Hughes on Obviousness: The Problem Motivates the Solution

by Dennis Crouch

Dome Patent v. Michelle Lee in her capacity as Director of the USPTO (Fed. Cir. 2015)

Patent No 4,306,042 issued in 1981 and expired in 1998, but is still being litigated.  The patent covers a method of making oxygen-permeable material used for contact lenses. Back in December 1997, the patent owner (Dome) sued a set of defendants for infringement.  That lawsuit has been stayed since 1999 pending resolution of an ex parte reexamination requested by one of the defendants. In a 2006 final ruling, the USPTO confirmed patentability of claims 2-4, but cancelled claim 1 as obvious.  Dome then filed a civil action in DC challenging the PTO ruling. That case – filed in 2007 – concluded in July 2014 with the district court’s de novo determination that claim 1 was obvious over a combination of three prior art patents.  On appeal here, the Federal Circuit has affirmed that ruling – finding that “district court did not commit reversible error in its determination that the claimed subject matter would have been obvious to a person of ordinary skill during the relevant time period.”  Judge Hughes penned the opinion that was joined by the two other panel members, Judges Reyna and Schall.

In typical close cases, each of the major elements of a claimed invention are found in a collection of prior art — leaving the question of whether the combination as claimed would have been obvious to a person of ordinary skill in the art.   An important intermediary factual question is whether there is any evidence showing why a skilled artisan might or might not be inclined to combine the references.   In the Supreme Court’s KSR decision, the Supreme Court indicated that the motivation question involves an ‘expansive and flexible’ analysis and can consider the common sense of the skilled artisan.  Citing KSR, Judge Hughes writes:

If all elements of a claim are found in the prior art, as is the case here, the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success.

Evidence of a motivation to combine prior art references may flow from “the nature of the problem to be solved.”  Here, the district court found that the motivation came from the prior art evidence indicating a search for high oxygen permeability in contact-lens materials. That finding was then affirmed on appeal: “This understanding would have motivated a person of ordinary skill to combine the Tris monomer disclosed in Gaylord with the Tris-type cross-linking agent disclosed in Tanaka to increase the oxygen permeability of a contact lens.”  There was also some amount of teaching away (the non-Tris prior art outlined the problems of using Tris), but the appellate court affirmed the obviousness finding.

It was important for the appeal here that the ‘motivation’ found by the district court was seen as an issue of fact — a subset of some unnamed Graham factor — rather than a question of law.  Thus, although the appellate court may have disagreed with some aspects of the original decision, the district court’s findings were not “clearly erroneous.”


Review of Civil Action: As I mentioned above, the case began as a reexamination and, after losing, the patentee filed a civil action in district court who reviewed the case de novo.  Under i4i, a court patent may only invalidate a patent after being presented with clear and convincing evidence proving that result. See also 35 U.S.C. 282(a) (“In General. – A patent shall be presumed valid.”).  On the other hand, the USPTO operating in reexamination mode only requires a preponderance of the evidence to render the claims null and void.  These competing standards came to a head in the civil action challenging the reexamination finding.  On appeal here, the Federal Circuit affirmed that in this situation only a preponderance is necessary. 

“‘[A reexamination] is in essence a suit to set aside the final decision of the board.’ Fregeau v. Mossinghoff, 776 F.2d 1034 (Fed. Cir. 1985).

[I]f the Patent Office decides after an ex parte reexamination that a preponderance of the evidence establishes the claimed subject matter is not patentable, § 145 authorizes the district court to review whether that final decision is correct. The § 145 action in such a case does not concern the different question of whether, as part of a defense to an infringement action, clear and convincing evidence establishes that an issued and asserted patent should be held invalid.

Somewhat oddly, the court ruled that Section 282 does not apply here because that section only relates to defenses in patent infringement litigation. “The § 145 action before the district court did not involve a defense to a charge of infringement of an issued patent. Section 282 therefore does not apply in this instance.

71 thoughts on “Hughes on Obviousness: The Problem Motivates the Solution

  1. 10

    Ned brought this up below, but why didn’t the panel at least make some passing reference to In re Teles AG, where the Federal Circuit (in a precedential opinion) affirmed the DDC’s holding that the the 1999 amendments to the patent statute eliminated 35 USC 145 actions for ex parte reexamination decisions of the PTO?

    Regardless of whether Teles was correctly decided, Teles is controlling precedent, and one have thought the panel would have acknowledged the jurisdiction issue before addressing the district court’s decision here on the merits.

    1. 10.1

      And, Pilgrim, jurisdiction is never waivable. Even now, the Direct should raise Teles in any petition for rehearing.

      But, if there is no de novo review, the reexamination is unconstitutional.

      This could get interesting.

      1. 10.1.1

        De novo review cannot cure an Article III infraction. De novo review applies to Article I fact-finding; Article I determinations of law may be advisory only – irrespective of how reviewed.


            Ned – this decision 100% supports what I said. In Executive Benefits, the SCOTUS held that PROPOSED conclusions of law must be reviewed de novo. Perhaps we are splitting hairs here, but this distinction is significant where IPR seeks to cancel issued patent claims. The effect of an Article III re-calibration here on IPR would be the following: (1) the PTAB would issue a PROPOSED conclusion of validity / invalidity [that proposed finding would not cancel the actual claim(s)], and (2) where the standing requirement is met, that PROPOSED conclusion of validity / invalidity could be entered before an Article III Dist. Ct. for de novo review. Where there are disparate standards (preponderance, C&C, etc.), it is unclear what value the Article III Dist. Ct. would ascribe to the ADVISORY (i.e., “proposed”) PTAB determination.

            In the 1980s, patent law was still viewed as that mythical giant lurking in the hillside. The general courts wanted to nothing to do it, and the SCOTUS very rarely, if ever, granted cert. The CAFC become the de facto high court of the land for the purposes of patent law, and to this end, it went somewhat mad with the power. The Patlex and Joy decisions are evidence of that. Well, fast forward some 30 years and here we are, with the most powerful administrative court this nation has ever seen built upon the flimsiest foundations of the CAFC’s 1980’s solipsistic jurisprudence.


              David, we might be splitting hairs, because the FWD of the PTAB could be treated as proposed findings because the claims are not actually canceled from the patent until the court proceedings are final.

              For the sake of others, here is the Supreme Court’s own summary of its decision in Executive Benefits:

              “In Stern v. Marshall, 564 U.S. ___, 131 S.Ct. 2594, 180 L.Ed.2d 475 (2011), this Court held that even though bankruptcy courts are statutorily authorized to enter final judgment on a class of bankruptcy-related claims, Article III of the Constitution prohibits bankruptcy courts from finally adjudicating certain of those claims. Stern did not, however, decide how bankruptcy or district courts should proceed when a “Stern claim” is identified. We hold today that when, under Stern’s reasoning, the Constitution does not permit a bankruptcy court to enter final judgment on a bankruptcy-related claim, the relevant statute nevertheless permits a bankruptcy court to issue proposed findings of fact and conclusions of law to be reviewed de novo by the district court. Because the District Court in this case conducted the de novo review that petitioner demands, we affirm the judgment of the Court of Appeals upholding the District Court’s decision.”


                Ned – understood. But if an appeal is not pursued, the claims drop. This is not truly “proposed” or advisory.

                1. You might be right. There is also the matter that the patent owner must pay the entire costs of the government in a 145 action, including attorneys fees.

                2. To put it perhaps more succinctly, and Article I administrator cannot enter an enforceable judgment (the downstream effect of appeal is technically irrelevant) on a claim of private right. If the claim is a private right, the separation of powers requires that the conclusion of law be advisory or proposed. J. Newman knew this, hence her shoehorning of the claim of patent validity into the public rights exception.

                3. David, I think Newman thought then that Northern Pipeline was limited to “common law” actions like contracts per Rehnquist’s concurrence.

  2. 9

    Very little to see here. It’s a basic case. Though I will point out the “If all elements of a claim are found in the prior art,” part of the quote is unnecessary. Obviousness is not a string of anticipation rejections. You could easily have an element that was not within the prior art that would still render the claim obvious.

    (“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”)

    I see practioners screw this up all the time. There’s really only way way to teach away – if the art says that a proposed combination has been tried and DOES NOT WORK. Saying that works in an inferior manner isn’t teaching away in the slightest.

    I prefer using “teaching-suggestion-motivation” test, without the TSM test it will make the obviousness analysis pointless.

    Like Mark, I think that a standardized TSM test is useful for doing obviousness efficiently, fairly and objectively, free from ex post facto analysis.

    lol at people demanding the exact point that the Court said isn’t the law. I’ve never seen a single person say that the invention in KSR was not obvious, or that Anderson’s Blackrock was wrongly decided (despite there being evidence that there was zero motivation for the combination there) yet people always want to apply a test that would find them non-obvious because they support combinations which are similarly terrible.

    If your “novel” system is everything in the system doing exactly what the art would expect it to do, your invention is almost certainly obvious. There’s an extremely high hurdle to beat that. Most people fail to see that the obviousness test is largely a predictability test – if you went up to one of skill in the art and said “I’m thinking of putting X Y and Z together, what do you think will happen?” and they can divine the results, you have an obvious invention unless the combination could not have actually occurred or it was solving a problem they didn’t know existed (and I’m not even sure about that last one as a grounds of non-obviousness). You don’t need any special teaching for using known things to achieve their known results, that’s more like basic common sense.

    1. 9.1

      Take any two ridiculous-to-combine things: e.x. I want to put a hot tub in my car. Either the art is actually incapable of making the combination of those two things or it isn’t. If the art was incapable, point to where you teach an enabling structure, claim that structure and bam, you have a patent.

      If the art was capable (usually assumable by the broad functional language that is used in the claim) of the combination then guess what? It’s obvious. Why? Well the reason you would add a hot tub to a car is the same reason you would purchase a hot tub for your home – you like to sit around in hot water. Conversely, what about why you’d put a car around your hot tub? The same reason you would purchase a car – because it helps you get where you’re going. Oh look, it’s obvious in both directions.

      Things exist for reasons – they do stuff. If they’re doing the same thing in your system that they always do, there’s a generalized motivation for adding them – their known use. You don’t need a textual TSM to tell you you can use something for its known use. You don’t even need to be one of skill in the art to use something for it’s known use – end-user consumers can do that.

      That’s to say nothing of the fact that if you couldn’t use the known use as the mechanism for non-obviousness you’d be able to perpetually patent something that is performing its function in every new context. The entire logic of Anderson’s would be shot.

      1. 9.1.1

        “If the art was capable (usually assumable by the broad functional language that is used in the claim) of the combination then guess what? It’s obvious.”

        I think this has to be overstated. After all, what if the new combination allows a problem to be solved that neither pre-existing piece would solve by itself? (That seems different than the hot-tub example, where you’re just solving essentially the same problem but in a different context.) Can not an invention legitimately be in recognizing the problem and/or the fact that it could be solved with a particular combination of known things?


          After all, what if the new combination allows a problem to be solved that neither pre-existing piece would solve by itself?

          That’s true of every combination (that it solves something each individual piece doesn’t solve on its own). Unless the second piece actually performs differently then there is per se motivation to add it, and thus the combination is obvious.

          Can not an invention legitimately be in recognizing the problem

          As I said, possibly, though I question that.

          and/or the fact that it could be solved with a particular combination of known things?

          Not unless the things are acting differently. If your problem is X and you know that A causes R and that R solves X, its pretty obvious to apply A. If it’s clear that A+B+C would cause R, then it’s obvious to apply A+B+C. Its only when you can’t recognize the result (i.e. the art wouldn’t have known that A+B+C would result in R) that there’s an invention.

      2. 9.1.2

        “you’d be able to perpetually patent something that is performing its function in every new context”

        Uhh have you looked at e commerce patents?

    2. 9.2

      “Largely a predictability test”

      Except not nearly the crutch you wish to make it out to be.

      And for good reason – your way leads to the indefensible logic of the only valid invention is one of serindipity, blind luck, or Flash of Genius.

      1. 9.2.1

        the only valid invention is one of serindipity, blind luck, or Flash of Genius.

        Not at all.

        The art knows how elements 1-100 would all interact with each other in a standard, room temperature context.

        You mechanically test each element in combination with the 99 others (and make combinations of 3 and 4 elements) in a particular low pressure high temperature situation. You find out elements 2 and 12 behave in a completely different way. You then apply this new knowledge in a useful invention. Patent. From entirely dull work.

    3. 9.3

      A point of clarification, Random.

      When I wrote about “a TSM” test I had in mind the one run by the EPO, not the TSM caselaw of the USA.

      The EPO test does not let terrible combinations through to issue. But it does let through non-obvious new useful and enabled combinations.

      You can tell from the evidence. The evidence is that there is no systemic lament of unfairness, either from the community of European patent owners or from those who oppose patents at the EPO.

      Perhaps it is civil law that allows a TSM system to function fairly at the EPO. You know, a very different approach to evidence.

      1. 9.3.1

        I liked this sentence about the EPO approach, from the Wikipedia page on obviousness (particularly the “could” vs. “would” contrast):

        “The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage.”


          Eveything is a “could,” as witness the subsequent filing.

          Not everything is a “would,” and hence, the lemming following of the “predictability” mantra shines its legal logic weakness.


          Yes Ken, lots of people latch on to that sentence. But when doing so, it is vital not to ignore the key word “objective”. How the EPO identifies the “Objective Technical Problem” is the crux of its by now unassailable “Problem and Solution Approach” to the obviousness issue.

          In short, they don’t just pluck it out of the air. They derive it from what the Applicant chooses to write, in her patent application, about the technical field and the problem (the subjective one) they themselves said they were addressing, when they wrote their patent application. It very often turns out, (because neither the Inventor nor her drafter knew the prior art) that the Objective Problem of EPO-PSA is not the same as the Inventor’s subjective problem.

  3. 8

    Fyi, in an opinion published today (Ivera Medical Corp. v. Hospira), the “anti-patent” CAFC reversed a district court’s summary judgment of invalidity (the district court found the claims obvious) and remanded the case.

    Just sayin’.

      1. 8.1.2

        Paul Morinville cries a river because it’s marginally harder for “little guys” who push paper around to make untold millions of dollars off the assertion of junky patents that should never have been granted.

        Boo hoo hoo hoo! It’s all so unfair that a junk patent can get tanked so easy! After all, Paul was promised so much more.

        Meanwhile, let’s ask a simple question: what are the odds that super concerned Paul has (1) educated himself about how subject matter eligibility works and why comparing claims to the prior art is nearly always a necessary part of the analysis, and then (2) taken the time to educate other people ? The answer: slim to none.

        But he’s a super serious person. Totally not “biased” or anything.


          What a surprise that you left out the biggest part of the blog post regarding the undue influence of Google with their Google bucks and their Google desire to end patents to insure they remain the king of the Internet.


            Google with their Google bucks and their Google desire

            You forgot to mention Google’s junky patents.

            So did Paul.

            Go figure.

      2. 8.1.3

        Hey Night, I appear to be banned from Gene’s cite even though I agree with 99% of what he has to say. It appears that my support of the Supreme Court may be an issue with Gene.

        Regardless, I tried to post this, but Gene would not let it post:

        “Paul, you underscore a central problem with representative government — the need to get elected, to finance campaigns, etc. This will always give the wealthy and entitled a better position to influence legislation.

        Fortunately, we have to power of the press to shine the spotlight of publicity on what really is going on. That power is being enhance greatly by the internet. Perhaps in this brave new world, representative government will finally work better.

        So thank, you Paul, for your spotlight on Mr. Goodlatte and his bill.”

    1. 8.2

      This is a very limited opinion based on summary judgement. The court never had to construe the claims. Therefore, there is no way to judge whether the CAFC is “for patent” or “anti patent” based on this case.

  4. 7

    Ned: a reexamination does not involve the question of whether the original grant was correct.

    Re-exams certainly do “involve” that question. Hence the title: re-exam. It’s a do-over, with certain limitations.

    The statute itself limits the review to new questions not previously considered.

    There’s nothing inconsistent about such a limitation and the asking of a question: “Was the original grant correct?”

    heavily biased against a patent owner

    “Heavily biased”? Not really. It’s a preponderance standard versus clear and convincing. If people are truly concerned about “bias” in the patent system, they might wish to ask why any patent granted over the past fifteen years — particularly in the “computer implemented” arts — is presumed valid when asserted in litigation. That would seem to be a very “heavy basis” in favor of patent owners and, given what we know about the PTO’s ability to examine certain kinds of patents, it’s a bias that isn’t deserved.

    They do not intend to follow either the letter or the spirit of even recent Supreme Court cases.

    How would you describe the “spirit” of recent Supreme Court patent cases?

    1. 7.1

      “Our decision in RCA, 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163, is authoritative. There, tracing nearly a century of case law from this Court and others, Justice Cardozo wrote for a unanimous Court that “there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence.” Id., at 2, 55 S.Ct. 928.

      “Thus, by the time Congress enacted § 282 and declared that a patent is “presumed valid,” the presumption of patent validity had long been a fixture of the common law.

      “Reprising the more limited argument that it pressed below, Microsoft argues in the alternative that a preponderance standard must at least apply where the evidence before the factfinder was not before the PTO during the examination process.

      “Our pre-1952 cases never adopted or endorsed the kind of fluctuating standard of proof that Microsoft envisions. And they do not indicate, even in dicta, that anything less than a clear-and-convincing standard would ever apply to an invalidity defense …”

      Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 – Supreme Court 2011

      link to

      1. 7.1.1

        ““there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence.””

        That applies when a patent is challenged in court. When the agency has made a mistake and reverses it, the agency is just fixing the error that led to the presumption in the first place. If the agency doesn’t have the ability to find the application invalid, then where does the presumption of validity come from?


          Per the Supreme Court of the United States:

          “But whatever may have been the course of procedure usual or requisite in the English jurisprudence, to enable the king to repeal, revoke, or nulify his own patents, issued under his prerogative right, it can have but little force in limiting or restricting the measures by which the government of the United States shall have a remedy for an imposition upon it or its officers in the procurement or issue of a patent. We have no king in this country; we have here no prerogative right of the crown; and letters patent, whether for inventions or for grants of land, issue not from the president but from the United States. The president has no prerogative in the matter. He has no right to issue a patent, and, though it is the custom for patents for lands to be signed by him, they are of no avail until the proper seal of the government is affixed to them. Indeed, a recent act of congress authorizes the appointment of a clerk for the special purpose of signing the president’s name to patents of that character; and, so far as patents for inventions are concerned, whatever may have been the case formerly, since the act of July 8, 1870, they are issued without his signature, and without his name or his style of office being mentioned in them. The authority for this procedure is embodied in the following language of the Revised Statutes: ‘Sec. 4883. All patents shall be issued in the name of the United States of America, under the seal of the patent-office, and shall be signed by the secretary of the interior, and countersigned by the commissioner of patents, and they shall be recorded, together with the specifications, in the patent-office, in books to be kept for that purpose.’ This only expresses the necessary effect of the acts of congress. The authority by which the patent issues is that of the United States of America. The seal which is used is the seal of the patent-office, and that was created by congressional enactment. It is signed by the secretary of the interior, and the commissioner of patents, who also countersigns it, is an officer of that department. The patent, then, is not the exercise of any prerogative power or discretion by the president, or by any other officer of the government, but it is the result of a course of proceeding quasi judicial in its character, and is not subject to be repealed or revoked by the president, the secretary of the interior, or the commissioner of patents, when once issued.”


          Owen, in addition to the quote from United States v. American Bell Telephone Co., 128 US 315 – Supreme Court 1888 that David cites, McCormick Harvesting also directly held that the PTO cannot revoke a patent for invalidity.

          “It has been settled by repeated decisions of this court that when a patent has received the signature of the Secretary of the Interior, countersigned by the Commissioner of Patents, and has had affixed to it the seal of the Patent Office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or cancelled by the President, or any other officer of the Government…”

          “[A] suit may be maintained by the United States to set aside a patent … improperly issued by reason of mistake, or fraud; but only in the case where the Government has a direct interest, or is under obligation respecting the relief invoked.”

          “Our conclusion upon the whole case is that, upon the issue of the original patent, the Patent Office had no power to revoke, cancel or annul it. It had lost jurisdiction over it, and did not regain such jurisdiction by the application for a reissue.”

          See also, United States v. United States Gypsum Co., 333 US 364 – Supreme Court 1948:

          “[T]the United States was held without standing to bring a suit in equity to cancel a patent on the ground of invalidity.” citing United States v. American Bell Telephone Co., 167 US 224 – Supreme Court 1897.

          Standing is what, a constitutional requirement?

          Regardless, “mistake” is not invalidity. Mistakes are simple clerical errors. See, Gypsum at 241.


            Several people (including Random), seem to have NO understanding of administrative (or property, or patent, or…) law.


            That’s all well and good, Ned, if the statute fails to create ordinary procedures for correcting invalid patents. The executive can’t simply make up such procedures himself.

            But we do have proper procedures now, and they are very effective at reducing the damage to innovation from invalid patents. Shouldn’t we be pleased that Congress has wisely offered us ways to clean up the mess of PTO initial examination?


              Owen, I’m sorry, but Congress created DJ actions for the very purpose of allowing disputes over patent validity to be litigated.

              No procedures, my A!


              Here, concerning executive branch reexamination of issued patents, we run against the structural protection (separation of powers) afforded by our form of government. Owen, it simply cannot be the case that one PTO director issues a patent, we have an election of a new Executive – and the Executive appointment of a new PTO director – and that new director reexamines issued patents, under the guise of mistake, of disfavored patent owners, thereby revoking, i.e., taking the property right that was already issued. SCOTUS, took this head on in the land patent cases.


                This also happened in the very first case on point, Marbury v. Madison. The next president tried to revoke the appointments made by the prior president. The Supreme Court said, no! Once the appointment was made, it could not be revoked.

                The Supreme Court reasoned that an appointment for fixed term became the property of the appointee. The validity that appointment was not a matter for the executive, but for the courts. This clearly was stated not as a matter of statutory construction, but as a matter of constitutional law and separation of powers, the very topic of Marbury v. Madison.

                This case was followed in a direct line to McCormick Harvesting, which held that once issued, a patent for invention cannot be revoked by the PTO.

                1. “Like the royal prerogatives that were their historical antecedents, patents have a regulatory effect: They “restrain
                  others from manufacturing, using or selling that which [the patent holder] has invented” … for a specified period of time.

                  And because the regulatory scope of a patent is determined by the claims in the patent, the subsidiary findings that a court makes during claim construction contribute to rules that limit conduct by the public at large.

                  Because they are governmental dispositions and provide rules that bind the public at large, patent claims resemble statutes.” (Thomas dissent in Teva)

                  Patents aren’t some kind of property right granted to an appointee, they’re an ongoing regulatory operation imposed on the whole of the public by the government. The government can change its regulatory policies from time to time. An IPR is just like a publication of a rule change in the Federal Register.

                2. @David

                  The point here isn’t so much nearby precedent as the actual composition of the Supremes if Ned’s idea is considered on Capitol Hill.

                  There are four votes that worship the administrative state and will find any reason to support the IPR statute. They’ve already worked from Wickard to Citizens United supporting the dictates of administrative authority ahead of property rights and the Constitution. Their dissent in Citizens United would grant the executive the presumptive authority to ban books based on their content, so it’s not looking good for Constitutional arguments by the holders of patents issued in error.

                  Then there are two more justices who dissent in Teva in the clearest way that patents are not property rights or deeds. In fact, in a bit of very clear and accurate thinking, they point out that patents are regulatory acts by the state that are amenable to regulatory review in the usual ways.

                  That leaves three maximum votes against IPRs and I think Roberts is well out of reach also. Probably just Kennedy is in play.

                3. “Then there are two more justices who dissent in Teva in the clearest way that patents are not property rights or deeds. In fact, in a bit of very clear and accurate thinking, they point out that patents are regulatory acts by the state that are amenable to regulatory review in the usual ways.”

                  Have you considered the points raised in the eCharge reply brief? It may be viewed here:

                  link to

                  Your point of view re Teva, etc. coincides with that of the USPTO’s. eCharge does not shy away from addressing it.


            There are essential due process and first amendment rights violated also when a patent can be issued ex parte to take away citizens’ rights and the people have no recourse. And leaving them to face a presumption in court that their rights have been taken justly is not due process.

            After all, the patentee hasn’t had to overcome the citizens’ arguments at all in an adversarial forum and the patent issued with no burden beyond preponderance. At the PTO, the burden is even much less than that as is apparent from current issuances.


              first amendment…?

              your version of “due process”…?

              Please, please, please, familiarize yourself with the terrain before venturing forth.

              Read (and understand) Sun Tzu.


              “People have no recourse!”

              Again, there are basic issues of standing here. Do you even know what I am talking about?

  5. 6

    Hyatt v. Kappos held that a 145 trial is not an appeal. It is a de novo validity trial. link to

    Also consider, does 282 apply in validity trial generally? What about DJ actions for invalidity?

    The nonsense this court come up with on a constant basis that is heavily biased against a patent owner should be quite obvious to all by now. They do not intend to follow either the letter or the spirit of even recent Supreme Court cases.

    1. 6.1

      Also, this court seem to ignore the recent ruling of the Federal Circuit that the 1999 Amendments removed 145 “appeals” despite 306 retaining a specific reference to 145 until the AIA. It is clear that that recent decision was wrong, and it too is being ignored.

    2. 6.2

      Moreover, a reexamination does not involve the question of whether the original grant was correct. The statute itself limits the review to new questions not previously considered.

      This statement, “Only if the district court found in favor of Dome would the Patent Office be authorized to issue a patent,” is beyond absurd in connection with an already issued claim that is fully enforceable.

      In total, an engineered decision carefully crafted and decidedly against patent owners. Congress, if not the Supreme Court, needs to do something, anything, to fix this situation.

      1. 6.2.1

        It is stunning Ned that you continue to clench tight your eyes as to the anti-patent inducing effect of the very same Supreme Court that you wish to reach out to.

        Such posts of yours only reinforce the lack of credibility that stems from your inability to objectively view the entirety of patent law and how badly your windmill chases blind you to the big picture.


          Anon – what the Court is prepared to do with power is a completely separate question from whether the Court is prepared to give that power away.


            Oh, I see that David.

            I just am not a sheep or a lemming and blindly accept it.

            No sir, the emperor really does not have the finest clothes.

  6. 5

    The expiration date seems to me to be 2000, given that the patent was applied for in 1980 and still in force in 1995, so that it gets the benefit of the twenty-year term.

    1. 5.1

      Flavio, the trial was suspended. If it resumes, the patent owner may still collect all damages from 6 years prior to the complaint (assuming notice, etc.). The complaint was filed in ’97.

  7. 4

    Dennis either missed or intentionally ignored perhaps the most important statement in the Dome decision:

    “When the Patent Office institutes ex parte reexamination, it reopens prosecution to determine whether the claimed subject matter should have been allowed in the first place.”

    This statement is in tension with a number of Supreme Court cases. It is also interesting that the Federal Circuit left Patlex out of this opinion.

    1. 4.1

      “The § 145 action before the district court did not involve
      a defense to a charge of infringement of an issued
      patent. Section 282 therefore does not apply in this
      instance. See 35 U.S.C. § 282. The district court here was
      reviewing the Patent Office’s reexamination of claimed
      subject matter, and its final determination that the
      subject matter is not patentable, to ascertain whether
      Dome was entitled to receive a patent. Only if the district
      court found in favor of Dome would the Patent Office be
      authorized to issue a patent. See 35 U.S.C. § 145. And
      only after the patent issued would it be entitled to the
      presumption of validity under § 282 and, consequently,
      could not be held invalid absent clear and convincing
      evidence. “

      1. 4.1.1

        I do not think that the focus on the difference between 145 and 282 is what the point of the matter is.

        Instead, focus on first answering the following questions:

        Was the item ever granted?
        Did the item “graduate” from the executive branch at some point?

        Whether or not – later – the correctness of the graduation is questioned (and importantly, how – the means – of that questioning) is a distinct point. You do not get to that distinct point (145 land with its lowered level of proof) unless you first strip away one of the sticks in the bundle of property rights of a granted patent.

        Regardless of any secondary adjudication on the merits, it is that initial taking that serves a better focus, especially in view of David’s (and Ned’s) positions.

        In other words, the consequence of C&C inures at the time of grant, and not at the time of enforcement. The writing here that seeks to only apply that particular property right as existent only upon enforcement misstates the gen eral nature of 35 USC 282(a).

        See also 35 USC 261.



          I understand that your question was likely rhetorical (“[d]id the item ‘graduate’ from the executive branch at some point?”), but for the general commentariat, I will note that this question has been answered, repeatedly, by the Supreme Court. It has answered this question as applied to patents for invention, as well as patents for land.

          link to

          link to

          (there are many others)

          Cases like Dome indicate that the CAFC is prepared to double down on its Article III infraction. Dicta from, for example, the Supreme Court’s recent Horne v. Dept. of Agric. decision (essentially 8-1), suggests that the Supreme Court is prepared to enforce the separation of powers.

      2. 4.1.2

        Dennis, just 3 years ago the Supreme Court held that a 145 action was not an appeal.

        Claim 1 is an issued patent claim. Under McCormick Harvesting, the USPTO has no power to revoke it. However, a district court has that power, but because the claim is issued, it has the presumption of validity.

        The patent owner here needs to raise the constitutional issue, and fast.

  8. 3

    I’m pleased that the irritating icons on the left are not appearing in this thread.

    Like Mark, I think that a standardized TSM test is useful for doing obviousness efficiently, fairly and objectively, free from ex post facto analysis.

    But to standardize a TSM Approach, it helps to have disputes over validity, thouands of them over 30 years or so, where both sides (patent owner and petitioner for invalidity) are constrained to use the same TSM framework of argument. That produces a body of caselaw that renders obviousness determinations fast, yet honest and objective.

    Mind you, only when the governing law is First to File, for then the inventor’s own patent application is written prior to the date on which obviousness relative to the art falls to be judged. Looking at the application as filed, in a First to File jurisdiction, to fix the technical field and the inventor’s subjective problem, is not ex post facto analysis.

  9. 2

    I prefer using “teaching-suggestion-motivation” test, without the TSM test it will make the obviousness analysis pointless . See those rejections made by the USPTO, it’s totally nonsense and subjective.

    1. 2.1

      I agree. The problem is without TSM, the game is hindsight and subjective gisting. TSM is way to vastly improve our patent system by putting into place an objective test that can be improved.

      But, we now have a Fed. Cir. that knew very little to nothing about science or patent law before being appointed. Most probably never thought about hindsight before their appointment was approved by Google and most of the new gang expressed vehement distrust of the patent system before their Google approval.

      So, what hope do we have that these science illiterate cretins will take the time to understand hindsight? Hindsight is something that took me many years to understand fully through real examples in my life. This lot will likely dismiss all of hindsight reasoning ’cause, ’cause.

    2. 2.2

      Mark: those rejections made by the USPTO, it’s totally nonsense and subjective.

      There’s nothing “nonsensical” about the obviousness finding here.

      The art provided the motivation and taught the expected result.

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