Tokai Corp. v. Easton Enterprises (Fed. Cir. 2011)
Tokai’s patents relate to a safety switch the type of long-nozzle lighters that are often used to light barbecues and patron saint candles. Easton has allegedly sold more than 9-million infringing lighters in the US. The district court construed the claims broadly – leading Easton to admit infringement but successfully challenge the claims as obvious. The district court’s obviousness finding came on summary judgment after the court excluded Tokai’s expert testimony (since the plaintiff had not submitted written reports during discovery) – finding no “genuine issue of material fact as to the obviousness of the asserted claims.”
On appeal, the Federal Circuit affirmed – holding that the district court had properly excluded the expert testimony and that the obviousness determination was correct.
Lets focus on obviousness:
Conventional wisdom over the past twenty years has been that summary judgment is useful for resolving issues of infringement and novelty, but that obviousness challenges are rarely resolved on summary judgment. Although ultimately a question of law, judges often leave the obviousness question for a jury. That conventional wisdom may have changed in 2007 when the Supreme Court decided KSR v. Teleflex, 550 U.S. 398 (2007). In that case, the Supreme Court wrote what looked like a summary judgment decision finding the asserted patent invalid as obvious.
The question of obviousness is defined in 35 U.S.C. § 103(a). The statute considers the differences between the patented invention and the prior art and whether, in light of those differences, a person having ordinary skill in the art would have found the invention obvious at the time of the invention.
Clear and Convincing + Added Burden: A question raised on appeal relates directly to the Supreme Court’s upcoming decision in Microsoft v. i4i. Here, some, but not all, of the four prior art references had been considered by the USPTO during prosecution. The patentee argued that the court should have provided more deference to the PTO. On the other side, the defendant argued that much less deference should be given to PTO decisions because the PTO had not considered “key” elements of the obviousness argument. On appeal, the Federal Circuit affirmed that the current law-of-the-land requires clear and convincing evidence to invalidate a patent and that an “added burden” is not required when the obviousness question is based on at least some evidence not considered by the PTO.
Conclusion of Obviousness: In arriving at its conclusion that Tokai’s asserted claims were obvious, the appellate panel looked at the fact that the components of the claim are “simple mechanical parts that are well known in the art;” that “a need for safety utility lighters was recognized in the art;” that similar safety switches were already available for cigarette lighters (an admitted analogous art); and that the art is “predictable.” As in KSR, the appellate court here held that the “identified, predictable solution” to the “known problems” were within the grasp of a skilled artisan.
It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters, as disclosed in Floriot and/or Morris, to fit a utility lighter as disclosed by Shike, even if it required some variation in the selection or arrangement of particular components.
Invalidity affirmed.
In dissent, Judge Newman lauded the importance of the invention and explained her view that the patents were valid.
The Tokai lighter has an ingenious safety design, whereby the device is simple to operate by adults but not by children, unlike prior art utility lighters, and locks automatically after use, unlike prior art utility lighters. The Tokai safety structure does not result from direct combination of the prior art. Nonetheless the district court, and now this court, hold on summary judgment that the asserted claims of the Tokai patents are invalid for obviousness. I must, respectfully, dissent.
. . . .
The determination of obviousness is not whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles. The question is whether it would have been obvious, without knowledge of the patentee’s achievement, to produce the same thing that the patentee produced. This judgment must be made without the benefit of hindsight. It is improper to take concepts from other devices and change them in light of the now- known template of the patented device, without some direction in the prior art that would render it obvious to do so.
In a crowded and competitive field such as this is stated to be, a modification that achieves a valuable improvement is of significance in view of the many entrants seeking commercial advantage. As the Hummer court recognized, incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.
Got what?
If, that the accused device lacked the feature in the claims not found in the prior art, then I did not get that from anywhere. I’m asking if that is the case.
If, that Tokai argued for a broad construction to read on such a device, thus leading the court to read out of the claims the feature not found in the prior art, then I did not get that from anywhere either. I’m asking if that is what happened.
If, that construing the claims to read out the limitation to the feature not found in the prior art would explain why the claims were found to be invalid over a combination of art that did not teach that recited feature, then I don’t know how to explain that to you any more clearly.
If, that such a set of facts would impact the precedential meaning of the case, I learned in lawl school that distinguishing a case on significant facts leading to the outcome can prevent it from having a starre decisis effect compelling a similar outcome in a case lacking those significant facts.
I still very much want to read the lower court’s slip op on the claim construction to which the CAFC deferred. Is there no one who can guide me to the slip op?
I retract my former suggestion that invalidity is not a proper SJ issue.
My initial difficulty came from trying to maintain the 282 presumption during the Rule 56(c)(1) procedure.
I’ve worked it out, and I understand. You guys were right.
Here’s a question: on a, say, 103 invalidity SJ motion, is JMOL ever denied to either party? If so, what else can happen during the course of the trial that would aid the court in determining the issue?
I think the claims appear to be limited to the locking mechanism locking the trigger, as opposed to the valve, while the prior art safety devices lock the valve. Does anyone disagree?
I noticed that Dennis mentioned the broad construction of the claims by the court, and I see in the decision that the CAFC references that construction, but I have not been able to locate any information on the claim construction. Does anyone know where I can find it, or if the Court construed the claims broadly enough to read on blocking the valve instead of the trigger?
Alternatively, does anyone have information on whether the safety mechanism of the accused device blocks the valve instead of the trigger? If Tokai argued for such a broad construction to read on such an accused device, that would explain everything, and prevent this case from serving as precedent that nothing is patentable unless there are either (a) unexpected results; or (b) a flash of genius exhibited by a person of extraordinary skill slumming it in an art where the average PHOSITA does not have a genius IQ.
“Another fact in favor of the obviousness finding”
The chuckles here Sunshine, is that facts are for juries, so this “another fact” is also swept aside.
Can’t be a saint unless he’s died.
My, that was interestin.
OMG – I am IANAE – Nirvana at last!
This comment system is a trainwreck.
Yummy.
Idk, but if you plug me into my art I become dam near infinite skill in my art. If you combine me and my spe looking at the case, you may as well call it infinite skill. I’m guessing that is a tad bit above ordinary. And I’m actually not utilizing hyperbole here. Very much.
Yeah I know, but the problem is that we need fewer “friends” and more “unbiased judges”.
And just for the record, making up genuine issues of material fact is not indicative to me of good writing.
It pays to have a look at the patent at issue in Hotchkiss v Greenwood and consider whether it did full justice to the (alleged) invention. Then have a look at the book by George Ticknor Curtis on patents (Boston, 1849, downloadable from IPMall). Good patent attorneys even in the mid 19th century knew what patent law was all about, and the basics have changed far less than is commonly thought.
Punches: I think this was a great contribution – predictability of the combination vs predictability of result. That needs checking out in relation to the USPTO 2010 KSR Guidelines but may be an interesting way forward. The rule for combinations, incidentally is that you need a new result that flows from the combination itself. And if possible you should find something about the result that is not in the prior art.
Once again, to my considerable embarrassment, I find myself in agreement with Mr Mooney.
If you show me a Jepson, I will show you a relic that will not be adopted by the masses in the States. And the Office dont got the power to make that kinda rule and the Congress couldn’t care less. Just aint gonna happen gearboy.
Ya also face a critical mistake by supposing that the inventor will actually have the prior art in front of him to “Faced with prior art, the burden for the inventor is clear.” Another aint-gonna-happen moment (See Tafas). If you’re thinking this can happen after the examiner gives the prior art, there’s the small problem with the no-new-matter rule.
On the contrary, I favour a Pauline Newman Preservation Society dedicated to encouraging her to continue at least as long as Giles Rich. By her speeches and writings she is a long way from the old folks home, and long may it remain so. And we should all remember that before she became a Judge she did our job on a day to day basis as, incidentally, did Richard Linn. So she understands our problems and difficulties as well as our shortcommings. You will look a long way to find a better friend of the patent system than Pauline Newman.
“No, section 102 defines the scope of the prior art.”
Sorry, my main man – but KSR redefined the scope of the prior art.
Gotza love me that KSR.
As I remember reading, the Ford Edsel was marketed on the basis of safety. It was a flop.
It is of course sensible to promote the advantages of the invention in advertising. But third party reviews are better. And you cannot fake the reasons why the public buy your product.
By defining the PHOSITA one is also defining the field, hence, the scope of the prior art. How can you, or Lourie, possibly assert that a kid in a HS shop class would have been aware of the references cited against Tokai?
No, section 102 defines the scope of the prior art.
Lourie is saying that the person skilled in the art is someone who knows all the relevant prior art (which goes without saying), and is at least as good at combining/modifying references as a kid in shop class. Maybe he’s more skilled than the kid in shop class. Who cares? All it takes (he says) to combine the references is a tenth-grade shop class, and any person skilled in the art would have that and more. In other words, Lourie is saying that any simpleton or child could have made this combination if he knew of the relevant prior art.
Manual dexterity in repairing skateboards (skill in repairing toys), even if established by evidence, says nothing at all about whether or not that skilled person has enough knowledge of lighters to easily envision the problems/solutions of the field that the inventor saw.
Who said anything about manual dexterity? Even a fourth-grade quadriplegic would immediately realize that it would be a good idea to take a safety lock from one lighter and put it on another lighter for the purposes of lighter safety, and that it might also be desirable to add some more lighter lock safety features from a different lighter. Sure, he’d have to hire someone to do the assembly, but that’s not inventive either.
“The level of knowledge of a person skilled in the art is not up for debate. He is aware of anything that would be prior art under 102.”
This is where you’re getting it twisted. Knowledge and skills are not the same, that’s what I’m saying.
Knowledge has a number of facets, few, if any, are determined by skills. One of those facets is the scope of the prior art.
By defining the PHOSITA one is also defining the field, hence, the scope of the prior art. How can you, or Lourie, possibly assert that a kid in a HS shop class would have been aware of the references cited against Tokai? You can’t merely summarily designate a random class of individuals as PHOSITA and then say that all the prior art in the case would be known to those people because they have been designated PHOSITA.
The other error you are making is equating skills with knowledge, or with the potential for insight, or with the ability to conceive problems/solutions.
Manual dexterity in repairing skateboards (skill in repairing toys), even if established by evidence, says nothing at all about whether or not that skilled person has enough knowledge of lighters to easily envision the problems/solutions of the field that the inventor saw.
No, you’re missing the point.
Under the approach I’m advocating, the inventive step — or point of departure — must be found explicitly in one or more elements and/or limitations, or, in a methods claim one or more steps and/or limitations — which must be set forth in the claim. This is easier to do with the European 2-part claim format.
So the inventor, if pressed with prior art, can put his finger on the page and line number and say “Here.”
Faced with prior art, the burden for the inventor is clear. He must: 1) trim his finger nail; 2) open the application or patent to the claims page; 3) place the finger with the freshly trimmed nail on the element/limitation that he asserts is where his claim departs from the PA.
Try putting your finger on the non-obviousness of a claim. You’ll get nailed.
By the way, people keep talking about not being remembered. I am remembered. It’s over on Aint It Cool News where I am no longer remembered and have to keep entering my details.
Malcolm means ‘not invalid’.
James,
I don’t know if what you say here has been in answer to my comment below (above?) as the Big D’s system is one royal Kluge (be advised that this is a highly technical term).
IF what you are saying is that Tokai got screwed bythe rules, I am inclined to agree with you – I would think that courts have a first duty to justice, and that anyone challenging a patent cannot escape with a decision on SJ based on the mere fact that a patent is presumed valid and the challenger is contesting that fact – so obviously there is a substantive difference (again, I haven’t seen the briefs and replies – so I don’t know how Tokai actually responded and if they simply shot themeselves in the foot by failing to say that Easton was full O crrp).
“even our expert witnesses”
Cepts by definition, experts know more than those with ordinary skill, soooo, those who know more won’t come anywhere near knowing what the ordinary skilled legal construct will know.
O the conundrums we construct!
Certainly, the underlying burden remains on the challenger to prove invalidity whether at trial or on SJ. But on SJ, Celotex shifts to the non-movant the burden of coming forward with evidence of a genuine dispute merely by virtue of the movant having “pointed out” that there is no genuine issue as to a material fact. Ping, Rule 56 permits the movant to proceed without affidavits, even though most, as Easton did here, provide them. Tokai, however, was precluded from submitting expert affidavits whether or not Easton had, and would have lost the motion either way as it would have failed to come forward with evidence creating a genuine issue as to a material fact, as Rule 56 and Celotex require. And, it seems, it was precluded contrary to the plain meaning of Rules 26(a) and 37(c). Now, knowing that the Federal Circuit often rules pursuant to an undercurrent in its thinking about the facts of the case, I thought it useful to point out that, as a practical matter, had Tokai been permitted to offer its experts in opposition to SJ under this literal reading of the rules, and then rightly had the experts excluded at the trial anyway, consistent with that reading, it still might have prevailed at the trial where it had no procedural obligation to rebut Eastman’s invalidity case with expert testimony. Whether by granting a summary judgment by deciding contested facts, reversing a judgment because it disagreed with the district court’s findings, or precluding expert testimony with the impression that it would be harmless, the court oversteps its reviewing role, invades the province of the fact finder, and deprives the party of a trial. Just my thoughts.
“The basics of drafting for a valid patent have not changed since at least 1803.”
I am more than pretty sure this is not an accurate statement.
a suitably qualified examiner with quality search tools MIGHT constitute a reasonable approximation of the skilled person.
If by “constitute a reasonable approximation” you mean “synthesize an idea of what that person would know and do based on the prior art he can find”, then yes. It’s difficult to say whether the EPO or PTO examiners are better at doing what a hypothetical real person would do, but I’m inclined to think that KSR (as actually written) is a reasonable proxy for how far such a person could go while still not being inventive.
The examiner generally won’t come anywhere near being a person skilled in the art himself, for the same reason that none of us ever will – even our expert witnesses. Which is why, even under KSR, the examiner still has to find objective evidence of the entire claim (including the reason to combine or modify references) in the prior art.
Iza trying to find thsi “the level of knowledge and the level of skill” differentiation in the case lawl (or even normal law), but cant seems to find it.
Did you just make this up, or should I ask Ned to find a cite?
do you honestly think that a 10th grade shop student would a) know the prior art that was asserted and b) be able to see how the limitations of the prior art devices could be overcome in the same way the inventor conceived?
You’re mixing up the level of knowledge and the level of skill.
The level of knowledge of a person skilled in the art is not up for debate. He is aware of anything that would be prior art under 102.
The level of skill determines whether the person skilled in the art is capable of combining the teachings of two references, whether he would be inclined to do so, and what would result from the combination.
Would a 10th grade shop student know all the prior art? Of course not. But a fictional person skilled in the art with the aptitude of a 10th grade shop student certainly would. It’s part of the definition of who he is.
Here they’re just saying “anybody’ll do.”
What they’re saying is that once you’re aware of the prior art, even a child could see how to combine these two particular prior art references to arrive at the invention. Newman disagrees, and she’s not the only one, but that’s what they’re saying.
You don’t even need KSR to take a safety from one lighter and add it to another lighter for the purpose of making it safe. Fire has been dangerous ever since Michael R. Thomas invented it two hundred years ago, and the need to make fire-making devices less prone to accidental/unauthorized fire-making is similarly well-known.
Another phrase I like is “point of departure” — at what point does the claimed invention depart from the existing art? When confronted with prior art in prosecution or court, the inventor should be made to put his finger on the element(s) and/or limitation(s) in the claim that represent that point of departure.
If such a “point of departure” exists, I’m sure the inventor will be more than happy to point to the claim limitation that is completely absent from the prior art. The reason that’s not a valid way to analyze a claim is that sometimes there isn’t a single “point of novelty”. Sometimes the novelty is in a combination of known features. Sometimes it’s the claim as a whole, and there’s no way to separate the new from the old. Heck, even Europe will let you slide on the two-part drafting requirement if you ask nicely.
And even when you’ve identified the point of novelty, how can you possibly know whether it’s obvious without knowing to whom it should be obvious? And who else could possibly be the standard but an objective, non-inventive person who knows all the prior art and has all the skills one would expect of a non-inventive person in the relevant field of endeavor?
Of course, a suitably qualified examiner with quality search tools MIGHT constitute a reasonable approximation of the skilled person. Is this more true of EPO examiners than of US ones?
… emphasis on “believing” – enlightened minds beg to differ…
I have posted a reply above. But the “Reply” buttons do not always work – so mu reply is out of sequence. And you are not remembered and have to re-enter your details each time you make a posting! Tedious!!
Punches
There is no statutory presumption of validity in the UK. Nevertheless the principle is that the party alleging a fact has the onus of proving that fact. So the patent stands unless unless there is evidence to knock it down.
Both under UK law and under US law you can submit “no case to answer”. In UK you can do it with onus, in US you can do it with statutory presumption. But experience is that if you do not make out a positive case, you you are not going to do well
Time travel test number 5554467920384755:
(sorry, but did get stuck in a repeating time vortex for awhile there – until I could steal some ideas from Mikeys three grandfathers)
Nice Haggie – however, here in the US the examiners are explicitly not that entity.
How big a coat is that to wear as a mantle? Itza gotta be pretty big to carry all the prior art…
Interesting – tag corrections seems to obliterate any use of tags in comments in the tag stream.
This is even better – messin with the cadence of the joke – Steven Wright beware.
The PHOSITA is an abstract entity.
In the UK, part of the validity analysis explicitly involves defining the characteristics of that abstract entity. The expert witness is required to “adopt the mantle” of said entity.
EPO examiners are on record as believing that THEY personify the PHOSITA in their respective fields…
The lack of consistent order in nesting (lack of sub nesting) really makes it hard to follow these threads.
Stop the cruelty to Chuckles – comments are being inserted in between replies and the originating comment that deserves the zing. It be like interrupting a comic telling a joke and messin with the timing of the punchline.
Wow, talk about babel: “OTOH the inventive step approach needs no fictional PHOSITA”
“inventive step” is a loaded phrase – loaded with exactly the same crrp as PHOSITA. One may ask, inventive how? the answer – well it’s inventive because it is novel and nonobvious…
And the obvious next question is: How is it nonobvious?
Nice job Babel – another floor on the tower.
I am reminded of the “Claim as Angora cat” line run in Europe by Professor Mario Franzosi.
When it comes to intimidating those contemplating infringement, the cat hairs stand on end and the beast appears huge.
But as soon as the animal is attacked then, quick as a flash, its owner throws a bucket of water over it, to make it appear too small to lay a glove on.
Judge Newman: cut it out. Please cease your judicial encouragement of cruelty to cats.
Having skimmed through the 775 patent I am left with the feeling that only with Judge Newman can a patent owner have her cake and eat it too.
By that I mean that an Applicant who offers five or more illustrated embodiments of a safety detent for a lighting rod, to comply with the law, and tells us that they all work equally well, and claims the concept generically, cannot then later, with a straight face, point to one of those embodiments that is copied, and assert that the claim infringed, which covers all those different embodiments, is nevertheless not invalid because it does actually recite all those special features, unique to that one embodiment, that delivered a higher performance result, reflected in the commercial success of the copied embodiment.
Apparently, every lighter had to have these safety features as a matter of law or regulation.
Another fact in favor of the obviousness finding.
Ned, Newman has been operating an illegal claim limitation smuggling ring for years now. We can’t really rely on that as evidence that she’s ready for the old folks home.
No. I guess what I’m objecting to is any use of the concept of PHOSITA in determining obviousness, not just an under-skilled person of skill. I even object to the obviousness concept itself as gallingly unworkable. But, I see your point, it’s the point the DC judge and Lourie both made.
Maybe your point makes sense with respect to what skills are necessary — would a person who has more experience in lighter mechanisms than a 10th grade shop student have more skill in putting the bits together to get the patented device? I’m not sure, but if so the opinion tilts toward the inventor’s position by relying on the lower level of skill as the reference point, as you say.
But in terms of knowledge or the ability to conceive of both the problem and the solution, which is what I presume PHOSITA is all about after KSR, do you honestly think that a 10th grade shop student would a) know the prior art that was asserted and b) be able to see how the limitations of the prior art devices could be overcome in the same way the inventor conceived? C’mon, does being able to take a toy apart have anything at all to do with this case?
This lighter mechanism is no less complex than the accelerator sensor of KSR, and yet the courts, as I remember it, went to some length to define PHOSITA in KSR. Here they’re just saying “anybody’ll do.”
It seems that you and Lourie both admit to a view of PHOSITA as nothing more than a bag of skills — specific knowledge and an ability to see specific problems and solutions are not a part of it. Maybe that viewpoint was sufficient in Underwood’s day; it’s making a mess of things today.
Basically, the whole PHOSITA concept is just another example of how flawed the Patent Act of 1952 is. Monkeys with typewriters could have done better. If you just stop and think seriously about 103 for 20 minutes and what it is actually saying, you’ll agree. It’s babel.
The trap is that if something is going to be deemed obvious then it has to be obvious to some person. So as long as obviousness it at issue, then there has to be a reference point. 103 demands that the reference point be a PHOSITA, when, in fact, many inventions require no special knowledge or skills to comprehend or to judge obviousness.
OTOH the inventive step approach needs no fictional PHOSITA. Another phrase I like is “point of departure” — at what point does the claimed invention depart from the existing art? When confronted with prior art in prosecution or court, the inventor should be made to put his finger on the element(s) and/or limitation(s) in the claim that represent that point of departure. And I think that is what Newman is doing in this case. She sees that inventive step because she’s looking for it.
Bantering back and forth about PHOSITAs, which 103 absolutely demands, is just another way to promote lawyers’ full employment.
What on God’s green earth are you blathering about??
Why 6, it be obvious.
Every word of TINLA ‘s response can be found in the prior art and used as she used it. All she done was pull the words together for their expected function. Slam dunk obvious.
Just an observation…(and not even mine)
Clear and Convincing + Added Burden
So ya get C&C no matter what and ya get C&C+ for stuff that has been before the Office.
That’s like in your face Supremes – ya think C&C is good enough? Well I raise ya a C&C+ – what ya say to that Mofo?
Bingo, right about what? Her legal analysis is spot on, but I believe she fails to understand that the important differences she talked about between the invention and the prior art were not set forth in the claim. See my note below.
One more point, and this is about commercial success. I think this case teaches us that if we want to claim commercial success, our own advertising should emphasize in no small way the patented feature. I was struck by the fact that the patent owners here never mentioned the safety features in their own advertising. Apparently, every lighter had to have these safety features as a matter of law or regulation. So, the presence of a safety feature itself, without more, could not have been the reason for the commercial success. It is quite understandable that the commercial success argument had to fail as a matter of law.
… on track for the old folks home.
“If Tokai argued for such a broad construction to read on such an accused device, that would explain everything, and prevent this case from serving as precedent that nothing is patentable unless there are either (a) unexpected results; or (b) a flash of genius exhibited by a person of extraordinary skill slumming it in an art where the average PHOSITA does not have a genius IQ.”
Not sure where you got that from…
judge Newman is right!
Ned,
I think the claims do appear to be limited to the locking mechanism locking the trigger, as opposed to the valve, while the prior art safety devices lock the valve.
I noticed that Dennis mentioned the broad construction of the claims by the court, and I see in the decision that the CAFC references that construction, but I have not been able to locate any informaiton on the claim construction. Does anyone know where I can find it, or if the Court construed the claims broadly enough to read on blocking the valve instead of the trigger?
Alternatively, does anyone have information on whether the safety mechanism of the accused device blocks the valve instead of the trigger? If Tokai argued for such a broad construction to read on such an accused device, that would explain everything, and prevent this case from serving as precedent that nothing is patentable unless there are either (a) unexpected results; or (b) a flash of genius exhibited by a person of extraordinary skill slumming it in an art where the average PHOSITA does not have a genius IQ.
I nominate Kev.
If he isn’t a saint, he’s at least a high priest.
Is there a patron saint for intellectual property? Maybe one for lawyers?
Once again, CAFC judges abrogate the statutory rule that obviousness is not for them. These clowns are gonna be stymied when they play PHOSITAs in a really complicated art.
Why does nobody care that this court has forgotten it’s role?
Ned: None of that was claimed — but it was in the specification it seems.
According to the recent 101 caselaw from the Federal Circuit, all the nifty advantages of the preferred embodiment form part of the claim. As long as the spec shows you’ve invented something really handy that does a new trick, any claim you draft is patentable.
It’s too bad Newman’s the only one who reads Rader’s blog. Otherwise, this decision might have gone the other way.
under-skilled “person of skill”
come again?
Newman premises much of her thesis on the mechanical differences between the prior art lighters and the implementation disclosed in the specification. To her, and apparently to the examiner who considered this same art, these differences were significant in that they made the substitution of the structure of the one into the structure of the other, what, non obvious?
The problem I have with Newman’s analysis is that the claims themselves (to the extent of their safety mechanism) are not limited to the structures of the disclosed lighter, but are broadly dictated. They actually could be read on the prior art with the only difference being the substitution of the thumbs and fingers for activating the safety mechanism.
Thus said, with the claimed safety mechanism so broadly claimed, and the only material difference over the prior art residing in the thumb-finger elements of only some claims, I agree with the majority that these differences too are immaterial. For example, there was no specific requirement of physical space between the two triggering mechanisms such that only an adult could activate both at the same time. There further was no specific requirement of any spring force that might have been sufficient to prevent a child from activating the device. There was no specific requirement (in any of the claims discussed at least) that the triggering mechanism could ONLY be activated while the safety mechanism was being activated as argued extensively by Newman.
None of that was claimed — but it was in the specification it seems.
The bottom line, I agree with the majority opinion here.
If you took industrial ed it seems to me like you’d be less likely to be a dork.
In any event, I find your whole discussion to be tiresome and not worth my while any longer. By the by, if you could not adapt these two prior art devices together you’re pathetic.
But, on the other hand, your discussion did spur me to make a worthwhile observation. Perhaps Newman is awed by this inventionlol because she is a female, never took shop and is of limited mechanical abilities? While the two boys in the room are extremely unimpressed and merely reminded of things they did in HS? I mean, she’s a chemist right? The most chemically inclined girls I know are also the most mechanically disinclined girls I know. In fact, I have some rather funny stories I could tell about them.
I mean, I’m just saying.
And don’t go all “6 ur such a mysogynist!!!elevntyone!” or sexist or whatev. First, I know already. And second I had girls in my shop class so not all girls are mechanically disinclined, it is just that you’re less likely to have taken shop etc. if you were a girl.
I’m glad I could assist with the trouble-shooting of this new comment system. 😉
Paul–
Thanks. Is there an explicit statutory presumption of validity in the UK?
As the one who invented this disputed terminology I should define it>obviousness. In the first place nothing that is valuable new and marketable should be deterimined obvious since obviously it would have been previously invented.And such a threat of this determination is inovation retartive.In this circumstance here the safety lighter has already been invented so the issue is one of sub invention the combination of safety lighter with the grill lighter and a particular type of safety switching. The determining question is does the new product create a new uncompeting field of invention or a superior existing product improvement and are previous patents expired or not.In this circumstance the lighter is for outdoor grill use and differant from cigarette lighters It poses threats to children outside the home and is frequently kept in the grill where children can secretly access it its also a different disign than its predissors.In my oopinion the only thing truley obvious or worthless is the unmarketable patents issued at a rate of 275000 per year.
PHOSITA should have been, according to my formulation, one having ordinary knowledge in the art of lighter mechanisms. The significance of that determination is that he/she is presumed to know the prior art, including the cited references.
You apparently object to a finding of obviousness based on an under-skilled “person of skill”. How can giving that person more knowledge do anything but make the invention more obvious?
Besides, presumably the fictional Senior Lighter Design Engineer would still remember what he learned in his high school shop class. Lourie’s fictional person was at least as knowledgeable as a high-school shop student who also knew all the lighter art. Surely, that’s good enough for his purposes.
Consult your interwebs.
“because it is not a factual determination”
Factual determinations are made by the triers of fact. Here that was never reached.
O the vicious circle – round and round it goes.
Even for a fictional person, the ability to “knows all the prior art” is a pretty much – non-ordinary capability.
O, and since KSR, the relevant question is not only the relevant field, but all fields that might impinge on the solution.
Gotsta love that KSR.
You are close to my point, 6.
PHOSITA should have been, according to my formulation, one having ordinary knowledge in the art of lighter mechanisms. The significance of that determination is that he/she is presumed to know the prior art, including the cited references.
There is no reason, in spite of Lourie’s gaff, that I can see that because I may have ordinary knowledge in repairing Barby Dolls or CJ7’s, I should be presumed to know the art of lighter mechanisms.
I believe, and don’t ask me for cases of the top of my head, the courts use the PHOSITA fiction to concoct two derivative fictions: 1) what prior art is relevant; and, 2) what is obvious from that prior art. What is analogous art is determined from the viewpoint of PHOSITA, not the examiner, or, worse, some USDC judge.
Ultimately, judges (and examiners) summarily decide in a wholly conclusory fashion who PHOSITA is, as this case so nicely illustrates. I don’t know any other way to do it because it is not a factual determination, it is mere conjecture. But to say PHOSITA is every dork who took a 10th grade industrial ed class is not exactly a way to focus on the relevant field.
Well, it appears that placing a comment in midstream is not affected by busted tags.
But Big D – big problem in the nesting in trying to keep track of the flow of point and counter point. the whole bunch of messages below (above?) from IBP is gobblygook and too hard to follow.
“(BTW “dude” is a gender-neutral term here. Sort of like “ping.”)‘
tip-O-the Hat lulz, gear boy.
More chuckles on the new system Big D – busted tags affect all previous comments, rather than ensuing comments.
In order to fix a busted tag now, weza need to time travel to before the tag was busted – Hey Mikey, get your grandpappy to fix this, huh?
By the way, in spite of this case, I fully expect that I could file claims tomorrow to a table-top lighter (NOT a hand held utility lighter) comprising the same safety mechanism that is used on Tokai’s patent and get a US patent on it within a couple years.
So who exactly is involved in a patent that is of ordinary skill in the art?
Nobody. The “person of ordinary skill in the art” is not a real person. It’s an abstract fictional person who knows all the prior art and has all the knowledge and skills that “everybody knows” in the relevant field.
If it were possible to find an actual human who was of ordinary skill in the art, you wouldn’t need both sides to lead expert witnesses. You could simply ask that person whether the invention was obvious, and you’d be done.
You don’t often see a “reasonable person” in tort cases either. He’s not a real person. He’s simply a legal standard by which the actions of a real person are measured.
Comment cut off the beginning:
The standard of a person of “ordinary skill in the art” is a key component of rendering 103(a) not clearly understood or expressed.
A jury is not skilled in the art.
A judge is not skilled in the art.
The expert testimony is, by definition, not a person of ordinary skill.
The examiner is not a person of ordinary skill, at least let’s hope not.
By inference, the inventor would not be of ordinary skill or the patent would be obvious.
So who exactly is involved in a patent that is of ordinary skill in the art? The attorney?
If we decided to include such a resumed person, how would we find a person of ordinary skill? Studies show professionals tend to describe themselves as being in the top 10% of their peers. Do we look for someone with a salary in the mean of their field?
I think I will start a new legal consulting firm called Ordinary Skills, Inc. The job listing will be fun to write.
“Are you underpaid? Do you have a consistent receive an “average” on your job performance reviews? During layoffs, are you typically the first to go? We have a job for you! Call 1-800-AVE-RAGE”
In determining infringement damages on patent D345742 they should determine the percentage of product value the new safety switch contributes. Then order triple damages on the remainders profit.
The burden of proof is conclusive evidence of a “genuine issue of material fact”.
That’s so obviously incorrect that it wouldn’t merit discussion except that you insist on discussing it.
Every question of fact before the court in any action has a presumption and a burden of proof. If you sue someone in tort, the defendant is presumed not to have done it and you have a burden to prove that he did.
Furthermore, in any case both parties might conceivably agree on all the facts. Of course, such agreement would not affect the burden of proof in any way. Still not an appropriate case for SJ, in your view?
Maybe Newman’s argument is that the utility lighter designers could have come up with an entirely new safety system but instead they just re-jiggered the old cigarette lighter safety latch so it would work with their utility lighter and filed a patent on that instead. SURPRISE! Nobody saw it coming.
IBP, is this not summarized in the section of DC’s post entitled “Conclusion of Obviousness”? How much detail are you looking for? It’s not rocket science. And, at least with respect to obviousness, I’m not aware of any egregious mis-statements in the majority’s decision or reasoning.
Contrast this case with that awful claim construction case relating to the “automatic tool bar” where the CAFC simply waved all the “bad” facts away.
Punches
If you are litigating in the UK and representing the patentee it should be a front-loaded process.
BEFORE you go to court, you should establish that there is a strong case. That includes identifying and briefing an independent technical expert who can give a report to the court on the issues that are going to arise, including validity. If you are going to allege peer recognition or nexus you need to assemble the relevant evidence. then you should have a conference with an experienced litigator to see whether he thinks that there is a case.
So if you have done that and you encounter a motion for summary judgment of obviousness you have the technical and factual arguments at hand that will give a good prospect of prevailing. That should include evidence of unpredictable result, because that is what the court will be looking for. You will not be taken by surprise because you have prepared in advance and know that if the issue is raised you have persuasive points to make.
Sitting on your hands and complaining about presumptions is unlikely to do you much good. Presumptions help, but only when you can support them with some underlying facts.
The US judges I have met are much like their UK counterparts, and the two legal systems have much in common. So I don’t think things are so markedly different in the US (but we have judges with technical degrees, and no juries)
Hey you guys, I’ve “obviously” presented this admittedly half-baked idea for general discussion–please be kind.
The more I think about the idea, the more I like it.
And, entirely aside from the merits of my suggestion (if any), please tell me that there are others out there who understand that there is such a thing as a “legal fact”.
/facepalm
You’d make even more things into genuine issues of material fact than Newman would.