Evidence Necessary for Showing a New Element Would have Been Obvious

DSS Tech. v. Apple (Fed. Cir. 2018)

In its March 23 opinion, the Federal Circuit reversed two USPTO IPR decisions favoring the patent challenger — holding that “the Board did not provide a sufficient explanation for its conclusions” of obviousness.

In its decision, the PTAB held that the “ordinary creativity” of a skilled artisan would supplied the previously undisclosed function of energizing a transmitter base-station using “low duty cycle RF bursts” — even though it was not taught in any of the cited prior art.  The PTAB did not provide evidence to support its creative-leap.  Still, that leap might have been appropriate if the addition was “unusually simple” or “particularly straightforward.”  On appeal though, the Federal Circuit found that the PTAB had not shown its case — its conclusions lacked evidentiary support.

Dissent by Judge Newman mostly on procedure.

19 thoughts on “Evidence Necessary for Showing a New Element Would have Been Obvious

  1. 4

    The majority opinion relies on only one fact: the specification of the patent spends six columns explaining a communication protocol that allows the base station to shut down the powering of the transmitter when the transmitter is not in use. Therefore, this power saving technology is not simple; ordinary creativity cannot be used to find that modifying a base station to make it low power is obvious in view of other devices made low power in a similar way; and the claims are valid. Lesson: to have a patent upheld, draft a jumbo application.

  2. 3

    Newman argues at length that the PTAB decision was adequately explained. That’s a bit more interesting than just a disagreement about procedure.

    1. 3.2

      Agreed. And also, the procedural point is an extremely important one, if IPRs survive Oil States. Newman’s dissent here is a potent one that is unjustly elided over in PatentlyO’s summary of the case. It is one that would rightly serve as the basis for an en banc review or petition for certiorari.

    2. 3.3

      Judge Newman’s dissent’s procedural point is important. Namely, that remand rather than reversal should be the proper Fed. Cir. decision where the issue is a factual deficiency in the decision that might be curable by reliance of evidence of record, rather than a legal issue. As she notes, it defeats the purpose of post-grant proceedings by leaving that defendant estopped even though all but one claim element here was indisputably in the prior art. [Was that claim element really just ignored in the Petitioner’s brief with no evidence support?]
      [BTW, I thought Newman argued the opposite, for reversal rather than estoppel, in a prior IPR appeal, but that memory may well be wrong.]


          The same thought struck me when I first read this new dissent. You are thinking of her dissent in Van Os:

          When the Patent Office, as it did here, relies on the “naked invocation of skill in the art to supply a suggestion to combine the references,” with no adequate explanation, reasoning, or analysis, the statutorily required result is reversal. In re Rouffet, 149 F.3d 1350, 1359 (Fed. Cir. 1998) (“Absent any proper motivation to combine part of Levine’s teachings with Freeburg’s satellite system, the rejection of Rouffet’s claim over these references was improper and is reversed.”); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (reversing for “improperly combined” references, because “[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent”) (internal citation omitted)).


            I see a bit of a jump along a sliding scale from “naked” to “absent ANY proper” to “improper.”

            Last I checked, “improper” alone captures anywhere on that sliding scale…

  3. 2

    This is a legitimate invention on a fundamental bluetooth technology. The problem with KSR combined with the AIA preponderance of evidence standard is that great inventions are being wiped out with subjective hindsight. If this PTAB panel were better at masking such subjectivity DSS would have lost the rights to the invention. If the Fed Circuit had remanded instead of reversed, DSS would have lost the rights to the invention. Under a 50% preponderance standard and KSR, every patent claim can be rendered “obvious” with conniving lawyers and experts. Especially when procedure limits access to objective evidence of non-obviousness such as copying and commercial success. It is almost entirely subjective at the PTAB.

    Director Iancu will do a better job at keeping properly examined patents from being instituted, which will help alleviate this trap.

    But Congress needs to raise the standard for overturning issued patents on obviousness under KSR. The STRONGER Patents Act would do this, requiring clear and convincing evidence of obviousness. Better yet, the U.S. Inventor Act would eliminate the PTAB and return jurisdiction over patent rights to real judges and juries.

    1. 2.1

      I certainly agree with you that KSR has made a difference in obviousness litigation since 2007. I think, however, that it is a mistake to suppose that the evidentiary standard (preponderance of evidence ,”PoE,” or clear & convincing, “C&C”) makes much difference to the outcomes. You can count on one hand the number of cases that mention the standard as anything other than an off-hand on the way to the holding. I happen to be persuaded by Ron Katznelson’s argument that the PoE standard is unconstitutional in IPRs, and that no less than a C&C standard is required as a matter of due-process, but I am very skeptical that the standard makes much practical difference to litigation outcomes.

      Here is a prediction: even if Congress were to amend the IPR statutes to require that unpatentability be proven by C&C, it would not much change the outcome of IPRs. In fact, I will make my prediction a little bit bolder: there would be no statistically significant difference in the rate of invalidation by IPRs before and after such a legislative change. The difference between PoE and C&C is largely illusory in Art. III courts, and it will prove equally illusory in the PTAB if the change is ever tested.

      1. 2.1.1

        Good point. You may be right. Do you think it influences a lay juror’s judgment more so than an APJ?


          I doubt it. I doubt that most jurors understand the difference between PoE and C&C, or even that there is a difference.


            I think you underestimate jurors. From what I’ve seen, most take the duty and the instructions seriously. I would bet most can understand that there is a difference between preponderance, clear and convincing, and beyond a reasonable doubt. It is explained to them that there is a difference. I wouldn’t say they have an attorney’s appreciation for the various shades of gray between each standard, but they do understand there are different levels, and some are higher than others.


              I think you underestimate jurors.

              Naturally, I will disagree that I am “underestimating” jurors, but you are certainly correct that my thinking here rests on a fairly poor estimation of the value of juries and jurors in patent cases. I suppose, however, that any blanket generalization about a heterogenous mass of mass of individuals is bound to be wrong about many of them, so if you disagree with my assertion at, I confess that I cannot rebut your contrary assertion with any sort of logical rigor.

    2. 2.2

      Josh –

      Is there more to the invention that the summary above implies? If not, how is “energizing a transmitter base-station using “low duty cycle RF bursts”” not obvious in view of RFID chips, which have been transmitting their stored information in response to being power by an RF burst since at least the 80’s ?

      I know ’cause I keep reading about lost dogs and cats returned to their owners after years long absences due to being wanded at an animal shelter hundreds of miles from home.

      Also, if the invention is about Bluetooth, why does the summary refer to a base station?

    3. 2.3

      [This is not to dispute your assertion that this is “a legitimate invention on a fundamental bluetooth technology,” merely to challenge your assertion of an IPR procedural bar to 103 evidence.
      The patent owner in an IPR is very unlikely to get any authorized Discovery demands for involuntary objective evidence of non-obviousness [Graham factors] such as widespread industry copying, or commercial success due to the invention, or long felt need. But IPR procedures do not prevent the patent owner from conducting surveys and doing other such evidence collecting by itself and presenting such evidence and arguments in the IPR with declarations, and it has been done, and should be where releavant.

      1. 2.3.1

        So would you agree that precluding the patent owner from discovering evidence of copying or commercial success is a less reliable and less fair approach to determining whether an invention would have been obvious?

  4. 1

    I wonder if 6 is still wondering how important the factual predicate of the legal question of 101 is…

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