Lack of “Engineering Details” in Claim Hampers NonObviousness Argument

Martin v. Alliance Machine (Fed. Cir. 2010)

In considering secondary indicia of nonobviousness, Chief Judge Rader tends to focus on whether a nexus exists between the presented objective evidence and the invention as claimed. Here, Judge Rader applied a similar methodology in examining the differences between the prior art and the claimed invention. (Deere).

Martin's patent covers an improved machine for splitting cardboard bundles. The patented design uses top-down pneumatic pistons to hold the bundles in place. The prior art design uses bottom-up pneumatic pistons. In arguing non-obviousness, Martin's expert pointed-out that it would not work to simply flip the prior-art design on its head. Rather, any such conversion would require extensive engineering detail. Judge Rader rejected that argument — holding that the "engineering details" argument was irrelevant because the claims did not identify any of those details.

[Martin] relies on the testimony of Alliance’s own Director of Research and Development that, “from an engineering standpoint,” one cannot simply take the Pallmac design and flip it from bottom to top. That testimony, however, is irrelevant to the obviousness analysis. With one exception, discussed below, the claims themselves do not recite engineering details but merely require that the compliance structures be mounted to clamps that are “above” the conveyor belts.

After rejecting all of Martin's nonobviousness arguments, the appellate panel affirmed the lower court's invalidity holding.

22 thoughts on “Lack of “Engineering Details” in Claim Hampers NonObviousness Argument

  1. 22

    really interesting points. I’m a business writer and the rationale is the same in writing for keeping it clear, simple & concise. If you confuse your reader or presentation audience with too many words, concepts or angles, you create the same effect as the amateur photographer using an over-stuffed composition – confusion and ultimate loss of interest. so now link my name to see my website.

  2. 20

    Inviting, I hope you are beginning to see just how bad a judge Rader really is. When he wants to decide a case a certain way, he will trample on both the law and facts at will, creating an ungodly mess for others to figure out whether we should learn something from the case or not.

    The case here generally depended on lack of details in the claims of “how” the top clamp worked. From that view, the claimed subject matter was merely a flip of the bottom clamp. But claim 7 did include details of how. But that claim was dismissed by resolving all inferences against the patent owner that the subject matter of the claim was obvious as a matter of law. Under any fair interpretation, there was evidence sufficient to support a jury verdict of unobviousness. The case should have been retried with respect to this claim.

  3. 18

    One thing in this decision really bothers me:

    when Rader J. ruled that testimony to the effect that “‘…from an engineering standpoint’, one simply cannot take the Pallmac design and flip it from bottom to top.” was “…irrelevant to the obviousness analysis.”

    I think that’s just plain wrong. Differences between the invention and the prior art are ascertained, then the level of OSITA is determined. It is not the simple understanding of the structural recitation in the claim that must be within the grasp of the PHOSITA, but instead, it is how to achieve those structures that must be within the grasp of the PHOSITA.

    In this instance, HOW to do it may well have been within the grasp of the PHOSITA, but it is certainly NOT irrelevant.

    On the contrary, it is critically relevant, and along with a few other things, is the very crux of the analysis.

    More carp from the FedCir. Patent law and decisions are a mess that is getting worse with nearly every new decision.

  4. 17

    6 – the “prior unsuccessful attempts” were the prior art machines that functioned poorly.

  5. 16

    You suggest it should have gotten to a jury.

    The Feds should have ordered a retrial limited to claim 7.

    Po-tay-to, po-tah-to.

    Sounds like we are pretty much in agreement. This was not a suitable case for deciding as a matter of law.

  6. 15

    All, the opening post says the claims did not have the technical details that enabled the top compliance clamp to be successful. That may be true of most claims, but not of claim 7. It recited the key feature that made the top compliance clamp work effectively.

    IANAE, I am glad you agree that the evidence of non obviousness was there for claim 7. You suggest it should have gotten to a jury. But it did get to a jury, and the jury hung. The 9th circuit law’s is that when there is a hung jury, the case can be decided as a matter of law if considering all the inferences in favor of the party against whom the judgment is rendered there is only one possible verdict.

    To any fair reader, the secondary consideration inferences concerning claim 7 pointed primarily in one direction, that closely spacing the platens were not obvious. That there may be evidence pointing to obviousness as well is ENTIRELY BESIDE the point. This is JMOL from a question of fact assigned by our constitution to be decided by a jury. All inferences have to be decided in favor of the patent owner here. The law requires the inference of non obviousness to be accepted as established fact.

    The Feds should have ordered a retrial limited to claim 7.

    But, it did not. This is one more example of the many recent examples where the Fed. Cir. is imposing its own judgment concerning obviousness when the factual evidence is disputed and constitutionally must be decided by a jury (on request).

  7. 14

    “Regardless of the independent claim and other dependent claims being obvious, this claim clearly was valid given the prior unsuccessful attempts of others to solve the problem. Clearly, this is strong secondary evidence of non obviousness.”

    LOLOLOLOLOLOLOL. Which attempts? The decision just said that there were no such attempts documented.

  8. 13

    Max: I don’t think that the rules are fundamantally different for chemistry. But as it is an unpredictable art, it is often easy to establish a surprising new result.

    But if an invention needs certain features to solve the problem which it addresses, and those features somehow do not find their way into the main independent claims, then those claims are likely to be difficult to assert.

  9. 12

    Paul, nice as ever, to read your stuff. But see my answer to Ned below and (if you would be so kind) tell me if obviousness is any different in chemistry, where people do seem to get away with claiming all ways to solve the known problem.

    Ned, if you write:

    “this claim clearly was valid given the prior unsuccessful attempts of others to solve the problem”

    I (and R Rader too, it seems)expect to see in that claim the technical features that cracked the problem, not merely a statement of the problem that everybody was already intent on solving.

    As for “closely spaced” is there not a 112 issue there? At what point does “closely spaced” become novel, and if the infringer is almost but not quite as “closely” spaced as patentee’s Best Mode, is it still an infringement?

  10. 11

    Two other prior top “compliance” machines had failed, they had problems that made them non usable commercially, primarily because they did not have closely spaced platens.

    Yes, they were non-usable commercially, but the court found that they were operational for smaller bundles. Claim 7 was essentially a quantitative tweak that increased to commercially-useful levels the throughput of an already useful (from a patent perspective) machine. And even that is subject to whether “closely spaced” can reasonably be construed to mean “of increased surface area”, which is not justified in the Circuit decision.

    It’s arguably enough of a factual dispute to take the case to a jury, but I wouldn’t call it a terribly strong case for non-obviousness.

  11. 10

    The Trust argues that if the solution were so simple, someone at Visy or Alliance would have suggested it.

    Glad to see that Rader recognizes the lameness of this “argument.”

  12. 9

    Claim 7 recited the key advance that made the top compliance system work vs. the prior art top compliance systems. Two other prior top “compliance” machines had failed, they had problems that made them non usable commercially, primarily because they did not have closely spaced platens. In deciding claim 7 was obvious, the court said this:

      The one design specification contained in the asserted claims can be found in the dependent claim 7 requirement that the platens be “closely spaced.” The district court held that the “simple solution” of enlarging the surface area of the platens would have been apparent to one having ordinary skill in the art based on the “fundamental and basic principle of physics” that Force = Pressure × Area. JMOL Opinion, 634 F. Supp. 2d at 1037. This court again agrees with the district court. The Trust argues that if the solution were so simple, someone at Visy or Alliance would have suggested it. The record only shows that Visy and Alliance employees tried to trouble-shoot or repair the Visy machine, not redesign it. Thus, their failure to suggest a redesign does not create a reasonable dispute. Indeed, Visy’s Mr. Fankhauser testified that the relationship between pressure and area was “straightforward.”


    Regardless of the independent claim and other dependent claims being obvious, this claim clearly was valid given the prior unsuccessful attempts of others to solve the problem. Clearly, this is strong secondary evidence of non obviousness.

  13. 8

    Everything in this case doesn’t favor the patentee on the validity issue: (1) use of Jepson claim format (not a good idea these days as everything in the preamble is now admitted prior art); (2) at least one prior art device that existed with a date before the filing date of the patent and which showed every feature in the claims; (4) arguing features that aren’t in the claims; and (4) no nexus between the “secondary considerations” and the features argued for the claimed invention. The final verdict here is hardly a surprise to me.

  14. 7

    I’m not getting Rader here – this is a common novice Examiner error – thinking that secondary indicia of nonobviousness need to be recited in the claim. They do not, never have been. This decision is now challenging that.

  15. 6

    Max: What is important in my view is:
    — providing a starting point reference in the prior art which is a well-defined and specific prior publication or prior use,
    — identifying ALL the differences between the disclosure of that reference and the new invention for which a new result can be identified and
    — explaining both the differences and the corresponding results in the application as filed.

    If skillfully done, this should not involve breaking the rules on “patent profanity” which are rightly emphasized by many US practitioners.

    If that procedure is followed, then the eventual patentee will inevitably have a document which sets out an advantage which can be relied in court in support of patentability. If there is prior art A for which a complete set of differences and associated advantages X is identified, and closer prior art B subsequently comes to light for which there is a smaller set of differences X1 then if the task has been completed correctly then X1 must be a subset of X, and there should be surviving differences mentioned in the specification and enforceable claims covering those differences. Having the differences in the specification for judge and juror to see is far more convincing than anything dredged up with hindsight.

    The “afterthought of an astute trial lawyer” phrase, of course, comes from the opinion of the US Supreme Court in the Adams Battery case and will be well known to our US colleagues.

  16. 5

    Based upon Paul’s summary, I agree with Paul that the distinction being argued was not emphasized at all in the original application.

    Can’t say I haven’t been there arguing limitations or configuration that were not the focus of my original claims.

    I believe in a case where the patent discussed the issues with creating top down and/or its advantages over bottom up, the claims should and would be allowed whether limitations related to the engineering of top down were included or not.

  17. 4

    ….and, Paul, this is not the sort of case where the inventor can plead the impossibility of setting the contribution to the art, from the outset, relative to the relevant prior art background. The technical field was very specific indeed, and the art was prior published and from within that field.

    Will this case help to raise drafting standards? Is that what Rader is pushing for?

  18. 3

    In all of these cases much useful information can be gained by a brief study of the published patent specification.

    Paragraph [018] says that the essence of the invention is the provision of a fluid pressure compliance structure to provide reliable breaking of multiple side-by-side bundles from multiple side by side logs by applying equal pressure to all of the logs and severed bundles. In other words, what was originally regarded as the essence of the invention at the time of filing is not what was put forward as the essence of the invention, or indeed anything significant to do with the invention when the case reched trial. Not invariably fatal to assertion of the patent, but definitely something to go into the “bad fact’ column of the patentee’s analysis.

    Several further object clauses appear in the SUMMARY OF THE INVENTION but none of them refers to flipping a prior art design from bottom to top. A search of the published text using the keywords TOP and UPPER reveals nothing suggestive of any engineering difficulty in flipping a prior art design, or indeed any engineering difficulty relevant to the claimed invention.

    The case put forward at trial appears to be the afterthought of an astute trial attorney, there is no discussion in the specification of any flipping difficulty, in which case what was the merit of the flipping argument (no profanity implied or intended)?

  19. 2

    I didn’t read the decision, but from the post alone, the argument doesn’t seem to add up. The claims recite a difference. Expert says that this difference inherently requires complex engineering to implement, i.e., is not an obvious variant of the prior art. Presumable the spec. is enabling re. that engineering. WHY should the claims need to specify the details of the solution for the argument to be valid? What did I miss?

  20. 1

    Obvious (JMOL) because it would have been, at the time, “common sense” to throw out the specific bottom-up pusher shown in the best mode machine featuring in the drawings in the prior patent, and replace it with some sort of top-down pusher.

    As the obviousness analysis, from Chief CAFC Judge Rader, is that it? Anybody else find that a little…..scary?

    The future, for inventors in engineering and physics: did it just get even more gloomy?

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