Obviousness: Despite KSR, Still Tough to Win in Court

Ivera Medical v. Hospira (Fed. Cir. 2015)

On summary judgment, the district court found Ivera’s asserted patent claims invalid as obvious under 35 U.S.C. § 103. On appeal, the Federal Circuit has reversed – finding that Ivera’s submitted expert testimony raised genuine issues of material fact.

Ivera’s patents are directed to a more reliable mechanism for disinfecting connectors (such as an IV port).  The idea is basically a screw-on cap full of disinfectant.  

The patented cap at issue here is an improvement on the original idea found in several prior art references. In particular, Ivera added a vent in the cap “to allow evaporation of the cleaning agent from the inner cavity and to inhibit a buildup of pressure in the cap when the cleaning material is compressed by the site of the medical implement.”

Although the primary prior art reference (Hoang) did not disclose the vent limitations, the district court found – as a matter of law on summary judgment – that a person of skill in the art would have recognized the need for a vent to relieve pressure.  I suspect that the district court was swayed by the fact that the patent is also under final-rejection in an inter partes reexamination based upon the same prior art reference.  On appeal, the Federal Circuit found that the facts were not so clear.

Law of Obviousness:

“A party seeking to invalidate a patent on obviousness grounds must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014). Determining whether one of ordinary skill in the art would have been motivated to combine the teachings of different references is a flexible inquiry, and the motivation is not required to be found in any particular prior art reference. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

Here, the evidence before the district court included declarations from Huang (the inventor of the prior art) and others explaining how the Ivera idea was a significant invention because it broke with the conventional wisdom of having a fluid tight seal.  The appellate court saw these submissions as sufficient to raise a genuine dispute of fact that cannot be resolved on summary judgment.

The panel also noted in passing that the examiner during the inter partes review had refused to consider the same declarations because they were filed late in the process — leading to the implication that – if filed earlier – the declarations might have changed the examiner’s viewpoint. The examiner’s reexamination decisions have been appealed to the PTAB and are awaiting judgment.

This case again highlights the power of expert evidence to explain the invention within the context of the prior art.

= = = = =

I should also note Ivera has a separate infringement case going against Hospira for another cap patent. In that case, the PTAB instituted an IPR (brought by another defendant) that case was settled before final judgment.  In a recent determination, the district court ruled on motion-in-limine to exclude evidence of the PTAB’s decision to institute the inter partes review – finding that it has “little probative value” and “would be confusing to the jury and prejudicial.” [OrderInLimine]

 

 

82 thoughts on “Obviousness: Despite KSR, Still Tough to Win in Court

  1. 12

    Shouldn’t the headline be “Though to win at Summary Judgment” ?

    Will be interesting to see what a jury thinks.

    At least there is absolutely no 101 question here, or at least not among the non-patent maximalist hysterics anyway….

    1. 12.1

      This seems to be a procedural issue. Nothing to do with KSR. Everything to do with the judge not letting the case go to the jury.

      Most cases are limited to their facts. Nothing regarding the law of obviousness changed.

  2. 11

    “A party seeking to invalidate a patent on obviousness grounds must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention,

    True or false – even lay people who fail out of grammar school understand that containers can be under pressure, which is why they don’t shake soda cans before opening them?

    True or false – even lay people who fail out of grammar school understand that when one opens said soda can, the shaken soda shoots out of there, because the hole has released the pressure?

    And those are cans that are not being used specifically for compression. Do you really need to have a trial on whether educated people might be motivated to release pressure in a system they are compressing? This issue could literally be solved by sitting on the judges’ heads.

    and that the skilled artisan would have had a reasonable expectation of success in doing so.”

    It goes without saying that people can, you know, drill holes in things.

    So how is it people even remotely get confused on this issue?

    Here, the evidence before the district court included declarations from Huang (the inventor of the prior art) and others explaining how the Ivera idea was a significant invention because it broke with the conventional wisdom of having a fluid tight seal.

    Ah it’s our good friend misapplies-teaching-away. Teaching away goes solely toward the expectation of success prong, and here you can’t possibly teach away strongly enough to convince someone they cant put a hole in something. The problem comes in when one relies upon the language “motivation” for doing something, when KSR made clear that all one needs is a rationale for obviousness, of which a motivation might be one manner of describing it.

    Here the rationale is so basic it is comical, but the court allows some sort of claim to “conventional wisdom” (which has no basis anywhere in law with respect to 103) as a means of questioning obviousness.

    Conventional wisdom tells you you don’t take your clothes off and dive into Lake Michigan in the winter. That doesn’t mean people don’t do it. And it doesn’t mean they’re inventing when they do, because the results are entirely predictable and the system is obvious. The fact that a minority may (and often do) have different priorities than the majority doesn’t create a patent right.

    The invention is obvious and there is no material fact issue, because even if conventional wisdom in the art was to fluid seal the art would have known to use a hole to solve a pressure problem if they thought there was one. The “conventional wisdom” argument is simply proving that the art was less concerned about pressure than about fluid loss, which just means the present patent is unimportant, not that it’s non-obvious. Van der Waals described the relationship between pressure and volume in the 1800s and we’re seriously sitting around debating whether its straightforward application is obvious in 2015?

    1. 11.1

      I haven’t read the patent or the cited art yet so these comments might be way off, but the challenging tone of randomGuy above prompts an instant reaction.

      When I put a “cap” on my own head, one for deep winter conditions, air finds itself trapped, between my head and the cap. If I am to get the cap down tight on my head, the trappped air has to vent, somehow. There must be a “vent” somewhere.

      Now to the threaded cleaning cap that is to engage with the medical device. As it is screwed down onto the device, the fluid within it is compressed. To screw the cap all the way home, the fluid preventing that movement of the cap towards the medical device has to be vented off somehow, even in the prior art devices. The claim is not limited to a drilled hole. Does it even have novelty?

      As to the “fluid-tight seal”, is this not a red herring? I can imagine a cap that seals very effectively against ingress of fluids while permitting a venting outflow when the pressure inside the cap rises. I imagine that happening in the prior art caps. So, are they really “fluid-tight” or were they venting all along?

      1. 11.2.1

        Sister anon, he is contextually blind and does NOT make a good point.

        His is the logic of my big box of electrons, protons and neutrons.

        Once you have that – and the basic laws of physics, ALL else follows, and nothing becomes patentable (or patent eligible, as the situation may apply).

    2. 11.3

      Apparently you overlooked this bit: “Here, the evidence before the district court included declarations from Huang (the inventor of the prior art) and others explaining how the Ivera idea was a significant invention because it broke with the conventional wisdom of having a fluid tight seal. ”

      You are also overlooking the fact that the whole point of this thing is STERILIZATION. The entire industry is devoted to making things clean and then keeping them that way by SEALING them. Also, just like you don’t want you bottle of hand sanitizer to dry out before you use it, they don’t want this goop in the cap to dry out either, so the mind set would have been to seal it.

      Anyway, if the inventor of the cited art says the new patent is legit not obvious, who are you to say otherwise?

      1. 11.3.1

        The cited prior art (US 2007/0112333) in this case became the patent (US 8,740,864) of the related suit involving similar cap technology. Both cases involve the same parties on the same sides. Presumably, Ivera is calling the inventor to testify in both cases, and his testimony in this case doesn’t affect the validity of his own patent in the other case (since it doesn’t have the vent hole).

        Doesn’t that call his credibility into question just a little?

        1. 11.3.1.1

          No. Not at all. He has nothing to gain.

          Moreover, he’s helping a competitor.

          Why would it call his credibility into question?

            1. 11.3.1.1.1.1

              Co-plaintiff? I suppose that might change things.

              I see no mention of a co-plaintiff in the published decision.

      2. 11.3.2

        You are also overlooking the fact that the whole point of this thing is STERILIZATION. The entire industry is devoted to making things clean and then keeping them that way by SEALING them.

        That’s precisely the point I am making. The medical industry has, in this context, two priorities: fluid control, and pressure concerns. You would agree that the art had pressure concerns right – everyone knows about pressure and containers? So this isn’t a “discovered new problem” situation. It’s a situation where this inventor has priorities (more concerned about pressure than fluid sealing) that are different from the majority of the industry.

        The industry is largely (and rightfully) more concerned with the fluid seal priority. It’s one thing (though questionable in my mind) to say that a new invention comes out of the discovery of a new problem + an obvious solution. It’s quite another thing to remove the “discovery of a new problem” part and replace it with “a different evaluation of priorities.” It leads to ridiculous results, because it suggests that you can freeload on an important invention with an obvious negative change.

        Suppose I invent a new processor that can do more 1000x more flops than any other ever invented. You come in modify my processor in a manner everyone knows of and understands how to apply to intentionally slow it down by ten percent. The “conventional wisdom” in the industry is that more processing power is good, and you would never want to slow processing. Are you saying that your modified processor is non-obvious over my processor? Are you entitled to a patent for making a change the art already knew about? Wither my patent rights, which cannot reach an “infringer” that is getting 90% the value of my invention for free?

        By the way, is 10% enough to trigger non-obviousness, or would 1% do it? If you apply a known technique to my structure, and everyone knows it will reduce its effectiveness by 1% and it does in fact reduce the effectiveness by 1% with no other benefit at all (such that there was NO rational motivation for performing the modification), is your resulting structure patentably distinct from mine? I would like to know if I could void Intel’s monopoly by simply making known minor negative changes to their patented articles and licensing out “my” “invention.”

        Anyway, if the inventor of the cited art says the new patent is legit not obvious, who are you to say otherwise?

        He said it was against conventional wisdom. “Conventional wisdom” has a popularity definition which is clearly being used here, because he certainly can’t mean that it was conventional wisdom to reject settled scientific pressure laws. The fact that you made a structure that isn’t popular (because it’s missing or trading out features that are appreciated more) doesn’t make it non-obvious, it just makes it a poor seller. Hipster != invention.

        1. 11.3.2.1

          Wither my patent rights, which cannot reach an “infringer” that is getting 90% the value of my invention for free?

          Has something like that ever happened? Where someone got to make, use, and sell someone else’s great invention by adding some dinky nonsense?

        2. 11.3.2.2

          Sounds like a healthy dose of doctrine of equivalents would help you out there.

          There is the oft overlooked line from KSR

    3. 11.4

      “Teaching away goes solely toward the expectation of success prong…”

      Wrong. It’s a consideration in the factual inquiry into whether there exists a reason to modify/combine the prior art.

      1. 11.4.1

        Good catch. That is the little twist of misapplying the law we seem to always find with the judicial activist judges.

        Thanks Obama.

      2. 11.4.2

        It’s a consideration in the factual inquiry into whether there exists a reason to modify/combine the prior art.

        That’s true, but I don’t see how it negates what I say. Saying that something is sub-optimal for doing something (which is what most people call “teaching away” and how it’s being used here) is not a reason for not doing it. There are tons of reasons for engaging in sub-optimal manners of doing things, not the least of which is usually cost.

        “Teaching away” only validly works to defeat a rationale for obviousness when the statement is a statement that says it doesn’t work (i.e. it can’t be combined or it doesn’t function AT ALL when it is combined). To hold otherwise would limit the prior art to one reference for each function.

        1. 11.4.2.1

          It broadens what you say and changes the kind and degree of the “ONLY this” mindset of yours.

          You’ve been tainted with the “just say no” reflex.

        2. 11.4.2.2

          “That’s true, but I don’t see how it negates what I say.”

          You don’t. I guess I’m not surprised.

          You said it applies “solely” to the factual inquiry into whether there is a reasonable expectation of success. That’s not so. It also applies to whether there exists a reason, as a matter of fact, why one of ordinary skill in the art would modify/combine the prior art.

          If reference A says, “Don’t ever heat element X above 200C or else the whole device will explode like a 20 megaton warhead” then that’s relevant to: 1) whether one of ordinary skill in the art would have a reason to heat element X above 200C; AND 2) whether one of ordinary skill in the art has a reasonable expectation of success in heating element X above 200C. Of course, you never get to question 2) if you don’t have a “yes” to question 1). If there’s no reason to modify/combine the prior art, there’s clearly no reasonable expectation of success in doing so.

          It’s also possible that you answer question 1) affirmatively, but answer question 2) negatively. In other words, there may be ample reason why one of ordinary skill would try to modify/combine the prior art, but have no reasonable (i.e. predictable) expectation of success.

          So your statement that teaching away is only applicable to the reasonable expectation of success inquiry is just wrong.

    4. 11.5

      If it is so obvious, how come the prior art workers used a cap that did not relieve pressure and did not even discuss the problem of the pressure.

      Many inventions appear obvious in hindsight, but often identifying the problem is the key discovery.

      1. 11.5.1

        how come the prior art workers used a cap that did not relieve pressure and did not even discuss the problem of the pressure.

        Because the overriding concern in the art was sterilization of the product and the environment which was maximized by a fluid seal?

        How come you always see the weight of a laptop listed in its specs but not a desktop? Is it because the desktop computer market doesn’t understand weight is a consideration, or is it because they don’t care? Does that mean that putting a machine inside a known lighter chassis is not obvious merely because it fails to improve the conventionally desired processing ability?

        Many inventions appear obvious in hindsight, but often identifying the problem is the key discovery.

        I would agree that identifying a problem may be a discovery. But that’s not what happened here. You’re not really suggesting that the art was unaware of basic pressure principles, are you? Any time there’s an enclosed container you have a pressure question. The fact that they didn’t assign a lot of weight to the problem doesn’t mean they didn’t know of it. This guy improved a minor problem in a conventional manner. He didn’t discover that enclosed containers could explode.

    5. 11.6

      Blame the PTO and CAFC’s refusal to follow the Supreme Court in Zurko.

      Apparently examiners need to provide evidence for every word they type in an office action. We make one statement based on common sense (like Heaters can heat things; or this chemical is referred to as X but can also be considered as Y based on the fact they are the exact same chemical) and we are accused of making “clear factual errors” because apparently the burden is on us as examiners to show that that somethingg a high school student would know it is “clear and unmistakable” .

      I can’t wait to hear the whining if/when the USPTO wants to actually implement Zurko and follow the “substantial evidence” standard. Or if the Supreme Court rules on it and forces us to.

      1. 11.6.1

        Not sure what you are talking about “if/when the USPTO actually wants to implement Zurko and follow the ‘substantial evidence’ standard.”

        Zurko resolved the question of whether the Fed. Cir. was required to apply the “substantial evidence” standard of review to PTO factual determinations as provided for in the APA, or whether the Fed. Cir. was allowed to apply the less deferential “clear error” standard of review to PTO factual determinations (which is the standard of review they apply to USDC factual determinations). The answer from SCOTUS was that the Fed. Cir. was required to apply the more deferential “substantial evidence” standard of review to PTO factual determinations.

        However, the standard of proof that the PTO must meet in all factual determinations is, and remains, preponderance of the evidence. In other words, in order to resolve factual inquiries into, for example, the scope and content of the prior art, the level of skill in the art, etc., the evidence provided by the examiner (or APJ’s) must make it more likely than not that, for example, all of the claimed elements are within the scope and content of the prior art.

        See, for example, In re Warner, In re Caveney, etc.

        Standards of review applied by an appellate court and standards of proof required by a fact finder (e.g. examiner, trial judge, jury, etc.) are different standards. Zurko did not change any of that.

        You understand that. Don’t you.

        1. 11.6.1.1

          Yes. Examiners are still being charged with clear errors though.

          Also applicants have started accusing examiners of having taken “official notice” when they have not done so. This gives the applicant a way to place the burden of proof on the examiner. It is becomjng a major issue.

          1. 11.6.1.1.1

            “Also applicants have started accusing examiners of having taken ‘official notice’ when they have not done so. This gives the applicant a way to place the burden of proof on the examiner. It is becoming a major issue.”

            Applicants don’t have to do anything to place the burden of proof on the examiner. It’s always on the examiner. Throughout the entire prosecution. Again, see Warner, Caveney, and especially Oetiker.

            Of course applicants are “accusing” the examiner of taking Official Notice. Know why? Because applicants get lots and lots and lots of OA’s where the examiner says, “Well, Reference A doesn’t show feature X, and Reference B doesn’t show feature X, but feature X is old and well known, so it would have been obvious to provide feature X.”

            If you don’t understand what’s wrong with that rejection, just let me know.

            1. 11.6.1.1.1.1

              I am not talking about that. I understand everything you are saying. I am not an idiot.

              I am talking about what happens when an applicant says that an examiner has taken official notice when the examiner has not done so.

              This is a form of improper burden shifting because rather than the burden being on the applicant to make a counter argument, just alledging offficial notice demands that the attorney provide proof that something is “clear and unmistiakeable”

              Examiners have bo recourse when it comes to accusations of official notice.

              1. 11.6.1.1.1.1.1

                “I am talking about what happens when an applicant says that an examiner has taken official notice when the examiner has not done so.”

                I explained why applicants “accuse” the examiner of taking Official Noitce “when the examiner has not done so.” It goes something like this: we open our scene in grizzled old primary examiner’s office where newbie GS-5 examiner is getting advice on the 3rd case newbie examiner has ever touched.

                Newbie: I have Reference A and Reference B, and they’re pretty good, but neither shows feature X of claim 1. I’ve searched everywhere for it but can’t find it. Can I take Official Notice of feature X?

                Grizzled: Nah, don’t do that! If you take Official Notice the applicant will ask you to provide documentary evidence. Just tell ’em feature X is notoriously old and well known. See what the applicant comes back with.

                So the OA goes out just like I described: Reference A doesn’t disclose feature X, and reference B doesn’t disclose feature X, but feature X is notoriously old and well known, therefore it would have been obvious to provide feature X.

                Applicant gets the OA and attorney’s BS detector pings all the way to the end of the dial. So applicant responds that no evidence is provided that feature X is within the scope and content of the prior art, and to the extent the “notoriously old and well known” statement from the examiner is the taking of Official Notice of feature X, documentary evidence is requested to support the taking.

                “This is a form of improper burden shifting…”

                No. It’s not. As I explained, and will explain again, there is no “improper burden shifting” to the examiner because the burden of proof is ALWAYS on the examiner through the entire prosecution. Applicants NEVER have to shift it, properly or improperly, because Applicants never have it. Ever. Do you still not understand that?

                “… because rather than the burden being on the applicant to make a counter argument…”

                Applicants who request reconsideration are required under Rule 111 to point out the errors in the OA. And that’s exactly what they do. But they NEVER have a “burden” to make a counter argument that amounts to the burden of proof. And the argument that the examiner has, without explicitly stating so, taken Official Notice, because the examiner doesn’t want to get called on it, IS applicant’s counter-argument.

                “Examiners have no recourse when it comes to accusations of official notice.”

                Of course they do. Simply respond that Official Notice has not been taken. Of course, at that point the examiner has to point to some objective evidence that supports the examiner’s factual determinations and legal conclusions. And if the examiner can’t do that, the rejection is improper. And yeah, that’s a clear error.

                1. Again not talking abou that.

                  Im talking a specfic situation i am dealing with as an experienced examiner (if you couldn’t tell already)

                  The applicant claimed I took official notice based on my claim interpretaion in a 102 rejection.

                2. “Im talking a specfic situation i am dealing with as an experienced examiner (if you couldn’t tell already)

                  The applicant claimed I took official notice based on my claim interpretaion in a 102 rejection.”

                  Did you explain that you didn’t take Official Notice? Were you charged with a clear error?

                  I had an examiner, in a 102 rejection, take Official Notice that certain claimed features were obvious. Should I not have pointed out the clear error in that rejection?

                3. BTW, you also claimed:

                  “Also applicants have started accusing examiners of having taken ‘official notice’ when they have not done so. This gives the applicant a way to place the burden of proof on the examiner. It is becoming a major issue.”

                  So you’ve had one applicant “accuse” you of taking Official Notice in a 102 rejection based on your claim interpretation and you’re saying that “it is becoming a major issue”?

    6. 11.7

      Nah brah if ya cant find a reference it don’t matta.

      Y u talkin all this science stuff. Pics or it didnt happen.

  3. 10

    Forget motivation to combine: the vent in the prior art is completely different from the vent in the present application.

    Ivera’s patent includes a vent “to allow evaporation of the cleaning agent from the inner cavity and to inhibit a buildup of pressure in the cap when the cleaning material is compressed by the site of the medical implement.” Obviously, it connects the interior chamber of the cap to the outer surface of the cap.

    The prior art reference, Chin-Loy, teaches a cap that is connectible with a medical device. “When the cap is fully attached to a blood port of a medical device, the channel permits venting of the interior of the medical device through the blood port during sterilization of the medical device.”

    That is: Chin-Loy is not about pressure building up inside the cap – it’s about pressure building up in the connected machine. The vent is a pass-through: it connects the external device, through port of the cap attached to the machine, to a second port on the outside of the cap. It is different from that in Ivera, not just in purpose, but in structure.

    So I have three feelings about this case:

    1) I am pleased that the Federal Circuit reverse this lousy rejection.

    2) I am dismayed that the dispute made it this far, given the clear difference in technology.

    3) I am disappointed that despite being amenable to attributing due significance to this distinction, the Federal Circuit routinely refuses apply the same technical-difference analysis to inventions in the computing arts.

    1. 10.1

      Ivera’s patent includes a vent “to allow evaporation of the cleaning agent from the inner cavity and to inhibit a buildup of pressure in the cap when the cleaning material is compressed by the site of the medical implement.” Obviously, it connects the interior chamber of the cap to the outer surface of the cap.

      That’s a great example of how non-limiting intended use can confuse someone into making a limitation that isn’t there.

      There is one structure claimed – a second opening in the cap . Any cap with two openings (and the other limitations met of course) infringes. The second hole could be for any reason whatsoever, it still infringes because structures define machines.

      1. 10.1.1

        Wrong, Random.

        ‘794, claim 1:

        A cleaning device for a medical implement, the cleaning device comprising: a cap having a first opening to an inner cavity, the opening being adapted to receive a site of the medical implement a threaded ring connected to the cap at a periphery of the opening to the inner cavity, the threaded ring providing threading; a compressible cleaning material that contains a cleaning agent prior to receipt of the site of the medical implement, the compressible cleaning material at least partially secured in the inner cavity and adapted to swab and clean the site with the cleaning agent; and an additional opening in the cleaning device formed between an outside edge of the threaded ring and an inside edge of the inner cavity to allow evaporation of the cleaning agent from the inner cavity and to inhibit a vacuum in the cap when the first opening receives the site of the medical implement.

        Chin-Loy’s valve is structurally and functionally different. It’s a conduit from (a) the port connecting to the external device, to (b) the outside. It conducts excess pressure built up within the external device.

        There is nothing in Chin-Loy – or Hoang – about pressure building up *in the cavity of the cap*. Hoang has a cavity with a pad that is either wet or dry – but it provides no discussion of pressure in the cap. It uses the term “pressure” exactly once, in this context: “when connecting the parts, the user can press them together to ensure good contact with the pad.”

        Chin-Loy’s cap has a channel that directly connects the medical device with the outside, so it’s not even *possible* to build up pressure in the cap.

        So, the combination of Hoang and Chin-Loy has no discussion of pressure building up in the cavity of the cap, which Ivera’s claims explicitly recite – nor the presence of a valve connecting that cavity to the outside, which Ivera’s claims also explicitly recite.

        Random, you’ve made the same mistake as many examiners. You think: “Okay, your claim has: a widget, a sprocket, and a dongle. Reference A shows a widget and a sprocket; reference B shows a dongle. Thus, rejected under 103.” You didn’t consider why or how they are connected in the particular manner that the claim explicitly recites. Those details matter, Random.

        1. 10.1.1.1

          This type of reasoning seems more prevalent after KSR. I have made arguments that two references should not be combined with which I know any person skilled in the area would agree, and the Examiner summarily dismisses the argument. (If you know what CDMA rake receivers are, think combining a reference having nothing to do with those receivers into a system of rake receivers.) Since KSR, it’s become very difficult to make these arguments and have them win, unless you appeal. Now that appeal has gotten so expensive, clients no longer want to pay for it. So you end up caving on a horrible combination of references.

          1. 10.1.1.1.1

            There be the true “wearing down” that goes on with the Office shenanigans.

            And watch out if you have the money (and the will) to fight the system, as surely you will be denigrate as a mere g-g-g-grifter…

            1. 10.1.1.1.1.1

              watch out if you have the money (and the will) to fight the system, as surely you will be denigrate as a mere g-g-g-grifter…

              Oh my! Denigration!

              The horror … the horror ….

              1. 10.1.1.1.1.1.1

                Rather the opposit – the banality – as in, those ever-whining about people wanting patents to (gasp) make money are the ones being banal.

                But you already knew that, eh?

        2. 10.1.1.2

          Spot on correct. Examiners tend to ignore relational limitations between claim elements as if these are merely functional in nature. He doesn’t care that there is a physical relationship claimed between the cap and the inner cavity. Some Examiners feel they only need to illustrate the cap and an inner cavity in the prior art.

            1. 10.1.1.2.1.1

              Read the claim genius. The relationship between the inner cavity and the opening of the cap is claimed.

              1. 10.1.1.2.1.1.1

                Sorry, I didn’t know you were talking about this case. I thought you were talking from personal experience.

                I know literally nothing about this case other than the fact that the judge should have let the case go to the jury. That pretty much is the whole case actually.

                1. Sorry to get snarky. I just responded to an office action this afternoon and missed by Friday afternoon tee time to deal with several 5+ reference 103 rejections.

                  I’m a bit miffed ;)

        3. 10.1.1.4

          Random, you’ve made the same mistake as many examiners. You think: “Okay, your claim has: a widget, a sprocket, and a dongle. Reference A shows a widget and a sprocket; reference B shows a dongle. Thus, rejected under 103.” You didn’t consider why or how they are connected in the particular manner that the claim explicitly recites. Those details matter, Random.”

          OY vey. I’m an examiner and I think this is complete nonsense. All of the attorneys think that I am just combining A with B for no reason. In reality, they don’t like the reason because KSR gives us examiners a whole bunch of reasons we can reject art that need be explicitly recited.

          I worked for a patent pros. mill for a little and they were of this mentality as well that Examiners don’t know the law (namely 103) and are just stupid and lazy.

          In my experience this is not the case. Most of my colleagues are extremely intelligent hard workers and we know the art extremely well. Patent practioners are just having a hard time because of KSR.

          I would say about 50% of my remarks from attorneys can be summed up with “WAAAAH KSR is still not the law–I’m old and I hate change”

          1. 10.1.1.4.1

            All of the attorneys think that I am just combining A with B for no reason.

            On the contrary: I look very closely at the reason you cite for the combination.

            And many examiners are good at this. Sometimes the rationale is obvious on its face; sometimes it’s not, but the examiner recites a perfectly valid argument. Dynamic Drinkware, the post immediately following this one, is a good example. Even with one reference teaching away from a particular variation (because of specifically stated problems), it can still be combined with a second reference that specifically teaches how to avoid those problems. That’s very savvy examination, and the examiner deserves credit there.

            So I respect examiners who do this well, or where the references plainly overlap. And maybe you’re 100% in that regard, Topce.

            But that is frequently not the case. And far too many examiners read KSR as “any references can be combined because I say so.”

            I’ve seen office actions that state: “it would be logical to combine Ref A with unrelated Ref B to achieve Advantage X” – where the only discussion whatsoever of Advantage X is in my application.

            I had a case involving “do A for purpose X,” rejected under a combination that involved: “do B for purpose Y,” and where the references repeatedly stated: “DON’T DO A. A leads a distortion, an aberration, causing defective data that is skewed and inaccurate. To accomplish Y correctly, you must do B and not A.” (Seriously, the language was almost comically pejorative.) And yet, the examiner cited it for the prospect of doing A for purpose X. We had to resort to an appeal (which we won) for this issue.

            So, yes, many examiners drop the ball on combinations. I did not write all examiners: I wrote, and meant, many. Random‘s view that “people drill holes in things” is just so spot-on that it speaks for itself.

            1. 10.1.1.4.1.1

              How did it get past pre-appeal?

              I can’t possibly have been that straightforward.

              “I’ve seen office actions that state: “it would be logical to combine Ref A with unrelated Ref B to achieve Advantage X” – where the only discussion whatsoever of Advantage X is in my application.”

              Here again I’m skeptical. First off, advantage X could be so obvious that it need not be explicitly stated (save cost, make more efficient etc).

              I’m also skeptical about whether these references are “unrelated.” I get crap arguments about analogous art all the time. Most of the time the inventions disclosed in both references are not “related” but the second reference contains a teaching that is pertinent to the problem the first reference and application are trying to solve.

              Not your fault. I’m a bit bitter to be honest because I spent 200K to go to law school to argue against attorneys who don’t understand the law.

              I have to explain that there was a decision called KSR over and over again to the geriatric crowd.

              I also have to explain over that you cant claim the use of chemical X for Y and then traverse my 102 rejection using chemical X for Z (where Z and Y are pretty much the same thing absent arbitrary terminology).

              1. 10.1.1.4.1.1.1

                “Here again I’m skeptical. First off, advantage X could be so obvious that it need not be explicitly stated (save cost, make more efficient etc).”

                As long as you have evidence to back up this “obvious” advantage, you’re fine, but this is the easiest type of motivation to rebut with a traversal, IMO. Of course you can make up garbage motivation that something would be “improved” or show a “benefit”, but without evidence to back this up the motivation is nothing more than sophistry. This is why the MPEP allows us to ask for an affidavit from you when you choose to go this route.

                Also, David is 100% correct. Circular logic is present in a substantial number of cases I see. There are reams of PTAB and Fed Ct. cases that address attempts by examiners to claim that the motivation to combine is merely to provide the missing claim limitation.

                1. But how do you define “evidence.” Can evidence be scientific and technical reasoning of the examiner?

                  The Supreme Court said yes in Zurko. But the CAFC and the USPTO decided to ignore the decision.

                  “As long as you have evidence to back up this “obvious” advantage, you’re fine, but this is the easiest type of motivation to rebut with a traversal, IMO. Of course you can make up garbage motivation that something would be “improved” or show a “benefit”, but without evidence to back this up the motivation is nothing more than sophistry”

                  Sometimes the benefit is so intuitive that it need not be explicitly stated. Wasn’t that the whole point of KSR?

                  When will the the USPTO and the Federal Circuit get with the program? Jeez.

                  Most of the sophistry is from the attorneys.

                  Here is the typical nonsense I deal with day-to-day

                  They claim a friction reducer

                  I cite a reference that discloses putting soap on a surface and then explain that the soap is a “friction reducer.” But the reference calls the soap a “surfactant.”

                  The attorneys argue that the reference I cited doesn’t disclose a friction reducer and only discloses a surfactant.

                  And I’m just sitting here like, it’s soap for god’s sake just amend the claims or abandon and stop wasting your clients’ time and money

                2. “But how do you define ‘evidence.’”

                  You spent $200K on law school and don’t know what evidence is? You need to ask for a refund.

                  “Can evidence be scientific and technical reasoning of the examiner?

                  The Supreme Court said yes in Zurko. But the CAFC and the USPTO decided to ignore the decision.”

                  No, that’s not what SCOTUS said in Zurko. You may want to reread the decision.

                  Examiners and APJ’s are allowed to use scientific and technical reasoning to make the determination of obviousness. But it has to be reasoning that is based on facts established by objective evidence. Objective evidence is not, for example, “Oh yeah, I think I remember seeing something like that once” or “Well, I read your application and it seems to me that all the applicant did was…” That’s not objective evidence.

                  Let me know if you need any further explanation why it’s not.

              2. 10.1.1.4.1.1.2

                How did it get past pre-appeal?

                Because… surprise!… not everyone takes pre-appeal briefing seriously.

                I’ve had several cases now that have gone like this. I make some arguments in my OA replies… “not persuasive.” I make the same arguments in a pre-appeal brief… “proceed to PTAB.” I make the exact same arguments in the appeal brief… prosecution reopened. In a few cases, it’s promptly followed by a notice of allowance.

                This is crazy, right? Theoretically, it’s the same people! But I think that, by disregarding our arguments, they think they’re calling our bluff over filing an appeal – because appeals are way expensive and way protracted… so maybe I’ll just cave, and file an RCE with some unnecessary new limitations, just to avoid the pain of the appeal process.

            2. 10.1.1.4.1.2

              Random‘s view that “people drill holes in things” is just so spot-on that it speaks for itself.

              But its not just that people drill holes in things. It’s that people drill holes in containers and know that they release pressure and allow evaporation, which is precisely the reason this guy is doing it.

        4. 10.1.1.5

          You didn’t consider why or how they are connected in the particular manner that the claim explicitly recites.

          Here is the structure: and an additional opening in the cleaning device formed between an outside edge of the threaded ring and an inside edge of the inner cavity

          Either that structure exists on your prior art (and conversely, with your infringers) or it doesn’t. If it does, the fact that it is done to allow evaporation of the cleaning agent from the inner cavity and to inhibit a vacuum in the cap when the first opening receives the site of the medical implement is irrelevant.

          It’s not a KSR question, it’s a General Electric/Halliburton/Nautilus question. You can’t define your novelty by its function, only by its structure. Either the claim is directed to an opening with intended use, or it’s directed to a specific opening such that it achieves a function. In the latter case, the claim is just invalid because the “more than an opening” is not defined. The only valid construction of the claim is that it is directed to the structure.

          1. 10.1.1.5.1

            Either that structure exists on your prior art (and conversely, with your infringers) or it doesn’t.

            It doesn’t. That’s what the structural part of the claim reads.

            Hoang’s cap has a cavity containing cleanser. It doesn’t have any valves – just the threaded connection to the machine. I picture it like a Pepsi bottle cap with a spongy pad insert loaded with Lysol.

            Chin-Loy’s cap doesn’t actually have a chamber: it is strictly a protective cap that mates with a port of the medical device as a physical barrier to contamination. In operation, there is no space between the cap and the port. The interior of the cap has a groove, running the entire length of the interior surface, that vents excess pressure building up inside the machine to the outside.

            So, structurally, the prior art combination lacks this part:

            …an additional opening in the cleaning device formed between an outside edge of the threaded ring and an inside edge of the inner cavity…

            But if your view happens to be: “people drill holes in things,” then maybe that’s not enough. So the applicant also recited the function of this additional opening, to which you respond:

            You can’t define your novelty by its function, only by its structure.

            So structural details don’t matter, and function doesn’t matter. No wonder you frequently err on the side of “nothing is patentable.”

      2. 10.1.2

        Random, one must prove every claim limitation, including these intended use or explanatory limitations that appear in the body of the claim.

        It would be better for practitioners to just claim the structure because that makes proving infringement a whole lot easier.

        1. 10.1.2.1

          Ned,

          Your windmill chase of “just structure” does not play on the topic of this thread.

          Just try to not co-opt another thread.

        2. 10.1.2.2

          It would be better for practitioners to just claim the structure because that makes proving infringement a whole lot easier.

          Ned, that’s what the patentee tried to do here: “an additional opening in the cleaning device formed between an outside edge of the threaded ring and an inside edge of the inner cavity.”

          And yet, examiners repeatedly do what Random did above in 11:

          It goes without saying that people can, you know, drill holes in things.

          Just an utter dismissal of the specific details in the claim. To people like Random, a hole is a hole, and all of those messy details about structure and whatnot are mere trivialities and trickery – “wax nose,” and all that.

          I believe that the applicant here further emphasized the point of that particular structure by also reciting its function to avoid this dismissive result.

          I rely on this tactic frequently as well, for the same reason: because examiners are way too eager to play this game: “The broadest reasonable interpretation (i.e., my preferred definition) of (x) includes (not-x), even though (not-x) has nothing to do with this invention, so it just looks the same to me.”

          1. 10.1.2.2.1

            For examiners like Random Hindsight everything is, “Well, all the applicant did was…”

            Pretty easy conclusion to make. You know, once applicant discloses to you what he/she did.

          2. 10.1.2.2.2

            Ned, that’s what the patentee tried to do here: “an additional opening in the cleaning device formed between an outside edge of the threaded ring and an inside edge of the inner cavity.” And yet, examiners repeatedly do what Random did above in 11:

            Oh I have no problem with this part, I have a problem with the functional language you quoted.

            1. 10.1.2.2.2.1

              The applicant included the functional language because examiners too often overlook details like specifically claimed structural differences… in precisely the same way that you did in this thread – e.g.: “people can, you know, drill holes in things.”

  4. 9

    BTW, a significance of the historically very low odds of a D.C. S.J. on 103 being sustained by the Fed. Cir. [in spite of KSR] is that if defendants don’t get S.J. [far more likely on non-infringement or 101] more than 90% of them will settle [pay to get out] rather than pay to fight all the way through discovery, trial and appeal. [Even though those odds are far better than for an S.J. on 103, and improving, even in E.D. TX.] Hence, the rapid popularity of IPRs on that issue as an option to settlement or full litigation.

    1. 9.1

      IPRs are real, while projections by a couple of blog commentators that the Sup. Ct. is going to hold them unconstitutional are unreal. It is even inconsistent with your own admonishments to others on this blog that the present Sup. Ct. shows no signs of wanting to make such pro-patent owner decisions. Especially a draconian decision that would require overturning a highly bi-partisan Act of Congress and throwing thousands of IPR, CBM and reexam patent decisions into legal limbo.

      1. 9.1.1

        I never said that IPR’s are not real, Paul, so put away that straw man, thank you.

        As to what happens when even a single part of the AIA is found unconstitutional, well, I do notice your extreme silence as to the necessary legal effect on this law, given that for this law, Congress explicitly rejected the ability to separate the offending item and have the rest of the law remain intact.

        Feel free to be the very first to advance a cogent position that survives scrutiny, even if that scrutiny is merely from “a couple of blog commentators.”

        As to the future result of something that has not reached its natural conclusion, of course such is not “real” in the sense that you advance – but that is NOT the same as the fallacious and implicit “logic” you want to reach.

        Quite in fact, that is precisely why my put-down of you is so apropos.

        Keep on preaching, son – while you can.

        1. 9.1.1.1

          Years ago I found the best way to end having to listen to repeated errant legal assertions was to request a large financial wager offer with the designation of a Nevada attorney stakeholder to make it legal and enforceable. I would be more than happy to entertain the same wager offer on either the en banc Fed. Cir. or the Sup. Ct. holding the IPR statute [much less the entire AIA] unconstitutional in either of the two pending lawsuits that are asserting that.

          1. 9.1.1.1.1

            Years ago I found the best way to deal with a$$hat blowhards was to laugh when they wanted to play the “large wager” game, and ask them to be specific about the supposed “errant legal assertions,” and NOT parade their own assumptions as given facts.

            Or are you just being sloppy and want to be able to preach on without having to deal with what may happen?

            Perhaps instead you might rectify or clarify this supposed errant legal assertion.

            Just a thought.

      2. 9.1.2

        …and I do hope that you remember that constitutionality has absolutely nothing to do with how much – or how little – bipartisanship was present in the passing of a law, eh?

        I do hope that you are not this sloppy in your practice of non-patent law.

      3. 9.1.3

        …and I wonder how Ned’s oral went (is going?) – after all, he may very well blow it and the court may not reach the constitutional question this time.

        But you are f001ing yourself in the worst way if you want to ig nore the points I raise because you don’t like where they lead. Professional detachment requires better of you.

  5. 8

    Was the summary judgment ruled on after claim construction was completed? My guess is yes, and so ruling dispositively on the obviousness SJM allows the parties (and the judge) to test the construction at the CAFC before the parties go through the rest of the trial. Or, at least I bet that was the hope – it looks like the CAFC might have been able to rule without reviewing the claim construction much. Regardless, it’s a valid technique to potentially reduce cost for all parties, given the CAFC’s propensity to overturn claim constructions on appeal, after all the money has been spent on the first trial.

  6. 7

    What OUGHT to happen here is a requested and granted expedited PTAB review of the pending inter partes reexamination decision, so that the D.C. can logically stay an expensive and time consuming discovery and trial of this [now remanded] patent suit. [Especially if ALL the alleged infringed claims are held invalid by the PTAB.] That would leave only a far less expensive potential Fed. Cir. appeal of the inter partes reexamination decision.
    [The long two-step PTO time delays of inter partes reexamination decisions, as shown again here, is a key reason why they were eliminated in the AIA in favor of IPRs run by APJs with statutory time deadlines, etc.]

  7. 6

    Is Hoang one of at least ordinary skill in the art? If so, isn’t the fact that Hoang didn’t put a hole in the cap convincing evidence that it would not have been obvious to one of ordinary skill in the art to put a hole in a cap? Isn’t teaching a cap without a hole tantamount to teaching away from a hole filled cap?

    Indeed, riddle me this cap man, is a cap with a hole in it even a cap at all?

    Holy sieves cap man, cite Buffets the lost shaker of salt!

    Yeah, that’s the ticket, salt is a disinfectant, salt shakers are analogous art!

    Hey PTO HR, did I pass my interview?

    1. 6.1

      If so, isn’t the fact that Hoang didn’t put a hole in the cap convincing evidence that it would not have been obvious to one of ordinary skill in the art to put a hole in a cap?

      That the claimed invention is novel is convincing evidence that it’s non-obvious? Interesting analysis, Les.

      1. 6.1.1

        As interesting as the analysis of the district court which found as a matter of law something that was not true?

        Remember, “the district court found – as a matter of law on summary judgment – that a person of skill in the art would have recognized the need for a vent to relieve pressure.”

        Just imaging poor Hoang keeping his pressure bottled up for all those years, needing to vent, even though he has at least ordinary skill and it being soooo obvious to simply vent.

        1. 6.1.1.1

          Please don’t confuse the legal construct of PHOSITA with a single individual,

          I am more than sure that poor Hoang would have a difficult time coping with the near omniscient ability to instantly know all material art published around the world (including my public library on my personal island).

          1. 6.1.1.1.1

            I’m quite sure Hoang wouldn’t have needed the near omniscient ability to instantly know all material art published around the world (including your public library on your personal island) to have come across the concept of a vent hole.

            Hoang is clearly a real person of at least ordinary skill in the art and provided a declaration that it was not obvious to apply a vent hole in this application.

            That clearly puts the lie to the judges pronouncement, based on nothing by the way, that PHOSITA would have found it obvious.

            1. 6.1.1.1.1.1

              You are still resting on an individual being a legal construct.

              Not necessary and not logically sound.

              1. 6.1.1.1.1.1.1

                Here, for example, a better means would be to simply refute Random’s wayward assertion of “conventual wisdom” as being dis-associated from 103 by reminding him that “In The Art” does in fact have and create the nexus he wishes to hand wave away.

                In The Art does have a real meaning and is a real limitation on what art that is already out there can be considered Prior Art for 103 purposes.

                It is just NOT the entire universe, or some silly notion of pure predictability, as he would have the law read.

  8. 5

    Although the case is not over because it was remanded, I think this reflects the “fact” that, relatively speaking, the invention in KSR was really obvious. Thus, this trend should have staying power. Examiners are a different matter.

  9. 4

    DC: The panel also noted in passing that the examiner during the inter partes review had refused to consider the same declarations because they were filed late in the process — leading to the implication that – if filed earlier – the declarations might have changed the examiner’s viewpoint. The examiner’s reexamination decisions have been appealed to the PTAB and are awaiting judgment.

    I seem to recall a recent case where a petitioner’s filing of a large amount of “supplemental” evidence “late in the process” (but before the due date provided by the rules) was ignored by the Examiner to the detriment of petitioner. What happened on appeal? I cant locate the case online or in my brain …

  10. 3

    To second other posters, the title of this post got me excited – until I saw that this case merely means we don’t always immediately jump to depriving patent owners of their right to a trial (at least in court, not speaking to IPR). It says absolutely nothing about how tough it is for a challenger to “win.”

  11. 2

    Summary Judgment isn’t the appropriate means of disposing with most questions of obviousness in my view. Expert testimony shouldn’t have been necessary to overcome the SJ motion. Nor should SJ be used for Sect. 101 inquiries unless the claims are plainly directed to one of the no-no categories. Argue-on.

  12. 1

    I don’t know if this shows it’s hard to win, they may yet win. They just don’t get it on summary judgement right? They have to go to the jury. And I agree, sounds like a genuine issue o material fact to me. Isn’t what then happens either either the other side should concede it and let it be considered so or else the court should toss it to them anyway and decide like that or not do a summary judgement at all?

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