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.
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.
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?
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.
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.
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.
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.
“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.
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.
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.
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.
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?
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?
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).
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) 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.
J’s simply wrong additions to patent law exemplify the worst of ad hoc post hoc policy-“justifications” for misunderstanding the law.
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.
You know what would be really helpful anon? For the congress to write all these supposed “understandings” of the law INTO THE GD LAW.
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.
“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.
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.
“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.
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.
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.
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…
Point conceded.
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.
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.
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.
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.
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?
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.
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.
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.
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.
“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.
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.
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.
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?
“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.
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.
“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.
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.
“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.
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.
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?
Suppose a claim was not limited to anything.
Does that claim fail?
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.
I’d submit that you really should use actual US patent law that Congress wrote.
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.
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?
“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.
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.
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?
Maybe saying something about “strapping genitals” is what it takes to fit the “culture” here…
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.
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?
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.
It is abundantly clear the Random has no such real world experience.
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.
“(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….
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.
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?
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.
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”).
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.
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 🙂
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?
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?