Obviousness as a Question of Fact

The Federal Circuit’s decision in MobileMedia Ideas v. Apple is almost comic – with the appellate panel rejecting the district court decisions siding with Apple as well as those siding with MobileMedia.  The chart below highlights the transformation.

MobileMedia is an MPEG LA company that was formed as a collaboration of Nokia and Sony.

Obviousness: An interesting aspect of the decision is obviousness analysis of Claim 73 of the ‘078 patent.  The law requires that a patented invention represent a significant advance beyond what was previously known in the art. That obviousness doctrine is codified under 35 U.S.C. § 103 and serves to invalidate patents “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter would have been obvious.”

Claim 73 is directed to a mobile phone with a built in camera optics and an “image sensor” along with the requisite control, capture, storage, user interface, and transmitting capabilities being directed through a microprocessor.  (App filed in 1995).

All the Elements in Two References: The prior art here follows the typical obviousness scenario. Namely all of the elements of the claimed invention are found within a collection of prior art documents, but no single reference teaches each and every element. Here those references are, Kyocera (Japanese Pub. No. H6-133081 disclosing camera phone with the image sensor and optics but somehow does not disclose the microprocessor) and Lucent (U.S. Patent No. 5,550,646 disclosing a camera device with an interface, display, and controls operating through a microprocessor).  

At this point, we have the parallel scenario that the Supreme Court addressed in the oft cited case of KSR v. Teleflex (2007).  There, the Court noted “a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”  In its flexible approach, the Court noted that such a combination should consider both (1) whether a skilled artisan would recognize the combination as a potential improvement as well as (2) whether the actual combination would be within the skill of the artisan.

[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions.

Here, MobileMedia’s expert testified that integrating the Lucent microprocessor would actually require more skill than held by an ordinary skilled artisan (EE with 4-years experience). And, on appeal, the Federal Circuit ruled that the testimony offered “a reasonable basis” for rejecting the obviousness defense.

Fact or Law: In its analysis here, the Federal Circuit gave deference to the jury verdict — re-holding that “the question of whether there was a reason to combine certain references” is a question of fact. (citing TransOcean 2010).  However, that statement of the law appears to conflict with the approach actually taken by the Supreme Court in KSR. In addition, the particularly conclusion here – that the posed combination is beyond the level of skill in the art appears to merge together the various Graham factors in a way that leads directly to the ultimate conclusion legal of non-obviousness.  To me, that looks like the combination here is a conclusion of obviousness, which is a question of law.  The approach is consistent, however, with the approach of allowing a jury to decide all issues of obviousness.

= = = =

Although this case is in the midst of infringement litigation, the law of obviousness applies equally to prosecution. Here, applicants may be interested in reviewing the expert testimony to see what carried the day in proving that the proposed combination would be beyond the skill of an ordinary skilled artisan at the time of the invention.  Here, the basic issue was not in connecting the elements together but instead in programming the microprocessor to work.

198 thoughts on “Obviousness as a Question of Fact

  1. 14

    I have read the main claim in the first of the patents, and the question arises what in the claimed combination that provides a new, useful and unexpected result, and what is the nature of that result. If there is not a simple and straightforward answer to that question, failure is to be expected.

    If it was difficult to combine A and B to get combination C, then it is to be expected that the features in C will reflect the difficulty that has been overcome. Have a look at claim 1 of 078. Some hint of the advantages achieved but no hint of how. If there is nothing in the claim reflecting the difficulty of the advance, then evidence of that difficulty is irrelevant.

    1. 14.1

      Where are you finding this “difficulty of advance must be in the claim” rule?

      You do know that the closest analogue – the Jepson claim, is an option – and largely a relic and antiquated option at that, right?

    2. 14.2

      What gets me about these posts that want to put all these extra requirements into 103 is the arrogance. These are the advances that are occurring that has made this the most innovative place in the history of humankind. This is it.

      And yet we have all these people that think they are so smart that they can say, “well, that is not enough.”

      Learn to be humble. Your statement are absurd. You are like the kid coming into a new office (that is number one in the world and the history of humankind) and saying, “no that’s not the way to do it!”

      Grow-up! Twist your mind the other way. Ask yourself –are these the advancements that have led us to the most innovation engine that has ever been created? The answer is yes.

      What I would challenge you Paul and the other adders on of 103 to do is explain the innovation. Tell us how the innovation engine works and how the changes you propose will effect the greatest innovation engine ever created. You can’t do that because you have no idea what you are talking about.

      1. 14.2.1

        Night writer, a member of the public speaking his mind on what should be granted in a given entitlement program is hardly arrogance, the entitlement program exists at his and others suffering it to exist.

        1. 14.2.1.1

          Not really 6. It is arrogance. We have a system that has produced the greatest innovation engine in the history of humankind. That is a fact.

          If you want to change the system, at a minimum you should illustrate that you understand the system. I have seen nothing from the group of anti-patent people on this blog that illustrate they have even a rudimentary understanding of the innovation system.

          1. 14.2.1.1.1

            And the SCOTUS doesn’t even understand the science. They even admit it at times that science is beyond their liberal arts education.

            You know to those of us that have spent a life time in innovation and science it is highly offensive.

          2. 14.2.1.1.2

            “We have a system that has produced the greatest innovation engine in the history of humankind. That is a fact.”

            And maybe he’ll settle for a tad less in exchange for less being given in the entitlement program that supposedly produced, or helped to produce this great innovation. That’s his political decision to make.

    3. 14.3

      It is just a fact of life that if the claim is boring and of no apparent merit, it is less likely to be held unobvious. That is human nature and judges are human too.

  2. 13

    At last, I have read the Decision. Seems to me that the core point is that Chen’s hands were tied behind his back. On the Kyocera and Lucent art, he couldn’t write anything sensible, given the facts. The facts being, of course, as found by the jury.

    Now I’m a supporter of jury trials, for criminal cases. But giving them fact-finding in a case like this is a cruel and unusual thing to do, because with the best will in the world, together with the parties using the most skilled advocates and the most helpful tech experts, it is a thing quite unlikely to yield any intelligence that one can rely upon.

  3. 12

    It is stultifying just how badly off ALL of RandomGuy’s views are in his several posts today.

    It’s not even worth replying. Just condemn the thread and move on.

  4. 11

    Several of the comments below seem to go to this question: why the Courts do not more often link and question why a claim feature argued as not being 103 obvious is not inconsistent with not having specification 112 enablement for that claimed feature?

    1. 11.1

      I would add, why isn’t the new feature a patent in of itself?

      A+B +C are claimed, A and B disclosed in two related patents. C was very difficult and took two years to develop… ok, so why not just patent C without limitations A and B?

    2. 11.2

      Several of the comments below seem to go to this question: why the Courts do not more often link and question why a claim feature argued as not being 103 obvious is not inconsistent with not having specification 112 enablement for that claimed feature?

      From an outsider’s perspective, it would appear to be bad lawyering on Apple’s part and an incompetent CAFC that wants to write pro-patent precedent (i.e. the obviousness part of the decision) but insulate itself from review (using means-plus to make Apple a non-infringer).

  5. 10

    This is one of the most frustrating discussions I’ve been apart of on this site. Can we review WHY there is an obviousness requirement?

    Why did Congress opt for an obviousness requirement? Because we don’t have to have one. It can be, as the Fed. Cir. pre-KSR seemed to want, where unless it was disclosed (and a motivation to combine), the applicant gets a patent.

    Three main reasons why 103 is important:
    1) Error correction for imperfect discovery. The PTO has limited resources, and cannot find EVERY single disclosure. Someone else might have invented it, using it in their garage somewhere, but there is no way for the examiner to find out. Because of 103, it allows for some room for error.

    I was thoroughly unsurprised when there turns out to be a Japanese patent on how to actually do this, which go arthur pointed out in post #4. Obviousness allows for some errors that occur in 102.

    2) It prevents patenting things that would occur without the patent system. There is no need for the public to grant a monopoly when it would the technology relatively soon, and for free. Roberts v. Sears, Roebuck and Co., 697 F.2d 796 (7th Cir. 1983) (Posner, J.) (“The framers of the Constitution and the Patent Code would not have wanted patents to be granted where the invention would have been made anyway, and about as soon, without any hope of patent protection. The grant of a patent in such a case would confer no benefits that might offset the costs of monopoly.”).

    Again, in Graham v. John Deere: “[Obviousness was] to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent.” (at 11).

    This is why “obvious to try” may invalidate a patent. If all it takes is time, and at the end of the time there is an feeling of certainty that it will be done, then it is ABSOLUTELY obvious.

    3) Ensure patent worth. Imagine you have 10 patents on the process of making hats. Which would you rather have: 100 patents total in the hat industry, or 1,000 patents in the hat industry?

    100, because your patent is more valuable and there is less in your way to making hats. If there are only 100 patents, you don’t have to cross-license with a thousand different people. Incremental patents decrease the worth of patents generally. US patents are extremely valuable, in part because of the obviousness requirement.

    1. 10.1

      “1) Error correction for imperfect discovery. The PTO has limited resources, and cannot find EVERY single disclosure. Someone else might have invented it, using it in their garage somewhere, but there is no way for the examiner to find out. Because of 103, it allows for some room for error.”

      I don’t think there’s anything in the legislative history of the 1952 Patent Act that suggests that section 103 was enacted to allow for correction of PTO errors in finding 102 art. I may be wrong, but I just don’t recall anything even suggesting that.

      “2) It prevents patenting things that would occur without the patent system.”

      I’m not sure that’s entirely true. Arguably we could do away with the patent system entirely and we would still have technological advancements (for lack of a better term) or developments. That’s because there will always be a market for new technology, including non-obvious technology as well as obvious technology. The patent system is intended to promote the disclosure of new technology, which I would argue means to encourage and/or accelerate its disclosure. I don’t think it’s a “but for” proposition ore requirement (i.e. we would not have this new technology but for the patent system). JMO, of course.

      “3) Ensure patent worth.”

      I don’t think the obviousness requirement is or was intended to ensure the worth of patents. Again, I don’t think there’s anything in the legislative history to support that. Patents grant exclusive rights. But they don’t, as you suggest, give anybody the rights to make anything. So if you have a patent for making a hat that comprises the steps of A, B, C, and D, you can’t practice that method if somebody else has a patent on a method of making a hat that comprises the steps of A, B, and C, unless you get a license or permission from that patentee. In other words, there’s no consideration under section 103 whether the patentee is going to be able to go out and make/use/sell their patented invention free and clear of somebody else’s patent.

      1. 10.1.1

        J’s simply wrong additions to patent law exemplify the worst of ad hoc post hoc policy-“justifications” for misunderstanding the law.

        1. 10.1.1.1

          Two things

          1) My analysis is supported by case law before and after 1952, its just that I don’t feel like looking it all up.

          2) That’s how the law works. If a law doesn’t make any sense, it doesn’t get enforced. So we have to make sense of WHY there is a law so that we can know how to enforce the law. I am, in many respects, a formulist, but that doesn’t mean that functionalists are completely crazy.

        2. 10.1.1.2

          You know what would be really helpful anon? For the congress to write all these supposed “understandings” of the law INTO THE GD LAW.

    2. 10.2

      I am asking that we step back for a second and ask ourselves, “why?”

      If there was a proposal to do away with the obviousness requirement, would you support it? Why or why not?

      There isn’t much discussion of why we have the obviousness requirement, but there has to be a reason for it, or it wouldn’t be there. I think my points ring, if not directly supported.

      Obviousness is by definition a subjective analysis. If that is the case, it is extremely important to work out WHY there is this requirement.

      1) I think it the Japanese patent that discloses a microprocessor to make this combination happen is evidence enough on why we need an obviousness requirement.

      2) I agree with most of what you say here. I am not saying that there needs to be a showing of “but for the patent system” it would not be disclosed or invented. I’m just saying that, it is not in the public interest to a 17 year monopoly over something that the public normally have.

      And I’ll say that, generally speaking, all the requirements for patentability serve to protect the public interest in some way or fashion.

      3) Everything you say is true and I did not mean to suggest that patents give the right to make something. If I may try again, because this justification is the most difficult to explain…

      Patent X from competitor A patents process of step 1. Patent Y from competitor B patents process for step 2. Competitor C applies for patent Z that combines X and Y.

      Now lets say that we invent something using steps 1 and 2 (so it doesn’t infringe patents X and Y), and combine something from the pharmaceutical industry, which was completely brilliant. We apply and get Patent called Alpha.

      What makes Alpha more valuable… if patent Z gets rejected for obviousness, or gets accepted? I think the answer is clear: Alpha is more valuable if there is no patent Z, because then I can work the patent without a cross-license from Company C.

      Whether that was intended or not, I think it is a good RESULT of obviousness, and something we should keep so US patents are strong.

      1. 10.2.1

        “If there was a proposal to do away with the obviousness requirement, would you support it?”

        No.

        “Why or why not?”

        It would lead to granting exclusive rights to technology that should not be granted, in particular to people who are not “inventors” as we use that term.

        “Obviousness is by definition a subjective analysis.”

        No. It is by definition an objective analysis. It is based on facts, which are established by objective evidence. In other words, the examiner has to be able to point to something objective (i.e. something known, and which everybody generally agrees is known and verifiable) in support of the ultimate legal conclusion. The fact that the ultimate conclusion is the result of the exercise of judgment, skill, experience, wisdom, call it what you will, and is subject to debate doesn’t make the analysis subjective.

        Subjective means based on or influenced by personal feelings, tastes, or opinions, whereas objective means not influenced by personal feelings or opinions in considering and representing facts. Obviousness is clearly an objective analysis as it requires the consideration of facts.

        “And I’ll say that, generally speaking, all the requirements for patentability serve to protect the public interest in some way or fashion.”

        I agree 100%.

        I don’t disagree with the results of your hypothetical, but I think it’s a mistake to argue that section 103 was enacted to achieve that result. The statute simply doesn’t take into account whether patent Z gets patented or not in determining whether Alpha gets patented or not, or whether granting or not granting patent Z has any affect on the value of any potential patent Alpha. In fact, with publication of applications, the published application for Z is going to be out there, presumably, as prior art against Alpha. It doesn’t matter whether Z is granted, or rejected as obvious. What matters is whether Alpha is non-obviousness from Z.

        “I think it is a good RESULT of obviousness”

        I’m glad that many of my clients’ competitors application are rejected as obvious. I think that’s a good result. Don’t feel quite the same when my clients’ applications are rejected as obvious.

        1. 10.2.1.1

          Thanks for the discussion here. This is my last word and I’ll let you close (but reserve the right to come back in if I have anything new to add), I just want to clarify one thing.

          We disagree on the definition of objective/subjective, but my point (and I think you agree) is that there is some judgement involved in the determination. The Graham factors are not determinative, it is a balance and consideration of the factors. Balancing involves judgment, which means policy considerations matter. That doesn’t mean that a statute should be ignored, but if it is silent on its purpose (as is here), then policy justifications are acceptable. Otherwise, the law cannot develop.

          1. 10.2.1.1.1

            “We disagree on the definition of objective/subjective,…”

            I don’t think we do. We agree that a determination of obviousness requires underlying factual determinations, but the ultimate conclusion includes some “subjective” evaluation of what those facts mean. And by “subjective” I’m not referring to the dictionary definition I provided above.

            “…but my point (and I think you agree) is that there is some judgement involved in the determination.”

            I agree. Two reasonable people can review the exact same set of facts and arrive at opposite conclusions. Happens all the time, e.g. hung juries.

            “The Graham factors are not determinative, it is a balance and consideration of the factors.”

            Not sure what you mean by determinative, but the factors are required to be considered. All of them. Including secondary considerations when they are present.

            “Balancing involves judgment, which means policy considerations matter.”

            I don’t agree that any of the “policy considerations” you provided should be considered. For example, it would be entirely inappropriate for an examiner to say, “I don’t want to grant this patent to A because it would make B’s patent less valuable.” That is completely out of bounds and inappropriate. It is equally inappropriate for the examiner to maintain an obviousness rejection that is not supported by a preponderance of the evidence for fear that there is 102 prior art out there that the examiner has not been able to find. Again, totally out of bounds to do that.

            “That doesn’t mean that a statute should be ignored,…”

            Agree 100%.

            “… but if it is silent on its purpose (as is here),”

            I don’t agree that 103 is silent on its purpose. It’s purpose is clearly to prevent a patent issuing to an invention that, although novel, would have been obvious to one of ordinary skill in the art.

            “…then policy justifications are acceptable.”

            If you’re talking about the policy justifications you discussed above, again I disagree based on the reasons I provided in this post.

            Thank you for the discussion.

  6. 9

    So wait a second — the COURTS THEMSELVES don’t know if something is obvious, but some in Congress want introduce fee-shifting??? At least in Europe (where there is fee-shifting), patent litigation is MORE predictable (they don’t change their mind 5 times a week), less expensive AND you get an injunction.

    1. 9.1

      You’re not suggesting that the Federal Circuit case law is vague and indefinite? Are you?

      But your criticism of the lack of reliability of injunctions is excruciatingly on point.

      1. 9.1.1

        Clearly Ned, the point about the judicial branch law writing being vague and indefinite has a BETTER target at the Supreme level.

        Funny though how you always aim for only one judicial body…

    2. 9.2

      That is an excellent point. How in the world can we talk about fee shifting when the courts themselves are constantly reversing each other?

      PTO
      PTAB
      Dist. Ct.
      Fed. Cir.
      SCOTUS
      What are the odds of getting consistent jurisprudence from all 5 levels? Pretty close to zero.

      1. 9.2.1

        Interestingly, only (and exactly) one of these bodies has been sanctioned as the Article III entity charged explicitly with bringing order to patent law.

        Take a guess which one.

        Hint: it is the one currently being brow-beaten into submission (and as then leader of that body noted in the Alice case, now NOT doing (able to do?) it’s anointed task.

  7. 8

    Also noticing a lot of people confusing obviousness. Obviousness requires a rationale for obviousness. This is a matter of law. One of the rationales can be a motivation, which requires a factual finding. TSM is not a requirement of non-obviousness. There is not a required motivation to combine, a motivation is just the most likely means of showing why the two pieces of art render something obvious. Once a Graham analysis shows that the art knows of two things, a TSM can certainly provide a motivation to combine, but an exemplary rationale can also provide a ground making something obvious.

    The correct thing to do here was consider the legal question of obviousness based upon the assumption that the jury believed the MobileMedia expert. Does the specification discuss the difficulty? Does it explain how to overcome it? Is there contemporaneous evidence to assist the winner of the expert battle? Or is the most likely conclusion that this is a mere post-issuance stance in view of the instant litigation?

    We all know what happened here – Apple smartly chose a litigation tactic based right out of KSR, and (lo and behold) MobileMedia happened to have the ONE POSSIBLE DEFENSE to that particular argument present in its case. What are the odds, hmm? Either Apple is terrible at choosing arguments (as even KSR has a plethora of them beyond TSM) or MobileMedia was faced with an exemplary rationale, and suddenly discovered that there was an enablement issue back in 1994.

    Would that criminal prosecutors could have this standard – win one evidence point and summarily win the case because your judge doesn’t bother to question if the evidentiary conclusion meets the legal requirement.

    1. 8.1

      It does appear that the problem here was insufficient disclosure in the specification if, in point of fact, the combination was not enabled at the time to one of ordinary skill in the art, and the specification did not teach one of ordinary skill in the art how to make and use the invention without undue experimentation.

      But obviousness and lack of enablement/written description are two different defenses.

      1. 8.1.1

        Well yes Ned, obviousness, insufficiency and added matter are indeed different legal issues. I do appreciate that, and I daresay so does every other reader here.

        It is just that, at least in Europe, there is often a “squeeze” between obviousness and insufficiency, based on the reservoir of written description in the patent at issue. Why is it that I never see in the USA talk of “squeeze arguments” Do you not know what they are?

        Take a case in which the claim recites a objective to be attained. The objective, as such, is indisputably obvious. Your supporting written description recites just superficial generalities. You are the patentee. The more you defend on enablement, the more you reveal that your claimed subject matter is obvious.

        I don’t see the justification for your statement that:

        “… the problem here was insufficient disclosure….”

        As I say, it could equally well be obviousness, depending what line of defence you choose. In Europe, there are, very occasionally, cases where hardly any written description is needed because the non-obvious step lies in alighting upon the objective (with implementation thereafter being trivial). But also in Europe there are, and frequently, cases where you are required to defend both obviousness and insufficiency attacks and there is no other outcome than falling down between those two stools.

        Why not also at the CAFC?

        1. 8.1.1.1

          Max, because whether a claim is obvious or not does not depend upon the disclosure.

          There is a similar doctrine that one encounters all the time where it accuses infringer defends on the basis that they are not infringing because they are only practicing the prior art.

          The problem in this case is that the argument for nonobviousness exposes the sufficiency of the specification. If the accused infringer did not raise issue of sufficiency of the disclosure, that is their problem.

          1. 8.1.1.1.1

            Thank you Ned, and also in Europe is it so, that the disclosure in a patent does not decide whether or not the Claim includes within ist ambit something that was obvious at the date of the Claim.

            But nevertheless, the squeeze is on, in Europe.

            Your last para puts it nicely though. I see the Decision runs to 37 pages. I must now find time to read it.

          2. 8.1.1.1.2

            The problem in this case is that the argument for nonobviousness exposes the sufficiency of the specification.

            The squeeze argument is the contrapositive – an argument that a feature is not enabled by the specification is generally rebutted by admitting it must have been obvious to the prior art.

            It doesn’t change the fact that between what was known before and what is valid patentable matter must be something taught in the spec. When the spec fails to teach things we know that nothing non-obvious lies there.

      2. 8.1.2

        But obviousness and lack of enablement/written description are two different defenses.

        First of all, not in this case – both the obviousness and enablement issued turned upon enablement of the combination in opposite directions.

        Second, when the intrinsic information of a presumed valid patent poses no ambiguity, why do you allow external evidence on the issue? Everything in the patent points to this being a patent for a non-posited combination that was, in fact, obvious. It is not a patent for a posited combination that was not enabled. The first hint that there was an enablement issue with the art is when Apple proceeded on an obviousness theory where the only defense was an enablement defense. Suddenly the patentee discovered that the art had enablement issues.

        Regardless you’re missing the point – All Apple has to show is the rationale. The rationale requires enablement. Expert testimony is not the only or even the best means of enablement at the time of filing – the court was wrong to allow their deference to the fact finding to control their legal standard analysis.

    2. 8.2

      but an exemplary rationale can also provide a ground making something obvious.

      Not sure what you mean by this statement. Is this rationale based on facts? Facts outside of the Graham factors? Are you now writing additional law?

      I think it interesting to once again note the congressional record on 35 USC 103, and the fact that Congress had just stripped away from the judiciary the common law evolution t001 of setting the definition of “invention.”

      As I have shared in the past, the Cornell Law website has the Congressional notes on 103.

      There, this is noted: “This paragraph is added with the view that an explicit statement in the statute may have a stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

      It is critical – absolutely critical – to remember that this working out is NOT for the judicial branch. Congress would simply not strip a power only to give it right back, and the fact that Congress felt the need to act to provide the mentioned “stabilizing effect” is directly traceable to the Court’s anti-patent stance of the day and the notion that “the only valid patent is one that has not yet appeared before us.”

      Those that do not learn history are indeed bound to repeat it.

      1. 8.2.1

        Not sure what you mean by this statement. Is this rationale based on facts? Facts outside of the Graham factors? Are you now writing additional law?

        I’m tempted not to respond just because it’s you, but here’s an actual point that others may benefit from.

        The only thing that needs to be shown is that something is more likely than not obvious. A motivation to cause two things to interact is one manner, but it’s not the only manner.

        If B is sleeping with A’s wife and B ends up dead, the knowledge that B is sleeping with A’s wife provides motivation for the interaction. But if there is no wife, and thus no motivation, but the facts are that A was found standing over B’s body with a gun in his hand, we can still find a rationale, based on what we know, of an interaction.

        As the Supreme Court made clear, this isn’t “writing additional law” rather it was the FC that was “writing additional law” by writing a motivation requirement into the 103 statute that had no motivation requirement. Just as you don’t need a motivation to prove someone committed a crime, you don’t need a motivation for things to be obvious.

        You have ALWAYS been allowed to show obviousness by any manner that was persuadable. In this case the rationale is simple – The Supreme Court has already blessed the basic rationale Apple proceeded under (all elements known, functions the same, there was a benefit and enablement). Mobile sought to undermine the rationale by attacking the enablement part of the rationale. But Apple can point to the fact that the specification does not independently enable the microprocessor that Mobile said was so complex. Mobile’s response, in other words, is not logical – you cannot claim to have a valid (and enabled) claim while simultaneously arguing that the prior art didn’t enable the processor. Thus in this particular case, the facts allow us to cut the enablement question out of the court’s rationale because we have a substitute – an argument by the patentee that his claim is valid and a failure of independent enablement in the spec.

        The patentee doesn’t get to talk out of both sides of his mouth – wanting prior enablement with respect to 112 and not with respect to 103. Apple has a rationale for obviousness that is persuasive based on the facts regardless of which way you find on the expert testimony issue. Given the agreed-upon facts of the case and the intrinsic evidence of the spec, the extrinsic evidence of the experts is superfluous to the rationale and the ultimate question.

  8. 7

    One can forgive a lay jury for a lack of intelligence. Not so with the Federal Circuit, who must truly be incompetent to turn out this stuff.

    MobileMedia’s expert acknowledged that had the claims merely required a processor, “it [would have been] obvious to put one there,” but testified that the surrounding claim limitations required the microprocessor to “play[] multiple
    roles” and “make [the claimed components] all work together,” which was “a real challenge” in the art at the time of the claimed invention.

    Guess what is missing from the specification? A teaching that allows the processor to “play multiple roles” and “make the claimed components all work together.” Guess what IS in the specification? The STATEMENT that it DOES things.

    MobileMedia’s expert noted that Nokia…needed two years to develop a product with a microprocessor that provided the claimed functionality between a phone and camera.

    Oh, is the claim directed to the particular phone Nokia spent 2 years designing, or is it directed to the combination of two known pieces of code? Let’s go beyond how ridiculous that argument is – Even if it took two years, the length of time is irrelevant, the question is a matter of unreasonable experimentation. It would take me a long time to build a car, it doesn’t mean people can’t build cars.

    Here’s an important question – Was Nokia aware of the other two patents? If not, what does the 2 year statement mean at all? You don’t get credit for reinventing the wheel. If they spend 22 months coding a camera and a phone separately and 2 months harmonizing the code, then what?

    Here, MobileMedia’s expert testified that integrating the Lucent microprocessor to control the camera of the Kyocera mobile phone in the manner required by the asserted claims would be beyond the technical ability of a skilled artisan. This provided the jury with a reasonable basis for finding that the claimed invention would not have been obvious to one of ordinary skill in the art at the relevant timeframe.

    The testimony has to be taken in light of the specification, and together there is no reasonable basis for the jury’s finding.

    The court’s means-plus skill is surprisingly decent – I mean they miss that “means for processing at least a portion of the image” has no algorithm described in the spec, and thus fails definiteness under Aristocrat (the disclosure of the structure, without the algorithm programming, is inherently deficient), but beyond that they understand that the claim requires two memories, and the iPhone only has one.

    The ‘068 discussion is so rid iculous it didn’t need two pages – it’s obvious to make a single button for an input that normally takes two buttons. Making a button is known, and assigning a signal to a button or combination of buttons is known.

    1. 7.1

      Random, Guess what is missing from the specification? A teaching that allows the processor to “play multiple roles” and “make the claimed components all work together.” Guess what IS in the specification? The STATEMENT that it DOES things.

      This is damning, and should lead to a motion for summary judgment that the specification is non enabling.

      But, assuming arguendo, the spec does disclose the method and means that Nokia developed, and means plus function were employed, what would be your objection?

      1. 7.1.1

        “This is damning, and should lead to a motion for summary judgment that the specification is non enabling.”

        Problem is, they may have filed for patent protection, or otherwise disclosed that enabling bit as of the filing date. Then bam, it’s enabled.

        1. 7.1.1.1

          Problem is, they may have filed for patent protection, or otherwise disclosed that enabling bit as of the filing date. Then bam, it’s enabled.

          So you just want to assume a public disclosure to meet 112, 1st when there’s no evidence in the spec or anywhere in the decision that it exists? And this is the same programming disclosure that they just got through paying two years of R&D on? They’re just going to immediately open source it?

          I’ve got a cold fusion application to sell you.

          1. 7.1.1.1.1

            “So you just want to assume a public disclosure to meet 112, 1st when there’s no evidence in the spec or anywhere in the decision that it exists?”

            That’s what we do at the office as per policy unless we have evidence the contrary or unless enablement is preposterous (perpetual motion etc.).

            “They’re just going to immediately open source it?”

            Or file for a patent on it.

            1. 7.1.1.1.1.1

              That’s what we do at the office as per policy unless we have evidence the contrary or unless enablement is preposterous (perpetual motion etc.).

              The argument by the applicant that something is super complex and nobody else could do it with no teaching within the spec as to how it’s achieved doesn’t qualify as evidence to the contrary for you?

              Or file for a patent on it.

              If filing for a patent was considered sufficient protection that they could turn around and open source it with no downside, I guarentee every patent would include the source code.

            2. 7.1.1.1.1.2

              “The argument by the applicant that something is super complex and nobody else could do it with no teaching within the spec as to how it’s achieved doesn’t qualify as evidence to the contrary for you?”

              Nah bro. Practically speaking you need someone saying explicitly that it can’t be done (or that they’re trying and failing over and over and over for technical reasons) and have a reason to believe so. Do the whole wands thing that the federal circuit dreamed up to supplant the enablement req.

      2. 7.1.2

        This is damning, and should lead to a motion for summary judgment that the specification is non enabling.

        That’s tail-wags-the-dog thinking. You don’t assume the evidentiary conclusion and then build a legal theory around it, you apply a legal theory, and consider the evidence unless it is erroneous by the proper standard.

        The patent is presumed valid. Which means the patent is presumed enabled. Which means the disclosure of the microprocessor is presumed to be enabling. As the spec does nothing more than mention the microprocessor and what it does, the presumption based upon the intrinsic evidence of the patent is that the microprocessor was previously enabled by the art. The district court was wrong to allow the patentee to attack his own enablement in contravention of his own document, as there’s a form of estoppel that arises there. But given that the district court made that error, the federal circuit shouldn’t compound the error by failing to draw a distinction between the evidence offered, which gets deference, versus the legal conclusion, which gets none.

        You’re arguing that just because the jury came to a factual conclusion, we should run with it and call the case an enablement case. But the jury believed an expert whose testimony was insufficient to overcome the otherwise sufficient obviousness showing.

        Point to one thing the expert said (other than an improper conclusion on the legal issue of enablement) that, assuming it were true, defeats the obviousness rationale put forth by Apple. What fact defeats obviousness in your mind?

        This invention is not unenabled, it is obvious.

        But, assuming arguendo, the spec does disclose the method and means that Nokia developed, and means plus function were employed, what would be your objection?

        Well if it used means-plus the particular means would likely in fact be non-obvious over the prior art. But if it disclosed means and then claimed outside of means plus you would be missing a contemporary statement that the art couldn’t perform the act. At least that would be an issue for a jury though.

        If the basis for your invention is that “this combination was posited but nobody actually achieved it beforehand” your spec better point to other people that tried and failed and why you succeeded where they didn’t. Just a nebulous statement that “boy this took a long time to do” doesn’t render something non-obvious, that’s just the application of standard non-inventive work.

  9. 6

    I want to understand the claim, the obviousness, the constructive reduction to practice and the sufficiency of disclosure. As I presently understand it:

    1. The specification does include an enabling detailed disclosure of an embodiment of the claimed subject matter.

    2. The claim is in M+F form and accordingly embraces only the detailed embodiment (and equivalents thereof).

    Suppose that the claim had not been limited to the detailed embodiment. Setting aside the 112(6) special rule for construing M+F language. Then the claim becomes effectively a statement of a problem to be solved, and no longer a narrow statement of a disclosed and enabled specific solution to the problem. In that event, it is wide enough to fall on an obviousness attack, or a sufficiency attack, or both.

    Amirite?

    1. 6.2

      In that event, it is wide enough to fall on an obviousness attack, or a sufficiency attack, or both.

      I’d submit that under Halliburton it must fail under sufficiency, but you can leave it to Perkin’s Glue to say that it only likely fails sufficiency. Of course, if you can describe something as “a statement of a problem to be solved” (which I dont think the claim actually does) you actually have a 101 issue.

    2. 6.3

      Max, assuming arguendo everything you said is true – enabling disclosure – means plus function, that it should be no problem with obviousness assuming the claimed combination was beyond the skill in the art.

      However if the claim we are a required a combination of X and Y, both in the prior art, then an argument that the combination is not obvious has to be based upon the fact that one of ordinary skill in the art would not even attempt to make the combination because it was beyond his skill. Alternatively, in many cases, it is also argued that a reconstruction of one of the references to implement the other would be inconsistent with an essential utility and purpose for the first reference. For example, we had a recent case, discussed here, where the reconstruction would eliminate feature Z of the primary reference – but feature Z was the purpose for the reference.

      1. 6.3.1

        Not sure you are reading me Ned as I would hope. Suppose that your claim is to an A with both of Features X and Y in it. Your supporting specification enables that combination.

        Now suppose that prior art ref D1 teaches A + X and ref D2 teaches A +Y. The obvious 103 objection you face is that D1 + D2 renders the claim obvious.

        The obvious response is to come up with some reason why it would not have been natural (or possible) to combine D1 and D2. And on we go.

        What’s to discuss?

  10. 5

    “MobileMedia’s expert noted that Nokia, which at the time “was at the very forefront of innovation in the cellphone industry,” needed two years to develop a product with a microprocessor that provided the claimed functionality between a phone and camera.

    And those structural improvements that took so long to develop are recited in the claim, right?

    Because the functionality is and was obvious as all get out. This is one of the major problems with functional claiming.

    And everybody knows that. The software patent lovers, of course, can’t stand talking about this, of course, because it would hinder their ability to turn the patent system into a casino for grifters and speculators.

    Let me know if you want some more functionality “innovation.” I got a million of them. I can write them all day long, just like any decent patent attorney can. Heck, a 12 year old can do it if you give him some general directions about what you’re looking for.

    1. 5.1

      MM, I think the real issue is enablement.

      If it took a special microprocessor and associated memory an or programming to accomplish the task, that should be disclosed in the specification. I don’t think the law requires the details of how to make and use be incorporated into the claim itself.

      That said, the claim could be deemed functional — reciting everything that was known in detail, but everything that is unknown/new in terms of results.

      1. 5.1.1

        If it took a special microprocessor and associated memory an or programming to accomplish the task,

        This is a device claim. What “task” are you talking about?

        The point is that if the microprocessor and memory are “special” and their “specialness” is why this combination was non-obvious, then those details absolutely do need to appear in the claim.

        If there is nothing special about them, of course, then the claim screams obvious, just like all the rest of the junky, functionally claimed computer implemented garbage out there.

        But wait — this mobile device with a camera is “strappable” onto a wrist! Or a forehead. Or somebody’s genitals. Or somebody’s foot. Can I haz patent now? I’m wearing it in my robot car. No wait — my robot is wearing it in my robot car. And my robot can fly. And it vibrates when my dog has to pee.

        Can I haz patent now?

        1. 5.1.1.1

          Maybe saying something about “strapping genitals” is what it takes to fit the “culture” here…

      2. 5.1.2

        OK.

        Take the transporter example. What is needed is to make it work is a Nth dimensional warping device to move physical objects between two locations. So I invent that, describe how to make and use it.

        I claim:

        1. Apparatus comprising:

        an input beam,

        an output beam, and

        an nth dimensional transport channel connecting the input beam to the output beam.

        Do I need to describe in the claim the way of making the nth dimensional transport channel?

        Regarding the mobile camera, I suspect the problem mainly was that available microprocessors required too much power to operate at the speeds required. How to accomplish the mission given the available resources at the time of filing of the patent apparently was a non trivial problem.

        Given that these are MPF claims, and assuming the necessary structure to accomplish the task were disclosed, the claim would necessarily include these details as a matter of 112(f). But, this would also mean that the claim was very narrow and would lead to findings of non infringement in most cases. It did here.

        1. 5.1.2.1

          Regarding the mobile camera, I suspect the problem mainly was that available microprocessors required too much power to operate at the speeds required. How to accomplish the mission given the available resources at the time of filing of the patent apparently was a non trivial problem.

          You believe that available microprocessors required too much power to operate? Not too much power to operate in a marketable manner. Not too much power for a quality size handset. But literally took so much power that there is no mobile battery (keeping in mind mobile batteries start cars) that could make it work?

          1. 5.1.2.1.1

            Random, I used to be inside counsel at a major company and just happen to know that a lot of these engineering tasks are nontrivial.

            1. 5.1.2.1.1.2

              Random, I used to be inside counsel at a major company and just happen to know that a lot of these engineering tasks are nontrivial.

              I’m not talking about something that is “mobile enough” that someone would find it useful or buy it. Or with a battery life commerce would find acceptable, as none of those are limitations of the claim.

              The claim says mobile. Every power source that isn’t welded to the ground is mobile. A gas generator is mobile and it powers your entire house when power lines go down. A nuclear power plant is not mobile.

              If the problem with the enablement is they lacked a power source to power the mobile processor, here, have a laptop battery – enabled. There’s no limitation the phone has to fit in your pocket.

              The vast majority of non-trivial engineering tasks are imposed upon them by the market, not by enablement qua enablement.

          2. 5.1.2.1.2

            (keeping in mind mobile batteries start cars)

            So what if mobile phone users need to lunk around 39 pound car batteries…

            Who says “common sense” has to cut in both directions? Surely not those that have their eyes laminated shut….

            1. 5.1.2.1.2.1

              So what if mobile phone users need to lunk around 39 pound car batteries…

              If Apple made billions of dollars selling a smart phone powered by a car battery, I assure you the argument would be that the car battery was mobile.

      3. 5.1.3

        I think the real issue is enablement. If it took a special microprocessor and associated memory an or programming to accomplish the task, that should be disclosed in the specification.

        But it actually IS obvious for exactly the same reason – it was so easy it wasn’t in the spec. But the point I guess practicioners should take is that there should always be a corresponding enablement/obviousness attack. I make them all the time. (In fact, the best way to fix prosecution would be to make it not a new grounds to make an enablement rejection following the kind of hijinks pulled in this case.)

        Regardless, there needs to be a fix in the law for this – If I were Apple my response at the Appellate level would be to ask them to affirm validity based upon enablement regardless of it not being at the lower level because the patentee has admitted it in their argument and it’s actually an attempted shell game on the court.

        I don’t think the law requires the details of how to make and use be incorporated into the claim itself.

        Well the law requires you to possess the full scope of your invention right? If you invent one way of doing something do you possess every way of achieving the function?

        That said, the claim could be deemed functional — reciting everything that was known in detail, but everything that is unknown/new in terms of results.

        Yes, but why don’t you see the interplay between the functional at the point of novelty caselaw and the written description caselaw?

        1. 5.1.3.1

          Random, obviously I do see the association between enablement and functional claiming. I have argued here that the scope of a claim can legally be no greater than the scope of enablement. The best way to say this is that one can claim no more than that which one discloses and equivalents thereof.

          1. 5.1.3.1.1

            Putting aside your “functional claiming” curse-ade for the moment (realizing that I have the better position based on the Congressional record and Federico), you should note the dialogue below between Prof. Crouch and I on “balance” – my comment repeated here for convenience:

            “If we allow for a more creative PHOSITA then we can also lower the enablement requirement.”

            I have stressed this very point often in that the Court has created an unforeseen consequence to its empowering PHOSITA in the KSR decision.

            The Court in reaching out to weaken patents necessarily also weakened the patent requirements.

            Combine this with the actions of Congress in 1952 to loosen the use of language sounding in functions (see Federico), and the continued fact of constructive reduction to practice, and we have the stage set for a vast “expansion” of innovation that happens to be BEST described with words of function (but apparently confuse many who can only see “objective physical structure”).

            1. 5.1.3.1.1.1

              I have stressed this very point often in that the Court has created an unforeseen consequence to its empowering PHOSITA in the KSR decision.

              It’s only an unforseen consequence if you ignore 112a’s WD and 101 abstract idea requirements.

              If a PHOSITA would look at a specification and realize that there are 100 unique ways of achieving something, but the applicant himself only achieves three, then the written description requirement of 112a, which requires personal possession of the scope, would limit him to three. You’ll note too that the remaining 97 ways have now become obvious, meaning they can never be patented. This interplay is what makes the patent system a net plus for the state. Similarly, if one discovers something which opens a whole new field (i.e. using electricity to convey information) that field is not capturable regardless of how enabled it is under 101.

          2. 5.1.3.1.2

            I have argued here that the scope of a claim can legally be no greater than the scope of enablement.

            I misunderstand how you can make this statement then: I don’t think the law requires the details of how to make and use be incorporated into the claim itself.

            If you don’t have a rule that you import limitations from the spec (and we don’t), then by definition you would have to limit the scope by, at a minimum it’s manner of use/work, or else it’s not coextensive with your enablement, right?

            The best way to say this is that one can claim no more than that which one discloses and equivalents thereof.

            Which would lead one to the ultimate conclusion that generally the only functional language allowable would be 112f functional language :)

        2. 5.1.3.2

          The failure of disclosure the details does not necessarily mean that the disclosure was enabling. It might’ve been pie-in-the-sky science fiction at the time the specification was written – a research plan for the boys the lab to figure out how to enable.

          But doesn’t this illustrate a critical problem with first to file that almost forces one to file science-fiction specifications with no details on actually how to make and use when in point of fact it takes years to actually figure out how to reduce to practice, and that reduction to practice may involve numbers of additional inventions?

          1. 5.1.3.2.1

            There was a time that I told our inventors come back to me after you have finished making it. I want to know everything about how to make and use that invention.

            How many patent attorneys today tell their inventors to wait until they actually build the invention? How many?

            1. 5.1.3.2.1.1

              Ned,

              Mixed emotions on this one. Your view here does accord with “best practices;” however, while “best,” in truth this is just not required under the law.

              I “get” what you are saying, but what you are saying is just NOT what Congress has said.

              Anyone wanting to change this should talk to Congress about changing the law.

            2. 5.1.3.2.1.2

              How many patent attorneys today tell their inventors to wait until they actually build the invention? How many?

              This is a fascinating question to me. Are you saying that people routinely come up with an idea, file on it and guess/hope that they are going to do no inventive work (i.e. no undue experimentation) between constructive and actual reductions to practice?

              If you don’t do inventive work, your claim was obvious. If you DO do inventive work, you’ve engaged in undue experimentation past your disclosure and you’re unenabled. You don’t need to create a working model, but you do need to know how to make and use the working model. Even constructive reduction to practice has to comply with 112a.

              I’ve always suspected this is what applicants do. Which combined with the offices “everything in software is enabled” thinking would result in all of the problems we’re seeing nowadays.

              specifications with no details on actually how to make and use when in point of fact it takes years to actually figure out how to reduce to practice, and that reduction to practice may involve numbers of additional inventions?

              There is no way under patent law that allows you to achieve a valid claim prior to doing that work. Actual and Constructive RtP are not as far apart as applicants seem to think they are.

              1. 5.1.3.2.1.2.1

                Random, I am surprised more litigation does not test the enablement of the disclosure to make and use the claimed invention. The reason I think is is just what you said that in today’s world software is deemed enabled, so we have gotten into thinking that all one has to do is say what X does or what Y does as opposed to actually describing what something is. Software inventions have corrupted the whole of patent law because many many patent attorneys write software patents today and are not concerned about enablement. Like I said, litigators are not concerned either.

                What I was more concerned about here is that the race to file so pressures that advising a client to wait until he built something could cost them dearly. Thus patent attorneys will file on what is little more than a research plan and just hope that the resulting patent is never challenged for enablement.

                1. “What I was more concerned about here is that the race to file so pressures that advising a client to wait until he built something could cost them dearly. ”

                  Keep filing provisionals until you get it. Try your best in all of the prosecutions.

          2. 5.1.3.2.2

            The failure of disclosure the details does not necessarily mean that the disclosure was enabling.

            This is true PRE issuance. But it can’t be true POST issuance, because of the presumption of validity – the claim is enabled and therefore something enables it.

            It might’ve been pie-in-the-sky science fiction at the time the specification was written – a research plan for the boys the lab to figure out how to enable.

            Not if it issued though, right? That line of logic is foreclosed by the assumption of validity. The infringer can challenge it, but can the patentee challenge it without admitting (in a case such as this) that he fails 112a?

            that almost forces one to file science-fiction specifications with no details on actually how to make and use

            There is no non-obvious, enabled invention that lacks details on how to make and use, that’s a takeaway from KSR. If you have a new structure, you need details on making and using the structure. If you only combine old structures, the rationales can render it obvious absent the addition of new making and using information. You can’t get a patent without teaching the art something. You can file this application, and you might get it, but only because of office fail.

            in point of fact it takes years to actually figure out how to reduce to practice

            Whether actual or constructive reduction to practice, you need to surpass 112a to reduce. If you spend those years doing inventive (i.e. undue experimentation) work, you have failed 112a from your failure to disclose the work prior to filing. If you spend those years doing non-inventive work, the construction to practice is okay but the claim is obvious.

            1. 5.1.3.2.2.2

              Just to give you a small taste, I once had a inventor described to me a magnetic head for a disk drive that had a tapered multilayered pole with the narrow end directed toward the disk drive surface. I presented the invention to an assembly of senior technologists. Almost all of them said to me that it was a nice idea but there was no way to actually build it. But when I told them how it was done, they said in effect, “Wow!”

              I suspect that today a patent attorney would simply describe the structure and say use conventional thin-film techniques to make it. But that is not sufficient, and only people of ordinary skill in the art would know that conventional techniques would not work.

              1. 5.1.3.2.2.2.1

                Yeah that sort of thing does happen from time to time. And I’ve seen a couple of super convoluted ways of making things of late that were they not disclosed people may not have been able to figure out.

  11. 4

    Re: “Kyocera (Japanese Pub. No. H6-133081 disclosing camera phone with the image sensor and optics but somehow does not disclose the microprocessor”
    Since a camera using an image sensor has to be a digital camera which requires a microprocessor, why is not that an “inherency” teaching to a POSITA?

    1. 4.1

      Agreed.

      I feel like I have to be missing something here.

      MobileMedia’s only argument against obviousness was:

      “a skilled artisan would not have been able to combine the lucent microprocessor with the Kyrocera mobile phone during the relevant time frame due to the ‘complexity and sophistication of software and hardware integration and development.”

      Yet none of the alleged “complexity and sophistication” is in the claims? The claims just recite “a microprocessor adapted to control the operations of the camera unit…”

      So, what does it matter if a PHOSITA wouldn’t have been able to combine the references because “sophisticated” and “complex” if none of that sophistication and complexity is in the claims?

      Seems like an easy 103 to me.

      1. 4.1.1

        “Yet none of the alleged “complexity and sophistication” is in the claims?”

        Naw man, that isn’t what their argument is about. Their argument is that the art is uncombinable, given the time period (since they’d been filed) due to the complexity of the systems in the references, not due to the complexity of their system.

        1. 4.1.1.1

          Their argument is that the art is uncombinable, given the time period (since they’d been filed) due to the complexity of the systems in the references

          That’s not an argument for “uncombinability”. It’s an enablement argument and, if anything, those facts work against the patentee’s absurdly broad claims here.

          At the time this application was filed, nobody skilled in the art believed that combining a processor and a camera in a “mobile device” was “undoable.” On the contrary.

          Next up: “sufficient structure” will be defined by “time to create.”

          1. 4.1.1.1.1

            “It’s an enablement argument and, if anything, those facts work against the patentee’s absurdly broad claims here.”

            Perhaps, or perhaps they made themselves an embodiment that is different than the embodiment that would be produced if you combined the references. And maybe the federal circuit lets everyone off the “fully enabling the full scope of the claims” hook except in the most horrendous circumstances.

            “That’s not an argument for “uncombinability””

            I think it actually is. They’re saying they were uncombinable given the time period before the filing of the application.

        2. 4.1.1.2

          6,

          I feel what you’re saying and that is an interesting argument. However, here, I still feel like it is a pretty easy case.

          Adding a microprocessor to…process information…is, in and of itself, obvious in a lot of cases. More specifically, it seems like the bare idea of adding a microprocessor to a phone is obvious in this case.

          That said, I readily concede that the particular way a microprocessor is integrated into a device may very well be non obvious.

          Here, the applicant seemed to be arguing that their claim was non obvious because of the particular way they integrated a microprocessor, including the time it took to do so. Doesn’t that ‘particular way’ have to be integrated into the claims?

          As others have pointed out, this is a means plus function claim. If the argument is that the non obvious way of integrating a microprocessor is included in the spec and therefore incorporated into the claims, I buy that, totally.

          However, the argument that just because the combination was difficult, or couldn’t have taken place in a given time period, can’t work otherwise. At least imho.

          1. 4.1.1.2.1

            “However, here, I still feel like it is a pretty easy case.”

            It may be. I haven’t looked into it in detail.

          2. 4.1.1.2.2

            “Here, the applicant seemed to be arguing that their claim was non obvious because of the particular way they integrated a microprocessor, including the time it took to do so. ”

            That isn’t their argument. Their argument is that the proposed 103 simply isn’t a valid 103. They’re not trying to say their claim is nonobvious over everything (they rely on being entitled and presumed valid to do that for them). They’re just fighting the one proposed 103 for now.

          3. 4.1.1.2.3

            Go Arthur, I think what the patent owner said about lack of enablement might be true. But at least according to Random, the specification itself in this case failed to disclose the particular microprocessor, how it was arranged with memory, and the programming necessary to make the thing work without undue experimentation.

            And if the invention can only work with a particular microprocessor, memory and programming then a claim which is broader might be considered functional. However in this case, the claimed “microprocessor” was in terms of means plus function. This would automatically include the enabling disclosure if it was there.

            1. 4.1.1.2.3.1

              “the specification itself in this case failed to disclose the particular microprocessor”

              But you don’t know if it was separately disclosed to one of ordinary skill in another document.

              “Go Arthur, I think what the patent owner said about lack of enablement might be true”

              But remember, he’s talking about lack of enablement of combining the references, not enablement necessarily of his embodiment.

              “And if the invention can only work with a particular microprocessor, memory and programming then a claim which is broader might be considered functional. ”

              Of course. But that’s where the federal circuit steps in and hands them a windfall.

        3. 4.1.1.3

          due to the complexity of the systems in the references, not due to the complexity of their system

          Well that’s a ridiculous argument isn’t it? If two references in the art show a high level of complexity and are themselves enabled, but the combination is comparatively simple, then that increases the chance it is obvious.

          The argument is that the combination isn’t enabled, but their very spec belies that, because for something so difficult to code (that supposedly took them two years) they certainly didn’t explain it.

          1. 4.1.1.3.1

            “Well that’s a ridiculous argument isn’t it? If two references in the art show a high level of complexity and are themselves enabled, but the combination is comparatively simple, then that increases the chance it is obvious.”

            Buuuuut what about if the combination is comparatively complex as the patentee argues?

            “The argument is that the combination isn’t enabled, but their very spec belies that, ”

            Not necessarily. His spec doesn’t need to say anything about the proposed combo of the references and it probably doesn’t.

            “because for something so difficult to code (that supposedly took them two years) they certainly didn’t explain it.”

            Supposedly they needed new chips etc. also. And they may have explained it elsewhere, we have no way of knowing at the moment.

      2. 4.1.2

        “So, what does it matter if a PHOSITA wouldn’t have been able to combine the references because “sophisticated” and “complex” if none of that sophistication and complexity is in the claims?”

        It matters because combining those two references cannot be obvious if it wasn’t feasible (for whatever reason). Their argument is that the reason it wasn’t feasible was because the time period was too short to have gotten the systems put together as they were too complex.

        Crafty argument if I do say so myself.

        1. 4.1.2.1

          Their argument is that the reason it wasn’t feasible was because the time period was too short

          What “time period” is this exactly?

          they were too complex.

          Is a “portable rocket ship with a sensor” non-obvious in view of the Apollo program and a reference teaching the utility of sensors because “too complex”?

          Serious question.

          1. 4.1.2.1.1

            “What “time period” is this exactly?”

            Between when the references came out or were on the market or whatever. I don’t know, read the argument in detail.

            “Is a “portable rocket ship with a sensor” non-obvious in view of the Apollo program and a reference teaching the utility of sensors because “too complex”?

            Serious question.”

            I don’t know, and I didn’t say it is a particularly good argument. I just think it’s crafty.

    2. 4.2

      Paul, I’ll bite.

      Not “a microprocessor” but “a particular microprocessor? – its speed and power, it’s memory, and its programming.”

      Obviously, the specification in this case may have a problem if it failed to disclose the microprocessor necessary, the arrangement of memory, and the programming required to enable the invention without undue experimentation.

  12. 3

    ““the question of whether there was a reason to combine certain references” is a question of fact. ”

    Yeah that CAN be a question of fact. But if it simply is, at all times a question of fact, then obviousness becomes practically TSM all over again. Down that path I think the CAFC dare not travel once more.

    1. 3.1

      It’s always been a question of fact. Before KSR and after KSR. And it always will be. There has to be a reason why one of ordinary skill in the art would modify/combine the prior art to arrive at the claimed invention.

        1. 3.1.1.1

          It’s part of the scope and content of the prior art. KSR just says that the common knowledge of the skilled person is part of that prior art, and that the reason doesn’t have to be an explicit TSM in one of the cited references. The reason for combining still has to have a factual basis.

          1. 3.1.1.1.1

            The reason for combining still has to have a factual basis.

            As if there isn’t a “factual basis” for combining any kind of information collecting functionality with an information processing and storage device.

            When are the computer arts going to grow up?

            1. 3.1.1.1.1.1

              As if there isn’t a “factual basis” for combining any kind of electrons, protons, and neutrons,, given that all elements are known and per se obvious** and the law of nature “method” by which these things are put together are known and per se obvious…

              Oops.

              **man-made, not found in nature’s warehouse elements excepted, of course.

              1. 3.1.1.1.1.1.1

                As if there isn’t a “factual basis” for combining any kind of electrons, protons, and neutrons,, given that all elements are known and per se obvious** and the law of nature “method” by which these things are put together are known and per se obvious…

                In the grown up arts there is a requirement for specific structure.

                And if you don’t have some unexpected results you better be very specific indeed.

                Thanks for playing, “anon.” I can always count on you.

                1. You do realize the words of Congress and the actual law that makes your position here of “structure” – albeit a fine option, not an actual requirement as you would spin, right?

                  That’s kind of important in a legal discussion.

          2. 3.1.1.1.2

            “It’s part of the scope and content of the prior art.”

            Mmmm, yeah I don’t know about that brosef. “knowledge of one of ordinary skill” that was never published/made avail to public isn’t “prior art” as far as I’ve been made aware. Usually testimony is about what is actually in references right?

            “KSR just says that the common knowledge of the skilled person is part of that prior art”

            I would be much obliged if you could point me to where this is stated explicitly.

            Idk bro, the finding of a motivation, rational etc. to combine is tantamount to making the finding of the legal conclusion of obviousness itself.

            ~~~~~~~~~~~~~~~~~~~~

            I honestly cannot, I just cannot, for the life of me understand why we’re talking about such basic stuff in 2015. Why wasn’t this hashed out in 1960?

            ~~~~~~~~~~~~~~~~~~~~~

            Looks like this guy says motivation to combine is a question of fact as well.

            link to wolfgreenfield.com

            However this other guy says that the question is a question of fact, but it is NOT a factual concern under the 1st graham factor scope and content of prior art.

            “The Federal Circuit began its analysis of obviousness based on the Graham factors: (1) scope and content of the prior art, (2) the difference between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations, including commercial success, long-felt but unsolved need, and the failure of others. Finding that factors (1) and (3) were not in dispute, the Court focused on three specific factual issues: (1) whether the prior art references were in the same field of endeavor as the invention, (2) whether there was sufficient motivation to combine the references, and (3) the existence and significance of secondary considerations.”

            link to finnegan.com

            Very interesting question, if it is an issue of fact, always, then why is it not up ins of the graham factual findins?

            1. 3.1.1.1.2.2

              As I said, 6, the Supreme Court in developing the KSR criteria were operating on inventions that were simple mechanical inventions well within the skill of the art to make the substitutions required.

              Also, in the patent office, combinations are presumed enabled to one of ordinary skill in the art and that never becomes an issue unless it is made an issue by the applicant.

              But I think in the real world, things are just a bit different. Taking A and B in the prior art and saying they disclose the all the limitations is not sufficient to render a claim obvious unless it is also proved to be within the ordinary skill in the art.

              Note, that the proponent of the proposition has the burden of proof – and that by clear and convincing evidence.

              1. 3.1.1.1.2.2.1

                “Also, in the patent office, combinations are presumed enabled to one of ordinary skill in the art and that never becomes an issue unless it is made an issue by the applicant.”

                I don’t think a reasonable expectation of success is presumed, but it’s rarely an issue in ex parte prosecution. I’ve argued it, but only a few times in 16+ years of practice. But when it is argued, the burden is on the examiner, and remains on the examiner throughout prosecution, to establish, as a matter of fact, that one of ordinary skill in the art would have a reasonable expectation of success in modifying/combining the prior art to arrive at the claimed invention.

            2. 3.1.1.1.2.3

              From the Finnegan article:

              ” Prior to KSR, the Court explained, the question of motivation to combine was treated as a question of fact. While KSR did not change that rule…”

              The factual inquiry into whether there is a reason to modify/combine the prior art is part of the Graham factors, i.e. it is part of determining the scope and content of the prior art pertinent to the subject matter sought to be patented.

            3. 3.1.1.1.2.4

              “Idk bro, the finding of a motivation, rational etc. to combine is tantamount to making the finding of the legal conclusion of obviousness itself.”

              No it is not. It is only one of the facts that the examiner must establish for a correct legal conclusion of obviousness. The examiner still has to show that all of the claimed features were within the scope and content of the prior art pertinent to the subject matter sought to be patented AND that one of ordinary skill in the art had a reasonable expectation of success in modifying/combining the prior art to arrive at the claimed invention.

          3. 3.1.1.1.3

            Ahah! The guys over at finnegan actually explain what’s been going on!

            “Prior to KSR, the Court explained, the question of motivation to combine was treated as a question of fact.”

            “While KSR did not change that rule, it and subsequent Federal Circuit case law established that motivation may be addressed on JMOL. ”

            “Specifically, in KSR, the Supreme Court explained that the ultimate judgment of obviousness is a legal determination. KSR and later Federal Circuit cases established that the legal determination of obviousness may include reliance on logic, judgment, and common sense in lieu of expert testimony, especially where the technology at issue was easily understandable. ”

            At least I was right about this being a throw back to the olden days. Now we have some sort of bas tardiz ed factual findings stuff going on. Though note above where the motivation to combine, while being a factual finding, is not necessarily a part of the scope and content of the prior art.

            1. 3.1.1.1.3.1

              If a fact, then it has to fit into one of the fact buckets.

              while being a factual finding, is not necessarily a part of the scope and content of the prior art.

              Which bucket then?

              Or are we (gasp) writing new patent law?

              1. 3.1.1.1.3.1.1

                “Which bucket then?”

                I don’t fcking know, ask the federal circuit, they’re the ones saying it isn’t in bucket (1). Maybe it is an ancilliary factual finding. In the finnegan link above they’re clear that the fed circ said it wasn’t in bucket 1 (scope and content).

              2. 3.1.1.1.3.1.2

                What bucket then? What about the skill of the person of ordinary skill in the art?

            2. 3.1.1.1.3.2

              “Though note above where the motivation to combine, while being a factual finding, is not necessarily a part of the scope and content of the prior art.”

              Yes it is. “Determining whether there is a suggestion or motivation to modify a prior art reference is one aspect of determining the scope and content of the prior art, a fact question subsidiary to the ultimate conclusion of obviousness.” SIBIA Neurosciences, Inc. v. Cadus Pharma. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 200).

              1. 3.1.1.1.3.2.1

                See also Tec Air, Inc. v. Denso Mfg., Inc., 192 F.3d 1353, 1359 (Fed. Cir. 1999).

              2. 3.1.1.1.3.2.2

                Alrighty well thanks. That at least is how they were looking at it from 2000. And they want to say that KSR didn’t change things, but instead is simply saying that sometimes common sense is a fact that can be found without an explicit teaching in a reference. I guess.

                1. I wouldn’t say that common sense is a fact. It’s a tool that’s available to the fact finder in reaching the ultimate conclusion of law.

                2. “I wouldn’t say that common sense is a fact. ”

                  I would sort of agree, but if common sense is not a fact, and if common sense satisfies the need for a reason/motivation to combine, then ergo the reason/motivation is not always a fact. Right?

                3. “I would sort of agree, but if common sense is not a fact, and if common sense satisfies the need for a reason/motivation to combine, then ergo the reason/motivation is not always a fact. Right?”

                  But common sense doesn’t satisfy the need for a reason/motivation to combine. Nowhere in KSR did SCOTUS say that a reason to modify/combine the prior art is common sense.

                  If you disagree, please feel free to quote any portion of KSR that you think supports the notion that common sense can be the reason one of ordinary skill in the art would modify/combine the prior art.

                4. “But common sense doesn’t satisfy the need for a reason/motivation to combine. Nowhere in KSR did SCOTUS say that a reason to modify/combine the prior art is common sense.”

                  Actually it does. See any number of post KSR decisions relying on that as the sole motivation if you don’t want to take my word for it.

                  “If you disagree, please feel free to quote any portion of KSR ”

                  Rigid preventative rules (aka mandating that there be evidence found in a reference showing a motivation, aka TSM) that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law. Pp. 15–18.

                  ^You cannot deny recourse to common sense bro. That was the meat and bones of their overturning TSM.

                5. “Actually it does. See any number of post KSR decisions relying on that as the sole motivation if you don’t want to take my word for it.”

                  Feel free to cite me any one you think allows common sense as the sole motivation.

                  “Rigid preventative rules (aka mandating that there be evidence found in a reference showing a motivation, aka TSM) that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law. Pp. 15–18.”

                  That part in parentheses is yours, not SCOTUS’s. And it’s wrong. There’s nothing in KSR that replaces the requirement that the legal conclusion of obviousness be based on facts established by objective evidence, including the fact that there existed a reason to modify/combine the prior art.

                6. “Feel free to cite me any one you think allows common sense as the sole motivation.”

                  I’m not going to dig more up, we’ll see aplenty over the next year. Keep your ears open for the screeching on here about “omfg common sense”! To be clear, a lot of those decisions I don’t even agree with myself.

                  “And it’s wrong. ”

                  Lulz. Go tell the rest of the world of patent attorneys who even today shed tears over KSR.

                  “There’s nothing in KSR that replaces the requirement that the legal conclusion of obviousness be based on facts established by objective evidence, including the fact that there existed a reason to modify/combine the prior art.”

                  K, gl in court. Meantimes why don’t you tell us just what the good court did mean where me and the rest of the world are soooooo wrong?

          4. 3.1.1.1.4

            DanH, I think there’s a difference between prior art and ordinary skill.

            Prior art is everything known.

            Ordinary skill is much more limited.

            1. 3.1.1.1.4.1

              Ned,

              I have discussed this very point previously.

              The “world of art” available for 102 IS different than different than the “world of art” that is available for 103.

              All too often those like Random and J fail to grasp this difference, and advance WAY-too-broad statements like “if known, than obvious” and blanket “obvious to try is obvious.”

              The Court did us no favors by muddying the waters of 103 with their dicta and attempts to hold onto authority that Congress stripped from them. Once again, I will bet that your adoration will prevent you from recognizing the true culprit behind the mess of patent law “jurisprudence” here, and the notion that statutory law is not subject to common law evolution will be missed (pay attention to the comment in the movie The Paperchase at the hour-six-minute mark).

              1. 3.1.1.1.4.1.1

                anon, there is no doubt that Pennock v. Dialogue, 27 U.S. 1, 7 L. Ed. 327 (1829) limited “known and used” to “publicly known” and “publicly used.” While the statue stayed the same, its meaning was “interpreted.”

                Or, as you say anon, that the statute was “rewritten?”

                1. It is absolutely imperative that we keep in focus that after 1952 the courts were stripped of the tool of common law evolution (which had been provided by Congress in the early patent act).

                  Keep in mind too that prior to 1952; all of the now separate 101/102/103/112 was a single paragraph…

                  That being said, you too should be reminded of the Soliloquy and effect of the AIA on the Pennock case – keeping in mind what the Court said about the Constitutional Clause in the Holder case.

                2. anon, you cannot deal with the fact that the codification was not intended to change the law except with respect to several well known cases:

                  1. Mercoid
                  2. Cuno Engineering
                  3 Halliburton

                  As to common law, the courts are limited by the statute, of courts. As Federico noted, this was intended to “stabilize” the law. So, to some extend, you are right. But that does not mean that cases prior to ’52 can or should be ignored. That is a distinction that you should finally figure out.

        2. 3.1.1.2

          Precisely D. The motivation, or reason to combine, I have to say is not necessarily a factual consideration though it can be and most often is in my experience.

          1. 3.1.1.2.1

            ” The motivation, or reason to combine, I have to say is not necessarily a factual consideration though it can be and most often is in my experience.”

            When would it not be? What is, or would be, the criteria for determining when it is, and when it isn’t?

            Think about that. Seriously. You’re essentially arguing, “Well, sometimes the examiner has to establish, by a preponderance, that, as a matter of fact, there is a reason to modify/combine the prior art to conclude that a claim, as a matter of law, is obvious. And sometimes the examiner doesn’t have to.”

            Do you really believe that’s the state of the law on this issue?

            1. 3.1.1.2.1.1

              AAA JJ,

              This is merely yet another indication of 6’s broken “all facts are really ‘relative’ ” left-liberal upbringing that everything is grey and there is nothing truly “black and white.”

              Watch now as he attempts to portray anyone thinking otherwise as having some sort of mental defect….

              1. 3.1.1.2.1.1.1

                Well anon I can say for sure that in my art things appear fairly black and white on the subject of obviousness the vast majority of the time. But then, my art is in the useful arts :/ We have to make room for considerations of obviousness in all the non-useful arts currently posing as useful arts in the patent system.

            2. 3.1.1.2.1.2

              “When would it not be? What is, or would be, the criteria for determining when it is, and when it isn’t?”

              That’s a great question AAA, and I don’t think the courts have answered it all that well. But we definitely are familiar with the courts utilizing the old common sense.

              “You’re essentially arguing, “Well, sometimes the examiner has to establish, by a preponderance, that, as a matter of fact, there is a reason to modify/combine the prior art to conclude that a claim, as a matter of law, is obvious. And sometimes the examiner doesn’t have to.”

              Naw man, what I’m “arguing” is that “the examiner may establish, by a preponderance OF THE EVIDENCE, that as a matter of fact, there is a reason to modify/combine the prior art to conclude that a claim, as a matter of law, is obvious. Though sometimes, if the evidence does not directly and explicitly address ancillary motivations such as common sense, general need to modernize (see KSR’s situation iirc), and other common motivations that are none the less known in the art then they may conclude the claim, as a matter of law, is obvious”.

              I know that isn’t the best rule brosef, especially regarding administerability and review, but that appears to be the paradigm we’re operating under today regardless of my “arguing” or not. And that may be the price we pay for having the word “obvious” in the statute. And similar goes for judge btw.

              1. 3.1.1.2.1.2.1

                “…I don’t think the courts have answered it all that well.”

                But they have answered it. The ultimate legal conclusion of obviousness has to be supported by facts that are established by objective evidence. And whether there is a reason to modify/combine the prior art to arrive at the claimed invention is one of those facts. In every single case. Every single time.

                “…if the evidence does not directly and explicitly address ancillary motivations such as common sense, general need to modernize (see KSR’s situation iirc), and other common motivations that are none the less known in the art then they may conclude the claim, as a matter of law, is obvious”.

                I don’t think “common sense” is a reason to modify/combine the prior art. I’ve worked with a lot of inventors and not one of them told me they created something different because common sense. They did it to solve a problem. Whether the problem was known or unknown. Sometimes that problem is: avoiding a competitor’s patent (i.e. designing around). Sometimes it’s to meek a market need or demand (e.g. our customer needs a sensor that will survive and function when sent 5,500 feet down an oil well). But nobody invents anything because common sense.

                As to all those other “generic” (for lack of a better word) “reasons” or “ancillary motivations” (e.g. “general need to modernize” whatever that may be) or “other common motivations,” I don’t have a problem with an examiner citing those, but I do have a problem when I ask for evidence of those and the examiner squawks. If those “reasons” are so “common” it shouldn’t take much to provide some evidence of them. Yeah, everybody “knows” that increasing mpg of internal combustion engines is desirable, and if the examiner cites me that as a “reason” for modifying/combining the prior art, I usually find it’s easier to dispute the ability of the combination to actually achieve that result, but I also reserve the right to ask for evidence as to how the prior art that is actually being applied suggests that reason based on the features and sections of those references that are being cited.

                I get a lot of rejections like this: Reference A discloses everything except X. Reference B discloses X. It would have been obvious to combine References A and B to improve the mpg of the engine.

                Okay. Is feature X from Reference B even disclosed as having an effect on mpg? Would combining References A and B even result in increased mpg? If not, and I argue that, what I invariably get from the examiner is, “But I gave a reason for the combination.” Well, that’s nice, but the reason has to be correct, again for a lack of a better term. Too many examiners think that the only thing required to establish obviousness is to provide a reason. Any reason. That ain’t the case.

                1. “something different because common sense. They did it to solve a problem. ”

                  I agree, but we’re not talking about the motivation to create something different being because of common sense. We’re talking about the reason or motivation to combine references. A bit different.

                  “They did it to solve a problem. ”

                  Well of course, but in how many of those cases did they utilize common sense to solve a problem? And in how many of those cases also is common sense a reason to combine two references in a combo rejection of a claim that was presented to the office? Those are all different things compared to the inventor’s motivation to invent.

                  “but I do have a problem when I ask for evidence of those and the examiner squawks”

                  Right, but a lot of times there just is not going to be evidence of common sense etc. And that’s just going to have to be a difference between you with your preference for what the law ought to be (as objective as TSM with the M being a fact backed by evidence always) and the USSC/the actual law.

                  I completely understand why you’d like it to be different.

                  “I get a lot of rejections like this: Reference A discloses everything except X. Reference B discloses X. It would have been obvious to combine References A and B to improve the mpg of the engine.

                  Okay. Is feature X from Reference B even disclosed as having an effect on mpg? Would combining References A and B even result in increased mpg? If not, and I argue that, what I invariably get from the examiner is, “But I gave a reason for the combination.” Well, that’s nice, but the reason has to be correct, again for a lack of a better term. Too many examiners think that the only thing required to establish obviousness is to provide a reason. Any reason. That ain’t the case.”

                  I hear you, you want what I call a technical motivation to combine the references due to the substituted in feature. It goes a bit above and beyond a simple motivation to combine the references. I’m becoming more familiar with the difference as my days pass.

                  “Well, that’s nice, but the reason has to be correct, again for a lack of a better term.”

                  The term you’re lacking is “I want my motivation you’re citing me to be a technical motivation to combine the references due to the substituted part”.

                  And technically speaking, I don’t think that is “correct”. Rather, and this is painful for people to hear because it expands the amount of combos that can be made legitimately, all he needs is a motivation to combine the references. Not a motivation to bring in X with a specific benefit from X itself. Otherwise, you’re not looking for a “motivation to combine”. What you’re looking for is a motivation to import a feature. And if that is what the courts have been looking for all this time, then they should have been more clear in their decisions for the last century so we’d all be on board.

                  And the reason this needs to be so is because there are many obvious combinations, which are in fact obvious combinations to make. And those obvious combinations all legit block claims to the resulting things that come out of the combination. As one example, sometimes you’re bringing in a large piece X (prime) that has subpiece X (subprime) in it. All the claim is concerned with is subpiece X. The only motivation in the reference to combine with your primary relates to X (prime). The combo is obvious. And it just so happens that you have the bad fortune to be claiming upon that obvious combined thing.

      1. 3.1.2

        …but under KSR the reason can be as vague and handwavey as “common sense”…. so…. you know….

  13. 2

    “The law requires that a patented invention represent a significant advance beyond what was previously known in the art.”

    There is no such requirement.

    1. 2.1

      This sounds like another I know it when I see it standard of Alice.

      That would be a horror story for the PTO.

      1. 2.2.1

        Thanks for the clarification. I do certainly hope though that nobody stumbles on this post of yours and quotes “a leading patent law scholar” for noting that “obviousness requires a significant advance” as that’s just not the law.

      2. 2.2.2

        A “significant advance” does not appear to be required by the law. An invention is inventive whether significant or not (e.g., incremental) so long as non-obvious.

      3. 2.2.3

        “Defining invention” (or inventive gist, gist of the invention or any of the myriad terms that sprung up in the time period that Congress permitted the judicial branch to reach that “definition of invention” by the power of common law evolution, is deeply intertwined in the current raging debate of 101. Those knowing history should reflect on this and the actions taken in 1952 to remove that ability to “define invention” from the Court(s), and also reflect that the choice of “obviousness” was NOT meant as a one-for-one exchange with “invention” (see the Prof. Hricik side of the blog for an appropriate quote).

  14. 1

    Dennis, the cases KSR relied on were simple mechanical devices that were clearly within the skill in the art to combine. Not so here.

    “MobileMedia’s expert noted that Nokia, which at the time
    “was at the very forefront of innovation in the cellphone
    industry,” needed two years to develop a product with a
    microprocessor that provided the claimed functionality
    between a phone and camera. J.A. 20467. In view of
    these considerations, MobileMedia’s expert testified that
    it would not have been obvious for one of skill in the art at
    the time the invention was made (1994), even with
    knowledge of the Lucent microprocessor, to combine the
    Lucent microprocessor with the Kyocera mobile phone in
    a manner that satisfied the limitations of claim 73 of the
    ’078 patent.”

    I see nothing at all wrong in this. I am puzzled why you think it must be presumed to be within the skill in the art to make the combination?

    1. 1.1

      If it is obvious to try, it is obvious, no matter how long or difficult it would be to actually achieve the desired result.

      1. 1.1.1

        J, really? If it requires invention to achieve the desired result, what then? I think that is what this case stands for. Nokia could not simply order up parts. They had to invent a new microprocessor to make the claimed combination work.

        1. 1.1.1.1

          Ned,

          I haven’t reviewed the claims here, but do you agree that the distinguishing characteristic be captured in the claims?

          For example, I do think it is probably obvious to add “a microprocessor” to a lot of things.

          However, like you said, if they made some non obvious modification to the microprocessor, that’s a different story. Assuming the non obvious modification is captured in the claims.

          1. 1.1.1.1.1

            Who gets the patent on the transporter? The person who has the idea or the person who actually makes one, who can and does describe how to make and use?

            This is fundamental law that goes back centuries now. The man with the idea is not the inventor. It is the one who makes and uses.

            Asking whether it is obvious to try if one does not know how to actually make and use that which is obvious to try should not negative a patent to the one who actually reduces to practice.

            1. 1.1.1.1.1.1

              By “make,” you mean to include constructive reduction to practice, right Ned?

              After all, that too has been the law for well over 100 years.

            2. 1.1.1.1.1.2

              Ned: Who gets the patent on the transporter? The person who has the idea or the person who actually makes one, who can and does describe how to make and use?

              Depends on the claim.

              The correct answer could very well be “neither” if the claim is a pile of functional junk.

              1. 1.1.1.1.1.2.1

                junk

                Because the Red Queen’s feelings say so.

                (It certainly isn’t a legal argument the RQ is putting on the table for discussion)

            3. 1.1.1.1.1.3

              Ned,

              Who says anyone gets a patent?

              For example, I disclose novel ideas X, Y, and Z, but only claim X and Y. Who gets a patent on Z?

              I don’t understand the relevance of reduction to practice here. Can you flesh out your argument a little more?

              1. 1.1.1.1.1.3.1

                J, I think you’re used to practicing in the patent office where it is presumed that the combination of references are enabled.

                If in fact how to make and use something is itself not obvious because it is not known and not within the skill in the art, then how can it be said that the combination is obvious to one of ordinary skill in the art?

                I think the critical problem in this case relates to whether there was sufficient disclosure in the specification of how to make and use the invention given the testimony that one of ordinary skill in the art could not do so simply based upon the prior art references.

              2. 1.1.1.1.1.3.2

                I think your analysis is too close to the pre-KSR thinking that it is necessary for it to be disclosed and that there must be a motivation to combine.

                I think that a correct understanding of obviousness recognizes that innovation is occurring outside without help from the patent system. If the invention is imminent (here, the combination of two features in a camera phone), then it is obvious in context of the prior art.

          2. 1.1.1.1.2

            Go Arthur, on Nokia. If they can show one or more patents on the development effort to get the camera system to work, I think that would be very persuasive.

            1. 1.1.1.1.2.1

              arthur: i do think it is probably obvious to add “a microprocessor” to a lot of things.

              Try “all thing for which relevant information can be collected, stored and/or processed”. Or you can just add a sensor and do the processing remotely. With wires or not.

              This is the information age, after all, and we’ve been in the “Information Age” for quite some time already (at least as long as the Internet has existed and arguably for as long as electric computers have existed)!

              But I guess we’re all supposed to forget that endlessly recited slogan when it comes to the obviousness of computer-implemented junk.

        2. 1.1.1.2

          Then get a patent on the new microprocessor, but that doesn’t mean that you stop someone else from using a different microprocessor to achieve the same result.

          Let’s say that A+X=B. A is known, B is an expected result. We know, for a fact, that X is limited to 100,000 different possibilities, and we know that the answer is within 1 of those 100,000 possibilities. Company hires 10 people to try out the 100,000 possibilities, knowing for sure that there will be the desired result eventually.

          Does Company (and the discovers) get a patent? No, because it could be found the first time, or the last time, but in either case the patent system is not there to award people for doing mundane work for long periods of time. Its meant for innovation that would not otherwise occur without the patent system.

          I’m not saying that my hypothetical entirely matches this case, but I am just trying to illustrate a rule, and that rule is… obviousness to try means 103 obviousness.

          1. 1.1.1.2.2

            “Company hires 10 people to try out the 100,000 possibilities, knowing for sure that there will be the desired result eventually.

            Does Company (and the discovers) get a patent? No”

            This is fundamentally incorrect. Funneling down possibilities into things that actually work is a fundamental inventive process. Extended process of elimination makes up a lot of inventions. Or do you think that because we know “chemicals can affect the human body” that sifting through the millions of known chemicals and testing them that all new drugs are obvious?

      2. 1.1.2

        If it is obvious to try, it is obvious, no matter how long or difficult it would be to actually achieve the desired result.

        I don’t think that’s right. The references have to be enabling – it’s not enough that they simply suggest that something be tried. The burden shifts if a combination of references suggests a particular combination, but ultimately the evidence has to show that the public was in possession of the claimed invention.

        1. 1.1.2.1

          I disagree Dan, I think “was in possession of the claimed invention” narrows down obviousness to the point its no more than novelty, which KSR rejected.

          1. 1.1.2.1.1

            Leave out the “in possession of,” then. The invention still has to be enabled, in that there is enough information in the prior art for a person to build the combination without due experimentation, given that he’s made the obvious leap to attempt the combination in the first place.

      3. 1.1.3

        “If it is obvious to try, it is obvious, no matter how long or difficult it would be to actually achieve the desired result.”

        Wrong.

      4. 1.1.4

        “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. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR at 1727.

          1. 1.1.4.2.1

            My point is that, before a court just dismisses something as, “oh, it took two years,” it needs to consider why it took two years.

            I am happy to respond further Triple A Double J, but I ask that you contribute more than just “wrong” and “so whats your point,” or else its really not very fun.

            1. 1.1.4.2.1.1

              Maybe read some of my other posts on this topic.

              Does the presence of ” If this leads to the anticipated success” and “…might show that it was obvious under § 103” lead you to believe that showing it would have been obvious to try is not the end of the inquiry and analysis for obviousness? You still have to show a reasonable expectation of success. And you are aware that section 103 explicitly states that patentability shall not be negatived by the manner in which the invention was made (i.e. it doesn’t have to be the result of a flash of creative genius)?

              Your argument that “If it is obvious to try, it is obvious, no matter how long or difficult it would be to actually achieve the desired result” is just wrong. There’s zero support for it in the statute, and zero support for it in the case law.

              Was that fun enough for you?

            2. 1.1.4.2.1.2

              “My point is that, before a court just dismisses something as, ‘oh, it took two years,’ it needs to consider why it took two years.”

              Right. The court needs to resolve the factual question as to the level of ordinary skill in the art and the factual question into whether that person of ordinary skill in the art had a reasonable expectation of success.

              So you’ve just established that your “If it’s obvious to try it’s obvious no matter what” statement is wrong.

              Congratulations.

            3. 1.1.4.2.1.3

              I am just reminded, in these circumstances, how important it is for every person to watch this 2 minute video on behavior of posting on a message board: link to youtube.com

              As I made clear in my hypothetical (and maybe less so in my initial reaction to the opinion which didn’t address the matter), reasonable expectation of success is absolutely part of the consideration here. But that expectation of success could be 5 years, maybe even 10 years, from now. So maybe it is difficult to reach the expectation, but that doesn’t mean that there wasn’t a reasonable expectation of success.

              1. 1.1.4.2.1.3.1

                But what if there is no reasonable expectation of success? Then it’s not obvious.

              2. 1.1.4.2.1.3.2

                maybe even 10 years, from now.

                That’s not reasonable – for any art field.

                What you think that you made clear, you did not. Hence, those reacting against your statements.

                1. An important point here is that invention is not completed at the point of conception (idea generation) but only upon reduction to practice. It is easy to lose sight of that definition because we allow constructive-reduction-to-practice with the filing of a patent application.

                  So for obviousness, the question really is: would it have been obvious for an artisan with ordinary skills at the time of the invention to conceive of the invention and reduce it to practice.

                  The reduction-to-practice and obvious-to-try elements should likely be tied to the reasonable-experimentation allowance under the enablement doctrine as a mechanism for ensuring some balance in the system. If we allow for a more creative PHOSITA then we can also lower the enablement requirement.

                2. If we allow for a more creative PHOSITA then we can also lower the enablement requirement.

                  I have stressed this very point often in that the Court has created an unforeseen consequence to its empowering PHOSITA in the KSR decision.

                  The Court in reaching out to weaken patents necessarily also weakened the patent requirements.

                  Combine this with the actions of Congress in 1952 to loosen the use of language sounding in functions (see Federico), and the continued fact of constructive reduction to practice, and we have the stage set for a vast “expansion” of innovation that happens to be BEST described with words of function (but apparently confuse many who can only see “objective physical structure”).

                3. An important point here is that invention is not completed at the point of conception (idea generation)

                  Exactly the point I keep making with the anti-software folk who keep on insisting on moving the goalposts and obfuscating by wanting to confuse the thought of software with software (software being an actual manufacture and machine component.

                  But certain people refuse to acknowledge that distinction.

                4. Dennis, would it not be a better description of “conception” that is of a complete embodiment coupled with a at least one way to make and use the invention. One has to describe in the specification, after all, not only a description of the invention but of a way of making and using it in order to disclose it in a manner as required by §112 (a) in order to receive a constructive reduction to practice.

                  If one has a idea to build a transporter, but has no idea of how to build an the nth dimensional tunnel required to connect the input and output beams, can it truly be said that one has invented the transporter?

                  I remember when I was a kid that I invented the flying saucer. Only problem is, I don’t know how to make a magnetic levitation device.

                5. The comment below this takes the cake: an IP law professor giving his opinion on what “the [obviousness] question really is”.

                  Consider how ridiculous this situation is. For years now I have been commenting here and elsewhere, lamenting the sorry state of patent jurisprudence, and excoriating the parties and institutions responsible, to the point where I shifted my practice away from patents. I didn’t go into patent law either by default, or for the money, I went into it on a principled basis, and boy what a shock I had 15 years ago.

                  That shock turned successively to incredulity, to outrage, to amazement, to ambivalence, to a lack of interest, and now to a form of regret–regret that the microcosm of so-called patent law is representative of a decaying society.

                  Crouch opining on what he thinks the basic question is. Classic. Years ago I worked up a comprehensive analysis of obviousness, with which I have done nothing because it interprets existing law and jurisprudence in a new, and therefore unacceptable, manner–even though it is rational, cogent, compelling, totally supportable, and consistent. There is simply too much institutional, cultural, and governmental inertia to entertain any kind of wholesale functional revisionist interpretation.

                  In this case, that’s a bad thing. When nobody agrees upon, or even understands, the basics, we are nowhere. And don’t try to convince me that there is a coherent, consistent, rational, and general test and formulation thereof for obviousness, because there isn’t.

                  I’m very glad to have put patent law behind me, at least for now. Life’s too short.

                6. IBP, the problem is the word “obvious.”

                  Beauty is in the eye of the beholder… Obviousness is completely idiosyncratic.

                  So is “improvement” to a degree. But consider that instead of “obviousness” we required that claimed subject matter, if not new, to be an improvement over the art. Just that. In point of fact, an improvement. It actually has to be better in some fashion.

        1. 1.1.4.3

          Several items from the very quote you provide speak against the larger blanket statement you made at 1.1, J.

          Finite number…
          Identified, predictable solutions…
          Known options within his or her technical grasp (this one explicitly not reached in the present case)…

          If (all of the above), might (note, NOT “must”), show obvious under § 103.

          This is NOT support for your over-statement.

          1. 1.1.4.3.1

            Anon and DanH,

            I think I’m more on point than most here, and more on point than the judges. My slight overstep with saying “is” with “could be” is minor compared to the, “obvious to try is not a thing it has to be in the public possession or enabled” argument. It’s simply not true and doesn’t square with KSR.

            If all it takes is an educated guess and serial trial-and-error, its obvious, even if it takes two years to get there. Time to get there doesn’t matter, its the certainty that it will eventually happen. It’s not what everyone knew at the time of the disclosure, its the capability of those skilled in the art to eventually figure it out. That has plenty of legal support.

            It’s weird, as Go arthur has stated recently in 4.1, that they didn’t describe in detail the microprocessor that enabled such invention. Probably because the microprocessor is nothing special. And as Paul at 4 has stated, there seems to be a suggestion of a microprocessor that can do such the trick in Japan. This is why there is such a thing as obviousness, and why its different from novelty… its very likely that someone has, or will, come up with the invention without the incentive of the patent system. Why should we grant a monopoly on something we could have for free?

            If all it took was making a microprocessor to add related patents together, I’m sorry, that cannot (and should not) be patentable. Unless the expert described why someone skilled in the art couldn’t come up with that processor, the fact that it was a simple combination of two different disclosures makes it obvious in my mind.

            1. 1.1.4.3.1.1

              J, this is a good conversation as it does place the patent owner between a rock and a hard place. Arguing on the one hand that it was beyond the skill in the art to do implement the combination, one would think that the specification would teach one of ordinary skill in the art how to make and use the invention without under experimentation and this would include the details of the microprocessor and programming to extent necessary.

              Live by the sword, die by the sword.

            2. 1.1.4.3.1.2

              Why should we grant a monopoly on something we could have for free?

              Great question.

              The answer is “Because some rich entitled people like it that way. It allows them to treat the patent system like a casino where they can speculate and grift. The grunts and workers — like actual computer programmers — can worry about the pesky details such as making the thing actually work in a bug-free manner so that people want to buy it — at monopoly prices, of course.”

            3. 1.1.4.3.1.3

              J, I’m pretty sure that I didn’t say that “obvious to try is not a thing.” But fine, now that you’ve restated both your position AND mine, you have the better side of the argument. Have a nice night!

        2. 1.1.4.4

          Fair enough, anon, my blanket statement probably went too far.

          But I think my point is still valid and, one thing is for sure, this opinion doesn’t consider it.

          1. 1.1.4.4.1

            If your point was, “If it is obvious to try, it is obvious, no matter how long or difficult it would be to actually achieve the desired result” then no, it’s not valid. It’s actually wrong.

          2. 1.1.4.4.2

            one thing is for sure, this opinion doesn’t consider it.

            Again, you over-speak, and thus are wrong. I indicated at 1.1.4.3 the opinion DID consider “within the texhnical grasp.”

            It’s one thing to boldly make incorrect overstatements, realize that, and retract, but that’s not what you have done.

    2. 1.2

      I am more “puzzled” by the attempt to move the factual determination into the realm of law (last paragraph).

      KSR is referenced without citation, and the factual assertion of resolving the level of skill in the pertinent art seems “cleaved” into two separate facets that appear to be wanted to be treated – and left – separate. I don’t think that resolving the level of skill somehow “violates” what the good professor here labels as “merging together that leads directly to the legal conclusion.”

      That end conclusion is only reached when all of the factors are evaluated together.

      1. 1.2.1

        You are correct. The determination that there existed a reason to modify/combine the prior art and the determination that there was a reasonable expectation of success in modifying/combining the prior art to arrive at the claimed invention are separate factual inquiries. Both have to be resolved in the affirmative in order for the ultimate legal conclusion of obviousness to be correct.

    3. 1.3

      I do not understand the logic exactly:

      ‘Nokia needed two years to develop a product with a microprocessor that provided the claimed functionality between a phone and camera’

      I suspect any EE with 4 years experience could have built a king size implementation of this, (say the size of a shoebox, with a strap to hold on to) with a soldering iron and some parts from Radio Shack. The resolution of the images would be poor and the pictures would take a long time to transfer.

      No EE would ever bother to do this (or write it down) because what use is a slow, inaccurate shoe boxed sized cell phone in 1994?

      From claim 73

      a microprocessor adapted to control the operations of the camera unit in response to input signals from the user interface, and to process image information received by the camera unit; and
      means, coupled to said microprocessor, for transmitting image information processed by said microprocessor to another location using a radio frequency channel;
      ..

      1. 1.3.1

        “EE with 4-years experience” is the level of ordinary skill in the art? How was this magic number arrived at?

        Something doesn’t smell right.

      2. 1.3.2

        Slash,

        Claim 73 recited means plus function limitations, which were were interpreted narrowly by the CAFC to mean the corresponding structure in the specification (with all of its structural details).

        The prior art didn’t render the detailed structure obvious, but the structure was so detailed the defendant didn’t infringe either.

      3. 1.3.3

        I suspect any EE with 4 years experience could have built a king size implementation of this, (say the size of a shoebox, with a strap to hold on to) with a soldering iron and some parts from Radio Shack. The resolution of the images would be poor and the pictures would take a long time to transfer.

        Indeed. And it would infringe the claim.

        Another common issue with nearly all of the “mobile” computer-implemented junk claims floating out there.

        Of course, that doesn’t include phones that “vibrate” in response to some specific information, where the link between that specific information and a “vibrating” phone aren’t expressly disclosed in “the art”. Those phones are sooper dooper advanced! It’s just like rocket science, except there’s no rocket and no science.

    4. 1.4

      Ned, I think you are putting words in my mouth. I don’t think that we should presume that the combination is within the skill in the art.

      This two-years figure is really interesting. I am sympathetic to the point that the long amount of time spent in development suggests that it was outside of the level of skill in the art. And here, we should be talking about the level of skill necessary to have invented this — i.e., conceived and reduced-to-practice.

      One major problem here, though, is that the patent document itself and the associated claims do not go into the level of detail necessary for implementation. That suggests a lack-of-enablement.

      1. 1.4.1

        do not go into the level of detail necessary for implementation.

        That’s not an accurate statement either, as applications are not required to be engineering documents, and that level if detail – “ready” for implementation misses the allowance for experimentation (short of being undue experimentation).

        It might not make certain people happy, but the “balance” here is in favor of the applicant.

      2. 1.4.2

        Dennis, Sorry ’bout that.

        But you do raise a good point about enablement — if the specification does not actually teach one how to do it, but just provided a statement to do it, then there may be a problem there. But enablement and obviousness are separate inquiries.

Comments are closed.