DuPont v. MacDermid Printing: The importance of a Patentee’s Pre-Filing Statements

by Dennis Crouch

A skilled patent attorney working with a qualified searcher could cobble together a colorable obviousness argument against the vast majority of issued patent claims.  Part of the difficulty for patentees stem from the the billions of prior art references available via increasingly effective search tools. Even when an invention results from a ‘flash of genius,’ patent law typically back-fills extensive knowledge for the obviousness analysis – even when that knowledge was not actually available at the time of the invention.  The larger difficulty though is likely the large number of hard-to-pin-down facts such as the motivations, common sense, and level of creativity of a person having ordinary skill in the art.

The “expansive and flexible” approach to nonobviousness is frustrating to many, but it is seen as a feature of the system fully supported by the Supreme Court.  In KSR, the court wrote:

Throughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach. . . . Rigid preventive rules that deny fact finders recourse to common sense… are neither necessary under our case law nor consistent with it.

KSR v. Teleflex (2007) [04-1350].  Conventional wisdom post-1980 has been that the factual inquiry makes summary judgment of obviousness difficult for a patent challenger.  Rather, obviousness goes to the jury.  Since KSR, that attitude has shifted somewhat.  (The even newer model is that obviousness goes to the PTO in an IPR proceeding – save that for a different essay).

= = = = =

Summary Judgment of Obviousness: In DuPont v. MacDermid Printing (Fed. Cir. 2016) [15-1777], the NJ district court granted summary judgment of obviousness against the patentee DuPont – holding that the asserted claims of DuPont’s U.S. Patent 6,773,859 invalid under 35 U.S.C. 103.   The ‘859 patent relates to the manufacture of  a flexo plate for digital printing — a plate used to print digital images on flexible materials.   The claimed advance involves heating-up the plate to remove unpolymerized material (rather than using a harsh solvent).

The obviousness case combines two prior art references: “Martens [a 3M patent] teaches a process for developing an analog plate using heat” and “Fan [DuPont patent] teaches developing a digital plate using solvents.”   The inventor (Roxy Fan) is also the first named inventor of DuPont’s ‘859 patent being challenged in this case. The Fan prior-art patent, however, was filed a decade prior.  Reviewing these two references, the court found that the ‘859 patent uses “the same technology and processes pertaining to digital imaging” previously disclosed by Fan and the same thermal development process disclosed in Martens.  In finding a motivation-to-combine these references, the district court walked through several factors.

  • Limited set of potential combinations: The prior art only had two imaging styles (digital and analog) and four development techniques (thermal, etc.) – this makes the ‘859 combination more likely obvious to try.
  • Benefits of Moving to Digital: The prior art taught benefits of switching to digital (thus suggesting the substitution), including an article published by DuPont
  • Market Incentive: DuPont marketing material suggest a “strong incentive” to combine the thermal process with digital plates.

The district court also rejected DuPont’s evidence of commercial success, longfelt need, and industry praise – finding them insufficient to overcome the “strong showing of obviousness.”

On appeal of this summary judgment finding, DuPont focused on the standard-of-review – noting that the district court had failed to “draw reasonable inferences” in its favor.  In the process, DuPont pointed to a long list of factual disputes between the parties where it would be reasonable to draw different conclusions from the evidences.

The Federal Circuit affirmed – finding that the strong undisputed evidence of prior art and motivation to combine fully supported the summary judgment finding.

[T]he record contains strong evidence that a skilled artisan would have had a reason to combine two known technologies and would have had a reasonable expectation of success in doing so. Indeed, DuPont itself promoted the digital and thermal technologies as technological breakthroughs in prior art publications. Thus, in view of the record as a whole, even drawing all justifiable inferences in favor of DuPont, the objective evidence is insufficient to preclude summary judgment on the ultimate legal conclusion of obviousness.

Doomed by Its Own Prior Statements: The obviousness case against DuPont here is interesting because (1) one of the core prior art references was a DuPont reference and (2) DuPont’s own statements regarding its prior inventions led to the motivation-to-combine finding.  DuPont’s private case study will likely walk through and consider whether it should have taken a different pathway regarding the public disclosures.

Caveat: Although the patentee’s pre-filing disclosures are important – it is also important to remember that the question of obviousness is an objective analysis focusing on the hypothetical mind of a person having ordinary skill in the art.  What this means is that the patentee’s disclosures are should not be treated as “party admissions” and given special treatment in the obviousness analysis.  Rather, the disclosures are simply added to the body of knowledge available to the artisan.  Here, the Federal Circuit came dangerously close to crossing the line into giving information actually available to and created by DuPont special weight in the obviousness analysis.

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

105 thoughts on “DuPont v. MacDermid Printing: The importance of a Patentee’s Pre-Filing Statements

  1. As usual much useful information can be gleaned by searching for the European equivalent of the litigated US patent, and inspecting the register and publicly available documents.

    In this case, the granted European patent equivalent to the US patent where the claims were held to be obvious is EP-B-1239329. An opposition was filed, and in a decision dated 12 December 2014 the claims were held by the Oppositions Division to be obvious. An appeal has been filed but is still in its early stages. Significantly DuPont are not disputing the obviousness of the subject matter defined in claim 1 of the patent as granted, their main request on the appeal filed in April 2015 specifying that the infrared absorbing material and radiation opaque material are selected from carbon black, graphite, metal and metal alloys functioning as both the infrared absorbing material and the radiation opaque material. A cogent and detailed reply was filed in the appeal on 14 September 2015 maintaining inter alia that the claims even as proposed to be amended in the main and various auxiliary requests remain obvious.

    The second patent for the dimensionally stable printing plates was not opposed.

    However, Sir Humphrey Appleby (of Yes Minister fame) would classify instituting litigation in the US to enforce a patent where a serious opposition had been filed, and pursuing such litigation where an adverse decision had been handed down and the need for amendment had been acknowledged in Europe was a “courageous decision”. The internal case study should focus not on the statements made by DuPont technical personnel in the course of their ordinary scientific and promotional work, but rather on the need to ensure, prior to litigation, that the patent is in best possible form and in particular that the claims have been optimised and will stand up in court.

    1. Paul, I had, see post 12 below, all but conceded that if it was known that the thermal process would in fact work with digital imagining, even with the ablation layer having to be removed, that the combination was the work of the ordinary mechanic. The invention, if any, was in modifying the thermal process or the ablation layer or something else to make the process work better or faster was the key to patentability.

  2. I want to pick up on something interesting that Ned wrote at 811, namely:

    “Max, what makes something obvious? Prior to 52, that was not the test. The test rather was whether it was known that two things could work together to produce the new effect. Allowing one to hold a patent invalid based upon the opinion of some expert that it would be obvious to do this or that, to me is the basic problem with our law. It makes everything completely subjective.”

    I’m appalled that the subjective opinion of some “expert” is sufficient “basis” for a finding that the subject matter of a claim fails 35 USC 103. In England, the opposed technical experts are required to affirm that their duty is to the court, to help the court “don the mantle” of that legal fiction the PHOSITA. This comes out in x-exam, of the opposed experts by their opposite numbers (through the medium of counsel), in front of the judge’s nose.

    After that public dissection of the facts, the judge alone declares as a matter of law, whether the petitioner for invalidity has made out a 103 attack that is well-founded. The judges constantly stress that the statute says “obvious” and there is no getting away from the statutory test. So they decline to adopt the EPO-TSM reasoning process. Even though their reasoning has to be rigorous, in the end it’s somehow still subjective. That’s why I prefer the more objective EPO methodology.

    1. Others more in tune with EPO practice have pointed out in the past that your “but this is sooo objective” has its own share of subjective factors.

      Factors such as “defining the closest starting point,” “what is the best reference,” and even “defining the problem.”

      Also, your repeat statement here of “under the judge’s nose” does not deal with the US sovereign’s history of law and placement of life, liberty and property MORE in the hands of our own peers than in the hands of the judiciary.

      That’s a difference in vision that you really do need to account for BEFORE you take off your prescription lenses and hand them to us.

      1. This comment from anon proves my point, that people who know nothing about how EPO-PSA works nevertheless know that it is subjective.

        Without any experience or grasp of the EPO-PSA methodology, it is asserted that fixing the prior art starting point and objective technical problem is a subjective process. If anon knew anything about how EPO-PSA operates in daily practice, he would not make such assertions.

        1. Lol – my comment does NOT prove your point – I explicitly noted that others who DO know about the system you are propagandizing have pointed out that it is NOT in accordance with your propaganda.

          You saw “anon says” and jumped FAR too quickly.

          1. anon, how do you know that these other commenters know anything more about practice at the EPO than you do? Who are they? Anonymous?

            But if it were Paul Cole, that would be worthy of consideration.

            1. One of them has been Paul Cole.

              Others have simply ripped you to shreds, and seeing how often that happens on other topics, well, your reputation (as it were) speaks volumes.

              (plus, one can always use critical thinking to evaluate the responses – as well as the telltale LACK of responses – on topics that one is not necessarily an expert on. You might want to try that sometime.

              1. anon, you cite Cole for your mistaken apprehension, that fixing the EPO-PSA prior art starting point and its objective technical problem is a subjective process.

                Not only you and me, but also Paul Cole himself, would be interested to learn of any statement in these threads by Paul Cole that contradicts what he has written elsewhere, including in his book of comparative (USA, EPO, UK) substantive patent law. As far as I am aware his book is still the standard work on the subject.

                So don’t just react with a “lack of response” or your usual “asked and answered”. We might not find that convincing. So, instead, do tell us where exactly we can find the statements you attribute to Paul Cole, and upon which you rely, so we can read them ourselves and make up our own mind what Paul meant by them.

                1. MaxDrei – wrong again, as I cite NO ONE for my “mistaken apprehension” because I do NOT have ANY “mistaken apprehension.”

                  Interesting how you are trying to spin this AND speak for Paul Cole as well.

                  Maybe you should just try to understand better how in your attempts to shill from your limited script, that you come across as more than just a bit of a noob.

    2. I would just love it if we could ban expert opinion on the ultimate legal question. Stick to the facts. Tells what we need to know about the technology. Instead we get endless testimony on the ultimate legal question.

  3. From the opinion:

    Although the prior art did not explicitly teach the thermal
    removal of the ablation layer in a digital plate, the record
    shows that prior art digital plates already included ablation
    layers with binders that softened and flowed at
    thermal development temperatures, and thus are in fact
    thermally removable. Accordingly, there would have been
    a reasonable expectation that the thermal process would
    successfully remove the ablation layer bound to the photopolymerizable
    layer.

    This statement would be a lot more convincing if it said that the fact that the ablation plate’s ability to be removed to thermally was actually known to those of ordinary skill at the time of the invention. In point of fact, without such knowledge, there how could there be an expectation of success?

    There also seem to be evidence that digital imaging using solvents and analog imaging using thermal development lay side-by-side with no one putting the two together for a very long time. What was apparently new was the development of a very fast thermal process that was deemed to be revolutionary, cutting development time dramatically. This provided a powerful incentive to apply this development technique to digital imaging; but there is that problem that it was not clearly known that the ablation layer, involved in digital imaging, could be thermally removed. The fact that the two technologies lay side-by-side without their being combined for nearly a decade tells one that people of ordinary skill in the art did not expect the two technologies could be successfully combined.

    I do not think the result in this case is correct unless it is shown that it was known that the thermal process could be used with the digital ablation layer.

    Known.

    1. Ned: it was not clearly known that the ablation layer, involved in digital imaging, could be thermally removed

      Is there any reason to expect that a removable layer would suddenly become incapable of being thermally removed just because “digital plate”?

      1. Expect would become incapable? That is not the right question. The question is whether the ablation layer could be removed with the thermal process actually used in the prior art.

        Just for example, assume that the prior process heated the photo – polymerizable layer to a temperature of 100° C, but that if one heated it to 200° C that it would destroy that layer. One would not believe that the prior process would work if it was known that the ablation layer could only be removed at a temperature of 300° C.

        The Federal Circuit was far too glib with the facts here, and did not support its opinion at the exact point where should have supported its opinion – the knowledge of one of ordinary skill in the art that one could heat and remove the ablation layer thermally at a temperature compatible with the prior thermal process.

        1. Ned: The question is whether the ablation layer could be removed with the thermal process actually used in the prior art.

          And the facts are:

          the record shows that prior art digital plates already included ablation layers with binders that softened and flowed at thermal development temperatures, and thus are in fact thermally removable.

          What am I missing? You seem to want to insert some element of unpredictability here but there isn’t one, at least not one that would dissuade a problem-solver from applying the prior art solution to this context.

          1. MM, the court did not say that it was KNOWN that the layer could be removed with the same thermal process that worked in the prior art.

            I have some experience with heat in processes. One material acts this way. Another that. It is not clear from the facts as recited that it was known or expected that the ablation layer of the prior art could actually be used successfully in the prior art thermal process.

            Now, it might have been obvious to try. It but it might have been surprising that it did work without, it appears, any modification whatsoever to the ablation layer or to the thermal process.

            1. “MM, the court did not say that it was KNOWN that the layer could be removed with the same thermal process that worked in the prior art.”

              I think that’s what they’re saying they’re finding when they’re talking about “flowed” in their fact findings ned. That or else they’re bringing in such a layer that can be “flowed” from the 2ndary.

              1. I think though that “bringing in a layer” ASSumes that one would even do so. If the two processes are self-contained, why would anyone seek to “bring in a layer” to begin with?

                That something post-filing is shown to be capable of being done is not the question for an obviousness analysis.

                1. That something post-filing is shown to be capable of being done is not the question for an obviousness analysis.

                  I agree that it’s not “the question”. But the fact that some claimed thing is capable (or incapable) of being done or made is a key fact that must be considered in any obviousness analysis.

                2. Wrong.

                  If it cannot be done, then you have a different problem than “obviousness” (think lack of utility for impossibility).

                3. (you are falling into the trap of the wrong way to think about prior art, and the differences of looking at anything “prior” as to whether that item can even be considered for 102 or 103 – just because “prior” does not necessarily make it “prior art.”)

                4. If it cannot be done, then you have a different problem than “obviousness”

                  Gotta love the pedantry.

                  In fact, if the art in 2009 plainly taught that something “couldn’t be done” and someone ends up claiming it anyway, that teaching affects both the obviousness and other legal aspects of that claim.

                  Your earlier comment mentioned a showing of “capability” made “post-filing.” I already agreed with you that the “post filing” showing is not “the question”. I’m not even sure why you brought it up, to be honest.

                  We’re talking about a fact pattern where the skilled artisan at the time of the invention would have had no reason — zero , zilch, nada — to believe that the claimed invention would not work. That fact is absolutely relevant to the obviousness analysis. Is it the end of the analysis? Nope. But it’s a relevant fact. You can’t bury it or wave it off.

                5. you are falling into the trap of the

                  Oh, right. Everybody’s falling into your super special trap du jour. You’re a super serious person! We all have to pay attention to you.

                6. Nothing pedantic about my reply – absolutely nothing (no one is talking about the prior art merely saying something is not possible – move those goal posts back).

                  If you want to talk about pedantic, you should look into that “poker tell” of “so serious” that you bumble into all the time…

                7. Nothing pedantic about my reply

                  Right. Ned and I were having a serious discussion about patenting impossible things. How could I have missed that?

  4. On the topic of the application of Federal laws generally (including, of course, patent laws), I hope everyone has read about the predictable expansion of the “sincere belief” immunity card.

    Are the closely held businesses in the mythological “infringer’s lobby” paying attention? They should be (as should anyone who finds themselves on the wrong end of a Federal law)! Perhaps the RFRA will be found unconstitutional as early as 2018. We can only hope! In the meantime, let’s all have a laugh and get to work on practicing how to make our creative and awesome “religious” “beliefs” sound oh-so-s00per-doooper “sincere.”

    link to latimes.com

    The minefield Ginsburg warned about has now detonated. On Thursday, U.S. District Judge Sean F. Cox of Detroit ruled that a local funeral home was well within its rights to fire a transgender employee because its owner had a religious belief that gender transition violated biblical teachings.

    According to the decision, [the funeral home owner] believes [that he] would be directly involved in supporting the idea that sex is a changeable social construct rather than an immutable God-given gift” if he continued to employ the fired worker.

      1. Does a closely held business have to recognize the teaching in a reference cited against it by the PTO where that reference’s teaching goes against the business owner’s “sincerely held beliefs”? Or must the PTO “accomodate” the applicant and find another reference? After all, signing a document is a “substantial burden” whenever those s00per d00per serious (and oh-so-important-to-everyone!) “religious beliefs” are invoked.

        This is the bizarro world “minefield” the Supreme Court created (a 5-4 decision, in case anyone forgot).

          1. lol – in Malcolm’s world of his injected “opinions/feelings/beliefs,” the “religious” connotation probably carries (and he may not even be aware of it).

        1. “This is the bizarro world “minefield” the Supreme Court created (a 5-4 decision, in case anyone forgot).”

          Interesting chain o thought. Though I have to say that it is perfectly reasonable to say that the court’s decisions prior to that time around the beginning of the 1990’s may have been running amok itself even allowing for all a whole smorgasbord of lawls that Congress made prohibiting the free exercise o a whole bunch of religions in day to day life.

          1. Lol – another logical fallacy from Malcolm: that somehow a decision is “more right” or is “more the law” based on the closeness (or unanimity) of the decision…

            Does that fallacy fall under the “false equivalence” category?

    1. MM, you own a cool cafe for cool people in Capitol City. Your clients are like you, well educated and well employed. A lot of them are Jewish.

      You have an employee who, however, converts to Islam, and insists on wearing a Burka. Shortly, you have no customers, and are facing bankruptcy.

      Can you fire Ms. Burka?

        1. Well, MM, they went across the street to your competitor.

          The point of all this is that when people are comfortable in a particular environment they do not want to be forced to change. This is human nature — and the reaction to Ms. Burka is not born of religious bigotry, just her strangeness and the implicit threat she represents to particularly, Jewish citizens.

          This is a bit complicated, and there are two sides to a story. But I do agree that one should not be able to impose one’s religion on others, or to discriminate against them because of religion.

          1. The burka is the most extreme one, the one that covers every part of the body, including the eyes, right? Not ideal socially, is it, particularly at airports, rail stations, hospitals.

            Ned do you see a difference between “because of her religion” and “because of her burka”? I ask because that debate is very hot at the moment in Europe. I’m not too bothered which of the three Abrahamic religions my doctor/soothsayer/quack/tax advisor/bookeeper/barkeeper/lawyer adheres to, but I would be bothered to be faced at a consultation with that person wearing a burka.

            In short, a case of discrimination “because of the burka”, is not the same as your “because of the religion”.

            1. In short, it is not possible to separate the “perhaps cultural” aspect of the burka from the religious aspect since the first is only a subset of the second (there are no non-Muslim cultures that embrace the burka).

              Your view does not hold up under scrutiny.

            2. Max: In short, a case of discrimination “because of the burka”, is not the same as your “because of the religion.”

              Exactly.

              We actually have a Supreme Court case on point where the Mormons were told they could not have polygamy and be part of the US. There are limits to everything; and practices which highly offend can be limited despite the ideal that one is free to practice a religion. Practicing religion in public, or imposing one’s religious views on others by, for example, firing an employee because of his or her gender, religion, race, or things that they have no control over, is quite another.

              1. I think the point about the burka is that it is a statement. It signifies withdrawal from social society. So it is incompatible with participation in social society to don the burka. If you demand to participate, and the respect due to a member of society, then first remove your burka. Your choice.

                1. I am pretty sure that your view of the meaning of the burka is not what that culture views as the meaning of the burka (and certainly not to the extent that your comment indicates).

                  I will give you the benefit of the doubt that you are more ig norant than ra scist/religiously intolerant.

      1. “Can you fire Ms. Burka?”

        The answer is that you certainly can, when you go out of business lol! But up till that point the “PC po po” say no I’ll bet.

    2. The funeral home director is probably right about that.

      “flout otherwise generally applicable federal laws”

      Laws which are themselves likely overreach at best, and unconstitutional at worst. But I suppose good ol notorious RBG is willing to set that aside.

      “If religious motivation exempted businesses from anti-discrimination laws, our government would be powerless to enforce those laws.”

      That is correct. But them’s the apples when you’re trying to use a 200+ year old document written by a bunch of (Deists or religious) mans to govern your country.

      Perhaps Notorious should cry us a river.

      “Suppose an employer’s sincerely held religious belief is offended by health coverage of vaccines, or paying the minimum wage … or according women equal pay for substantially similar work?” ”

      Suppose further that nobody is being forced to work at those places. Notorious seems to think that it’s up to the gov. to regulate job opportunities regardless of the impact of those regulations. Tsk Tsk Notorious.

      “A year later, the federal Equal Employment Opportunity Commission sued the funeral homes on her behalf.”

      Whoops, their bad. Illegalness.

      “His assertions that sex is “immutable” and that Stephens was taking advantage of a “changeable social construct” are contradicted by medical science.”

      That’s funny, I just got done reading an article stating the opposite.

      “And the accommodation Cox is granting plainly impinges on the interest of a third party — Stephens, who has lost her job.”

      Doesn’t look like the article has the facts right here. Stephens is the “second party”, not a “third party” unless I’m not understanding what all is going on or they’re counting the EEOC as the second/primary party and the accused as the primary/second party.

      “The implications of a ruling in the funeral homes’ favor would be “staggering,” it declared”

      Them’s the apples in this here gov.

      “People hold sincere religious beliefs about a wide variety of things, including racial and religious segregation and the role of women in society. … If religious motivation exempted businesses from anti-discrimination laws, our government would be powerless to enforce those laws.”

      Correct. And they’ve been btching at the ACLU to take a hike for a while now.

      What they need is an amendment to the constitution. But they’ll never get that.

      “Hobby Lobby, Ginsburg warned, was “a decision of startling breadth.” How broad is just now becoming clear.”

      Good times. I love watching hardcore lefties squirm. All their legal “progress” they made implementing laws that were of questionable constitutionality from the get go. Why, they were doing sooo well. Whoops, there it nearly all went out the window. Huge lulz at the lefties.

      “Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof”

      Why ye olde lefty can’t get that through their brains already is beyond me. It’s good to see law triumph in the face of ignorance.

      I bet MM is just loving it.

      “Perhaps the RFRA will be found unconstitutional as early as 2018”

      Gl with that bro, prob not in our lifetimes. You can take a look but it looks entirely constitutional to me, all it did was reset the standard to an appropriate legal standard, and as it is the will o the congress its legit otherwise. If you guys can get the majority in all of congress and the pressy maybe you could have the law repealed.

      link to law.cornell.edu

      1. In the best tradition of Animal Farm, all “beliefs” are equal, but it is some (the “hardcore lefties”) that are “just” MORE equal.

        😉

        1. MM can fire his burqa barista for any reason or no reason under the “at will” doctrine. If he is intemperate enough to say “it’s because of your burqa (or your transgenderism, etc. etc.) then he will draw a RFRA or similar lawsuit. But of course, if he does that, he was not optimizing his business; he was making a political statement, and he can engage in a political fight.

            1. If no reason is required to be disclosed, only an imprudent business person would supply one beyond a feeling of personal obligation to the person being let go.

      2. But I suppose good ol notorious RBG is willing to set that aside.

        I remember reading awhile back that Bill Clinton had some papers that “ranked” which Supreme Court Justices were most likely to go “off the reservation” and deviate from Constitutional authority.

        “Notorious” was one of the three majors. Another was Breyer. At the moment I cannot recall the third, but it is no accident that both the “Notorious G” and Breyer were in the (dwindling) minority that would have followed Stevens abject re-writing of patent law regarding business method patents.

        1. Regardless of her views on business methods, or patent law in general, the Notorious RBG is a national treasure. I’ll take her over those dolts Alito, Thomas, and that disgrace Roberts, seven days a week.

  5. DC: the patentee’s disclosures are should not be [sic] treated as “party admissions” and given special treatment in the obviousness analysis. Rather, the disclosures are simply added to the body of knowledge available to the artisan. Here, the Federal Circuit came dangerously close to crossing the line into giving information actually available to and created by DuPont special weight in the obviousness analysis

    I think there is some “special treatment” along the lines of an “admission” that is given to a patentee’s (or applicant’s) own disclosures, particularly when the same inventor is named on both the disclosure and the patent (or application). As a practical matter, it’s going to be difficult for an inventor to persuasively argue that she would not have considered her own published work as a relevant teaching that would inform the path taken by her later research. This “treatment” comes close to a (common sense) presumption that all inventors are aware of their own published work and consult it “automatically” (i.e., subconsciously). As a result, that prior published knowledge is more difficult to wave off as “not analogous” or “not worth trying”.

    Consider how the outcome might have changed for Wyeth if the prior art disclosing the identical tetracyline lyophilization formulation had appeared not in some Chinese publication but rather in one of Wyeth’s own publications, authored by the same researcher, just a year or two before that researcher began work on a lyophilization formulation for a structurally very similar drug.

    Also, to the commenters here who are still mewling about KSR ten years (!) after the fact: please give it a rest already or come up with a better test that (1) works and (2) makes sense. We’re never going back to the toothless “strict TSM” approach and we’re never getting rid of some kind of obviousness test for patentability. So if you’ve got something else in mind, share it with everyone. But for cripessake quit the whining already. KSR is ten years old, literally millions of patents have granted then, and vast numbers of those patents have been licensed and enforced (and found non-obvious). Some skilled people out there have figured out how to live with it. You can, too.

    1. Oops — the entire first paragraph in comment 9 above is a quote and should have been italicized (except for “[sic]”).

    2. I rise to the MM challenge. Under FtF, I say, use the objective EPO TSM test.

      Why? It has sharp teeth. And it’s objective. And it’s fair, as between patent owner and petitioner for invalidity.

      Just because the American way of operating TSM is “toothless” does not mean that TSM per se is disqualified under FtF.

      The biggest problem with EPO-TSM is that people with no working knowledge of it presume to think that they understand it, and possessed of this deficient grasp of it, dismiss it as “toothless” or deficient in this or that other way. It isn’t.

      1. I have to agree that the EPO PSA is vastly superior to our “obvious” analysis. Their Article 123(2), and the way it’s enforced by EPO examiners, is also vastly superior to our section 112.

        1. The EPO worked this stuff out for itself, free from any yoke of a court sitting on top of it.

          A fortuitous result of the supra-national 1973 European Patent Convention.

          The EPO needed methodology that would deliver consistent results from Examiners coming to the EPO from the national Patent Offices of the EPC Member States, and trained in those national Offices (of which there are by now 38).

    3. and we’re never getting rid of some kind of obviousness test for patentability.

      Do you mean to be conflationary, or just unclear?

      Did you want the phrase “patent eligibility” instead of the word “patentability”…?

  6. The hardest problem in obviousness (or even in older cases about invention) is explaining what conceptions are obvious and which are not. Barriers of reduction to practice are more straightforward. The usual optimizations are not working, and until someone finds the new result-effective variable, there is a history of failure of others. When reduction to practice is within the abilities of one of ordinary skill, the failure of the world to conceive of the invention is very much subject to hindsight, especially if it can be cast as the product of ordinary creativity.

    It is the failures of conception that are more amenable to indirect proof by “softer” secondary considerations, such as market success, praise of others in the field, etc. [As opposed to failure of others or unexpected results.] I find those approaches unsatisfying, but I don’t think that great analysis tools exist for failures of conception.

      1. Re-invent the wheel Ray? Why? The tools are all there already, in the White Book of the established caselaw of the Boards of Appeal of the EPO.

        1. Wow MaxDrei, your eyeglass prescription is pretty strong….

          (Maybe you should pay attention to the differences in the individual sovereigns before offering those eyeglasses to someone else)

  7. “A skilled patent attorney working with a qualified searcher could cobble together a colorable obviousness argument against the vast majority of issued patent claims.”

    I argue that this could be achieved for virtually all patent claims, post-KSR. And, the reason why this is possible is because (1) all patentable solutions to problems follow some form of human logic and obey the laws of nature, (2) once the person judging obviousness sees the patented solution, the logic is easy to back calculate to the problem.

    The main exception to my argument above is a true “discovery”, which in my view is often not worthy of a patent, but rather is merely the product of programmatic testing of many combinations over time – i.e., brute force.

    1. …or of the variety of the “Oops, not sure how I got this, but I got this” type of serindipity which by its nature cannot “promote the progress.”

      This is the core problem of the (anti-patent) mindset that results in either extreme of “Flash of Genius” OR “Oopsie.”

      1. Max, what makes something obvious? Prior to 52, that was not the test. The test rather was whether it was known that two things could work together to produce the new effect. Allowing one to hold a patent invalid based upon the opinion of some expert that it would be obvious to do this or that, to me is the basic problem with our law. It makes everything completely subjective.

        1. You do realize exactly who Congress was reacting against when they created section 103, right Ned?

          Your memory of history is a bit TOO selective…

            1. No Ned, NOT just Cuno, but the whole era of Supreme Court anti-patent fervor – or have you forgotten the phrase “the only valid patent is one that has not yet appeared before us”…?

              I have shown you previously the Congressional notes to 103 (from the Cornell Law website), as well as showed you the architect’s views on how 103 was carved out of the pre-1952 single paragraph into several DIFFERENT sections of law – points that you find “inconvenient” and that you never seem to remember (but yet, simply never seem able to engage). So, yet again, we have you ploying the Internet style “shout down” of your sAme one drive-by spiel.

              1. anon, you really have to get a grip and take a look at the cases before the court. The court was not anti-patent, but anti-abuse. I could go into chapter and verse on that.

                Today we are suffering from the many of same problems that plagued the patent system in the pre-’52 era. Functional claiming, claiming old combinations, indefinite claiming, etc. Contributory infringement had been extended to include unpatented staple items. Tying was rampant. On the obviousness front, the court was time an again confronted with so-called inventions that appear trivial.

                Now consider the constant complaints about functional claiming, about claiming old combinations, about tying under the patents laws the sale of staples (ink) to use of printer cartridges. The invention before the court in KSR appeared to it, trivial. The court openly laughed at the so-called invention in Cuozzo. Never could there have been a worse vehicle to ask the court to decide an important question of patent law.

                The court in the ’30s and ’40s was clamping down. Rich and crew, in ’52 and thereafter in the CCPA and Federal Circuit, again gave a blind eye to the abuses, and in cases such as In re Bernhart, Dondaldson and State Street Bank, multiplied them.

                You place yourself solidly on the one side of this issue, anon. We all know what you favor.

                1. Caught on filter – but basically, you continue to deny actual history – and continue to try to rewrite that history just to fit your Windmill chase.

    2. What is “worthy” of a patent is that which promotes technical progress. Whether the claimed subject matter is invented or discovered, whether by brute force or a flash of genius, is not the issue. Decisive is whether the claimed subject matter is new, non-obvious, and enabled. If it is, and if its definition is clear, it’s fit to be patented, and will thereby promote the progress.

      None of this is rocket surgery. It comes from the deliberations of those who wrote the European Patent Convention on a blank sheet of paper, in 1973.

  8. Does anyone see a problem with “the question of obviousness is an objective analysis focusing on the hypothetical mind of a person” ?

    subjective [suh b-jek-tiv] adjective

    1. existing in the mind; belonging to the thinking subject rather than to the object of thought (opposed to objective ).

    2. pertaining to or characteristic of an individual; personal; individual:
    a subjective evaluation.

    3. Philosophy. relating to or of the nature of an object as it is known in the mind as distinct from a thing in itself.

    4. relating to properties or specific conditions of the mind as distinguished from general or universal experience.

    5.pertaining to the subject or substance in which attributes inhere; essential.

    ISTM the inquiry is highly subjective as stated. The word “subjective” is prejudiced because we don’t like squishy things in law, but the use of the word “objective” in this context really seems to be a synonym for “rigorous” or “as complete as possible” rather than something amenable to conclusive categorization.

    Would this case have turned differently if the digital limitation were not in place (i.e. if it was just about the development method)?

    I ask because the movement of any process from analog to digital is essentially obvious- as the Alice doctrine has established that merely moving on offline process online, with nothing else, is not inventive.

    1. I completely agree with your subjective vs. objective view. One way that post-KSR supporters rationalize “ordinary creativity” determinations as being “objective” is by arguing that the creativity is with respect to the PHOSITA and not the actual inventors at issue. KSR was a unanimous decision, which leads me to the conclusion that at least some of the justices didn’t fully grasp the issue at hand or did not know what was at stake. No dissent?!

    2. And, your take on Alice is also in-line with my view. i.e., Alice was an obviousness issue, not subject matter eligibility.

      1. Note what MS wrote: the Alice doctrine has established that merely moving on offline process online, with nothing else, is not inventive

        That’s different from saying that “Alice was an obviousness issue.”

        Alice stands for the proposition that ineligible subject matter can never be turned into eligible subject matter merely by reciting generic computer steps. There’s a lot of common sense in that holding, of course, which explains why it looks like “an obviousness issue” to some people.

        If you want to see a genuine “obviousness issue” all you need to do is flip the holding around: an obvious claim (“do it on a computer”!) can’t be turned into non-obvious claim merely by reciting some additional non-obvious but ineligible subject matter (“display a story about unicorns!”).

        Pretty straightforward stuff.

    3. “ISTM the inquiry is highly subjective as stated.”

      The obviousness analysis required by section 103, and all of the case law interpreting it (e.g Graham, KSR, etc.) is objective, not subjective, as it must be based on objective evidence. The fact that two, or more, people can review the same objective evidence but come to different conclusions does not make it subjective.

      1. AAA JJ, it’s really just playing with words. Everything a court does is supposed to be based on objective evidence, but life sometimes does not afford a binary set of states on given question- so the pursuit itself can only have a subjective result e.g. the mind of a PHOSITA.

        It’s intuitively possible to set out to objectively determine, for instance, the date something was published. It is not possible to know exactly or even very closely what is in the mind of another person, and when the person is hypothetical at that, it becomes essentially politics and philosophy that turn a working determination of state.

        I think “common sense” stands for a subjective process, and I don’t think you can have working patent law (or copyright law) without occasional reliance on subjective determinations of state, and that’s why I think KSR actually does stand for some measure of subjectivity in the obviousness determination.

        1. I agree there’s some “subjectiveness” in every “objective” determination or conclusion. People’s biases and beliefs inform, and affect, their decision making. No doubt. But as long as the decision maker can point to something objective, e.g. a reference that discloses that the feature is known and has some known function or result, the decision is easier to accept than a blanket “Well, to me that seems obvious” determination. Even if I don’t agree. We can debate what disclosures mean, what they teach or suggest or “incentivize” one of ordinary skill in the art to do, but as long as we’re debating about the same objective evidence, it’s the best system we can devise.

          I would prefer not to see “common sense” ever cited as a “reason” for some modification/combination, but it’s easy and lazy, and dumb, people are going to fall back on it whenever making a credible argument presents any difficulty. That’s not going to change, unfortunately.

          1. AAA JJ, I see you are very much a fan of Hotchkiss, because it was the fact that clay was known to be useful in doorknobs, plus the fact that there was no new functional relationship of the clay to the mechanical elements, that cinched it for the Supreme Court.

            I too would like this kind of proof — and it is very much consistent with TSM.

  9. Often, those possessed of “ordinary skill in the art” lack creativity within their own field. This should be a consideration post-KSR.

    Assigning super-human knowledge (all references, anywhere in the world, in any language, whether or not accessed by anyone in public) to the PHOSITA was a way to push the analysis towards an objective standard, since we can actually determine whether a reference was or was not public. By contrast, the “ordinary creativity” of KSR does the opposite – it creates a subjective standard.

    My view is that the pre-KSR legal construct of the PHOSITA was a better fit, since it enabled objective analysis under the TSM requirement. Judicial efficiency is also a consideration here. I think that it’s a reasonable trade off to rob this PHOSITA of creativity while at the same time giving the PHOSITA unlimited knowledge in order to achieve this objective standard.

    1. The (unstated) problem with imbuing “an ordinary amount of creativity” is that such is undefined.

      It starts you on the (very) slippery slope of “Flash of Genius,” which was expressly rejected by Congress in 1952.

      Those that do not learn from history are bound to repeat it…

    2. I think there was no dissent in KSR because there was nothing exceptional about quashing a rigid test in favor of some degree of discretion- it seems to be in inherent requirement for justice once law and equity are joined.

      “The cause why there is a Chancery is, for that men’s actions are so diverse and infinite, that it is impossible to make any general law, which may aptly meet with every particular act, and not fail in some circumstances”

      ~Lord Chancellor in Earl of Oxford’s Case

      But I also think an unsolved problem lay with the conception of PHOSITA- specifically, the “T” in the acronym.

      In the modern age, innovation is less and less the act of one person or a small group than the work of many, or even a combination of persons and non-human actors. “The” art may be dozens of arts- especially when inventions are abstractions, simulations, or models of reality created in digital environments.

      Certainly there has always been overlap among the arts, and there are procedures to narrow the question, but in the information age, that line drawing becomes ever more arbitrary when inventions are often entirely intangible, and inventing entities have vast capabilities among specialized teams.

      Perhaps the test should change from persons skilled in the art to organizations skilled in the arts. OHOSITA?

      1. And yet the USPTO (and other POs?) continue to use a single Examiner in a single Art Unit. Perhaps the examination should change to (a team of specialized) Examiners skilled in the appropriate arts.

      2. Whether “art” should be pluralized is beside the point. The point is that the ordinary practice of every useful art requires numerous skills. It’s not essential that the ordinary artisan possess every skill needed to make or practice the invention starting from atomic elements. Rather, it’s essential to recognize that ordinary artisans in a particular art (and in many cases even people completely unskilled in a particular art) know when a certain “ordinary” skill is needed and they know where to find a person with that skill if they aren’t personally up to the task (e.g., look it up on the Internet).

        For instance, pretty much anybody can dream up a claim about “do this is on a computer” that hasn’t been dreamt up before. And pretty much anybody can identify the necessary skills needed to program a working embodiment of that dream. This is a major problem with 99% of junky “do it on a computer” claims.

  10. There was an interesting opinion in this morning’s (Aug. 23) Wall Street Journal; I couldn’t find a link yet to provide here but the gist was: patents incentivize invention; look at decisions like Sequenom in contrast to CellzDirect; what we really need to do is establish a court with judges who have the technical expertise to be able to properly assess patents and send the patent cases there. LOL! Take a look in the mirror, Federal Circuit!

  11. DuPont’s trade show promotions about both processes was merely one of the several factors for 103 noted by by Court. It does not appear to have been used as admissions against interest by the patent owner [not that that is improper]. Rather, it seems to me, as evidence of widespread knowledge in the art of both by POSITAs, relevant to motivation to combine.

    This is a rather thorough Fed. Cir. decision on 103, and Fed. Cir. sustaining of a 103 S.J. is not that often.

    Since this was a combination of only two references in the exact same and small field of art [no possible non-analogous art argument], one again wonders why the defendants did not use an IPR to reduce client costs?

  12. On the subject of so-called “technical experts” and their respective expert written reports to the court, and on what live cross-examination of technical experts on those reports brings, I note from the case:

    Page 16: The court: “the prior art highlights the advantages of digital imaging over analog imaging” and “The prior art also describes the advantages of thermal development over solvent development”.

    Page 15: DuPont argues that a POSITA “would not have had a reason” to carry out the claimed process.

    Page 17 “DuPont only relies on its expert’s declaration”

    If I knew I were going to be exposed to full cross-examination in open court on my preposterous assertion that the POSITA “would not have had a reason”, I wouldn’t make it in the first place. And without that Declaration, DuPont had no reply to the validity attack.

    I think that a lot of patent trials could be avoided if a better way could be found, to deter so-called experts from making silly assertions that are incapable of withstanding expert cross-examination in court.

  13. In a hurry to apply KSR to deny patents, let’s not forget the other edge of that sword that seemingly broadens the “equivalence” factor of “prior” patents.

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