 12

    But when a party puts forward a claim for examination at the PTO, we the jury can reasonably conclude that the party was, by that very act, requesting the PTO to acknowledge the claim as meeting the provisions of 35 USC 103. In other words, that party was indeed representing to the PTO, in all good faith, that the claimed subject matter is not obvious.

    Yes, but the party is not representing that he’s done a scorched-earth validity search before presenting that claim. Wyers’ argument is just silly. It would be different if the litigation took place before the prosecution of MasterLock’s claims. And, as Malcolm suggests, it WILL be different when MasterLock tries to assert its own similar patents. Timing is everything.

  144. 11

    In considering the following item put forth by the court for a PHOSITA, would there ever be an instance when the circumstance would prescribe an answer of “No”?:

    Such an approach is particularly appropriate when the technology is “easily understandable.”

    Well, No duh, to a PHOSITA, the technology is always easily understandable – that’s a basic component of being skilled in the art.

  145. 10

    “I can tell you this: there is little doubt that MasterLock made admissions in this case that can and should be used to tank patents in its own portfolio or at least render them unenforceable.

    That’s why a lot of these cases settle (and the public is asked to pay higher prices for the products by the patentee).

    Posted by: Malcolm Mooney | Jul 23, 2010 at 06:45 PM”

    I agree. Probably also a big driver of cross-licensing agreements.

  146. 9

    I think the point is that it is unusual that a party in the shoes of Master Lock/accused infringer would not be estopped from making the defense it successfully played here. IANAE explained why that exception to the general rule makes sense–because patent invalidity affects not just (or even primarily) the accused infringer, but rather, the public as a whole.

    There is also the matter of time passing and other facts becoming apparent.

    I can tell you this: there is little doubt that MasterLock made admissions in this case that can and should be used to tank patents in its own portfolio or at least render them unenforceable.

    That’s why a lot of these cases settle (and the public is asked to pay higher prices for the products by the patentee).

  147. 8

    That set me thinking Malc.

    When one asks for a patent, one does not actually state that one’s stuff is novel, does one?

    But when a party puts forward a claim for examination at the PTO, we the jury can reasonably conclude that the party was, by that very act, requesting the PTO to acknowledge the claim as meeting the provisions of 35 USC 103. In other words, that party was indeed representing to the PTO, in all good faith, that the claimed subject matter is not obvious.

    What am I missing?

  148. 7

    Max Drei, Malcolm Mooney–

    I think the point is that it is unusual that a party in the shoes of Master Lock/accused infringer would not be estopped from making the defense it successfully played here. IANAE explained why that exception to the general rule makes sense–because patent invalidity affects not just (or even primarily) the accused infringer, but rather, the public as a whole.

    In other contexts, doctrines such as judicial estoppel might have prevented a party from asserting mutually inconsistent claims–basically, a legalistic “you can’t have your cake and eat it too”. And note, of course, this is not the same as making mutually inconsistent claims in the same pleading–here, it’s more a question of winning in Proceeding One by persuading the factfinder that A is true, and later, before a different factfinder, (but under circumstances that otherwise vitiate against issue preclusion), arguing that NOT A really is true.

  149. 6

    that the very party who would have you believe that the claimed subject matter was screamingly obvious was, earlier, trying his hardest to persuade the PTO to recognise it as brilliantly inventive.

    Stating that something is novel is equal to “trying … hardest to persuade the PTO to recognize it as brilliantly inventive”?

    What am I missing, Maxie?

  150. 5

    IANAE I agree, but for a jury member it might be quite persuasive, that the very party who would have you believe that the claimed subject matter was screamingly obvious was, earlier, trying his hardest to persuade the PTO to recognise it as brilliantly inventive.

    I suppose this is the very point that prompted M Mooney’s contribution up above?

  151. 4

    Having quickly skimmed the Decision, I see three successive conclusions of obviousness, as follows:

    1. It was common sense. So, obvious.

    2. It was predictable. So, obvious.

    3. It was common sense. So, obvious.

    I think I prefer the EPO approach, of toggling between the “technical features” disclosed in terms in the app and in the prior publication relied upon, and the “technical effects” also revealed both in the app and the cited art.

    I prefer it because with it I can predict the outcome.

    Thinking particularly about higher tech cases than padlocks, esoteric PhD stuff that is not easy for a lay person to grasp, I don’t know whether “common sense” or “predictable” is any improvement on “not abstract”. Do you?

  152. 3

    just the party raising the defense in the suit.

    As the court astutely pointed out, invalidity is a matter of public interest. Invalid patents should be invalidated.

  153. 2

    “…However, the fact that Master Lock claimed that its external seal was novel [in its own patent application] bears no evidentiary significance; Master Lock’s patent application should be treated no differently than a patent application by a third party…”

    yah… minutiae. just the party raising the defense in the suit.

  154. 1

    Reason chalks up another victory over the smooth-talking trial lawyer. Hopefully each member of the jury reads the case and learns something.

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