IPR Appeal: Federal Circuit Tells PTAB to Reject More Claims

Belden v. Berk-Tek (Fed. Cir. 2015) on appeal from IPR2013-00057 (Patent Trial & Appeal Board) .

In an inter partes review appeal, the Federal Circuit has sided with the patent challenger – finding that the PTAB had erred by upholding the patentability of two of Belden’s claims.  This case is important largely for its result. The case is also one to be studied for some attempt to tease out the Federal Circuit’s purported legal analysis.

In the IPR of U.S. Patent No. 6,074,503, the PTAB cancelled claims 1-4 as obvious over a combination of prior art references but upheld claims 5-6.  In this process, the Federal Circuit must give substantial deference to PTAB factual findings (such as the factual underpinnings of the obviousness analysis) but reviews questions of law (such as the ultimate determination of obviousness) de novo on appeal.  Thus, all other things being equal, it is a much less daunting process to base your appeal on an issue of law rather than upon a factual dispute.

In reversing the PTAB’s decision upholding claims 5-6, the Federal Circuit wrote that the Board’s “contrary finding rests on legal errors.”  However, the analysis in the analysis that followed, the court appeared to point out a series of incorrect factual conclusions and perhaps suggests that ‘motivation to combine’ should truly be considered a question of law rather than of fact.

There is no meaningful dispute here, and the Board did not deny, that the two pieces of prior art in combination teach or suggest the methods of claims 5 and 6. The dispute concerns motivation to combine. The Petition and the Institution Decision reveal the two related ways in which that issue was presented and considered: whether a skilled artisan would substitute the twisted pairs of CA ’046 into the method of JP ’910; alternatively, whether a skilled artisan making the cable of CA ’046 would look to the JP ’910 method to make it. The brief discussion in the Petition suggests both views of the matter. …

As the Board found, it is “undisputed that CA ’046 discloses ‘a helically twisted cable.’” There is no dispute that the twisted pairs in CA ’046 need to fit into the notches of (i.e., be aligned with) the separator, as shown in the two figures from CA ’046 reproduced above, for the resulting cable to be made. And the Board correctly recognized in its discussion of claims 1 and 2 that JP ’910 clearly teaches the importance of aligning conductors with a separator (core), and suggests doing so with a die to prevent twisting of the separator, before they are all bunched together for twisting in a stranding device. That evidence points clearly toward a motivation of a skilled artisan to arrive at the methods of claims 5 and 6 based on JP ’910 and CA ’046, as the Board reasoned in its preliminary determination in the Institution Decision.

None of the Board’s reasons for concluding otherwise in its Final Written Decision withstands scrutiny through the lens of governing law. The Board’s first reason was that JP ’910 shows only conductors that are not individually insulated, so that “one of ordinary skill…would not have been motivated … simply to substitute twisted pairs of insulated conductors for the bare metal conductors.” But JP ’910 plainly discloses the need to align the conducting wires with the core and how to do so, as the Board recognized in its analysis of claims 1 and 4. The alignment problem and solution do not depend on whether the wires are insulated. The Board’s disregard of the insulation-independent alignment teaching of JP ’910 violates the principle that “[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphases in original); see In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). . . .

The Board, returning to its focus on insulation of individual conductors, further reasoned: “Berk-Tek also has not explained why a person of ordinary skill in the art would have had sufficient reason to use the final jacketing/extrusion step of JP ’910, which serves to insulate electrically the bare-metal conductors of JP ’910, to manufacture a cable comprising twisted pairs of individually insulated conductors that do not require additional electrical insulation.” The Board found no answer to Belden’s statement that the final jacketing step, if the conductors themselves were insulated, would be “‘redundant.’ ” But that logic misconstrues the claim language and overlooks on-point evidence. . . .

In short, the record is one-sided on the proper question of whether JP ’910 taught a solution to the problem of aligning cable components that a skilled artisan would have been motivated to use in making CA ’046’s cables. The Board erred in determining that Berk-Tek had not proven the obviousness of the methods of claims 5 and 6 of the ’503 patent by a preponderance of the evidence.

Read the decision here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1575.Opinion.11-3-2015.1.PDF.

 

267 thoughts on “IPR Appeal: Federal Circuit Tells PTAB to Reject More Claims

  1. 15

    CAFC – is just so in the tank for the administrative state. We should just create ‘expert’ administrative courts for everything – and therefore we can all be spared the burden of jury duty. In the not too distant past you would expect a patriotic lecture from the trial judge in the rights, responsibility and obligations of jury duty and maybe some separation of power (no kings – all equal before the law) tossed in for good measure. Meh, just let the paid administrative experts ‘do their job’ so says the CAFC. Shameful betrayal of liberty. All the admin courts are going to start driving through this hole CAFC shot in the Constitution.

    1. 15.1

      iwasthere, it is interesting that the government did not defend the constitutionality, at least not vigorously, of IPRs (in MCM v. HP) on the basis of some hidden expertise by the PTAB in deciding patent cases. After all, there is no requirement that the judges have any particular expertise in the technology of the patent before them.

    2. 15.2

      Fortunately, iwasthere, the CAFC is not the nation’s high court.

      This fight is just getting started.

      1. 15.2.1

        David,

        You might want to notice that the nation’s highest court ALSO has a problem with separation of powers.

  2. 14

    I’m interested whether there is any nexus between KSR “predictability” and the notion of “obvious to try”.

    I associate “obvious to try” with chem/bio, fields where you do not know what will “work” till you try. For example, it might be obvious to try both the d- and the l- component of a racemic mixture. It might be predictable that one will “work” better than the other. But is it any more obvious to try the d- than the l- component, and how “predictable” is it, that the d- will perform better than the l-? You might have a hunch, and your hunch might prove to be justified, but to what extent is the outcome “predictable”?

    You see, I’m in engineering, where you can (usually) describe two embodiments and “predict” which one will perform better. So, I’m unhappy about the notion that anything that is “predictable” is not deserving of a patent.

    Having seen obviousness argued at the USPTO and at the EPO, the way it is done at the USPTO, steered by KSR, leaves me feeling dissatisfied. Night Writer (remember him) laments that you get nowhere at the (First to File) EPO if you don’t draft the application right. Readers out there, what is it about arguing obviousness at the EPO (other than the imperative to draft the patent application competently) that leaves you dissatisfied?

  3. 13

    Random at 832 below raises an tricky point for obviousness in the USA, whether it was obvious to substitute D for C in ABC. Fortunately for me, before the EPO, and under its TSM jurisprudence, there is no issue.
    But I would nevertheless like to know the answer for the USA.

    1. 13.1

      Well I would submit that there is no issue in the USA either Max, that’s the point I’m ultimately trying to cull from the discussion. The manner in which the CAFC goes about its analysis is to ask why a person would go from position A (the prior art) to position B (the claimed invention). The correct standard is “Is the evidence that this required only ordinary skill and ingenuity?” (i.e. prior enablement + a predictability) Because a motivation evidences a known principle of operation that leads to a result, it satisfies both enablement and predictability. But that is not the only mechanism by which they can be satisfied.

      1. 13.1.2

        Thanks Random. On the question “Obvious Y/N?” you write:

        “The correct standard is “Is the evidence that this required only ordinary skill and ingenuity?” (i.e. prior enablement + a predictability)”

        which sounds to me very much in line with my understanding of KSR. It leaves me uneasy though, because I can’t imagine how a court on this “standard” chooses between the evidence adduced by the patent owner and that adduced by the petitioner for invalidity. Metaphorically, the court wets its finger and holds it up, to see from which direction the wind is blowing most strongly, I suppose. You talk of predictability but with this “standard” predicting the outcome of the litigation strikes me as well-nigh impossible.

        So I can well imagine that the outcome, every time, is that the party whose evidence does not prevail feels traduced.

        When both sides have convinced themselves that they will surely win the evidential battle, that makes for more litigation than would happen if a less fuzzy “standard” were to be imposed on the litigants.

        It’s all a bit sad really, I think.

        1. 13.1.2.1

          Wow, what a great discussion. Having taken some time off – and standing back – ‘obvious to try’ is just a meaningless crutch for a lay judge to knock out a patent on SJ. Most – if not all – of the federal bench will just glaze over and think – I thought by going to law school – I could earn good money without STEM.

      2. 13.1.3

        Random, The correct standard is “Is the evidence that this required only ordinary skill and ingenuity?” (i.e. prior enablement + a predictability)

        Nuance here.

        Consider Adams Battery:

        “The Government concludes that wet batteries comprising a zinc anode and silver chloride cathode are old in the art; and that the prior art shows that magnesium may be substituted for zinc and cuprous chloride for silver chloride. Hence, it argues that the “combination of magnesium and cuprous chloride in the Adams battery was not patentable because it represented either no change or an insignificant change as compared to prior battery designs.” And, despite “the fact that, wholly unexpectedly, the battery showed certain valuable operating advantages over other batteries [these advantages] would certainly not justify a patent on the essentially old formula.”

        Now, without more, it would seem obvious and predictable, as argued, to make the substitutions. But, as we found in Adams, the resulting battery performed far beyond what was predicted.

        We of course know why — new functionality, the so-called synergism.

        Just because all the elements exist and one might make substitutions, the resulting performance must be nor more than equivalent — expected. Otherwise the combination brings new functionality that was not expected.

        1. 13.1.3.1

          Ned,

          Straight up question:

          Is your “nuance” the notion that synergy MUST be there?

          Have the courts demanded this in all cases?

          Can the courts demand this (thereby writing statutory law)?

          1. 13.1.3.1.1

            anon, synergism defeats aggregation.

            The search is for new functionality since Hotchkiss. If the combination really brings nothing new to the table not there before, it is an aggregation.

            1. 13.1.3.1.1.1

              I am not asking if synergy defeats aggregation.

              I think that you misunderstand aggregation as well.

              Let me give an example aggregated claim:

              I claim:

              A fish, a blue bowling ball, a bicycle and a wonderful new Wodget**.

              Wodget being something actually inventive and for the sakes of this point fully defines and enable – on its own – in the application.

              You see the lack of (gasp) integration? Do you remember that word? It is the word that sunk Malcolm and his overeager glee to be the very first to post a link to the Patent Office take on a very particular Supreme Court case.

              No Ned, you are not answering the question I put to you.

              Please try again.

              1. 13.1.3.1.1.1.1

                The premise for aggregation or the substitution of known elements, is that everything is known.

                As to the addition of nonsense to a novel element, 112 problems.

                1. Does not particularly point out the invention.
                2. If the novelty is in the one element – the claim is either invalid or governed by 112(f)

                1. …and you really need to retire your canard of “Point of Novelty” as you attempt to use that in a 101 sense.

                  For the 101 sense, it is the claim as a whole that is the “Point of Novelty,” since it is a given that EVERY ELEMENT in a perfectly valid 101 claim can be merely not-novel in and of itself.

        2. 13.1.3.2

          Ned, helpful. But all the same, I’m still uneasy about predictability, synergy and obviousness in the engineering arts. How about angioplasty balloons. The mechanical behaviour of polymer balloons is known and predictable. Replacing a PE balloon with one of PA or PC would be obvious then, would it?

          But fact is, the three polymers, by virtue of their different stretch characteristics, suit different patients. PA is the Cinderella material. Stretchability just right for arterial angioplasty. PA was not obvious. Fact. Despite all the “predictability” of its mechanical properties.

          So, patentable Y/N?

          1. 13.1.3.2.1

            Max, playing in the field of opinion is the problem with “obviousness” as interpreted by the Federal Circuit. Teaching. Suggestion. Motivation. Sounds good in practice, but in reality it simply comes down to opinion.

            The US Supreme Court wants to find new functionality – different in kind rather than degree. This is objective. It was the test before Rich and his crew tried to change it to something subjective.

            It is important that the court pointed to Hotchkiss. New functionality is the key.

            1. 13.1.3.2.1.1

              Wrong again Ned – your anti-Rich curse-ade is misplaced as it was Congress, not Rich, that did what you do not like..

              You KNOW (or should know) this.

            2. 13.1.3.2.1.2

              IHMO, TSM – was a proper doctrine for an appeals court – to insist on admisssable ‘evidence’ in the trial court record. TSM provided a framework in which to have evidence admitted (FED.R.EVID) to support expert opinion. KSR – unhinges evidence of the prior art from the FED.R.EVID and, therefore, turns 103 into an un-reviewable battle of expert opinion. Worse, in fact, because on SJ a Judge can apply (her) ‘common sense.’ How the fracking does an appeal court review that? Breyer should go sit on a couple of trial courts – and get a clue.

              1. 13.1.3.2.1.2.1

                iwasthere, indeed, KSR does a disservice to the extent it allows both the functional approach and TSM to sit side-by-side with the “M” being, effectively, common sense.

                As in Adams Battery, even if there is motivation, if the resulting combination provides new functionality beyond the predictable, the unexpected, then I would still grant the patent under KSR — the functional approach should trump the gestalt approach.

        3. 13.1.3.3

          Right – is there admissiable evidence under the FED.R.EVID for ‘obvious to try’ or is it just KSR – ‘common sense.’

        4. 13.1.3.4

          Now, without more, it would seem obvious and predictable, as argued, to make the substitutions. But, as we found in Adams, the resulting battery performed far beyond what was predicted.

          That is NOT predictable. That’s what unexpected results are, a failure of predictability.

          You’ll notice that every one of the “secondary considerations” are really just arguments that go toward either a failure of prior enablement or a failure of the art to predict the correct result. Long felt need, teaching away and commercial success are arguments/facts which suggest that the combination was not previously enabled. Unexpected results and commercial success go toward an unpredicted result.

          There are not two steps. It’s not like you find that a combination was within the standard skill, but then award a patent anyway because the applicant can show, e.g. commercial success. Commercial success is a fact which goes into the determination of whether something was within the skill or not. Secondary considerations without invention cannot be a patent, see Sakraida @ 282.

          1. 13.1.3.4.1

            Random, I do not disagree. But the premise of KSR’s functional approach is that there be no difference in functionality before and after the combination. That is what predictability means.

            Thus when one has unexpected results or new functionality, different in kind rather than degree, the subject matter is patentable.

            Also, I think it is self-evident that if reconstruction of the primary reference is required in order to make the substitution and that reconstruction is inconsistent with or eliminates a purpose for the primary reference, then the substitution is not within the doctrine of KSR. There is no functional equivalence with the substitution.

            Also, I agree with you that motivation, or reason, has nothing to do with the functional approach of KSR. It has rather the do with the traditional TSM test from the Federal Circuit, where the motivation can be found in the problem to be solved in the broader sense, or with common sense. The KSR functional approach is all about whether various elements were known and known to work in similar combinations such that their combination into the particular combination would be expected to provide similar, if not the same functionality. All this of course comes out and can be found directly in Hotchkiss v. Greenwood.

            1. 13.1.3.4.1.1

              Random, Ned, how about the EPO “bonus effect” and “one way street” line of caselaw? This is when some claimed combination of technical features is new and delivers a surprising technical effect but is nevertheless obvious. The feature combination was “lying in the road” of technical development, that road being one every PHOSITA would follow, and the effects are merely a “bonus” that you get when you do the obvious.

              Perhaps I should add that such an obviousness attack is quite hard to make out, and so usually fails. But given the right facts, it succeeds, and quite right too. At the EPO that is.

              1. 13.1.3.4.1.1.1

                Max, 1, 2, 4, 8, 16, … Name the next number.

                I would think evidence like this would be considered “secondary.” Sure there is an improvement, but it was “known.”

            2. 13.1.3.4.1.2

              ^^^ and yet again the [ ** ] to the Flash of Genius mantra…

              ** that is, the OOps, what do I have here portion.

              Lok closely gents at your “logic” – ALL engineering and planned activities are per se obvious – combined with a sliding view of PHOSITA to include “normal inventiveness” and you can pretty much just have what Congress explicitly rejected.

              Tell me who again under our constitution was allocated (solely) the authority to write patent law?

  4. 12

    At 8121141 below, I asked what, in the context of obviousness, is meant by “predictable”. My question was prompted by something MM wrote, about predictability negating patentability.
    For me, and also Random Guy, results in engineering are generally predictable, those in chemistry generally not (still).
    But contributions to engineering can still be patentable, in particular the ones where you say, after you have seen it, why didn’t I think of that. These are the inventions that deliver predictable results, ones that could have been predicted but, as a matter of fact, weren’t. For me, despite their predictability, they might still not be obvious.
    Is this all trite? Have I misunderstood MM and SCOTUS in KSR? What do you say?

    1. 12.1

      But contributions to engineering can still be patentable, in particular the ones where you say, after you have seen it, why didn’t I think of that.

      The direct holding in KSR (the holding solving the KSR/Teleflex argument) is as follows:

      1) A parent claim was found obvious and was further almost completely taught by a single reference
      2) The claim at issue differed from the parent claim only because it located a sensor in a particular place
      3) A reference which located the sensor in the proper place put the sensor there merely as a design choice.
      4) For the CAFC, because there was no motivation to locate the sensor where the claim did, the claim was non-obvious
      5) For the Supremes, the prior art understood that sensors were useful, and understood that sensors could only go in so many places
      6) Consequently, for the Supremes it was, in today’s parlance, obvious to try – there were a finite number of places to put a sensor and a sensor was useful and enabled, therefore the claim used only ordinary application of skill.
      7) Notably absent from an obvious to try rationale is a reason why the sensor would be located in that particular place. In other words, the Supremes never contradict the CAFC that there is no motivation for the claim, they simply state that the absence does not render the claim obvious.

      Consequently “why didn’t I think of that?” can’t be the test because 1) it uses you rather than a PHOSITA and 2) there are situations which nobody in fact posits but a rational application of knowledge in the art would lead to the result. Now if you find yourself saying “Why didn’t I think of that” you may have informed upon the actual test because the art may in fact have misunderstood something very basic, but in all likelihood the reason you didn’t think of something is because you recognize that the art understood it perfectly and the underlying problem it solved was so unimportant that you never bothered to put your mind to it.

      1. 12.1.1

        I agree with you 100%, that the template is not a real person but the notional PHOSITA. Considering how EPO TSM might have handled the claim in KSR, I can imagine something like this:

        “The characterizing feature is the sensor in a changed location.

        Adopting the location in the claim brings no difference to performance of the assembly. So the objective problem solved by the claim is not the substantial one, of how to enhance performance in a way announced in the specification but, rather, the trivial problem of finding a mere alternative to the known assembly.

        The state of the art shows that alternative sensor locations are not unknown. When the PHOSITA is tasked with finding a mere alternative, one obvious way to arrive at a mere alternative is to move the sensor to where the claim says it is.”

        In such ways, the EPO TSM approach can find a claim obvious even when one struggles to point to a specific source in the prior art that discloses explicit “motivation to combine”.

      2. 12.1.2

        Re: “7) Notably absent from an obvious to try rationale is a reason why the sensor would be located in that particular place.”

        ? I thought a reason argued in KSR as to why a POSITA with “common sense”would put the sensor in a pivot axis location was that because the connecting wires would get less twisted there?

        1. 12.1.2.1

          ? I thought a reason argued in KSR as to why a POSITA with “common sense”would put the sensor in a pivot axis location was that because the connecting wires would get less twisted there?

          This was the exact relevant holding from the Fed Cir:

          “Neither do we agree with the district court’s reliance on the express teachings of the Smith patent. That is because the statement in the Smith patent that ‘the pedal assemblies must not precitipate any motion in the contacting wires’ does not necessarily go to the issue of motivation to attach the electronic control on the support bracket of the pedal assembly.”

          The teaching was that it must be placed somewhere fixed. But the pivot point is not the only place that is fixed, therefore there was no particular motivation for that particular placing. Its true, as you say, that everyone recognizes there was a general motivation that it must go somewhere fixed. But the thing that gets you from “somewhere fixed” to “this particular fixed spot” was the obvious to try rationale, not a particular reason in the prior art. That’s because nobody ever directly posited applying Smith to an adjustable assembly (which was what the Asano structure was) so there was never any motivation to put the sensor on the pivot of an adjustable assembly.

        2. 12.1.2.2

          See also the statement in the Appellate court record where they specifically acknowledge testimony:

          “The only declaration offered by KSR did not go to the ultimate issue of motivation to combine prior ie wheere one of ordinary skill in the art would have been motivated to attach an electronic control to the support bracket of the assembly disclosed by Asano. [The testifier] did state that an electronic control ‘could have been’ mounted on the support bracket of a pedal assembly. Such testimony is not sufficient to support a finding of obviousness, however. (“Obvious to try” has long been held not to constitute obviousness)…the issue is not whether a person of skill in the art had a motivation to combine the electronic control with an adjustable pedal assembly, but whether a person skilled in the art had a motivation to attach the electronic control to the support bracket of the pedal assembly.”

      3. 12.1.3

        Random, the sensor location the only novelty, it was a known location and there was no new functionality in making the combination.

        Stop.

        That is Hotchkiss.

        KSR: “Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684.

        If there is new functionality, that is tested by the degree of predictability — unexpected results, etc.

    2. 12.2

      MD: results in engineering are generally predictable, those in chemistry generally not

      That depends very heavily on what you are “engineering.” Or maybe you never heard of chemical engineering before?

      The fact that, in a given patent system, it is more difficult — or should be more difficult — to get a patent in a field where the results of a useful combination are predictable is not a flaw in the patent system. It’s a feature.

      Patents are for more promoting progress. They aren’t entitlements handed out simply to make it easier for businesses to profit withou competing. After a lengthy period of hijacking, people have a hard time remembering that there’s more to the patent system — or there at least should be more to it — than lawyers playing word games with the PTO.

      1. 12.2.1

        MM could you now have a butcher’s at my 13.1.3.2?

        I hope you are not asserting that a result that is engineered to be, in the patent specification, “surprising” is sufficient for patentability.

        But yes, I agree that a substitution that brings nothing beyond what the PHOSITA would have imagined is likely not deserving of a patent.

        1. 12.2.1.1

          Care must be taken there MaxDrei, as you might (should) recall our own past conversation on the fact the US PHOSITA is indeed different than the PHOSITA according to your own sovereign’s definition.

          Here in the States we have a problem with a “slippery slope” and certain people pushing the patent system to be one that it takes a Flash of Genius to obtain a patent – something our Congress has explicitly rejected.

      2. 12.2.2

        The phrase “promoting progress” is NOT only limited to the linear progression or advancement in and of itself.

        That is not how innovation works.

        Instead, the phrase ALSO includes the mere notion of promotion (as in advertisement terms).

        I have supplied a fitting analogy in the past: not paving streets, but paving a parking lot.

        “Grown-ups” already know this about the phrase and son’t take such a “linear” childish view of that phrase. Of course, had you heeded my direction and educated yourself on innovation theory, you would likely have understood this basic principle. As it is, it is yet another optional aspect in patent law that seems to just give you fits (like certain forms of claims).

  5. 11

    With 160 comments on this case, it is surprising that none of them are eating crow for prior “unfair death squad” descriptions of IPRs? Not only is this another in an amazingly consistent long chain of Fed. Cir. sustained IPR invalidity decisions, it is a holding that the IPR was not tough enough!

    1. 11.1

      Curm: amazingly consistent long chain of Fed. Cir. sustained IPR invalidity decisions

      How long is this “consistent chain” of “sustained IPR invalidity decisions”? You seem to be keeping close track. Share your data.

      I’m pointed this out before but I’m happy to point it out again: be careful about promoting this silly “death squad” script. You see, some not-terribly-intelligent people take that kind of stuff seriously, so seriously that they end up putting it the briefs they file with the Federal Circuit. The judges don’t take kindly to that, and for good reason.

  6. 10

    Worth repeating this nugget from David on top:

    Per C.J. Roberts, May 2015:

    “[I]f there is a principle in our Constitution . . . more sacred than another,” James Madison said on the floor of the First Congress, “it is that which separates the Legislative, Executive, and Judicial powers.” A strong word, “sacred.” Madison was the principal drafter of the Constitution, and he knew what he was talking about. By diffusing federal powers among three branches, and by protecting each branch against incursions from the others, the Framers devised a structure of government that promotes both liberty and accountability.

    Preserving the separation of powers is one of this Court’s most weighty responsibilities.”

    And just – if not more – worth adding:

    That sense of sacredness is a foreign concept to several of those with whom I “tussle” with here on a regular basis.

    Each and every branch falls under that sacredness and no single branch is above it.

    While as David puts it that the Judiciary has a weighty responsibility, make no mistake that the Judiciary itself is bound by that doctrine.

    As I have succinctly pointed out, the doctrine applies to each and every branch – including ESPECIALLY the Judiciary. One only need revisit the Federalist Papers to grasp this.

    1. 10.1

      That sense of sacredness is a foreign concept

      It should be. The term “sacred” doesn’t show up in the Constitution. Perhaps Jefferson had something to do with that. Either way, it’s a good thing.

      In addition, nearly everybody in this country has no problem whatever with the Supreme Court stepping in to protect their “liberty” from greedy companies like Prometheus and Myriad. And why would they? That’s how the system is supposed to work.

    2. 10.2

      I’m not even sure what you’re pointing to here, but Roberts was on the court when both KSR and Alice were decided, so either he isn’t guilty of what you’re accusing him of, or he’s BSing you in at least one instance.

      1. 10.2.1

        or he’s BSing you in at least one instance.

        You do realize that this is not a “directed to me” type of thing, eh?

        And as I have already pointed out to you, the underlying issue here is that the scoreboard is broken, so indeed yes, very much so, is it that the Court is “BSing [everyone] in at least one instance

        Here’s a clue: the Court does not have authority to rewrite statutory patent law and insert its own philosophies.

        1. 10.2.1.1

          the Court does not have authority to rewrite statutory patent law and insert its own philosophies.

          On the other hand, if the Court inserts the philosophies of 99% of the non-k00k00bananas public into a decision interpreting a statute that, on its face, is ridiculous, only the k00k00bananas in the 1% are going to get all worked up about it..

          1. 10.2.1.1.1

            A non reply full of nonsense.

            No surprise really, Malcolm.

            And yes, you should know the difference between interpretation and writing law through the mechanism of common law evolution.

            If – as you state – the statute on its face is “ridiculous,” that means nothing as to the statute. The job of fixing that falls to Congress, and Congress alone. This is at the heart of the separation of powers that comes part and parcel of the Constitution.

            It matters not at all if YOU think that only 1% are going to get worked up about it. The Court just does not have the authority to insert anything into statutory law. You are wrong at the core here – and you should (if indeed you are an attorney) know it.

            All else from you is noise. An empty prattling not unlike an empty wagon pulled along an uneven sidewalk.

  7. 9

    Question:

    If inherency is the issue, can one include in his proof of what was known to one of ordinary skill at the time of the filing of the patent information that was not publicly available?

    1. 9.1

      Inherency is not limited by the notion of “publicly available” as you appear to be using that term.

      Inherency “IS” – you appear to want to use “time” as if what “IS” becomes what “IS” only at a later date instead of the actions of a later date (perhaps) revealing what “IS” at the earlier date.

      You either don’t understand inherency, or you do understand inherency and are attempting a ruse.

      The frying pan, or the fire – your choices are not so good.

        1. 9.1.1.1

          Whether or not that better choice is possible is simply not a part of the argument here.

          So, even if I agree with your new proposition, the argument here remains.

          In other words, inserting the notion of enablement is nothing but a smokescreen in regards to the current discussion.

      1. 9.1.2

        anon, let’s take an example. I claim a cold fusion device having an Xumpter. The reference is a cold fusion device. The question is whether it has an Xumpter.

        Xumpters are unknown at the filing of the application, but later they are become both known and enabled.

        Now, if the reference was describing something that was built, and that necessarily had an Xumpter, can we use this later knowledge to prove it?

        But if the reference was a publication, like Star Trek’s transporter. The only think needed to make it complete is an Xumpter.

        See the difference?

        1. 9.1.2.1

          As I posted at 9.1.1.1, my “seeing” simply is not germane to the present discussion.

          (further, there is NO indication that I ever did not “see” any argument made in regards to enablement)

          Clearly, Ned, as we have no doubt discussed before, the single paragraph in pre-1952 law that Congress decided to break up into the various parts of 101/102/[new]103/112 were ALL available to the Supreme Court for them to pick and choose where THEY wanted to “rest their arguments” on.

          It was the Supreme Court itself that did NOT choose to rest on 112.

          Why this is so simply was not captured, and in truth, is now merely a matter of counting angels dancing atop the head of a pin.

    2. 9.2

      If inherency is the issue, can one include in his proof of what was known to one of ordinary skill at the time of the filing of the patent information that was not publicly available?

      Inherency is not subject to prior art limitations. Not only can you cite “secret” evidence to prove inherency, you can provide post-filing evidence to prove inherency.

      1. 9.2.2

        Random, do you make any distinction if the reference is describing something that was actually built or some “idea.”

        1. 9.2.2.1

          Ned,

          Why are you trying to kick up dust with this “some idea?”

          Something is inherent or it is not inherent.

          That’s it.

          1. 9.2.2.1.1

            anon, it should only apply to things in public use or things that were built and tested.

            People describing ideas? Nothing is inherent in an idea.

            1. 9.2.2.1.1.1

              Your answer is a non-sequitur.

              There is no“idea” in the current discussion.

              Please stop kicking up dust.

        2. 9.2.2.2

          Random, do you make any distinction if the reference is describing something that was actually built or some “idea.”

          Either something inherently requires something or it doesn’t Ned. That is a binary fact. Whether any one document is sufficient proof of the fact is a separate issue. Of course any document can or can’t be sufficient based on how it talks about something. The only question is does A necessarily require B.

          If a document shows that A requires B, it is irrelevant whether it does so by discussing a concrete machine or an abstract idea. The fact that it may be more difficult to show inherency when you’re only talking about one concrete machine does not mean it can’t be shown.

  8. 8

    2 questions for everyone here, since there seems to be some possible disagreement on this:

    Suppose Claim 1 is “A system comprising: Elements A, B and C”

    Reference 1 teaches a system comprising Elements A, B and D

    Reference 2, analogous art, teaches Element C being used in a system similar to Reference 1 in place of Element D

    There is no question that a PHOSITA, at the time of filing, could have substituted C for D, and that the resulting ABC system functions as one would predict. Conversely, everyone in the art agrees that ABD is a vastly superior system to ABC in every conceivable manner, and that someone aware of Reference 1 would never worsen it by substituting C for D.

    Is Claim 1 obvious? Why, what is missing/present that controls the inquiry?

    Hypo 2: Suppose instead of Reference 2, Reference 1 specifically says “I originally posited ABC, but found it to be vastly inferior to ABD.” Is Claim 1 anticipated? Is Claim 1 obvious? Has anything changed from the first hypo, and if so what has been supplied/removed?

    1. 8.1

      Nice strawman.

      You kind of give it away with “Reference 2, analogous art, teaches Element C being used in a system similar to Reference 1 in place of Element D

      1. 8.1.1

        Nice strawman.

        That word, it does not mean what you think it means.

        Is it your contention that there is never a two-reference 103 where both the references belonged to the same field before? I would think that’s the most common kind.

        1. 8.1.1.2

          Random –

          When I parse out your :

          “Reference 1 teaches a system comprising Elements A, B and D

          Reference 2, analogous art, teaches Element C being used in a system similar to Reference 1 in place of Element D”

          It says that Reference 2 teaches A, B and C and therefore anticipates claim 1.

          1. 8.1.1.2.1

            Reference 2 merely applies D in a similar system, not in a system comprising AB. It was stated to eliminate the argument that there was insufficient evidence that D was a substitute for C or that C wouldn’t be enabled in that context.

            The first hypo asks you to assume that D is a known substitute for C, but since C is better in every manner, there is no “reason” or “motivation” to generate the claimed ABC, since one of skill who saw Reference 1 – and thus knew of ABD – would not choose to substitute C. Does that make ABC non-obvious?

            1. 8.1.1.2.1.2

              Reference 2 merely applies D in a similar system, not in a system comprising AB.

              That is not what your hypo states.

      2. 8.1.2

        Btw, not to speak for them, but Ken appears to think that Claim 1 is obvious (2.1.2.1.1.1), while AAA JJ appears to say it’s not (2.1.2.1.1.2). That’s why I posed the question. It’s not a strawman when people actually take the positions. But by all means keep being snarky and unhelpful rather than contributing, it’s kind of your thing.

        1. 8.1.2.1

          RG – I’d say that such a claim could well be obvious, provided that I agreed with your various characterizations such as “analogous” and “similar” in the given case.

          However, I think Max below makes an important point – very often something isn’t better in “every conceivable manner,” but rather just has the best mix of tradeoffs (e.g. cost, size, speed, availability, ease, etc.) for a given context. (In fact, if there’s truly *no* way/situation that something could ever be preferable to the prior art, then I may argue it has a 101 utility problem.) If there is in fact some potential advantage to the substitution, though, and if nobody thought of doing it before, then I do think it’s presumptively nonobvious unless someone can show otherwise.

          Regarding your hypo 2, yes, by definition that’s anticipation – because novelty only cares about what was disclosed and does not consider contextual matters (such as teaching away, etc.).

          1. 8.1.2.1.1

            Thanks for the nod Ken. Have you noticed how obviousness is handled one way for engineering arts and a different way in chem/bio. I expect some here to argue for argument’s sake that enginneering is not “predictable” while chem/bio is. But putting that posture to one side, we have here on this blog a familiar voice piping up from the depths of the chem/bio silo that everything is obvious unless it delivers a surprising or unexpected result.

            Do you agree that, when it comes to inventions being made at the engineering end of the playing field, that test is not fair or reasonable?

            And if it isn’t fair, what is? I say TSM, but TSM done the way they do it at the EPO. I think that is compatible with KSR and, in the utterances coming out of the CAFC, I increasingly see echoes of the EPO Approach, so I think they know about it and have sympathy with it.

            Why then doesn’t the Federal Circuit do obviousness that way? Is it because no advocate has yet presented its obviousness (or non-obviousness) case to the CAFC in EPO PSA TSM style? Might that one day be worth trying, do you think?

            1. 8.1.2.1.1.1

              one way for engineering arts and a different way in chem/bio.

              This exhibits a fundamental flaw in the understanding of what engineering means.

              1. 8.1.2.1.1.1.1

                (albeit, that criticism may be muted with MaxDrei’s “way-too-polite-as-to-be-almost-unrecognizable” criticism of “everything is obvious unless it delivers a surprising or unexpected result.“)

                MaxDrei – your point should be made forcibly – not by “tiptoeing” around the tulips, as it were.

                1. Anon, I often agree with you on this board – but please don’t criticize someone for civility; perhaps I’m just think-skinned, but the often unduly harsh tones around here do cause me to take more breaks from visiting than I’d prefer.

                2. Ken,

                  The criticism is less for one of civility, and more for one of “treading too lightly when the object is one of typical ec(h)osystem accord”

                  One can be forceful and fully civil. But it is more than a bit naive to not recognize that certain posters “align” with their major views, and that disagreements among these people are NOT treated the same (by these people).

                  MaxDei’s point here is thus called out – not for being incorrect that certain posters put far too much emphasis on some type of “iron-rule” “everything is obvious unless” position, but for the double whammy of mis-stating (through what appears to be obvious misunderstanding) of what engineering means, AND the attempted “soft handling of those who express certain “opinions” and the historical nature that those expressing those opinions just so happen to also come from the (mis-labeled) “engineering” fields.

                  One of the aspect s of my low tolerance is that this is a well-worn tactic, not just by any old sOmeone, but rather, it is a tactic by a select few sAmeones.

                3. MaxDei’s point here is thus called out

                  Are you sure you couldn’t write eight or nine more paragraphs on this fascinating subject?

                  Wow.

            2. 8.1.2.1.1.2

              Max,

              Disparities between electrical/mechanical vs. chem/bio (all of which I’d say could fall under “engineering,” but that’s a quibble) seem to arise often, both on the obviousness front as well as the enablement front. I believe predictability per se is not a fair test for obviousness, but should only be one factor, and this is particularly so for electrical/mechanical inventions (which are generally more “predictable” in the first place).

              You may be right that we’re essentially headed for a de facto version of EPO-style TSM (which I agree would be consistent w/ KSR), albeit perhaps with different articulation. It’s funny – being generally pro patent myself, I used to view the European approach as “stingy,” but now the goal posts have shifted around here so much that I think I’d be relieved if that’s where we settled.

              1. 8.1.2.1.1.2.1

                Ken, thanks again. Because you can (still) predict what will happen in engineering better than you can in pharma, i) the drafting style you need for pharma is different from that in mech or EE and ii) the obviousness debate is different. While it is still legit to talk in pharma about surprising or unexpected results, it is hard to do that in mech or EE. At least in mech and EE, predictability is an unfair way to measure obviousness.

                Grasping EPO PSA is like learning to ride a bike. Everybody thinks they can do it, till they try. It takes practice to do it at all, never mind proficiently. Most patent attorneys hear the two words “problem, solution” and think that, with that, they “get” EPO-PSA. They don’t. It is like an elegant mathematical proof. Once you have got it, you marvel at its simplicity, elegance and fairness. Trouble is, High Court Judges (starting with those in England) are loth to take lessons in patent law from a mere Patent Office, and a civil law one at that.

                1. This “difference” is just not real.

                  Not in any meaningfully legal manner.
                  Not in any meaningfully human endeavor manner.

                  All that you have in those arts is just a greater lack of understanding of the underlying physical mechanisms. Such should not be “mystified” in some type of “special treatment” when it comes to rewarding innovation.

            3. 8.1.2.1.1.3

              everything is obvious unless it delivers a surprising or unexpected result.

              Do you agree that, when it comes to inventions being made at the engineering end of the playing field, that test is not fair or reasonable?

              What’s “unfair” or “unreasonable” about a requirement for an unexpected result prior to receiving a 17 grant of exclusive rights on your “innovation”?

              1. 8.1.2.1.1.3.1

                ^^^ and this is the person who de facto poo-poohed the notion of Flash of Genius or its corallary, Ooops, what have I got here?

                And then whined about being called out for it?

                Yes “folks” try to believe that this is also the person who uses the “born yesterday” meme….

            4. 8.1.2.1.1.4

              Formatted correctly this time:

              MD: everything is obvious unless it delivers a surprising or unexpected result.

              Do you agree that, when it comes to inventions being made at the engineering end of the playing field, that test is not fair or reasonable?

              I’m not taking a position one way or the other, MD, but can you explain exactly what’s (1) “unfair” and (2) “unreasonable” about a requirement for an unexpected result prior to receiving a 17 year grant of exclusive rights to practice your “innovation”?

              1. 8.1.2.1.1.4.1

                Can I explain? Yes, I think so. With some inventions, hindsight can explain how the technical effect is a consequence of combining the technical features recited in the claim. In that sense, The “results” might not have been predicted, but they were certainly “predictable”. With chem/bio though, they were never “predictable”. Just because the performance of the engineering subject matter of the claim was “predictable” does not make that subject matter obvious.

                1. With chem/bio though, they were never “predictable”.

                  Well, that’s incorrect. If that’s your premise (and — again — it is wrong), maybe you should think a bit more about your conclusion.

                  Just because the performance of the engineering subject matter of the claim was “predictable” does not make that subject matter obvious.

                  Post-KSR, the predictability of the utility/benefit of the claimed “new” combination is going to present a problem, particularly when the properties of whatever “new” things you are using in your combination are unchanged in that combination. If that’s all you’ve go to work with, you have a big 103 problem.

                  As I already mentioned: there’s nothing “unfair” or “unreasonable” about that result in that circumstance. I noticed that you didn’t address that issue in your response. You may not like the fact (for whatever reason) that this situation makes it more difficult to get a patent but it’s not “unfair” or “unreasonable”.

                2. Thanks for that answer MM. I see we have a different understanding of “predictable”. But if we were debating a real claim, I doubt there would be much between us.

                  One area where there is a difference between us is, I collect, when the claim recites “Molecule X”. I think allowing a purpose-unlimited claim is allowing too much. What is not obvious is not the molecule per se but the “unpredictable” effects it causes.

            5. 8.1.2.1.1.5

              I expect some here to argue for argument’s sake that enginneering is not “predictable” while chem/bio is.

              I would think it’s exactly the opposite. The courts have routinely noticed that mechanics are predictable. Electricity is generally predictable. Software by definition is always predictable. It’s chem/bio, high level physics and quantum mechanics we don’t understand well, right?

              If I apply a pulley and lever system, that pulley and lever system is going to function the same in all contexts. If I write a code module to sort data fields alpabetically, it will do that regardless of whether the data I’m sorting is in the context of child names or sports terms. But if I introduce compound A to compound B at a certain temp/pressure, it may function totally differently at a different temp/pressure, right?

              To me, software should be hard to patent (and when its mere information processing, nearly impossible) while chem/bio is much easier to patent. That being said, I’m a software examiner, not chem/bio. But nobody spends millions on software “research” – they pay programmers to program in the same way you can pay writers to write. Bio performs research.

              Is it because no advocate has yet presented its obviousness (or non-obviousness) case to the CAFC in EPO PSA TSM style?

              We already had a case about TSM and it was already decided. The CAFC can’t contradict the Supreme Court.

              1. 8.1.2.1.1.5.1

                Software by definition is always predictable.

                LOL – what imaginary world do you live in that exists without glitches and crashes?

                1. Irrelevant to the analysis. Of course any person can screw up while practicing any art. The theoretical PHOSITA doesn’t make mistakes. If the art knows how to do X, the PHOSITA can perform X.

                2. what imaginary world do you live in that exists without glitches and crashes?

                  “B-b-b-ut the claim doesn’t cover software that d-d-d-oesn’t work.”

                3. irrelevant to the analysis” you claim?

                  Hardly.

                  No such thing as the “perfection” you imagine so easily to be part and parcel of you odd pet theory of “predictability.”

                  You simply reach too far with your theory and your “logic,” yet you refuse to embrace what that very “logic” must bring: the end of all patents (the Big Box of electrons, protons, and neutrons – by your logic – make everything obvious, because that Big Box certainly has the “could” and your dismissal of the actual “would” through mere hindsight and whatnot applies to anything that might ever come out of the Big Box, which is to say, anything at all.

                  You want to say “irrelevant,” but only if your “theory” too, is itself irrelevant.

                  The two are simply tied together inextricably in the very “logic” you wish to use.

          2. 8.1.2.1.2

            Ken: In fact, if there’s truly *no* way/situation that something could ever be preferable to the prior art, then I may argue it has a 101 utility problem

            The utility problem comes up well before the “no way situation” you refer to.

          3. 8.1.2.1.3

            (In fact, if there’s truly *no* way/situation that something could ever be preferable to the prior art, then I may argue it has a 101 utility problem.)

            Oh I don’t think that is the case. You’re required to disclose your best mode, you’ve never been required to CLAIM your best mode and only your best mode. Certainly sub-optimal modes have utility, they just don’t have the magnitude of utility that an optimal mode has.

            I think Max below makes an important point – very often something isn’t better in “every conceivable manner,” but rather just has the best mix of tradeoffs (e.g. cost, size, speed, availability, ease, etc.) for a given context.

            Isn’t this just a statement that there is always a motivation to combine though? If something isn’t better in every manner, and in any particular context one thing may be more valuable than another, doesn’t that just mean every combination is obvious?

            I mean you generally don’t want to cut off your leg, but if its necessary to prevent gangrene, you’ve got a motivation there don’t you? You generally don’t want to cut off your leg, but if you need to lose weight it would certainly achieve that. What makes the first motivation proper and the second one improper? Your personal opinion? A PHOSITAs? A PHOSITAs in what context, because I can certainly think of situations where having less weight might be preferable to keeping your leg, they’re just not very common. I’ve never heard of that motivation-weighing analysis being done before.

            So either we weigh motivations, or there’s “very often” a motivation (and thus, very often there is obviousness) or there is in fact no motivation a larger amount of the time than one would think.

            1. 8.1.2.1.3.1

              Isn’t this just a statement that there is always a motivation to combine though?

              once again, the extent of this logic is merely the Flash of Genius Special**

              **which means the traditional Flash of Genius or the serendipitous oops, I blindly stumbled into something modes. Such logic clearly does not comport with the US patent system.

              1. 8.1.2.1.3.1.1

                “anon” **which means the traditional Flash of Genius or the serendipitous oops, I blindly stumbled into something modes.

                You make it sound as if there are no other options besides those two extremes. That’s incorrect.

                For example, there’s the hard work of directed research and experimentation and there’s also being “more clever than other people who tried and failed”. Those options come immediately to mind.

                1. I make nothing of the sort, Malcolm.

                  I merely point out the fallacy embedded in the “logic” of those who wish to use that logic.

                  By the by, your “hard work of directed research and experimentation” is nothing more than “engineering” and planning and/or let’s-stumble-in-this-direction. It breaks down to the very things that you would still deny protection to (based purely on your own “philosophies”).

                  The notion of “more clver than other people who tried and failed” does not save you – all that that means is that others were simply “more unlucky” in their stumbling, or had more pieces to put the jigsaw puzzle together – still not enough to overcome anything less than a… Flash of Genius.

                  You need more than that to “come to mind” – much, much, much more.

            2. 8.1.2.1.3.2

              (In fact, if there’s truly *no* way/situation that something could ever be preferable to the prior art, then I may argue it has a 101 utility problem.)

              RG: “Oh I don’t think that is the case.”

              There’s certainly a utility argument. Read the statement again. It describes a rather extreme circumstance. This isn’t about “best mode.” This is about “nobody would ever use this unless it was the last option on earth.”

              1. 8.1.2.1.3.2.1

                This is about “nobody would ever use this unless it was the last option on earth.”

                The fact that it is an option at all means it has utility. The fact that it is the worst option simply means it has poor utility. The question is whether nobody would use it EVEN IF IT WAS the last option on Earth.

                Most people don’t view cannibalism as a particularly good option, but you set people in the right circumstance and they will. That’s merely because there are better options available, not that cannibalism doesn’t have utility.

                1. Random,

                  You actually are on to something here…

                  Of course, this merely fits better with my own “pave a parking lot and not a street” analogy, but hey, you shoulld be congratulated for taking baby steps in the right direction.

        2. 8.1.2.2

          Random,

          You only assume that the snark is unhelpful.

          That’s because your view is already a foregone conclusion and you are not interested in understanding anything else than what you want to say.

      1. 8.2.1

        Hypo 1 is Hotchkiss v. Greenwood.

        It’s the opposite. In Hotchkiss the claim was to a better-suited item (porcelain > metal). Here the claim is directed to a worse-suited item (C < D). Does that matter?

        Hotchkiss is an 1850 case. Does obviousness change the outcome?

        1. 8.2.1.1

          Random, clay for knobs were known. The use of clay in the particular door knob was new, but there was no new functional relationship to the mechanism.

          From Hotchkiss:

          “And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter’s clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise; as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.”

          Everything claimed was old. The shank. The relationship of the knob material to the shank. The use of clay for door knobs.

          “But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use; and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.”

          And, the use of that material for knobs was known.

        2. 8.2.1.2

          Random, when everything is “known” including the substitutability of one thing for another, there really is no novelty at all.

          Now consider what the court said if it was not known to use clay for knobs. It said that that itself could be an invention.

          1. 8.2.1.2.1

            Random, when everything is “known”

            (…and let’s explore the logic of the everything is known analogy of the “Big Box of Electrons, Protons, Neutrons”…. )

            1. 8.2.1.2.1.1

              let’s explore the logic of the everything is known analogy of the “Big Box of Electrons, Protons, Neutrons”

              Go ahead. Let’s see your “logic”, “anon.’

              Apply your “logic” to some hypothetical claims and real world fact scenarios so we can see how your “logic” works. That would be refreshing.

              1. 8.2.1.2.1.1.1

                Asked and answered Malcolm.

                The problem is not on my end.
                The problem is on yours and the lack thereof of recognizing what I point to.

                1. LOL.

                  Two comments up you were eager to “explore” your awesome theories, “anon.”

                  Go ahead. Seems reasonable for you to start, given that you’re the only one who understands your “logic.”

                  Asked and answered

                  LOL. Nice try but you haven’t answered a thing, “anon.”

                2. Still eager Malcolm – but your silly question is not new and has been answered previously.

                  (your not understanding does NOT mean that the answer was not given)

                3. No, MM is correct here.

                  If you’re not going to claim some sort of structural relationship, don’t go expecting it to be read into the claims from the spec. If cloth, rope and wood made the first plane, don’t expect a claim to “A system comprising: cloth rope and wood” to be non-obvious if each of those pieces preexisted just because you’ve disclosed in the spec how to fashion them into a plane.

                  Similarly, if you point out that all of those things comprise PNE, a claim to “A system comprising: PNE configured to be an airplane” is going to be obvious over PNE unless you construe it to invoke 112f to invoke the structural limitations from the spec.

                4. Malcolm is most definitely NOT correct here Random.

                  Not by a mile.

                  You seem rather mistaken as to claims ONLY being “structural.” You are aware, no doubt, of the Act of 1952 which opened wide the ability of multi-element claims to use language sounding in function (and to do so outside of the optional 112(f) path), right?

                  Please tell me that you have paid attention, as I have presented the background from Congress, Federico’s commentary and even case law – not to mention our own beloved Prof Crouch, who coined the phrase Vast Middle Ground into which Congress opened as a fully legal option of formatting claims.

                  This is, after all, the law by which you are ethically bound to do your job.

                  And by the by, your “airplane” meme is directed to the wrong person.

                5. You seem rather mistaken as to claims ONLY being “structural.” You are aware, no doubt, of the Act of 1952 which opened wide the ability of multi-element claims to use language sounding in function (and to do so outside of the optional 112(f) path), right?

                  But what does the operation of that statute do, on it’s face? The functions SHALL be construed to cover the structure from the spec. The claim is ultimately limited to structure.

                  Please tell me that you have paid attention, as I have presented the background from Congress, Federico’s commentary and even case law – not to mention our own beloved Prof Crouch, who coined the phrase Vast Middle Ground into which Congress opened as a fully legal option of formatting claims.

                  I don’t know how you can possibly consider yourself to be in the “middle ground” of anything when your disclosure is “I claim matter in any configuration to achieve this functional result.” That’s even more vague than Morse’s claim which at least further limited matter to machinery. Assuming there is a VMG, a claim to protons, neutrons and electrons ain’t it.

                  But what other readers need to understand (since it’s clear you can’t get moved off this) is that the concept of a vast middle ground predated Nautilus, which specifically required reasonable certainty. VMG no longer helps you, because it no longer matters if you are “more that purely functional” you have to be more that purely functional and incapable of being more precise. There is only a small fraction of the VMG that is still a valid claim scope.

                6. The functions SHALL be construed to cover the structure from the spec. The claim is ultimately limited to structure.

                  Nope – wrong. You made the mistake of thinking that I was talking only about 112(f) – I was not. That optional>/i> path is for elements PURELY functional.

                  I don’t know how you can possibly consider yourself to be in the “middle ground” of anything

                  LOL – That was not MY coined phrase – you are not paying attention

                  As for Nautilus – sorry Pal, but that decision does not change what Congress did in 1952. That’s one H of an elephant in a mousehole you are trying to pull with that line of “logic.”

    2. 8.3

      Very helpful hypo, Random, thanks. I look forward to an enlightening discussion.

      Of course, under the EPO Problem and Solution Approach there isn’t even an issue. But that is because at the EPO we know the answer to the question “In what way obvious”.

      I liken it to the descriptiveness issue in trademark law, when a mark is said to be disqualified from registration because it is descriptive. You cannot say whether the objection is made out till you know what goods (or services) are recited on the application for registration.

      Reverting to your hypo, the answer might change depending on whether ABC is much cheaper than ABD and, although it cannot perform to the standard of ABD it does perform to a standard high enough for at least some purposes.

      Suppose you are a surgeon trying to save a life. Your AB-D tool is broken, but you have a -C tool to hand. You could quickly and easily swap the -D tool part for a -C tip and carry on with the operation. Obvious to do so? Or not obvious to do so?

      1. 8.3.1

        MaxDrei provides an important aspect: In The Art.

        How often though, is the Art under discussion simply (and mindlessly) denigrated, on the way tot he ends of a “sniff test” and a de facto view?

        1. 8.3.1.1

          MaxDrei provides an important aspect: In The Art.

          This is true, though I don’t know of a case suggesting that the person of ordinary skill in the art is performing the most common or conventional method of the art.

          A doctor doesn’t normally use a pen to open a blocked airway, but they can. If one can posit an unlikely situation that would occur in the art, does that apply for obviousness? How unlikely does it get before it becomes merely farsical? Does that ever happen?

      2. 8.3.2

        Reverting to your hypo, the answer might change depending on whether ABC is much cheaper than ABD and, although it cannot perform to the standard of ABD it does perform to a standard high enough for at least some purposes.

        Does something need to in fact be cheaper, or is it sufficient to state the simple fact that C is not D and therefore it’s possible that C is cheaper, or that C may become cheaper in the future, or even that a PHOSITA may have C lying around when they don’t have D.

        It seems to me if we follow your suggestion to its conclusion we would reach a situation where every combination is obvious (provided all the prior pieces existed) because it seems there would always be a motivation.

        Suppose you are a surgeon trying to save a life. Your AB-D tool is broken, but you have a -C tool to hand. You could quickly and easily swap the -D tool part for a -C tip and carry on with the operation. Obvious to do so? Or not obvious to do so?

        Well of course obvious to do so, the question is does a highly unlikely scenario carry weight in the obviousness analysis. When we talk about a person of ordinary skill asking whether he would make the modification/combination, we are placing him at a workbench and not in some sort of uncommon Macguyver-like situation, right?

        1. 8.3.2.1

          It seems to me if we follow your suggestion to its conclusion we would reach a situation where every combination is obvious“…

          Wow, you are mixed up.

          It is your own “logic” Random that leads to that very same ends (and hence, why you need to look again at the “logic” you so desperately want to have in place).

    3. 8.4

      Just so I can be clear where I’m coming from in this discussion:

      It is my contention that a good reading of KSR contends that the only thing you need to sustain a charge of “obviousness” to a claim is to perform the Graham procedure where you determine what the level of skill is and the differences between the prior art and the claimed invention, and then some sort of rationale, supported by facts where need be, that the claim is obvious. The holding of KSR, imo, is that any attempt to require any particular means of proof is simply counter to the 103 statute, since Congress never said that obviousness had to be proven in any particular way.

      Because of this, the “TSM test” or finding a “reason” for a combination or modification is merely an instructive, but not a mandatory, act. In other words – while the CAFC did correctly take away the holding from KSR that you do not need a TEXTUAL TSM, they failed to take away the holding that you do not need a TSM at all. A TSM is one route through which the prior art may reach the instant claim scope. It is not the only route.

      My personal belief to my hypos above is that once the art is capable of switching D out and putting C in, and once C is recognized to produce the results it actually does produce, the claim becomes obvious. The fact that there is no motivation to perform worse is irrelevant, because motivation is only one mechanism by which obviousness is found. This is because the Supreme Court has already spoken to this particular type of situation:

      The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.

      That paragraph is describing Adams, which ultimately found non-obviousness because there was a prior teaching away not evidenced by my hypothetical.

      My conclusion avoids some of the rather odd conclusions that pop up above – where people are talking about current economic efficiency (i.e. “it’s cheaper”) as a motivation as opposed to some sort of teaching to the art qua art. To me it seems unlikely that a patent should issue or not issue based upon the current economic status of some constituent part. If your machine uses oranges I find it difficult to believe a patent should issue based upon how cold the spring was in Florida. (And if not the current economic value, then is not everything obvious? Since at some point in the future certainly any element C COULD be cheaper than some other D.)

      If I could harken to my alma mater here – this is one situation where I think the MPEP gets things right. If you look at MPEP 2143, you’ll see how there are multiple options for proving obviousness. TSM is an option. There are other options, many of which require proofs that have nothing to do with a motivation or reason. I would submit that even this list is not exhaustive, because in any given fact pattern any given argument could be persuasive, and the obviousness inquiry cannot be pigeonholed into any particular method of proof.

      For example, once you construe the level of skill in the art, the prior art and the claimed invention, I see no reason why post-filing dated evidence is not admissible if it meets the usual standard (more probative than prejudicial). The Supreme Court has never said anything that suggests that post-dated evidence can’t be used, merely that there cannot be hindsight bias in the analysis.

      Take the hypo above. Suppose that within one week of the applicant filing to claim ABC, and without any public disclosure, every other entity in the market also files a claim on ABC. Are not the filings by every other member of the art indicative of the fact that the invention must be obvious? Everyone was capable of thinking up and enabling ABC without any teaching from anyone else. Not only is that proper evidence of obviousness, it’s in fact the best evidence of obviousness, since it literally demonstrates what a PHOSITA did. Yet the CAFC would say that this evidence is inadmissible because it’s not a “prior motivation” to make the modification.

      The CAFC is simply flawed in their application of KSR. It’s on display here, where the court recognizes that simple substitution applies, but then seeks a motivation anyway.

      1. 8.4.1

        Yes, I agree that “USA-TSM” is not a reliable obviousness filter because from time to time it lets stuff through which in actual fact is obvious.

        But that is not enough to invalidate the particular EPO implementation of a hindsight-free TSM test for obviousness. EPO-PSA, competently wielded, weeds out all the obvious stuff.

        What a shame then, that so few patent people take the time and trouble to grasp it.

        1. 8.4.1.1

          I would daresay MaxDrei, that your lament includes you.

          Many times several people on this thread have pointed out defects in your “beloved” system for which your only answer is to clench tight your eyes and “not see” the issue.

        2. 8.4.1.2

          But that is not enough to invalidate the particular EPO implementation of a hindsight-free TSM test for obviousness. EPO-PSA, competently wielded, weeds out all the obvious stuff.

          I’m not even sure what the EPO test is, but my understanding is that it is based upon a requirement that the US doesn’t have, namely a Jepson-style claim structure, right?

          1. 8.4.1.2.1

            Random,

            I “lost” you on the “Jepson-style” comment.

            You are aware that the US does in fact have such a style, right?

          2. 8.4.1.2.2

            Jepson-style disclosure I mean. In other words you have to nominate what the art was and what is different. We Examiners have to guess what the applicant believes he did differently.

            1. 8.4.1.2.2.1

              I really do hope that you know of the patent profanity involved with applicants including prior art and characterizing that art in any way, right?

              There is in fact no such requirement of applicants to “set the stage” of what is prior art.

              And for very good and pragmatic reasons.

          3. 8.4.1.2.3

            link to documents.epo.org

            The Link will take you to a tutorial on EPO PSA.

            It is a common misconception, that an EPO c-i-t claim is like a Jepson claim. It looks like one but isn’t one. It is not compulsory. A large minority of EPO patents issue without this claim structure. The EPO Examiner selects the “prior art starting point” when writing the obviousness objection. Applicant responds.

  9. 7

    I did not see it cited, but this could not have helped – in Belden’s ‘503 at col. 5, ll. 1-5: “Cables of the previously described embodiments, can be made by a three-part die system. However, methods of making such cables are not limited to a three-part die system, as more or fewer die elements can be constructed to incorporate the features of the invention.”

  10. 6

    “However, the analysis in the analysis that followed, the court appeared to point out a series of incorrect factual conclusions and perhaps suggests that ‘motivation to combine’ should truly be considered a question of law rather than of fact.”

    The first paragraph of page 12 of the decision suggests otherwise, as the court clearly recognizes that whether there exists a reason to modify/combine the prior art is a factual question that must be supported by a preponderance in order to arrive at the legal conclusion of obviousness.

  11. 5

    Ned – it’s a quiz:

    Does the de novo review by the Article III CAFC of the Article I PTAB’s determination of the question of law cure the separation of powers violation?

            1. 5.1.1.1.1.2

              Patlex did not hold that only patent validity was a public right as “confirmed” by Joy Tech. It held that a patent was a public right because it was created by statute and because validity was a public concern. Joy echoed this:

              “The Patlex court stated that the issuance of a valid patent is primarily a public concern and involves a “right that can only be conferred by the government” even though validity often is brought into question in disputes between private parties.”

              What is “conferred by the government,” of course, is a patent.

              Just listening our oral argument one sees that the government position is unchanged from Patlex. They reiterated that a patent was a public right because it is created by statute and affects the public interest for any number of additional reasons besides validity — that patent create monopolies, just for example.

              Cooper never effectively addresses the public rights issue, but tries to ignore it by suggesting Patlex and Joy are confined to reexaminations. Perhaps he is trying to provide the Circuit Court a way out of a direct overrule of Patlex. But I really don’t think that is the way the Federal Circuit will come out given the very forceful government position.

              We, of course, took Patlex on directly by demonstrating that actions litigated in the courts of England at common law are not public rights under controlling Supreme Court authority, and that patent revocation actions were litigated in the courts of England.

              1. 5.1.1.1.1.2.1

                I see the merits in both approaches.

                On the one hand, you are correct. A particular claim either is or is not a public right. If reclassified, reexamination necessarily falls as well (but may remain per the consent ruling). The CAFC’s manipulation of the SCOTUS’s already-murky public rights rule of law has created tremendous ambiguity. Government as a party cannot apply to reexamination; it applies where the Government is an active litigant only – otherwise, it would swallow the exception altogether (i.e., per this reading, the Government is a party any time it participates as an administrator in the resolution of a particular claim).

                On the other, the “technical” issue before the courts is the constitutionality of IPR, not reexamination. Where authority is in tension, an appellate court may read the inferior holding as narrowly as possible in order to preserve both decisions. Of course, this approach drops at the SCOTUS level.

                1. David, I wrestled with this for quite a while before I simply gave up on a clear doctrine of what IS and what IS NOT a public right if an action was not litigated in the courts of England at common law. Reliably, the only thing that are NOT public rights are actions litigated in the courts of England at common law.

                  When one begins to approach the issue from the view of what IS a public right, one gets into a quagmire.

                  Now think about the anti-trust laws. Clearly monopolies and restraints of trade are of strong public interest. There were no analogous actions at common law. Nevertheless, the Supreme Court has held that the accused has a right to trial by jury. Such an action cannot therefor be a public right.

                  If the government has its way, all these cases are going to be overturned, at least implicitly, vastly expanding government rights to any new right or any new action created by congress. Any. Only traditional actions, like tort actions, would be the stuff of Article III.

                  I just have hard time believing that the Supreme Court would ever consider going that far.

                2. In my view, Granfinanciera and Stern explain the core rule: where a right currently exists at federal statute, look to see whether that right has antecedent at law or equity.

                  This is the stunning element of the CAFC’s holding, and the DOJ’s argument too, the disregard for the extensive SCOTUS law notwithstanding.

                  When it comes to patent validity, the history at law or equity is extensive.

              2. 5.1.1.1.1.2.2

                Ned is correct — we have a different approach that avoids asking the CAFC to overrule its own prior precedent. And David is correct, we are latching onto the inclination of inferior courts to interpret their own prior cases narrowly if doing so lets them reach the correct result.

                To be clear though, we point out that the language in Patlex and Joy do not say that a “patent” is a public right, but that the “grant” of a patent is a public right. Check it out — such verbiage (or its equal) is in every expression of the concept. Everyone back then pretended that reexamination is re-doing the “grant,” what with it being both ex parte and involving examinational (not adjudication). Viewed this way, it’s a cinch to distinguish from adversarial adjudication in IPRs.

                Our respective constitutional challenges bring up the core issue in the same way. McCormick Harvesting and all the SCOTUS land and invention patent cases leading up to it cannot allow IPRs or CBMs to exist in their current form.

                We treat the private / public rights issue as inapplicable to asking whether McCormick Harvesting applies. After all, the doctrine existed for 40 years by 1898, and it received no mention in McCormick Harvesting. That said, we are prepared to address the more recent holdings (Stern, etc.) in Reply.

                FWIW, amicus filings supporting unconstitutionality will be due in 15-1925 this Monday or Tuesday (depending how you count).

                1. Robert – thank you for the excellent input. Truly rare to see lead counsel participate publicly like this.

                2. Thanks Robert.

                  For those who haven’t read the brief it argues

                  1. Patlex and Joy primarily concerned, and are limited to, reexaminations.

                  2. The Supreme Court repeatedly held that the executive cannot revoke patents.

                  3. IPRs are essentially the same as invalidity counterclaims. Patent validity counterclaims have a jury trial right and therefor must also be tried in Article III Courts. Therefore, IPRs are unconstitutional.

                3. Ned – that is very true.

                  Per C.J. Roberts, May 2015:

                  “[I]f there is a principle in our Constitution . . . more sacred than another,” James Madison said on the floor of the First Congress, “it is that which separates the Legislative, Executive, and Judicial powers.” A strong word, “sacred.” Madison was the principal drafter of the Constitution, and he knew what he was talking about. By diffusing federal powers among three branches, and by protecting each branch against incursions from the others, the Framers devised a structure of government that promotes both liberty and accountability.

                  Preserving the separation of powers is one of this Court’s most weighty responsibilities.”

                4. Viewed this way, it’s a cinch to distinguish from adversarial adjudication in IPRs.

                  Other than the incompetence, what’s the big “distinction” between the PTO correctly determining “on its own” (using only agency hires) that a junk patent is junky versus the PTO enlisting the volunteer help of a citizen to provide input and guidance?

                  The public certainly doesn’t care that junk patents are less likely to be tanked when only the patent owner gets to decide that they are junky. Neither does Congress. Why would they?

                  I keep wondering what exactly it is you guys are hoping to achieve. You’re not saving the Republic. On the contrary, the best you can hope for is to make it temporarily more difficult to tank a junky patent until another fix comes in (and that’ll happen quickly).

                  But you won’t like that fix either, regardless of the flavor it comes in.

                  This is all reminds me a lot of the “101 isn’t a defense to infringement” theatre and the “no dissection ever!” theatre that we had to endure until the huffers wore themselves out. What’s the point exactly? I mean other than the short-lived “victory lap” that your client will take.

                5. You want cynical, David?

                  Take that next step to what happens if either Robert of Ned prevail.

                  This law – the AIA – was explicitly drafted to NOT be separable.

                  That is a direct action of Congress – for this law.

                  The good ship AIA Titanic was expressly built without bulkheads – and there be icebergs about.

                6. David,

                  That sense of sacredness is a foreign concept to several of those with whom I “tussle” with here on a regular basis.

                  Each and every branch falls under that sacredness and no single branch is above it.

                7. I wrote: The public certainly doesn’t care that junk patents are less likely to be tanked when only the patent owner gets to decide that they are junky. Neither does Congress. Why would they?

                  And to be clear: when I say “the public and Congtess doesn’t care” I mean that “neither the public or Congress would intentionally design a system in that way”. I don’t think I need to explain why that’s the case but I’m happy to do that.

                  This gets back to the silly whining about “Giant Google writes our patent laws!” Guess what, whiners: if my neighbors making $50k or less a year write our patent laws you’re going to like them even less.

                  Short version: cut the cr ap already.

                8. MM : “You’re not saving the Republic. On the contrary, the best you can hope for is to make it temporarily more difficult to tank a junky patent until another fix comes in (and that’ll happen quickly).”

                  Between AIA and TPP, The Big Multinationals are in fact out to ruin the Republic.

                  So yeah “Saving the Republic” from the self & shortsighted interests of big corporations like Google should be the priority.

                  If AIA /IPR tanks : I think there are enough Democrats and Republicans to make sure that something similar is NOT going to pass and be signed in law anytime soon.

                  as for your definition ” that’ll happen quickly ”
                  If your time frame is 2-3 years NO way there is a new AIA .. if it is 10/15 years I would say may be.

                9. MM, regarding junky patents, I think Congress needs to focus on why we got them in the first place. The courts are dealing quite well with them as we speak. The Federal Circuit used to be a big problem, but the Rich era is receding.

                  For the future, congress should consider whether 112(f) is permitting claims that do not literally define the invention within their four corners. We both know that is exactly what it permits, and this is wrong.

                  Next, congress should enact the venue reforms suggested by Chief Judge Wood so that the Federal Circuit no longer has a monopoly on patent law. Her reforms also eliminates forum shopping by circuit, which was the alleged reason for the creation of the Federal Circuit in the first place.

                  From big picture point of view, the structure of our government, the separation of powers, was put in place for a reason. The judiciary is independent of the political branches, and this is the best guarantee of a fair hearing.

                10. Ned,

                  Independence does NOT mean above the law.

                  You myopic views and “6-is-an-Einstein-because-he-agrees-with-me” are part of the problem here.

                  The formulation of the CAFC was NOT limited to merely forum shopping. You keep on wanting that to be a driver instead of a symptom.

                  Just like your 112(f) windmill chase: you miss the understanding of what Congress did in 1952, and think that the opening the door of terms sounding in function is somehow limited to section (f). As I have explained- even using Federico – that is just NOT the case and the use of functional terms is permitted throughout the law of 112 as written by Congress. The option of 112(f) deals with TOTALLY functional terms – as the good professor’s coined term indicates though, the Vast Middle Ground STILL remains quite apart from 112(f) and what is inherent in what Congress did in 1952 still must be accepted for what it IS.

                11. Ned, if looking to what was tried in ancient English common law courts or not is essential to your argument, then don’t you also have to address the question of whether Parliament had the authority to change that to alternatively allow patent validity challenges in another, lower, court? And in fact is that not what has done in England in modern times?

                12. BS: “Saving the Republic” from the self & shortsighted interests of big corporations like Google should be the priority.

                  Even if I were to agree that this was true, loosening up the patent system so bottome-feeding l00 sers can file more lawuits is an insane and pointless method of achieving this goal.

                  And that’s without even getting into the fact that when you rail against “big corporations like Google” you really have no clue. Exactly which “big corporations” would you permit to exist in your fantasy world?

                13. Paul Morgan, Ned, if looking to what was tried in ancient English common law courts or not is essential to your argument, then don’t you also have to address the question of whether Parliament had the authority to change that to alternatively allow patent validity challenges in another, lower, court? And in fact is that not what has done in England in modern times?

                  Paul, that is not the rule. If that were the rule, the right to a trial by jury could be removed, or not exist in the first place, if the English Parliament could abrogate it.

                  We did point out to the Federal Circuit that scire facias actions to revoke a patent for invalidity had a right to a trial by jury — both in England and in the United States.

                  We also pointed out that both trademark and copyright actions enjoyed a right to a trial by jury — so that if the rule is that a right created by statute that affects the public such that its validity is of concern is the rule, there is no right to trial by jury for either of these as well as for patents.

                  Besides, Dyk did ask this question at oral argument of the other side. They did not know of an administrative cancellation proceeding at common law.

    1. 5.2

      David, hardly. It all about who decides the facts. See, Murray’s Lessee where the factual determination supporting the treasury warrant were beyond review of the courts because the that determination was within the writ of treasury pursuant the public rights doctrine.

      Also see Crowell v. Benson were the determination of jurisdictional facts was subject to de novo review as a matter of separation of powers:

      ” A different question is presented where the determinations of fact are fundamental or `jurisdictional,'[17] in the sense that their existence is a condition precedent to the operation of the statutory scheme. … These conditions are indispensable to the application of the statute, not only because the Congress has so provided explicitly (§ 3), but also because the power of the Congress to enact the legislation turns upon the existence of these conditions.”

      FN. 17 says: The term `jurisdictional,’ although frequently used, suggests analogies which are not complete when the reference is to administrative officials or bodies. See Interstate Commerce Commission v. Humboldt Steamship Co., 224 U.S. 474, 484. In relation to administrative agencies, the question in a given case is whether it falls within the scope of the authority validly conferred.

        1. 5.2.1.1

          David, I am assuming here that a court is ordering the revocation of a patent claim based on some finding of fact by the PTAB. Where the constitution requires that fact be found in a court of law, or by a jury, any findings of fact by the PTAB cannot be binding in any way on the party in a court of law. Only the public rights doctrine permits facts found in an agency to be “binding” on a court.

          This is one of the reasons the recent decision of the Federal Circuit in Achates v. Apple potentially renders IPRs unconstitutional as well, because 315 goes directly to the authority of the PTAB to act. Per Crowell, not only are these decisions reviewable in a court of law as a matter of separation of power, these “jurisdictional” facts are subject to de novo review.

          1. 5.2.1.1.1

            Well, you have to remember that, after Patlex and Joy, the claim of patent validity has already been identified as a public right. Per this designation, the legislative branch gets to do whatever it wants with the claim – including removing it from Article III altogether. The DOJ has said as much, repeatedly.

            Your analysis applies to a private right, as opposed to a public right.

              1. 5.2.1.1.1.1.2

                anon, David does not seem to have listen to the oral argument in MCM, particularly to what the government had to say about what was a public right and why. They said a patent was a public right — created by statute — and of public interest for any number of reasons.

                Clearly, if the government is right, IPRs are constitutional as congress may move litigation involving public rights anywhere it wants, to the courts, to agencies, to clerks.

                ITC proceedings that litigate patent validity are constitutional because ITC proceedings regulate commerce and do not seek to revoke a patent.

                Hatch-Waxman proceedings are essentially public rights because they too are created under the commerce act and, even though they involve patent validity, they do not necessarily involve the revocation of a patent. Thus even though they are litigated currently in Article III courts, Congress could, I believe move them to be litigated in agencies without a constitutional violation provided that validity and infringement is not given collateral estoppel effect just like ITC proceedings are not given collateral estoppel effect.

                In contrast, IPRs a patent revocation proceedings. As such, they must be litigated in Article III courts under controlling Supreme Court authority because actions to revoke patents were litigated at common law in the courts of England.

                1. “I believe move them to be litigated in agencies without a constitutional violation provided that validity and infringement is not given collateral estoppel effect just like ITC proceedings are not given collateral estoppel effect.”

                  Ned – again, but for an appeal, are the claims cancelled? If so, the administrative opinion is neither advisory nor proposed, and represents an unconstitutional allocation of Article III power.

                2. David,

                  The “but for an appeal” stretch that you want to make is just not persuasive.

                  The matter is that the law – as written – is [critically] flawed.

                  Further, this flaw is not something that the judicial branch has the power to re-write.

                  Sure, there are options such that a rewritten law is copacetic. But the separation of powers is sacred, n’est ce pas?

            1. 5.2.1.1.1.2

              David, you still have not accepted that Patlex, Joy and the current government position is that a patent is a public right because validity is a public concern. Moreover, the government has upped the anti quite a bit — saying that patents are of public concern because they create monopolies.

              1. 5.2.1.1.1.2.1

                Right – and I agree – however, the “public concern” element of the public rights analysis was only ever articulated once: in J. O’Connor’s Schor decision. It did not survive later SCOTUS decisions on the topic. I believe that O’Connor dissented in Granfinanciera.

                The Governments knows this, and is thus regurgitating the Schor holding without actually citing the opinion. What does that tell you about its confidence in its position?

                1. I would disagree that posturing and short-citing during briefing necessarily equates to confidence.

                  Saying it loudly does not make it anymore persuasive.

  12. 4

    OT but perhaps important for the “speculator crowd”: oral arguments at the CAFC today in SimpleAir v. Sony Ericcson Mobile made it crystal clear that the celebrated “big victory” (guess where?) of this tr0ll over Sony and Google is going the way of the dodo. Put a fork in it and let’s chalk up another example of a non-innovative grifter and habitual abuser of the legal system failing spectacularly to find traction when the lights are turned on.

    Query: why would any “expert” in patent law go out of his way to defend these blatant patent tr0lls?

    Here’s the absurd claim:

    1. A method for transmitting data to selected remote devices, comprising the steps of: transmitting data from an information source to a central broadcast server; preprocessing said data at said central broadcast server, further comprising the step of: parsing said data with parsers corresponding to said central broadcast server; transmitting said data to an information gateway for building data blocks and assigning addresses to said data blocks; transmitting said data blocks from said information gateway to a transmission gateway for preparing said data block for transmission to receivers; transmitting preprocessed data to receivers communicating with said devices; and instantaneously notifying said devices of receipt of said preprocessed data whether said computing devices are online or offline from a data channel associated with each device.

    See that last bit about the “data channel”? The term appears nowhere in the specification and first showed up in the claims 8 years after the application was filed.

    Heckuva job, PTO. Just another $125 million mistake in a massive historic bubble of equally huge mistakes. What a joke of a patent system.

    1. 4.1

      Why do you post these? Basically, you’ve posted something I can’t research. I have no idea what the patent is, so therefore I can’t determine whether what you say is true or not. And I have no way of determining the patent number. This is what a search gets me:

      link to news.priorsmart.com

      From there, I get to PACER, but I do not have (and never will have) access to this. (No need to have access to it).

      Basically, your post is worthless, since I cannot determine whether what you’re saying is true. (And why on earth do you listen to oral arguments and have time to do this?)

      1. 4.1.1

        It took me an 8-second google search using a snippet from the quoted claim to determine that the patent at issue is 7,035,914.

        1. 4.1.1.1

          DanH,

          Granted you may have taken that (easy) extra step, and I do find it odd that PatentBob has an aversion to PACER (as I have posted how easy – and if used in a de minimis manner, it is free), the point remains that Malcolm could add the patent number to his rants.

          But the better course (of course) would be to NOT attempt to drown the boards with examples, but instead actually discuss the underlying (and more important) law.

          As it is, Malcolm’s “style” is merely one of example and inapt, incomplete, or even totally absent critical legal evaluation. He gets no points for his “parade of horribles” because he does not exhibit an understanding of the proper means to get to his desired ends.

      2. 4.1.2

        PB: why on earth do you listen to oral arguments

        You often get a heads up on what’s going to happen before any decision is published. That might be incredibly important if you have a direct interest in the outcome of the case, or if you are litigating (or prosecuting) a similar issue.

        You can learn about the Federal Circuit’s understanding (or lack thereof) of the legal issues in the context of fact scenarios that will otherwise not be described. Why won’t they be described? Because the case will be resolved under Rule 36.

        You can additionally learn quite a bit about the specific and particular views of particular judges on the Federal Circuit.

        You might be suprised to discover that people regularly report on and analyze the Supreme Court’s oral arguments as well: see, e.g., link to scotusblog.com (“Argument analysis: The surprising absence of canons from a debate over the meaning of ambiguous statutory text “)

        I think a better question is: if you’re interested in patent law, why would you not listen to the oral arguments (or at least pay attention to summaries of them when someone else is graciously providing them to you free of charge)?

          1. 4.1.2.1.1

            Certain “summaries” are so biased as to be absolutely worthless.

            Right. Like the self-stroking summary of the awesome “victory” in east Texas penned last January 23 2014 by everybody’s favorite quail-munching patent apologist.

    2. 4.2

      MM, how was this being handled? 112(a) written description? 112(b)? Claim construction — how does one construe a term not only not in the spec, but not supported in the spec?

      1. 4.2.1

        1how was this being handled? 112(a) written description? 112(b)?

        Indefiniteness came up but non-infringement was also a big issue. Either way there’s going to be a huge mark on SimpleAir’s junky portfolio.

        But don’t feel bad for them! They and they’re lawyers already have more money than you and I and our entire extended family is likely to ever see over the next century, at least.

        B 0ttom feeding for fun and profit! Yummy. Gob bless America.

        1. 4.2.1.1

          Brian,

          See the ad hominem here…?

          B 0ttom feeding for fun and profit! Yummy.

          That’s the type of mindless and endless C R P that creates a very certain perception in its “acceptance.”

          Maybe aim your writing to be in that “tone”…

    3. 4.3

      I do-not think MM is capable of hearing any oral arguments with-out the Google virtual reality headset.

      From the very start one judge was totally in favor of Google, she was asking where does it say “app” or application does this ..

      where as the Fig 11 of the patent
      link to google.com

      clearly show the app icons ..

      As for the “Data Channel” not in the spec .. it is the same as “Data Feed” mentioned 11 times in the patent.

      BUT I don’t think ALL these minor issues matter. Simple Air or any other company going against Google has the deck stacked against it at CAFC.

      The minds were already made before the oral arguments even started ..to give victory to Google.

      CAFC has become a Political court lobbied by Obama/Google to never go against Google.

      After Vringo it has been very clear where CAFC stands.

      1. 4.3.1

        BS (<—heh): The minds were already made before the oral arguments even started ..to give victory to Google.

        That’s because they read the briefs.

        More BS: CAFC has become a Political court lobbied by Obama/Google to never go against Google.

        Sounds very Serious. Maybe Obama’s enemies should start a Probe.

        1. 4.3.1.2

          MM : “That’s because they read the briefs.”

          OR

          They were appointed to the post by Google lobbyist.

          1. 4.3.1.2.1

            “That’s because they read the briefs.”

            OR

            They were appointed to the post by Google lobbyist.

            Don’t forget the remote Martian takeover of their minds. Nobody ever expects the Martian takeover.

            1. 4.3.1.2.1.1

              MM dont forget the shine the knob of larry & sergei after they DP your mom, also clean her as s ho le as well for the next customer.

              replace mom with republic and next customer with next big corp .

            2. 4.3.1.2.1.2

              Brian,

              I think that you will need a more sophisticated touch with ad hominem to escape the “politeness police” and your dealings with the (whether true or not it just does not matter) perceived “ambassador” and erstwhile “spokesman” of the desired narrative here.

              1. 4.3.1.2.1.2.1

                (for example, you will need to employ some flowery language to “hide” such things as class animosity and “they are all ‘G-g-g-grifters” types of accusations, that are “permitted” to flow freely, and incessantly and without ANY tie to whatever happens to be the actual legal topic of conversation)

  13. 3

    The more interesting aspect of this case was whether the patent owner was denied due process when the petitioner allegedly introduced new evidence in its reply to support a prima facie case. The Feds do say that such would be improper, but go on to discuss the multiple ways a patent owner might respond, including filing a surreply.

    But, what if the patent owner would need to introduce counter-evidence?

      1. 3.1.1

        Dennis, assume a case where the patent owner response showed that a particular limitation was not disclosed in a reference. The petitioner responds with expert testimony showing that the limitation was inherent. While this is in response to the patent owner reply, it certainly is introducing new evidence which is beyond the permissible scope of a reply.

        I think something like that went on here. I think the petitioner’s reply should be limited to showing where in its petition the particular limitation is proved. He should not be able to introduce new evidence showing missing limitations regardless that the patent owner might respond in some fashion, particularly if he must introduce countervailing evidence.

        By rule and by due process, the new evidence in the reply must be ignored and per rule, the entire reply brief should be stricken.

        1. 3.1.1.1

          By rule and by due process

          Common sense, of course, suggests that there will cases where the element’s inherency was obvious to a two year old, the expert’s declaration wasn’t really necessary, and there is no way to rebut the inherency argument (with or without the expert’s declaration) without dissembling.

          Sometimes the substance does — and should — matter more than procedure. There’s only so much time in the day, after all, and we’re not talking about the death penalty here (still permitted in the United States but that’s because there’s so many awesome “procedural protections” put in place to prevent its discriminatory application. Riiiight).

          1. 3.1.1.1.1

            The irony” of Malcolm and his “Riiiight” injection of a completely tangential liberal meme….

            Because, those who advocate for strong patent rights MUST be of that other “political persuasion”…..

            Or something.

            1. 3.1.1.1.1.1

              those who advocate for strong patent rights MUST be of that other “political persuasion”…..

              No idea what you’re getting at.

              But undoubtedly the typical cheerleader for “little guys” and their sooper dooper important patents is a tbgger-style Republican. The “free market”-worshipping ideology and the “listen to daddy” tendencies are too obvious to mistake for anything else.

              But go ahead and pretend otherwise.

              [shrugs]

              1. 3.1.1.1.1.1.1

                LOL – the man with the shovel is telling someone us to keep digging meme (but in other words).

                You have “no idea” (the Vinnie Barbarino meme)…
                “tbgger-style Republican” – I have told you before – I am not a republican, much less a tbagger. SO your mis-characterization is simply outright wrong. Also – your use of that term was asked of you to desist (since you tend to the more scurrilous use).

                1. I have no clue what :listen to daddy” even means here. SO the supposition then of too obvious to mistake is also wrong.

                2. You [shrug] when you should not be doing so. Instead, the clear point i present: that you insert needless liberal “speaking points” that have NOTHING TO DO with patent issues here, is what you should “take to heart” – the opposite of your ap@ thetic (and P@ Thetic) typical short script response.

  14. 2

    This appears to be an instance of the patentee playing the shell game with the claims, arguing in effect that there was no motivation to combine the referenced manufactures when the legal question is much broader and easier to satisfy, i.e., is there a factual basis to combine any of the various technological elements that are taught in the cited reference. If the elements are present in the prior art references, obviousness usually follows — and should follow — absent some demonstration of unexpected results (or the exceedingly rare instance of teaching away).

    Here’s the money quote:

    The Board’s disregard of the insulation-independent alignment teaching of JP ’910 violates the principle that “[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphases in original); see In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). . . .

    Now if only the Federal Circuit would learn how to apply this reasoning ritually to the intangible arts …

    1. 2.1

      If the elements are present in the prior art references, obviousness usually follows — and should follow — absent some demonstration of unexpected results (or the exceedingly rare instance of teaching away).

      Factual, even the CAFC language is off-point, take a look at this section:

      The Board’s first reason was that JP ’910 shows only conductors that are not individually insulated, so that “one of ordinary skill…would not have been motivated … simply to substitute twisted pairs of insulated conductors for the bare metal conductors.” But JP ’910 plainly discloses the need to align the conducting wires with the core and how to do so, as the Board recognized in its analysis of claims 1 and 4.

      Here they plainly use the phrase (and it’s appropriate) “simply to substitute” but then go on to talk in terms of motivation. But motivation is a completely separate second rationale of obviousness. The claim became obvious as soon as the art would appreciate that the twisted insulated pairs were substitutes of the bare metal. That they would additionally have a TSM for the move just makes it redundantly obvious.

      Suppose, for example, that twisted insulated pairs had NO advantage over bare metal. Everything they did was worse, such that one would have no motivation to use twisted insulated pairs. The pair embodiment is STILL obvious over the prior art because the art would correctly recognize that the system still works (it works worse, but still works) when the twisted insulated pair-element is applied. You have all the pieces necessary for simple substitution – prior knowledge of all the elements, enablement to make the change, and an expected outcome.

      That being said, to the extent the header of this post is appropriate it is correct – The PTO should clearly be rejecting more claims than it does. Not only because it gets the motivation analysis wrong, but because the rank-and-file forget that obviousness hasn’t required a motivation since KSR.

      1. 2.1.2

        “The claim became obvious as soon as the art would appreciate that the twisted insulated pairs were substitutes of the bare metal.”

        I still think you overstate this somewhat, though I grant that TSM is now merely probative (rather than dispositive, as it used to be). Fortunately for inventors, most precedent still requires in effect either TSM or some fairly compelling indicia of obviousness. In this case, they went with the “M” part.

        As of yet, the caselaw simply does not regard obviousness as a mere predictability test or the like (as “unexpected results” is but one possible way to support nonobviousness).

        1. 2.1.2.1

          Agreed. It’s not enough that one of ordinary skill could have modified/combined the prior art (i.e. that there was a reasonable expectation of success, or “predictable”), the evidence must also establish that one of ordinary skill would modify/combine the prior art. See page 13 of the decision.

          1. 2.1.2.1.1

            It’s not enough that one of ordinary skill could have modified/combined the prior art (i.e. that there was a reasonable expectation of success, or “predictable”), the evidence must also establish that one of ordinary skill would modify/combine the prior art.

            I agree that is the CAFC precedent, but that precedent runs counter to KSR, because it requires that there must be some sort of teaching, suggestion or motivation to find something obvious. The Supreme Court explicitly forbade that requirement:

            When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight…it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does…Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,

            Many of the examples in KSR would not work if there was a “establish a reason why the combination would be made” requirement – most notably obvious to try would be right out.

            Here’s KSR again:

            The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.

            That statement controls this fact pattern. There is simple substitution of one element for another, the art knew of both elements, and the result was predictable. You suggest that there’s a further requirement to explain why it would be made. The Supreme Court finds it obvious without that requirement.

            Simple substitution, even without a motivation, is obvious. My example above was correct – there could be NO reason as to why someone would make a change, it does not make the subject matter non-obvious.

            1. 2.1.2.1.1.1

              “Many of the examples in KSR would not work if there was a “establish a reason why the combination would be made” requirement – most notably obvious to try would be right out.”

              I think I agree with you/KSR insofar as more flexibility was needed to allow for “obvious to try” types of situations (and perhaps a few others that are some sort of “common sense,” etc.). These could be deemed strong alternative indicia to TSM.

              However, I still think there’s some distance between allowing for that flexibility and relegating obviousness to a sheer predictability test. The right line might be somewhere between those.

              I kind of like Europe’s framing, that it’s not just what one in the art “could” have done, but also what they “would” have done.

              Think of Post-It notes, for example. Once explained/shown, it seems obvious – partly because it’s eminently predicatable. Once you have the basic concept, many engineers could get the formulation right. Yet tools like TSM can help guard against such hindsight to protect such innovations (albeit while allowing for some flexibility – a tricky line).

              1. 2.1.2.1.1.1.1

                However, I still think there’s some distance between allowing for that flexibility and relegating obviousness to a sheer predictability test.

                Well it’s not a sheer predictability test. The forest-for-the-trees holding is that there must be some teaching that occurs in order for a patent to issue. The art must know some technical thing after the patent that it didn’t know before the patent. Those teachings generally only come in two manners: 1) one of skill in the art couldn’t do something and now they can or 2) one of skill in the art could do something, but was mistaken about what would happen when they did it.

                The problem is when people make a system of the first type (i.e. there’s no allegation of unique or unexpected functionality) but then try to prove non-obviousness by talking about “motivations” that are akin to the second type. In other words – they try and make “invention” out of the fact that there is no evidence that these things have been put together before or that one would put them together.

                There is long held Supreme Court precedent that diverges “combination” from “aggregation.” Merely placing things together, when one was previously enabled to put them together, is considered to be normal artisinal skill, not invention. That is called aggregation. Most “combination patents” are in fact “aggregations” where the reviewing body has misapplied an outdated and improper TSM test to mistake aggregation for combination.

                When there is no unique result, doing something the art previously knew how to do cannot result in a patent. Full stop. You cannot re-monopolize something that previously was dedicated to the public, even if you’re asking for it only in a particular context, see Anderson’s Black Rock. (Heating device belonged to public. Heating device that functions the same when hung on a paver was previously dedicated to public, could not be remonopolized)

                What is the teaching in an aggregation? It’s not a teaching of how to combine things. Nor is it a teaching of new functionality. It appears to just be a logical act that reasons out applying known structures to achieve their known results. There’s no advancement to the art, so no claim can issue.

                Think of Post-It notes, for example. Once explained/shown, it seems obvious – partly because it’s eminently predicatable. Once you have the basic concept, many engineers could get the formulation right.

                You can’t think of a thing, you have to think of a claim. I can picture an airplane, but I can craft any number of claims which may or may not be valid which describe that plane/all planes. If post-its are an invention its because of particular qualities of the particular glue used and how it remains stuck to the back of one paper but not the front of another, and not because of the generic aggregation of “A system comprising: a plurality of papers and glue.”

                1. That is NOT what an aggregation means.

                  See A. & P. TEA CO. v. Supermarket Corp., 340 US 147, 151;

                  Lincoln Engineering Co. v. Stewart-Warner Corp., 303 US 545, 549;

                  Hailes v. Van Wormer, 87 US 353, 368;

                  Reckendorfer v. Faber, 92 US 347, 353;

                  KSR at 1739;

                2. ^^^I have not forgotten you, Random, but since you took the time to provide pincites, I will be taking the time to read the cases in detail. I do appreciate your efforts here (no snark).

              2. 2.1.2.1.1.1.2

                Ken,

                Random’s problem goes deeper: if you ascribe to his “logic,” all engineering and engineered solutions are “out.”

                The only thing remaining is a type of “Flash of Genius.”**

                Of course, Congress explicitly said that such was wrong.

                **Genius or the opposite – a complete bumbling stumbling onto something. It should be self-evident that both extremes are not what is meant to be “promoted” through the patent system.

                1. if you ascribe to his “logic,” all engineering and engineered solutions are “out.”

                  The only thing remaining is a type of “Flash of Genius.”**

                  Completely false. But, hey, you guys are getting tons of traction with your “everything is abstract!” nonsense so why not expand it out to every other “anti-patent” test out there. Everything is indefinite under Nautilis! Except when it isn’t but let’s not focus on trivia … because everything is indefinite under Nautilis! Rinse. Recyle. Repeat.

                2. Malcolm,

                  Your thought pattern is still too shallow.

                  There is nothing false about my statement. Just apply a little critical thinking to the position being advocated.

                  Connect the dots.

                  If you have a problem doing so, then tell me which part of my statement cause you difficulty. Do you not understand what the Flash of Genius position was? Do you disagree that Congress was explicit in its reaction to what the Court was proselytizing? Do you F A I L to see the parallels in history repeating itself?

                  (please open your eyes to do this)

                  I have to wonder if that is “polite” enough, since NO objectively written and enforced guidelines are available to “help” me out.

              3. 2.1.2.1.1.1.3

                Think of Post-It notes, for example. Once explained/shown, it seems obvious

                The claims which relate to these sticky things might also seem obvious if you do a proper legal analysis. What’s so special about “Post It Notes”? Do they represent some important barrier of non-obviousness that can’t be crossed? Of course not.

                1. Except no one else thought of them and they came about by multiple accidents and much hard work.

                  link to todayifoundout.com

                  “So after 5 years of constant rejection for the adhesive and another seven years in development and initial rejection, Post-It notes were finally a hit and have since become a mainstay in offices the world over, today being one of the top five best selling office supply products in the world.”

                  You’re constantly belittling things that you really have no idea how they came about. To you, there’s paper and some adhesive, both of which are “old”. Thus, no patent, even though the real story is it took 12 YEARS to develop the lowly post-it note.

                2. PB: Except no one else thought of them/i>

                  That’s true of every non-anticipated claim and therefore irrelevant.

                  they came about by multiple accidents

                  Not relevant, per the statute.

                  much hard work

                  Now you’re starting to get somewhere although even “hard work” doesn’t guarantee you non-obviousness.

                  But your issue with “getting the facts right” is one that you should raise with Ken. After all, it was Ken who wrote “Once you have the basic concept, many engineers could get the formulation right.”

                  To you, there’s paper and some adhesive, both of which are “old”.

                  Not just “to me” but to everyone who was around back in 1991 when paper and adhesive were separately invented. As RG points out, the issue is: what exactly is claimed? A small piece of colored paper with adhesive on the back that isn’t super strong was obvious before Post It notes. And it’s still obvious.

                3. More one-way editing.

                  Let’s see that equal vigor when the pro-patent side is put down….

                  Oh wait, that’s “OK”…..

                4. “…it was Ken who wrote “Once you have the basic concept, many engineers could get the formulation right.””

                  OK – I thought that low-tack/reusable/pressure-sensitive adhesive had been invented well before Post-It notes. Hence I would have thought that tweaking such a formulation for the particular context would be fairly straightforward.

                  But whether I was right about that or not, let’s just suppose such adhesive did in fact pre-exist, and suppose that indeed it was of a sort that works fine on single sheets of paper of note-bearing size for the purpose of that invention.

                  I still maintain that the simple, elegant combination of such two pre-existing elements, notwithstanding a lack of any unexpected result, is nevertheless nonobvious – or at the very least not per se obvious just because there’s no synergy. I think the burden is on those arguing obviousness to point to a persuasive reason (be it a “motivation” from the art, or something similarly compelling).

                5. Ken,

                  You and AAA JJ hit the nail on the head with the would/could distinction.

                  One way of thinking of this is the “Big Box of Electrons, Protons, and Neutrons” mindset: anything – and in fact, everything – can be (must be) made of these patent-ineligible items. There is NO DIFFERENCE (logically) in how certain people want to parse eligibility into an element by element analysis and declare that the eligibility of a claim is nothing more than a mere summation of an eligibility analysis of each parsed element (or even the parsed pieces of a single element).

                  Also, and as I have mentioned previously, another way of thinking of this is to recognize where the lines are drawn around the existing worlds of prior art.

                  For 102, ALL prior art is fair game.

                  For 103, this is just not so.

                  This is a subtle distinction that apparently is not willing to be grasped in this forum (for, well, obvious reasons).

                  What you end up with is a desire to make the line drawing for 103 to be the same as 102: that is, no lines whatsoever and the mere possibility of “could” replaces the notion of “would.”

                  In another analogy (briefly presented in the past), this “expansion” – which is truly an anti-patent expansion – has been likened to the moving of 103 to include the acts of invention itself. The goalposts have been slide down the slope to include “ordinary inventive capabilities” as part of “The Art.” This is nothing more than the attempted re-insertion of Flash of Genius.

                  Now some would rather simply reply in nothing-but-ad-hominem, but this is because those people refuse to actually engage in a critical review of the “logic” being used.

                  But that really does not f001 anyone, now does it?

                6. “One way of thinking of this is the “Big Box of Electrons, Protons, and Neutrons” mindset: anything – and in fact, everything – can be (must be) made of these patent-ineligible items.”

                  There’s a scene in the movie “Flash of Genius” (inaptly named, but that’s another matter…) where the protagonist is essentially making this point: namely, that everything is invented from things that already existed, and those who don’t believe a given invention is patent worthy will typically try to use that sort of argument.

                  While your thought experiment takes it to an extreme, of course, it nevertheless illustrates the point that ultimately we’re dealing with a matter of degree here and thus the qualitative statement that “the elements pre-existed” by itself gets us nowhere.

                7. Ken: the qualitative statement that “the elements pre-existed” by itself gets us nowhere.

                  Nobody’s making that argument here.

                  Nice try, though. Maybe find another strawman?

            2. 2.1.2.1.1.2

              “I agree that is the CAFC precedent, but that precedent runs counter to KSR, because it requires that there must be some sort of teaching, suggestion or motivation to find something obvious.”

              Nothing in KSR changed the requirement that there be a reason why one of ordinary skill would have modified/combined the prior art.

              1. 2.1.2.1.1.2.1

                Nothing in KSR changed the requirement that there be a reason why one of ordinary skill would have modified/combined the prior art.

                KSR outright says that the statute requires obviousness, and the only thing you must provide is a rationale as to why something is obvious. There are multiple rationales that don’t use a motivation or reason at all. Obvious to try is a good one. It’s sufficient to show that there are only a handful of things that could do it, and trial and error (which specifically has no reason for any particular combination) is obvious.

                Again, there is no reason to jump into freezing water. The act of jumping into freezing water is obvious. You don’t need to identify why something is done, you just need to identify that it can be done and the art is correct about what would result. “Why” you might do it evidences that the art understands a principle of operation that makes the combination enabled and the result predictable, but it is not the only way of proving those things.

                1. “Obvious to try is a good one.”

                  The court, with respect to the “obvious to try” rationale, said, “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp.” 550 U.S. at 421.

                  So the “reason” (did you notice that they specifically used that word, “reason,” when discussing “obvious to try?) one of ordinary skill in the art “would try” to modify/combine the prior art is to solve a problem of design or the market. It is not sufficient to show that one of ordinary skill in the art “could do it” or “could have done it.” So no, “obvious to try” is not a “rationale” that doesn’t use a motivation or reason at all. It requires a reason.

                  The court also said, again with respect to “obvious to try,” that “In that instance the fact that a combination was obvious to try might show that it was obvious under 103.” Id.

                  Did you notice that they said “obvious to try” was a fact? So “obvious to try” is a “reason” why one of ordinary skill would modify/combine the prior art. And it is a factual question. One that must be established by a preponderance of the evidence.

                2. AAA JJ,

                  Random is too afflicted with his own “lack of reason” to see that his “version” of obviousness is a necessary F A I L.

                3. When there is a design need or market pressure to solve a problem

                  The issue RG is raising is: what about when there isn’t such a design or market need in the prior art to solve a problem because the problem was one created by you.

                  How about a claim to

                  an edible steering wheel, wherein the steering wheel comprises a screen for receiving email and further comprises a preservative for freshness and further comprises a chemical that makes the steering wheel taste bitter so kids don’t eat it for fun.

                  The stated “advantage” is that if you get lost you can eat the steering wheel in an emergency. Pretty sure this is an obvious claim. Do I need to find prior art about the market need for an edible steering wheel that your kids won’t take a bite out of in a non-emergency situation? I don’t think so.

                4. “Pretty sure this is an obvious claim.”

                  I haven’t seen a single claim discussed on this site in the past 8 or 9 years that you didn’t think was obvious. So I’m not really surprised by your conclusion.

                  “Do I need to find prior art about the market need for an edible steering wheel that your kids won’t take a bite out of in a non-emergency situation? I don’t think so.”

                  The Supreme Court disagrees.

                5. So the “reason” (did you notice that they specifically used that word, “reason,” when discussing “obvious to try?) one of ordinary skill in the art “would try” to modify/combine the prior art is to solve a problem of design or the market.

                  I’m aware of that paragraph, and you should reread what you posted. It said the market creates a reason as to why you would try the class of elements (because they are known solutions to the problem). But it does not provide a reason for using any particular element.

                  That is why the federal circuit originally held obvious to try was NOT an acceptable motivation (and why the Supremes are addressing it at all) – it didn’t give a reason for the particular combination the Supremes are thinking of. If you had a reason for creating the particular object you wouldn’t need the obvious to try rationale at all, you would have already met the motivation test, and there would have been no appeal.

                  You need to look at the CAFC’s appellate holding to make it the most clear – the Asano reference taught everything but the particular location of a sensor. Smith had the sensor in the right place, but there was no reason for an Asano user to use Smith’s particular location as opposed to some other place, because Smith was solving some other problem unrelated to sensor placement – the sensor location for Smith was essentially a design choice. The Supreme Court held that there was evidence that sensors being used generally was a benefit and once you decide to use a sensor it is “obvious to try” the placement of Smith.

                  Notably missing evidence is a reason to place the sensor particularly where Smith does. For the CAFC this is fatal. For the Supreme Court it is not. In your parlance, the CAFC said “there must be a reason why one of ordinary skill would have modified Asano to get the specific sensor location in Smith.” The Supreme Court NEVER ANSWERS THAT QUESTION. Instead they say it is obvious because “there is a reason to use sensors, and there’s only so many places a sensor can go, therefore it is obvious.” “Only so many places it can go” is not a reason for putting it in any particular place, let alone the particular place claimed.

                  This fits in perfectly with the other examples given by the Supremes – they are saying that all the pieces are there, and while there is no particular reason for the modification, some modifications are inherently obvious.

                6. “I’m aware of that paragraph, and you should reread what you posted.”

                  I read it when I wrote it. :-)

                  And the quote I posted is not the only time in KSR where the court notes that a reason is required for obviousness.

                7. And the quote I posted is not the only time in KSR where the court notes that a reason is required for obviousness.

                  Here is a quote from KSR:

                  Finally, in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282, 96 S.Ct. 1532.

                  It has a mandatory conclusion (“the combination is obvious”). Point to which element before it requires a “reason.”

                  Suppose we have a fact pattern and I say “This invention is simply rearranging old elements. None of the elements change in their function. The result was predictable.” I then cite this paragraph and tell the CAFC that they can either attack my facts, or that have been commanded by a higher court to reach a certain legal conclusion. What is your response – that they have to ignore that statement and instead demand a motivation?

                8. Random,

                  Have you finished the quote in the direct case (KSR)?

                  If I recall correctly, your desire to make this some type of mandatory conclusion is expressly NOT reached by the Court in KSR.

                  If that is in fact the case, that should clue you that you are just not reading the earlier case correctly.

                  Have you thought about why that might be?

                9. Have you finished the quote in the direct case (KSR)?

                  That quote is its own paragraph and its own thought anon, it’s not being taken out of context.

                  And if you read Saikraida itself one argument specifically raised is directed to “Look at our secondary consideration (evidence of commercial success)” and the exact response – commercial success absent invention is irrelevant. Because the other facts were already sufficient to constitute obviousness, the secondary considerations were per se insufficient to carry the day.

        2. 2.1.2.2

          I still think you overstate this somewhat, though I grant that TSM is now merely probative (rather than dispositive, as it used to be)…most precedent still requires in effect either TSM or some fairly compelling indicia of obviousness…As of yet, the caselaw simply does not regard obviousness as a mere predictability test or the like

          I agree with you that the majority of the caselaw is that way, but that is because the majority of the caselaw is wrong. There is only one caselaw that matters – KSR. KSR explicitly contradicts the idea – which I agree with you is prevalent throughout CAFC caselaw – that you need something more than a rationale for obviousness such as a TSM or “compelling indicia.”

          It is exacerbated by the fact that the PTO employs anti-writing/argument non-lawyers (though I’m not sure thats all of the problem, as many lawyers appear to not understand it) who are reviewed by non-lawyers subject to uniform quality and firing rules. In other words, when the Supreme Court explicitly pointed out that the statute only requires obviousness, and expressly denied the requirement that obviousness be proven in any particular manner, the PTO de facto ignores the court because it only teaches Examiners one way of doing things, their reviewers one way of reviewing things, and creates a uniform standard for performing it’s high-volume workload.

          For example, there is no requirement to map a citation to every element. Nor is there a requirement that elements cannot be broken down into sub-elements in any manner one wishes. Nor is there a requirement to use either a textual or thought-up motivation. Yet you can’t get a rejection approved in the PTO without doing those things. The end result is that you may have a very good reason as to why Element A, and therefore the claim as a whole, is obvious, but if you can’t find Element A previously existing (there is nothing to map to it), the claim will be allowed.

          There is only one thing required – the Graham procedure. There must be an ascertainment of the level of skill, evidence of what the prior art is, and then ANY SUPPORTED PERSUASIVE RATIONALE that gets you from the prior art to the conclusion that the claimed invention is obvious. The CAFC keeps trying to put things in boxes when no boxes exist. It sins worse than the PTO, who at least has a practical reason for demanding truncated analysis and uniformity.

          The CAFC still thinks in terms of motivations, simply not textual motivations. For them there has to be a “why?” The Supreme Court caselaw is decidedly different – it questions whether one of skill would have been capable of making the combination and whether the combination functions as the art previously thought it would have. The Supreme Court asks if there was a previous “how?”(while recognizing that a “why” can inform on the “how,” as the “why” evidences a principle of operation that evidences the “how”) Unless a specification provides a previously-absent enabling teaching to form the combination, or unless the specification provides evidence that there are unexpected results, the Supreme Court finds the claim obvious.

          1. 2.1.2.2.1

            So as a practical matter, even if you’re right regarding KSR (not speaking to that here…), does it really matter so long as the USPTO and Federal Circuit (including some judges considered “anti-patent”) simply are not interpreting/applying KSR as stringently?

            So is it more likely that the Supremes would take another obviousness case to solidify a lower obviousness bar, or, that they might just let the Federal Circuit continue to “cabin” KSR?

            In the case of Mayo, I suspect that if the Federal Circuit uses Ariosa to cut back / water down Mayo a bit, the Supreme Court might actually let that slide (perhaps as a concession that they may have inadvertently overstated in their articulation in Mayo). I wonder if something similar may be happening with KSR.

            1. 2.1.2.2.1.1

              Ken,

              I wonder if you see that in the reflection of your post, the “law” wavers as an image of patent law writing by way of common law development (as opposed to the Constitutionally set manner of statutory law?

              Ned’s own supply of the writings of Judge O”Malley come to mind (among other things).

              1. 2.1.2.2.1.1.1

                Philosophically I’m against the judiciary having such a strong role in policymaking, but I’m just thinking within that framework.

                1. The point, Ken, is “that framework” is explicitly controlled and limited.

                  and it is so for reasons that tie into the fundamental nature of this country.

                  Too many (FAR too many) people do not understand this and think that “any opinion” is as good as any other.

                  When it comes to law, that just is not so.

            2. 2.1.2.2.1.2

              That’s true, though I’m not sure how much they are intentionally applying it in a certain manner rather than just blindly following precedent.

              For example, virtually every case where the infringer claims lack of enablement of his device is met with a “long-held” citation that the patentee need not enable the infringer’s method of infringement. But if you couch the same argument in terms of written description, Lizardtech and Abbvie are cited and the claim is found overbroad and invalid. That’s because the law HAS to be that the patentee must posit the infringing mechanism in order to be granted an exclusionary scope over it – the system doesn’t work any other way. CAFC is wrong on enablement but a more-recent precedent (inasmuch as Ariad is recent) fixes the issue.

              I also get the impression (maybe I’m wrong here) that if someone explained novelty claimed in functional language properly the CAFC precedent would be “fixed.” There’s a string of cases that trace back to the 60s where the CCPA in one case analyzed the statutes by saying “Functional language is mentioned once in the statutes, and it’s specifically allowed (in 112f), therefore functional language is not per se wrong.” That case got cited and then people cited the citing cases and it still goes on today. Yet the Supreme Court has routinely said that functional language at the point of novelty is virtually per se wrong, Wabash, Halliburton, Perkin’s Glue, etc. That’s a case the Supreme Court WOULD take, because the fed cir did absolutely nothing after Nautilus. But even without the Supreme court, if one is clearly able to point out where the CCPA went wrong and how the Supreme Court has been clear, I think the CAFC would come to the right conclusion on their own.

              I bet you could do the same with obviousness. Take pg. 13 that AAA JJ cites at post 2.1.2.1. You can probably take the case cited there and trace the precedent to a pre-KSR case, and then make the argument that KSR changed the law, that no analysis was done in the interim, and it is improper to keep citing to an ultimately pre-KSR case. Then you quote KSR and you tell them to reverse (well not here, since they got the right answer anyway). What are they going to do? Admit they’re relying upon pre-KSR language and that KSR is superior guidance but maintain the result anyway?

              My favorite is Plas-Pak, where they cite KSR, which is directly on point, then cite to their own cases from 1959/84 and decide the case in favor of their 84 precedent:

              Where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). However, combinations that change the “basic principles under which the [prior art] was designed to operate,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or that render the prior art “inoperable for its intended purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to support a conclusion of obviousness.

              1. 2.1.2.2.1.2.2

                Random,

                Please cite any portion of KSR that you believe overruled the Fed. Cir.’s precedents that modifications that change the principle of operation or render the prior art inoperable are not sufficient to establish obviousness.

                1. Please cite any portion of KSR that you believe overruled the Fed. Cir.’s precedents that modifications that change the principle of operation or render the prior art inoperable are not sufficient to establish obviousness.

                  Sure. The court begins by pointing out that 103 only requires obviousness, and that the Supremes set out a procedure for obviousness:

                  Section 103 forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

                  In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Court set out a framework for applying the statutory language of § 103…If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103.

                  They then note that the CAFC went further, demanding that a particular test be met:

                  Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed [the TSM test] under which a patent claim is only proved obvious if [the test is met]. Because the Court of Appeals addressed the question of obviousness in a manner contrary to § 103 and our precedents…We now reverse.

                  So the court is specifically saying that attempting to place FURTHER REQUIREMENTS on obviousness beyond compliance with Graham is improper. Let’s point out some examples.

                  The approach to finding obviousness must allow for flexibility:

                  Throughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.

                  Important considerations should be made, but they cannot be made mandatory:

                  When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight…Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents.

                  And the kicker:

                  There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.

                  See you can never say something is per se non-obvious in the manner that you can say something is per se obvious, because a per se non-obviousness result would require a rigid rule that limits the obviousness inquiry.

                  modifications that change the principle of operation or render the prior art inoperable are not sufficient to establish obviousness.

                  Just as with TSM, the finding that they change the principle of operation or render the prior art inoperable for their purpose can be, AT MOST, indicia of non-obviousness. They cannot per se make it non-obvious, just as a failure to have a TSM cannot per se make it non-obvious. If you go back up and replace TSM test with “principle of operation test” you will see the same thing applies in every case.

                  Inoperable for purpose is CLEARLY not a good test anymore, as there’s many parts of KSR where they talk about how the inquiry is an inquiry to one of skill in the art and not what any particular inventor thought. Plas-Pak was a ridiculous case, because there the facts fit a per se obvious situation (simple substitution) and the court, without performing any balancing, found a prior test met and thus per se found it non obvious. Plas-Pak is the exact same as KSR except you swap the TSM test for the Inoperable for the purpose test.

                  So the rule of reason applies, and while TSM has a great reason for being an important factor, inoperable for the purpose doesn’t even have that. Inoperable for the purpose is premised on the particular viewpoint of the original inventor controlling, when it has since been made clear that the question is what one of skill in the art would gleam from the disclosure. If a reference teaches an engine, the PHOSITA can use the engine. He doesn’t have to use the engine only in situations where he is low on gas because the original inventor says his engine gets great gas mileage. The engine can be combined with any other teaching, including a teaching that would increase gas usage, because the only question is whether a PHOSITA would find the modification obvious, not whether he is adhering to some purpose by some other inventor.

                  So in short –
                  1) No PER SE non-obviousness no matter what as the CAFC can’t raise the obviousness standard above Graham
                  2) TSM can be incorporated into the Graham analysis and is a useful indicia of non-obviousness
                  3) Inoperable for purpose and principle operation, like TSM, can at most be indicia of non-obviousess
                  4) The underlying logic for the Inoperable for purpose rule doesn’t even exist anymore, and it’s probably not even good indicia of non-obviousness.

                2. “The underlying logic for the Inoperable for purpose rule doesn’t even exist anymore, and it’s probably not even good indicia of non-obviousness.”

                  Doesn’t it at least help indirectly, in the sense of eliminating a common source of the “M” in TSM?

                  After all, I suspect the converse would be true – i.e. if it *were* operable for the same purpose, those arguing *for* obviousness would surely cite it.

                3. Ken,

                  As I have indicated, the flaw is easily seen if you are to take the “logic” expressed and simply apply that “logic” fully.

                  There is NO stopping point in the logic presented by Random.
                  None.

                  He merely wants to rely on the “broken scoreboard” of the Supreme Court, and just does not realize that the real issue here is that the scoreboard is broken.

                  I attribute this to his aversion of law (and to be more precise, of lawyers).

                4. “See you can never say something is per se non-obvious…”

                  Nobody is arguing for a per se non-obvious test or rule. TSM was not a per se non-obvious test or rule. It was the Fed. Cir.’s eventual requirement for a showing that there existed a reason why one of ordinary skill would have modified/combined the prior art. It got repeated over and over and eventually the PTO and applicants relied on it to the exclusion of everything else that could establish a reason to modify/combine. The Supreme Court in KSR said it was too stringent/inflexible a requirement. But the Supreme Court didn’t say a conclusion of obviousness does not require a finding that there was a reason one of ordinary skill would modify/combine the prior art.

                  “…in the manner that you can say something is per se obvious,…”

                  You can’t say anything is per se obvious. In any manner.

                  “… because a per se non-obviousness result would require a rigid rule that limits the obviousness inquiry.

                  Wouldn’t a per se obvious rule limit the obviousness inquiry just as much as per se non-obvious rule? Didn’t the Supreme Court say in Graham that the obviousness analysis must be conducted in every single case? Didn’t the Supreme Court say that all the evidence and arguments must be considered, including secondary considerations?

                  “…modifications that change the principle of operation or render the prior art inoperable are not sufficient to establish obviousness.”

                  Yes they are.

                  “Just as with TSM, the finding that they change the principle of operation or render the prior art inoperable for their purpose can be, AT MOST, indicia of non-obviousness.”

                  And Graham says the examiner has to consider that. Has to. Not maybe has to, or if the examiner feels like it.

                  “They cannot per se make it non-obvious,…”

                  Nobody is arguing that it makes it “per se non-obvious.”

                  “… just as a failure to have a TSM cannot per se make it non-obvious.”

                  Again, nobody’s arguing that a lack of TSM from the prior art makes it per se non-obvious. Well, maybe some old geezers who haven’t kept up with the law, but nobody who’s been paying attention since 2007 is, or should be, arguing that.

                  “If you go back up and replace TSM test with ‘principle of operation test’ you will see the same thing applies in every case.”

                  No.

                  “Inoperable for purpose is CLEARLY not a good test anymore, as there’s many parts of KSR where they talk about how the inquiry is an inquiry to one of skill in the art and not what any particular inventor thought.”

                  The “changes the principle of operation” or “renders the prior art inoperable” arguments have always been from the perspective of one of ordinary skill in the art.

                  “Plas-Pak was a ridiculous case, because there the facts fit a per se obvious situation (simple substitution) and the court, without performing any balancing, found a prior test met and thus per se found it non obvious.”

                  I haven’t read the case but I doubt that’s true. As for your argument that “the facts fit a per se obvious situation” as I explained there is no per se obviousness. I know most examiners regard MPEP 2144+ as “per se obvious” form paragraph heaven, but it’s not.

                  “So the rule of reason applies, and while TSM has a great reason for being an important factor, inoperable for the purpose doesn’t even have that. Inoperable for the purpose is premised on the particular viewpoint of the original inventor controlling, when it has since been made clear that the question is what one of skill in the art would gleam from the disclosure.”

                  You’re forgetting who one of ordinary skill is and what he/she can and does do. PHOSITA follows the conventional wisdom or path. PHOSITA can’t “invent” (i.e. make non-obvious modifications).

                  “If a reference teaches an engine, the PHOSITA can use the engine. He doesn’t have to use the engine only in situations where he is low on gas because the original inventor says his engine gets great gas mileage. The engine can be combined with any other teaching, including a teaching that would increase gas usage, because the only question is whether a PHOSITA would find the modification obvious, not whether he is adhering to some purpose by some other inventor.”

                  Again, you’re forgetting, or maybe more likely conveniently ignoring, who PHOSITA is and what PHOSITA can do and does do.

                  “So in short –
                  1) No PER SE non-obviousness no matter what…”

                  Nobody is arguing otherwise.

                  “…as the CAFC can’t raise the obviousness standard above Graham…”

                  To the extent that the CAFC’s “TSM requirement” did that, it has been corrected by KSR.

                  “2) TSM can be incorporated into the Graham analysis and is a useful indicia of non-obviousness…”

                  Nobody’s disputing that.

                  “3) Inoperable for purpose and principle operation, like TSM, can at most be indicia of non-obviousess…”

                  Again, nobody’s disputing that.

                  “4) The underlying logic for the Inoperable for purpose rule doesn’t even exist anymore,…”

                  Yes it does.

                  “… and it’s probably not even good indicia of non-obviousness.”

                  Depends on the case. You’re clear indication that you don’t even consider it to be good indicia means you’re not doing your job correctly. If you dismiss it without giving it the consideration its due, you’re not doing the analysis right.

                5. Doesn’t it at least help indirectly, in the sense of eliminating a common source of the “M” in TSM?

                  After all, I suspect the converse would be true – i.e. if it *were* operable for the same purpose, those arguing *for* obviousness would surely cite it.

                  No, because the subject of the TSM test is the PHOSITA. The subject of the inoperable for a purpose test is THAT PARTICULAR INVENTOR of the prior art.

                  You seem to understand reasonable arguments, so here’s one:

                  Assume Joe invents an entirely new engine/chassis that gets better gas mileage than any other car ever has by an order of magnitudes. Joe files a patent and say “My car is great because its designed to get maximum gas mileage.” I read said patent. I build Joe’s exact car. Then I open the trunk and put rocks in it, which lowers the gas mileage of the car and makes the car slightly less likely to lose traction on icy roads. I then file for a patent, and in my patent I say “I stole this design from Joe, see patent no XXX. After you build Joe’s car, put rocks in the trunk to increase friction.”

                  Do you really think the conclusion can be anything but that Joe’s patent can be cited against me? According to the inoperable purpose rule it cannot so long as the thing I do runs counter to his stated purpose of increasing gas mileage, no matter how simple my act is or how well the art would have known my motivation.

                  You also have to see the absurdity of the fact that if Joe were to actually BUILD his car, that car could be cited to make my car obvious, because the car itself doesn’t carry any inoperable for the purpose baggage – it’s simply subject to what a PHOSITA would learn from it. So we have a situation where more disclosure (from the patent) actually leads to less preclusive effect.

                  The “converse” rule doesn’t apply – Joe is one of skill in the art, so when Joe has a reason to do something it evidences that one of skill in the art would have a reason to do something. But Joe is just one member of the art, so when he has a reason for something we can’t restrict the art to HIS reason, we have to ask what other reasons exist. In the case of the car his reason for making that car is that it has better gas mileage than previous cars. But one of skill has a generic reason for having the car – cars transport you from A to B. Adding rocks to the trunk doesn’t make the car unable to move and therefore inoperable for that purpose. Therefore the rocks don’t defeat every purpose of the car. Therefore a motivation still exists for the car-with-rocks that doesn’t offend what the art knows about cars, because the art isn’t restricted to Joe’s reasoning.

                6. Nobody is arguing for a per se non-obvious test or rule. TSM was not a per se non-obvious test or rule. It was the Fed. Cir.’s eventual requirement for a showing

                  Gonna stop you right there because your third sentence contradicts your first two. TSM WAS a per se rule, because if you did not have a TSM you could not have obviousness, according to the Supreme Court.

                  But the Supreme Court didn’t say a conclusion of obviousness does not require a finding that there was a reason one of ordinary skill would modify/combine the prior art.

                  Again, simply not true, that’s what obvious to try was IN KSR. Claim 4 had a sensor. It was found obvious. Claim 6 had a sensor IN A PARTICULAR PLACE. The CAFC said there was no reason to put the sensor in that particular place. The Supreme Court simply said “there’s only so many places to put a sensor, therefore it is obvious.”

                  You can’t say anything is per se obvious. In any manner.

                  Sure you can. The Supreme Court gave several examples.

                  Wouldn’t a per se obvious rule limit the obviousness inquiry just as much as per se non-obvious rule? Didn’t the Supreme Court say in Graham that the obviousness analysis must be conducted in every single case? Didn’t the Supreme Court say that all the evidence and arguments must be considered, including secondary considerations?

                  No. Yes. Yes. Limiting the manner in which something is proven is not the same thing as stating what constitutes proof for a particular manner.

                  One of the ways you could persuasively argue that your client didn’t kill the victim is to show that could not have physically been present when the murder took place, i.e. he has an alibi. That is not the ONLY way you can persuasively argue. Therefore a rule that says “You must show that you have an alibi to be found not guilty” would be an improper rule – it unfairly limits the manner of analysis and precludes, for example, an argument that while you had no alibi, you could not have been the killer because DNA evidence from blood at the scene does not match you. That is an entirely different situation from rules which state “assuming you are raising a defense based on DNA, here are procedures which must be followed for that evidence to be admitted” or a rule which states “Assuming the DNA finds it to be less than 1% likely to be his blood, the court MUST direct a finding of not guilty.”

                  They are two different things, and it’s a “necessary but not necessarily sufficient” situation. For something to be non-obvious it is necessary that it not be, e.x. obvious to try or simple substitution or a known method capable of application, but proving that it is not one of those things isn’t sufficient to show it’s non-obvious. The only way it is sufficiently non-obvious is to defeat any rationales for obviousness presented.

                  “…modifications that change the principle of operation or render the prior art inoperable are not sufficient to establish obviousness.” Yes they are.

                  Don’t look now, but you’ve just made two more per se tests.

                  And Graham says the examiner has to consider that. Has to. Not maybe has to, or if the examiner feels like it.

                  That’s correct, but again, as above, you confuse a limitation on the manner of proof with whether any particular proof is sufficient to carry. The fact that something need be considered does not speak to whether that consideration would be effective to rebut a PARTICULAR prima facie showing.

                  As for your argument that “the facts fit a per se obvious situation” as I explained there is no per se obviousness. I know most examiners regard MPEP 2144+ as “per se obvious” form paragraph heaven, but it’s not.

                  They have good reason to, I’ve quoted this before but here it is again: Finally, in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282, 96 S.Ct. 1532.

                  That is a command to hold the claim obviousness if certain conditions are proven. In other words, it doesn’t matter how little motivation there is, or how much commercial success you have – if I can show you arrange elements to perform the same function to yield the same results, the claim IS obvious. See unlike what the CAFC was doing with TSM, where they said “you MUST find this evidence to get to obviousness” (a limitation on manner of proof, which creates a requirement Congress didn’t write) here the court is saying “when you show this, you have met the obviousness standard” (a limitation on sufficiency). It’s akin to saying “if you submit proof that is clear and convincing (a limitation on sufficiency) the claim is obvious” which is the kind of statement courts routinely make all the time.

                  You’re forgetting who one of ordinary skill is and what he/she can and does do. PHOSITA follows the conventional wisdom or path. PHOSITA can’t “invent” (i.e. make non-obvious modifications).

                  Well we just have a disagreement about whether the subject of that test was the particular inventor or a PHOSITA. Since you can’t be bothered to read it, I’ll cut out a paragraph for you:

                  According to Sulzer, Jacobsen expressly describes the invention, and not just a specific embodiment, as “`relate[d] to devices usable for dispensing fluid material(s) via conventional dispensing outlet nozzle(s) directly into a surface crack of a structure.'” Appellee’s Br. 38 (quoting Jacobsen col. 1 ll. 13-16). Moreover, Sulzer continues, Jacobsen teaches that its “primary goal is to minimize or avoid leakage.” Id. at 41. Adding a spray nozzle as Plas-Pak suggests would necessarily undermine that express goal: “[a]s such, one of ordinary skill in the art would have no reason to substitute the controlled dispensing nozzle of Jacobsen with the spray nozzle of Hunter.” Id. Thus, Sulzer argues, the combination does not support a conclusion of obviousness. We agree with Sulzer that the Board’s definition of Jacobsen’s “intended purpose” and the Board’s finding that adding Hunter’s spray nozzle would render Jacobsen “inoperable for its intended purpose” are supported by substantial evidence.

                  Court holds that you cannot add a spray nozzle to a bottle because the author of the previous patent document said the purpose of his device was to minimize leakage, and a spray nozzle would increase leakage. One of skill would have reason to substitute – they want to spray the liquid rather than dispense it into a crack. But apparently that doesn’t count because the particular desires of the previous inventor control – it doesn’t matter how obvious it would be to add something to the bottle, so long as the thing being added increases leakage it will be non obvious.

                7. Random,

                  Your statement of “The subject of the inoperable for a purpose test is THAT PARTICULAR INVENTOR of the prior art.” is in error.

                  It is a subtle error, but an error nonetheless.

                  The subject is the invention – not ANY person (inventor or PHOSITA).

                8. Another statement in error, albeit a subtle one:

                  TSM WAS a per se rule,

                  Simply wrong. The rule itself was not per se anything – it was the limited application of the rule that was perhaps something that could be labeled “per se.”

                  You should look at how the other cases in that era were being decided, and how the TSM rule was ALSO being applied in a manner that was not drawing “the wrath” of the Supreme Court.

                9. “But apparently that doesn’t count because the particular desires of the previous inventor control – it doesn’t matter how obvious it would be to add something to the bottle, so long as the thing being added increases leakage it will be non obvious.”

                  Don’t have time to respond fully, but I will just say again that I think you are not correct on who PHOSITA is and what he/she can and will/would do.

                  PHOSITA does not deviate from what is taught in the reference(s) and doesn’t modify and/or combine teachings to make things inoperable or to function completely differently than they are disclosed to perform. You are providing PHOSITA with much too much skill. Of course the reason you’re doing that is because you are viewing everything through hindsight.

              2. 2.1.2.2.1.2.3

                Random, Plas-Pak is consistent with Hotchkiss->KSR. If one has to reconstruct the primary reference, there is no “mere” substitution.

                1. If one has to reconstruct the primary reference, there is no “mere” substitution.

                  There was no reconstruction in Plas-Pak. They had one kind of nozzle on a reference, they had a different kind of nozzle on the claimed invention. The holding was that because the first kind of nozzle was specifically added to prevent leakage, and the claimed spray nozzle would increase leakage, the invention was non-obvious.

                  But that’s letting the particular intent of the reference inventor dictate rather than consider what it taught to one of skill in the art. Sure it taught that you can add this nozzle to stop leakage, but it also simply taught A WORKING STRUCTURE. It was clear that one could swap the nozzles and still have a working structure. That was why the argument from the infringer was that the “principle of operation” was being construed too narrowly – when you view the prior invention as “a means to discharge liquid” rather than “a means to discharge liquid for this particular benefit” the principle of operation isn’t impugned at all.

                2. Well, Random, the Plas-Pak invention provided a new function. That is all that has to be known.

                  Patentable.

                3. “Well, Random, the Plas-Pak invention provided a new function. That is all that has to be known.

                  Patentable.”

                  Check.Mate.

          2. 2.1.2.2.2

            Oral arguments today in Texchem Advanced Products Inc v. E.pak International Inc are right on point for this issue. Give it a listen starting around 10:00.

            At least one of the judges (and I would say all of them) recognize that obviousness includes modifications based on common sense, not just obvious combinations of related art that expressly teach the modifications. The panel also noted that merely picking a previously undescribed variation from among a set of possibilities that would have been recognized by a skilled artisan is not “invention” on its own. There must be more (e.g., unexpected results). The panel also recognizes that KSR changed things relative to the way the CAFC had treated claims earlier, and the panel seems to recognize that the change represented a necessary improvement.

            1. 2.1.2.2.2.1

              “Modification based on common sense.” But if the modification would eliminate or compromise an essential and important function of a primary reference, or be contrary to its operation so that it would not work for some particular purpose, I would think that one of common sense would not so modify the main reference.

              Take drug X that addresses problems A and B. Modify drug X by adding drug Y to address problem A better may not make any sense at all if that addition were to severely compromise the ability to address problem B.

              In the present case, if it were shown that the bare wires not only did the same function as the twisted wire pairs, but did an additional function that the substitution would eliminate or degrade, the PHOSITA of common sense would not make the combination.

              1. 2.1.2.2.2.1.1

                Take drug X that addresses problems A and B. Modify drug X by adding drug Y to address problem A better may not make any sense at all if that addition were to severely compromise the ability to address problem B.

                Only if everyone taking X also had problem B instead of just problem A.

                1. Random, but what if the art did not know that reducing or eliminating was acceptable?

                  But I agree, that if problem B was known to not having to be addressed, increasing the benefits of A and limiting the use of the drug to the population that did not need B would seem to be obvious.

                2. Random, but what if the art did not know that reducing or eliminating was acceptable?

                  Who said anything about acceptable? Who makes the value judgement? A PHOSITA? In what context?

                  All you need to do is figure out what the prior art was and what the differences are, and what it takes to get from here to there. As soon as you posited that the modification could have been done with common sense, the game was over.

                  You’re trying to ask what a reasonable PHOSITA would do. That cabins the inquiry. The question is would a PHOSITA posit the invention that was claimed and be able to carry it out. The fact that a PHOSITA would posit the invention but choose Option B is just proof that the inventor is dumber than the average PHOSITA, (as clearly Option B didn’t occur to him) not that he is an inventor.

                3. Random,

                  You cannot remove the limit as you attempt to do so.

                  That simply is not how the legal fiction of PHOSITA works.

  15. 1

    “There is no dispute that the twisted pairs in CA ’046 need to fit into the notches of (i.e., be aligned with) the separator, as shown in the two figures from CA ’046 reproduced above, for the resulting cable to be made. And the Board correctly recognized in its discussion of claims 1 and 2 that JP ’910 clearly teaches the importance of aligning conductors with a separator (core), and suggests doing so with a die to prevent twisting of the separator, before they are all bunched together for twisting in a stranding device. That evidence points clearly toward a motivation of a skilled artisan to arrive at the methods of claims 5 and 6…”

    While I don’t agree with the decision, at least the Federal Circuit is getting fairly specific here – which in turn validates the principle that obviousness requires finding concrete details in the references that (at least purportedly) support a motivation to combine.

    1. 1.1

      But does not KSR indicate that the common sense of a POSITA and the POSITA’s general knowledge can also support a motivation to combine?

      1. 1.1.1

        Please see above…there appears to be a question of not just what you raise, but also whether such “motivation” is even needed.

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