Supreme Court denies Certiorari in Obviousness Case

The Supreme Court has denied certiorari in Cubist Pharma v. Hospira.  In the case, the patentee had challenged the Federal Circuit’s increasingly strong limits on the use of secondary indicia of non-obviousness.  Bill Lee’s well written petition argued that the Federal Circuit’s approach conflicted with the flexible doctrine outlined in 35 U.S.C. 103 and explained by Deere and KSR.  [CubistPetition].

Question Presented:

In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), this Court recognized the relevance of “objective indicia” of nonobviousness (also known as “secondary considerations”) – including the long-felt need for the patented invention, the failure of others to arrive at the invention, and the invention’s subsequent commercial success – in determining whether a patent’s claims were obvious to a person of ordinary skill in the art. In this case, the district court created, and the Federal Circuit affirmed, two categorical limitations on the consideration of objective indicia of nonobviousness that exist nowhere in the Patent Act or this Court’s jurisprudence. The questions presented are:

1. Whether a court may categorically disregard objective indicia of a patent’s nonobviousness merely because the considerations apply to one commercial embodiment of a patented invention, rather than all embodiments.

2. Whether a court may categorically disregard objective evidence of a long-felt need for a patented invention merely because the need is not expressly recited in the patent claims.

In its successful opposition, Hospira explained that both the district court weighed the secondary indicia of non-obviousness and found them “not sufficiently strong to overcome the showing of obviousness arising from an analysis of the prior art.”  To Hospira, the petition was basically a request that the Supreme Court conduct its own factual analysis.

I had previously written that “[a]part from the AIA Trial challenges, the most potential life changing case on the docket for patent attorneys is Cubist v. Hospira that focuses on the role of secondary indicia of non-obviousness. As with most Supreme Court patent cases over the past decade, Cubist argues that the Federal Circuit’s rules are too restrictive and should instead follow a looser factor-based analysis when considering the issue.”

In today’s action, the court also denied certiorari in the subject matter eligibility case of Vehicle Intelligence v. Mercedes-Benz.  Although scheduled for conference, the court took no action in the Cuozzo follow-on case of Stephenson v. Game Show Network, LLC, et al. — GVR is likely following release of the Cuozzo decision.


62 thoughts on “Supreme Court denies Certiorari in Obviousness Case

  1. 8

    So for long felt need, 11,000 people dying per year were “not sufficiently strong to overcome the showing of obviousness”, how many deaths would be strong enough?

  2. 7

    Wait, SCOTUS took patent quality so seriously that it refused to hear a case where the [applicant’s] arguments were “it’s patentable because I said so”??

    If we had some of those balls down at the PTO we might actually start seeing some quality applications

  3. 6

    link to

    The Supreme Court unanimously decided that a decision whether lands have “waters of the United States” subject to regulation under the Clean Water Act is a final agency action subject to immediate review under the APA notwithstanding that the “permitting” decisions are reviewable. The jurisdictional decision is final when made and is not subject to further agency action.

    Roberts for the court.

    Kennedy, Thomas and Alito concurring:
    “As JUSTICE ALITO has noted in an earlier case, the Act’s reach is “notoriously unclear” and the consequences to landowners even for inadvertent violations can be crushing. See Sackett v. EPA, 566 U. S. ___, ___ (2012) (concurring opinion) (slip op., at 1).
    An approved Jurisdictional Determination (JD) gives alandowner at least some measure of predictability, so long as the agency’s declaration can be relied upon. Yet, the Government has represented in this litigation that a JDhas no legally binding effect on the Environmental Protection Agency’s (EPA) enforcement decisions. It has stated that the memorandum of agreement between the EPA and the Army Corps of Engineers, which today’s opinion relies on, does not have binding effect and can be revoked or amended at the Agency’s unfettered discretion. Reply Brief 12; Tr. of Oral Arg. 16. If that were correct, the Act’s ominous reach would again be unchecked by the limited relief the Court allows today. Even if, in an ordinary case, an agency’s internal agreement with another agency cannot establish that its action is final, the Court is right to construe a JD as binding in light of the fact that in many instances it will have a significant bearing on whether the Clean Water Act comports with due process.

    Kagan, Concurring:
    “For an agency action to be final, “the action must be one by which rights or obligations have been determined, or from which legal consequences will flow.” Bennett v. Spear, 520 U. S. 154, 178 (1997). As the Court states, the memorandum of agreement establishes that jurisdictional determinations (JDs) are “binding on the Government and represent the Government’s position in any subsequent Federal action or litigation concerning that final determination.” Memorandum of Agreement §§IV–C–2, VI–A; ante, at 6 (major- ity opinion). A negative JD thus prevents the Corps and EPA—the two agencies with authority to enforce the Clean Water Act—from bringing a civil action against a property owner for the JD’s entire 5-year lifetime. Ante, at 6–7, and n. 3. The creation of that safe harbor, which binds the agencies in any subsequent litigation, is a “direct and appreciable legal consequence[ ]” satisfying the second the second prong of Bennett. 520 U. S., at 178.”

    Ginsburg, concurring:

    “[T]the JD at issue is “definitive,” not “informal” or “tentative,” Abbott Laboratories v. Gardner, 387 U. S. 136, 151 (1967), and has “an immediate and practical impact,” Frozen Food Express v. United States, 351 U. S. 40, 44 (1956). See also ante, at 7–8.* Accordingly, I agree with the Court that the JD is final.”

    1. 6.1

      It seems that this case should tell us how the court might view a decision under 315(b) that decides whether the PTAB has jurisdiction to institute. That decision is final, collateral to the merits and has legal consequences to a patent owner.

      But the case also illustrates the extremism of the government that it can renege on a JD at any time, perhaps because they made a “mistake.” The court did not like that one bit.

      1. 6.1.1

        It seems that this case should tell us how the court might view a decision under 315(b) that decides whether the PTAB has jurisdiction to institute.

        Right: unlike an “approved jurisdictional determination” by the Army Corp, the Supremes would view the decision by PTAB to institute an IPR as a non-final decision on the validity of the patent that Federal courts don’t have jurisdiction to review. At best, the decision to institute an IPR has far more in common with a preliminary determination of jurisdiction by the Army Corp, which the Supremes had zero problem with.

        Certainly Kennedy’s take on the Army Corps — noting that “the Clean Water Act is unique in both being quite vague in its reach, arguably unconstitutionally vague, and certainly harsh in the civil and criminal sanctions it puts into practice” — provides yet more grounds for distinction. What happens in most IPR proceedings that are instituted? Junk patents that should never have been granted are eliminated or made less junky. There are no civil or criminal sanctions.

      2. 6.1.2

        Ned dances up to (and yet still does not provide a direct answer to) my questions again with his statement of “That decision is final, collateral to the merits and has legal consequences to a patent owner.

        A few things here Ned.

        1) what do you mean by “collateral to the merits?” You are aware of course that the initiation decision is completely (legally) separate from ANY decision on the merits, right?

        2) what do mean by “final?” There is no “non-final” or even temporary possibility with an initiation decision, quite unlike the possibilities in the EPA decision. The initiation decision is binary, and – per Congress – at the complete and unquestionable discretion of the Executive branch agent.

        And last but certainly not least:

        3) What do you mean by “has legal consequences?” Are these “legal consequences” that you hint at anything but sticks in the bundle of property rights? Are you finally going to do the simple comparison of the bundle of sticks in the property right that is a patent from immediately after grant to the bundle of sticks that is (?) a patent immediately after the initiation decision and prior to any decision on the merits when that property is back in the Office?

        Or are you yet again going to scoff at the question put to you, but whine about the very answer that I have suggested? Maybe once you realize what is going on by performing that simple comparison you will be able to figure out the right question (hint: the Office and the Federal Circuit have only been asked questions that reflect what Congress has written with the AIA – neither of those two bodies are the subject of the right question).


          “anon”: what do mean by “final?” There is no “non-final” or even temporary possibility with an initiation decision,

          Wait a minute — aren’t you the same “anon” who’s been popping off at least once a month about some mysterious “stick” from the patentee’s “bundle” allegedly being taken at the point of initiation?


            Absolutely – so what is your point?

            My post here is entirely consistent with all of my other posts.


          Anon, collateral: the matter involves an issue completely separate from the merits. Here the JD issue was whether the land involved US waters. A merits decision would be regarding a permit.

    2. 6.2

      And, did anyone see that the district court required the Obama justice department lawyers appearing the Immigration Executive order case to receive ethics training. It appears two declarations by the Obama administration were perjured and the government lawyers knew about it.

      “Since there is no doubt that misconduct has occurred, and since there is for the first time a possibility that this case will not be remanded,” Judge Hanen wrote, “the court will take this opportunity to dispose of the only impediment to the Supreme Court issuing a complete and final judgment in this matter. The misconduct in this case was intentional, serious and material. In fact, it is hard to imagine a more serious, more calculated plan of unethical conduct.”

      So as not to interfere with the Justices’ review, he said, he had decided not to impose a remedy that otherwise might have been justified for “blatant misconduct” of “such magnitude” — that is, an order to strike all of the government’s legal filings in the case. Doing so apparently would have brought the case to an abrupt end, with a default ruling in favor of the twenty-six states who sued to challenge the Obama policy.”

      link to

    1. 5.1

      I thought it was amusing. Doubly amusing was the other claim construction decision today, written a different panel, which seemed to adopt Stark’s approach.

      Are people looking for “rigid” CAFC rules ripe for overturning? The rule that “ordinary meaning” requires “express disavowal” before that “ordinary meaning” is narrowed by a district court is definitely ready for the trash heap (and always was). The fact that applicants can write an entire specification with numerous embodiments but not once describe how an embodiment at the “ordinary” outer bounds of their claim would look or work (e.g., a wireless embodiment of a — trying not to laugh here –“communication path”) and still somehow be entitled to haul dozens of defendants into court for an expensive “battle of the experts” over what was “enabled” (and yet somehow beyond the applicant’s ability to describe in even the simplest terms) is one of those facts that the Supreme Court would be very interested in discussing with one of those defendants.

      1. 5.1.1

        Personally, I think Stark was a bit shocked at the rough justice of the Federal Circuit. Due process is not their strength.

  4. 4

    Before reading great significance into a cert denial, note that the current odds of a cert petition being granted are only one out of a hundred.

      1. 4.1.1

        Actually Ned, the Supremes seem to be avoiding some real hot potato cases of far more public interest than some specialized patent practice issue.


          Paul, there are many patent issues being shunted aside this year. But this one involves separation of powers and the right to a jury trial — issues not patent centric. That may spark their interest.

          As to hot potato issues — name one.


            Various new voter registration restrictions, several immigration issues, etc., etc.


          anony, this is an interesting point. I would think the Court would handle it pragmatically. If Cooper is taken with Roberts being the decisive vote, I think they would automatically take MCM because the issues are effectively the same.


            The Court doesn’t operate that way. It will always look to resolve important constitutional questions with all available Justices participating. With a question as important as this one, the Court will do whatever it can to hear this with 8 (assuming a denial isn’t forthcoming).

            Incidentally, did your challenge receive any amicus support?


              anony, it is my understanding that the Justices will resolve conflicts, e.g., by selling stock, if they the courts accepts certiorari.

              Regarding amici: I have seen 6 filed including the IEEE and the NYIPLaw association, one by a number of professors, two by inventor groups, at least one university, and at least one company currently in an IPR and in Court. There may be more.

                1. Ok.

                  I’m not trying to be difficult – can you point to one example where a Justice has “un” recused himself before?


                Ned, why not post hotlinks to these amicus briefs, or send them to Dennis to post?


                The NYIPL brief link to concludes

                “The Questions Presented in this Petition are critically important to patent owners and patent challengers. The constitutionality of IPRs and of the other PTAB Proceedings is both relevant and urgent. Thus, this Court should grant certiorari on both of the Questions Presented.”

                “The Fourth Circuit declined to retain jurisdiction over the issue in Cooper v. Lee, which was then summarily decided in view of MCM. See supra Part II. The Federal Circuit summarily dismissed Affinity without any discussion. Affinity, No. 15-1933 (Rule 36 affirmance). Finally, in Unwired Planet, the PTAB found it has no jurisdiction to resolve the issue. No. IPR2014-01165, at 25.
                Without this Court’s intervention, the important constitutional questions that underlie the entire PTAB Proceedings statute and process are unlikely to receive any further sustained judicial scrutiny. If this Court does not address the issue in either this Petition or in Cooper, it is unlikely that there will be further substantive analysis by lower courts to help the Court address this issue when patent owners in the future raise constitutional challenges to the new PTAB Proceedings.
                Accordingly, the Association respectfully urges this Court to accept certiorari to review whether the Federal Circuit panel decision is consistent with this Court’s jurisprudence on these important Constitutional issues that are highly relevant to, and have a significant impact on, key sectors of this nation’s economy.”


                The IEEE argues:

                “Upon receiving a patent, the inventor exchanges common-law private rights (for example, various rights of secrecy, including common law trade secret rights) for the patent right. The right that the inventor receives is the enforcement right to exclude all others (including the petitioner) from the free use of the private rights of secrecy, bargained for by public disclosure of the invention as claimed. An IPR adjudication that cancels patent claims voids this exchange of rights, but without restoring to the inventor the private secrecy rights, which became publicly available. Instead, the inventor’s private right is necessarily dedicated to the public (including to the petitioner challenging the patent) years earlier than would otherwise occur. Indeed, the “remedy sought” by the petitioner in an IPR is to cancel patent claims, in order to obtain the private right to practice the invention. Thus, in an IPR proceeding in which claims are cancelled, the petitioner receives private benefit, the right to exploit the inventor’s published description of an invention that would otherwise enjoy private rights of secrecy, and the inventor incurs a net loss of that private right because the loss of secrecy (by publication of the patent) is irreversible. It is this economic transfer of a private right to the petitioner at the expense of a net loss to the inventor’s private right that is at the heart of IPR adjudications.

                “Moreover, the substantial investments that the patentee may have made in reliance on the exclusive patent right cannot be returned to the patentee. Thus, the fact that IPR proceedings extinguish and transfer private rights cannot be denied or brushed aside. That said, the inventor does take a calculated risk in entering the exchange of rights described above—later loss of the inventor’s private right may well turn out to be justified in some circumstances. However, only a judgement of an Article III court can justly extinguish such private rights and transfer them to the patent challenger.”


                The 13 professors argue,

                In its decision below, the Federal Circuit held that “patent rights are public rights,” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1293 (Fed. Cir. 2015). This conclusion is unprecedented, and it is predicated on a misunderstanding of certain court opinions in which judges have acknowledged the truism that the “public” has an interest at times in the validity of patents. But the public has an interest in the validity of all property rights, and thus this is not a legally coherent ground for defining an entire class of private property rights as “public rights.” Moreover, the Federal Circuit compounded its misunderstanding by relying on modern administrative law cases that addressed solely procedural entitlements created by and existing within modern regulatory regimes. Id. at 1292–93. Notably, these cases did not address vested property rights recognized as constitutionally protected by this Court for over two hundred years. Thus, the implication of the Federal Circuit’s faulty reasoning is far-reaching and unlimited, undermining fundamental constitutional protections for all vested property rights in administrative proceedings and in which the public generally has an interest.”


                The U of NM argues

                “Although ostensibly designed to correct improper
                grants of bad patents, the IPR process has acted as a tool to undermine the entire patent system.”

                The brief show in detail why that is, from who the PTAB is, to the lowering of the burden of proof to the denial of a right to jury trial.

                “Thus, universities have lost much of the value of their patents, and have been less able to obtain partnership with industry to bring the product of university research to the public in a manner that benefits the university and the industrial partner, not just the free rider. … Because the MCM Portfolio petition for certiorari raises significant questions regarding the constitutionality of the
                IPR proceeding, the Court should grant MCM Portfolio’s petition.”


                The inventors argue:

                “IPR was meant to address the threats posed by
                “patent trolls”—firms that abuse patent protection
                through harassing litigation relying on speculative
                assertions of infringement upon patents of dubious
                validity—by providing a cost-efficient alternative to
                litigation to challenge those patents’ questionable
                validity. That streamlining goal was laudable. But
                Congress went too far by disrespecting patentholders’ property rights to achieve those supposed efficiencies. IPR strips patentholders of essential protections they would enjoy if they were defending their patents in the
                federal judicial system, including a jury of their peers, a disinterested, life-appointed judge, and procedural features that limit the scope of potential liability. In their place, Congress erected a heavily slanted administrative regime that invalidates patents by design, even when those same patents would be upheld in district court.

                Amici agree with Petitioner that the IPR procedure
                was beyond Congress’s power to impose, and its
                underpinning rationale—that patents are a matter of
                administrative largesse, rather than a
                constitutionally protected property right—is
                constitutionally infirm. Amici write separately
                because this case presents an issue of enormous
                significance with far-reaching consequences for
                inventors, investors, and small-business owners.
                Patents are critical for the many participants in
                the innovation ecosystem. In the uphill battle of
                invention, patents level the playing field against
                better-armed incumbents, and are key to inducing
                others to take chances on new ideas. The founders
                that must leave safe jobs, investors who risk total
                losses, and early customers who hitch the structure of
                their businesses—and their reputations—to unproven products, all stake their livelihoods on the stability that meaningful patent protection provides. Congress’s creation of IPR harms all of these participants by introducing expense and uncertainty into all patents, measurably diminishing their utility as a durable asset on which new businesses, new industries—and indeed, the entire American economy—all depend.
                The necessity of affirming the property interests at
                stake, recognized since before the Founding, provides compelling reason for the Court to consider the constitutionality of the IPR procedure. And the need to protect innovators from incumbents, as well as to undo the ongoing harms inflicted by this administrative scheme, counsel in favor of taking this opportunity to decide that issue. The practical problems produced by Congress’s improper supplanting of federal district courts’ legitimate authority will only worsen over time. And Congress’s constitutionally infirm understanding of patent property rights is likely to taint further patent legislative efforts already on the horizon. Accordingly, amici urge the Court to grant the petition for writ of certiorari in this case.

                [T]he circle of potential IPR petitioners is
                limitless. Unlike plaintiffs in district court, who must be personally aggrieved by a patent in order to
                challenge it, any person may petition to have a patent invalidated, regardless of whether its alleged
                infirmity affects them in any way. 35 U.S.C. § 311(a).
                This lifting of standing limitations is frequently
                abused in ways the statutory methods for screening
                IPR petitions, id. § 314(a), have proven ineffective at
                weeding out. The evidence from only the first few
                years of IPR proceedings shows that they are
                frequently utilized by larger competitors to weaken
                smaller, more innovative ones, as well as by vultures
                seeking to extract nuisance settlements.

                “Making matters worse, the IPR administrative
                scheme is heavily stacked against the patentholder,
                converting the PTAB judges into patent “death
                squads, killing property rights.”8 An IPR petitioner
                need only prove invalidity by a preponderance of the evidence, 35 U.S.C. § 316(e), rather than the “clear and convincing evidence” standard required in court, Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 111 (2011). And the PTAB’s often-dispositive findings made in the course of claim construction are accorded deferential substantial evidence review. In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013).

                The PTAB also gives a patent claim its broadest
                reasonable interpretation in an IPR proceeding,
                rather than its ordinary meaning, which makes an
                invalidity finding more likely by bringing into play a
                larger share of prior relevant art. … the PTAB invalidates patents in IPR review at a very high rate, a feature which has attracted petitioners like magnets, making the PTAB America’s most popular patent court.

                “The casual observer might contend that these high
                reversal rates reflect the weakness of the patents that might be expected to provoke an IPR petition. But the evidence is to the contrary. IPR review is often instituted on patents that have already survived district court review, ex parte reexamination proceedings, or both, and are invalidated at roughly the same rate as all other petitions: 83%. Dolin 927-28. Making matters worse, IPRs are initiated most often against product-producing companies, rather than the non-practicing entities that include the “trolls.”12 And the invalidity rates are roughly the same for each type of patent holder.

                Thus, an IPR procedure ostensibly designed to target “patent trolls” has instead introduced
                uncertainty into the validity of all patents. And a
                procedure that Congress had no power to enact will
                often invalidate a patent when district court litigation would uphold it. This result is intolerable, and has a dramatic impact on the entire body of issued patents, the future of patent law, and the best system for innovation in the world.

                “The impact of IPR review goes way beyond its
                immediate effects on the decision-making of inventors themselves, however. The threat of IPR, and the attendant instability it introduces into otherwise settled patent property rights, will make it harder for startups to attract investors, employees, and many other critical resources.
                Turning an idea into a product—including
                developing the idea, patenting it, testing it, debugging it, building prototypes, scaling it into a product, and then building production facilities, distribution channels, and a marketing apparatus to support it—
                all these steps are costly. The initial investment
                required to bring innovative ideas to market is
                particularly high for high-tech products in industries like clean energy and life sciences, frequently reaching into the billions. Where such technology is developed by a start-up company, with no revenues to invest and no assets against which to borrow, it would be impossible to attract the investment necessary to develop an innovative product without convincing investors that the enterprise was viable. In many cases, a new company’s only chance of success lies in the protection that a patent affords to the company’s new technology. Patents are thus critical to the growth and viability of innovation-oriented start-ups whose inventions might otherwise easily be copied. A system of durable, stable, and cheaply obtained patent rights enables startups to connect to critical capital resources.

                “But the value of a patent depends almost entirely
                on its validity—the “determinative” factor in whether it will attract funding. Providing venture capital for start-ups is inherently risky, because three out of four startups will fail. Thus, the attendant uncertainty as to patent validity introduced by the creation of IPR substantially weakens patents’ value in the eyes of angel investors and venture capitalists, with devastating effects on the availability of capital for startup businesses. This is not speculation. It has been the personal experience of amici, who have had businesses destroyed because the mere existence of IPR….”

                1. J. Carl Cecere for GARY LAUDER, PAUL


                Interdigital and Tessera echo Cooper’s petition and focus largely on McCormick Harvesting and its pedigree. But the brief makes this salient point:

                “If patents are public rights, then Congress has largely unfettered control over whether, and to what degree, an Article III court is permitted to adjudicate issues of invalidity and infringement. … [N]ot only could an executive agency definitively (and perhaps arbitrarily) invalidate patents, but Congress could relegate patent validity disputes entirely to the PTO or even choose to provide no mechanism at all for challenging a patent’s validity. That is, Congress could provide that, once granted, patents would be absolutely inviolate and immune from challenge in any forum.

                The mischief would not have to stop there. To the extent Congress chooses to provide a judicial forum, Congress could retroactively alter the rules such that final judicial determinations of patent validity or invalidity would no longer control. Courts and commentators have explained that while a statute cannot retroactively annul a court’s judgment with respect to a private right, Congress can render ineffective a court’s judgment concerning a public right. “Even after a public right has been established by the judgment of the court, it generally may be annulled by subsequent legislation. …

                Indeed, Congress could theoretically eliminate the entire patent system. The public rights doctrine is grounded in the idea that Congress is free to determine the procedure to vindicate the right because it does not need to provide the right at all. See, e.g., Fallon, 101 Harv. L. Rev. at 952-53. If patent rights are public rights, then it seemingly follows that Congress could choose not to provide those rights at all.

                Such consequences, of course, border on the absurd. But that only serves to highlight that the Federal Circuit’s decision is wrong, and that the public rights doctrine is desperately in need of clarification from this Court. Until then, amici and other patent owners will be subjected to the destabilizing effects of allowing an Executive Branch agency to invalidate patents. In several instances already, patent owners have obtained jury verdicts of validity and infringement in Article III forums, only to be met with subsequent decisions by the Patent Trial and Appeal Board finding the same claims invalid. That uncertainty has dramatically undermined amici’s substantive property rights, and the stability of the patent system as a whole.

                1. This argument seemed good until the last point. Of course Congress could eliminate the patent system. It would just have to repeal 35 U.S.C. Isn’t that pretty much clear in Article I, Section 8, Clause 8? Plus, I believe the Supreme Court held long ago that there were no common law patent rights. (The point about retroactively eliminating patents might be a good one, but there’s no requirement that Congress actually promote the progress of the useful arts going forward, although it might be stupid not to.)

                2. Anonymous, Congress does not have the exclusive power to “secure” exclusive rights. If it does not provide a patent system, there is no preemption, and the States can provide there own, just as before. You might want to actually read Federalist 43.

                3. Ned,

                  You are not correct – the authority per the Constitution IS preemptive.

                  If in fact Congress were to abolish the patent system (which IS within their purview), then the States may step in and create something other than a patent system.

                  This is not semantics because one has to realize that the States NOW could create something other than patents.

                  Your Con Law understanding is rather shaky, given your current position before the Court. You should consult someone who knows better prior to posting your “versions.”


                There are two other amici that also talk about other problems with IPRs, Security People and the Houston Investors Assoc.

  5. 2

    So is this in essence the end of secondary indicia (regardless of whether that’s good or bad)? It would seem so, if in fact you now need to explicitly state the “long felt need” in the claim itself, which hardly anyone does.

    It may not matter much, because usually when you’re stuck arguing secondary indicia you’re losing anyway…

    1. 2.1

      Ken: It would seem so, if in fact you now need to explicitly state the “long felt need” in the claim itself,

      If the claim doesn’t set forth the solution to the alleged “long felt need”, then the solution to the alleged “long felt need” is not evidence of the non-obvious of the claim.

      This isn’t an arbitary rule. It’s basic logic.

      As a practical matter, claims that solve “long felt needs” should be exceedingly rare. Patentees, unsurprisingly, frequently assume the ridiculous position that every claim solves a “long felt need”. After all — the argument goes — the claimed “innovation” is new and look! the defendant is making money so people must have needed it since the dawn of mankind.

      The reality is that if you’ve got a bona fide “long felt need” then you’ve got lots of teaching away in the art because people (legally: one ordinary skilled person anywhere) are not sitting around for a long time “needing stuff” unless there’s an intractable hurdle. In most cases, the only reason that lots of consumers (e.g., people like Judge Moore who possess infallible memories about the history of computing) don’t have stuff that they “need” is that, for one reason or another, it isn’t easy to make a bunch of money selling that stuff. Those kinds of business problems, of course, are not the types of problems that eligible patent claims provide solutions for.

      1. 2.1.1


        Regardless of how one feels about secondary considerations, your “logic” here is abysmal.

        (and is not limited to your mantra against the “computer-related” arts at all)


          your “logic” here is abysmal.

          Nobody cares what you think about anything, “anon”.

          But at least you don’t just drive by and hurl insults! Nope. Not you. You’re totally serious, and totally not a hypocrite. We all have to pay attention to your deep, deep insights.


            The “insult” is deserved here Malcolm – your “logic” is abysmal.

            Long felt need simply does not need any “teaching away.”

            At all.


              Long felt need simply does not need any “teaching away.”

              If there is a bona fide “need” — i.e., a problem without a solution — for a “long time”, then the art is going to be filled with people stating “This doesn’t work, and that doesn’t work and we tried that and that does’t work either.” That’s “teaching away.”

              This is why nobody will ever get a claim that broadly covers “a flying car” in spite of the fact that everyday people have been wishing to own such a car for years. The fact that there is a “long felt need” out there is beside the point (or should be). The far more relevant fact is that literally zero skilled people out there are stating “we can’t make a flying car because of X”. That’s because there are no technical reasons precluding the manufacture of a flying car.

              Of course the patent maximalists never want to hear basic reasoning like this because when you apply it to an infantile field like “use a computer to compute stuff” the corrosive r0t in the system becomes immediately apparent.


                …or not.

                The two are different things and there is NO “logic” that makes one have the presence of the other.

                Teachings of other things and even of failed things are NOT “teaching away” from some solution that may have never appeared (to be taught away from).

                Your “logic” remains abysmal.

    2. 2.2

      I think this comment from Ken sums up the difficulty for litigants. Given that secondary considerations have been known to tip the balance, how can any patent owner not run them? Ken though has identified a positive reason not to run them though, suggesting that they have become by now a wake-up call to the court that the patent whose validity has been called into question is, to be honest, not made of the “right stuff”. Perhaps it’s like in Germany, when you as a criminal advocate instruct the court that the defendant has to have the benefit of the doubt. Not that again, pulease.

      But how come secondary considerations were ever elevated to an exalted status as tie-breaker? Methinks that, when it comes in the USA to the question whether abstruse and esoteric subject matter was or was not obvious ten years earlier, it is not just juries but also judges that are hopelessly ill-equipped to decide. Struggling to get to a decision, and (shudder) some plausible reasons in writing, they clutch at the straws of secondary considerations. It ain’t right, but what can you do?

      1. 2.2.1

        how come secondary considerations were ever elevated to an exalted status as tie-breaker?

        Because “more patents is teh awesome.” That’s why.

        Some of the “secondary considerations” were, and are, simply absurd when viewed in the context of the patent system and its practical operation. Consider: someone took a license to the patent rather than spend a million dollars litigating the issue, therefore the claim isn’t as obvious as it seemed when the patent was applied for. Does that make any sensse? Of course it doesn’t.

        What does make sense as an “objective indicia” of non-obviousness is when the art (as a whole) either teaches away from a particular solution to a technical problem, or when the art (as a whole) teaches that the solution has evaded the community’s attempts to solve it. And then the applicant figures it out. As I noted already, that’s going to be a relatively rare set of facts (particularly in the art of computing stuff with the aid of a computer).


          Now I’m confused.

          Is “teaching away” a “secondary consideration”?

          Can it be right, what Question #1 tells me, that “objective criteria” and “secondary considerations” are synonyms? I’m sceptical because, until now, I had thought that a T, an S or an M was an objective criterion but not a secondary consideration.

      2. 2.2.2

        Max, I think these secondary considerations apply in close cases, where the decider of fact is unsure. That is one reason they are called, secondary. They are at best, indirect evidence.


          Well yes Ned, of course. One would hope though that in every case that goes as far as trial, the finder of fact is “unsure”. Litigation is supposed to be a last resort, isn’t it, to resolve 50:50 cases where both sides fancy that they are going to win. In such cases, the Question: “Obvious Y/N?” is always tough isn’t it?

          It seems that my position on that point didn’t get across to you. But I’m glad to have the chance to say the same thing again in different words.



          That is not addressing the confusion that MaxDrei is expressing (the confusion is in thinking that Malcolm has a clue as to what he is talking about – he does not).


            1. Max, re: the concluding paragraph @, thanks for the laugh, it was real and actually out loud.

            2. anon : you should not interpret Max’s use of rhetorical questions as evidence of confusion. He clearly gets it.

  6. 1

    Thanks for the update, Dennis. Two awesome results for the system. The Supremes should not be wasting their time with Hail Mary petitions begging them to keep the carousel turning as fast as possible.

    As for this from the “Questions Presented”: two categorical limitations on the consideration of objective indicia of nonobviousness that exist nowhere in the Patent Act or this Court’s jurisprudence.

    There were no “categorical limitations” in the CAFC’s opinion. And the patent statute doesn’t refer to any “indicia” of any kind, whether those “indicia” are objective or subjective, or primary or secondary. That’s all judge-made law, albeit of the special “activist” kind that favors patentees, so we know it must be Constitutional and totally not a “separation of powers” problem.

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