What is the Role of the Objective Indicia of Nonobviousness

by Dennis Crouch

ZUP, LLC, Petitioner v.  Nash Manufacturing, Inc. is a nice teaching case because the invention is so simple.  Zup’s patent covers a wake-board with a particular handle configuration and a method of riding the board — using the handles to change positions. U.S. Patent No. 8,292,681.

In its decision, the Federal Circuit sided with the accused infringer Nash — affirming that the asserted claims are invalid as obvious.  In particular, the Federal Circuit agreed with the lower court ruling that Zup had simply combined well-known elements (handles & foot bindings, e.g.) to solve a longstanding watersport goal.  Zup presented evidence of secondary considerations of both long-felt but unresolved need and copying.  Zup explains its position:

Here, the defendant Nash had been in the field for over 50 years, obtaining numerous patents on water recreation devices similar to the ZUP Board. Nash had tried, but failed, to create a device that would allow broader participation in watersports like waterskiing. Nash praised the ZUP Board. Nash attempted to do business with ZUP, obtaining a ZUP Board from ZUP to analyze. Instead of partnering with ZUP, however, Nash decided to copy ZUP. The ZUP Board is nonobvious if Nash tried and failed to invent it for over 50 years and then copied it
after failing to partner with ZUP.

The appellate majority rejected Zup’s arguments and instead ruled that “The weak evidence of secondary considerations presented here simply cannot overcome the strong showing of obviousness.”  The majority was penned by Chief Judge Prost and joined by Judge Lourie.  Writing in Dissent, Judge Newman argued that the majority improperly treated secondary considerations as a rebuttal factor rather than an integral aspect of the obviousness analysis.

Now, Zup has petitioned the Supreme Court for writ of certiorari — asking whether secondary considerations are properly relegated to rebuttal evidence.

Read the new petition here. SCOTUS.

The Role of Objective Indicia in Non-Obviousness Doctrine

 

125 thoughts on “What is the Role of the Objective Indicia of Nonobviousness

    1. 13.1

      “as the the new…”

      Er, “as well as the new…”

    2. 13.2

      My favorite line in the new §112 document (pg. 19, discussing the written description requirement): “It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it.”

      If that standard gets applied forthrightly, ~80% of §101 rejections will become moot points. People will know that this sort of claim defined in functional terms can never satisfy §112. As a result, people will just stop writing the claims, and we will stop having to argue about the applicability of §101 in these circumstances.

      1. 13.2.1

        “If that standard gets applied forthrightly, ~80% of §101 rejections will become moot points. People will know that this sort of claim defined in functional terms can never satisfy §112. As a result, people will just stop writing the claims, and we will stop having to argue about the applicability of §101 in these circumstances.”

        Won’t people just start adding a little bit of discussion to the specs about how the claimed function is achieved (usually “in a herp derp embodiment”)?

        1. 13.2.1.1

          If an applicant describes one way of achieving a functional outcome, and then claims all ways of achieving that functional outcome, then the applicant still has not satisfied the written description requirement. To satisfy §112, people will not just have to “add[] a little bit of discussion to the specs about how the claimed function is achieved…,” but also limit the claims to those means that are described in the spec. Given that the problem is the lack of such claim limitations, the reintroduction of such limitations (because one is forced by §112 to do so) = problem solved.

          1. 13.2.1.1.1

            (Pg. 17) “The analysis of whether the specification complies with the written description requirement calls for the examiner to compare the scope of the claim with the scope of the description to determine whether applicant has demonstrated possession of the claimed invention,” (emphases added).

            1. 13.2.1.1.1.1

              Or, as the established caselaw of the EPO (its “White Book”) has it:

              “The terms of a claim should be commensurate with the invention’s technical contribution to the art.”

              link to epo.org

              Increasingly, I get the impression that both the USPTO and the CAFC judges are taking their inspiration from the EPO’s White Book.

              1. 13.2.1.1.1.1.1

                I cannot remember if “technical” was ever defined in a non-circular way….

      2. 13.2.2

        Hmm. That sound familiar…

        “It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement.” MPEP 2161.01.I

        I agree that 112(a) should be used to reject many of the software oriented claims presently rejected under 101.

        But it seems extremely likely to me that newfound interest in existing policy will not lead to real enforcement of that policy, but rather will simply serve as a cover for the changes being made to 101.

        1. 13.2.2.1

          Ding! Ding! Ding!

          1. 13.2.2.1.1

            Night Writer, you have been correct all along and deserve that “Ding! Ding! Ding!” Well done.

            Oh wait, this is Malcolm trying to take credit for what Night Writer has long been saying.

            Wtf?

            1. 13.2.2.1.1.1

              No idea what you’re rambling on about. I was complimenting Ben on recognizing the reality of what Iancu is trying to do here. In a nutshell, Iancu’s S00per Deep Strategery here is to give applicants in the s0ftie w0ftie arts more procedural games to play for the purpose of getting claims through to grant. The bit about written description is nothing new. It’s being presented in the guidelines for the purpose of sn0wballing people like GregDeL into believing that there is a new kid on the block who’s going to do some real work. Ben understands the reality which is that this kid isn’t new, his hands remain tied behind his back, and Iancu is going to make sure that this doesn’t change.

              I mean, let’s face it. The moment 112 gets applied correctly to ‘do it on a computer’ g@r bage and all the claims being tanked under 101 get tanked under 112 is the moment that you and your cohorts start howling about 112 being the worst thing ever, rogue PTO, judicial activism, etc.

              1. 13.2.2.1.1.1.1

                No idea what you’re rambling on about.

                Of course not [pats Malcolm on the head]. Now run along and let the grown-ups talk about the law.

        2. 13.2.2.2

          Well, you have rightly punctured my hopes. I confess that I had not recognized that as a direct quote from the existing MPEP.

          So, if that is already in the MPEP, how do examiners in the data processing arts get away with not making WD rejections? In the art units with which I work (1600s), WD rejections are as common as air. Put in a functional limitation—get a WD rejection. That is just the normal course. You do not get past the rejection until you add some structure (“a lipase” gets rejected and becomes “a lipase having at least 85% sequence homology to SEQ ID NO:1,” or some such).

          I do not fault the examiners for that sort of rejection. They are just doing their job. If they did not make that rejection, they would hear about it in their performance reviews.

          Why does the same thing not happen in the data processing art units? How does “a processor configured to determine vertical distance between an endpoint of a vectors in a data list,” or some such, not get hung up on §112 until structure detail is added about the precise “configuration” that makes the processor to enact that function?

          1. 13.2.2.2.1

            Why? Perhaps because there is in the USPTO nobody checking whether i) the performance reviewing managers in the silo responsible for the lipase arts and ii) the performance reviewing managers in the silo responsible for the data processing arts, are all on the same page. The essence of “quality” is consistency” is it not? Perhaps the new Commissioner is in the process of appointing a Quality Tzar tasked with achieving an overview of both of these silos, and then getting them consistent on their WD performance?

            1. 13.2.2.2.1.1

              MaxDrei,

              A somewhat interesting “take” on “silos” which at first glance appears eminently reasonable.

              That is, until one realizes that claims are evaluated with consistency – but also necessarily from the viewpoint of a Person Having Ordinary Skill IN THE ART.

              That part of “IN THE ART” is what is baffling p00r Greg here, who clearly only understands innovation in the single art to which he has operated in.

              This is a clear case of something that YOU should be familiar with: the danger of offering one’s own eyeglasses to another because those eyeglasses work for the particular individual.

              WD and possession also fall (and “consistently” fall) very much dependent on the particular ART. What may “pass” in what ART may certainly not “pass” in another, and one MUST remember to take into consideration that context.

              1. 13.2.2.2.1.1.1

                The posts from RG lend support to my suspicion that the USPTO is not consistent in identifying the ground (eligibility, WD, enablement, definiteness, obviousness) for declining to allow any given claim that strikes the Examiner as too wide to let through to issue.

                I do not see that the quality problem is that different USPTO Examiners have different definitions for the PHOSITA in their particular field of art.

                The solution: better training at the USPTO. Imposed not only for Examiners but also on those who train the Examiners.

                1. I find minimal fault in your reply here (notably reliance on anything that Random offers), but your Ends reached in THIS comment largely are faultless.

                  That is, certainly “better training” not only for the examiners, but also for those who train the examiners is a “Mom and apple pie” type of truism — no one can reasonably disagree with it.

                  Your statement of “that different USPTO Examiners have different definitions for the PHOSITA in their particular field of art” is a bit odd though, as it is NOT that PHOSITA is defined differently per se (it is not the defining in and of itself that is different – that aspect is consistent). It is the natural consequence that “ITA” will be different (or in other words, the context of the consistent defining will yield natural differences).

                  That you do not see “the quality problems” stemming from this aligns with my post, but is most definitely not aligned with Greg’s post (nor Random’s) as they both are very much stuck in their “silos” as it were. Slightly different silos for each, with Greg being the silo of a single view of innovation and Random the silo of his rather odd view of how innovation law is supposed to work.

                2. Aw, just when it was getting interesting, the horses have refused to drink of the well to which they were brought.

    3. 13.3

      Probably true, just like donny t is rollin in china.

      “While we anticipated some challenges in key emerging markets, we did not foresee the magnitude of the economic deceleration, particularly in Greater China.”

      link to finance.yahoo.com

  1. 12

    NW: [Commercial success] is a natural part of determining whether something is obvious or not

    First of all, I applaud what appears to be a sincere attempt at using your br @ i n. Perhaps try applying some of the same effort (or even half of that effort) towards understanding why consideration of the prior art is an essential step for determining the eligibility of most patent claims. You’ll surprise yourself!

    Second, from a logical standpoint, there is nothing at all “natural” or “necessary” about looking at post-filing evidence (e.g., “commercial success”) to determine the obviousness of a claimed invention where that determination is statutorily required to be made as of the filing date.

    Third, as an aside mainly, I’ll note that the term “commercial su c cess” is not a scientific term. What does the term mean exactly? Is it merely a synonym for “profitable”? Who defines “success”?

    In any event, “Commercial su c cess” is certainly relevant to da mages and is likely going to be a deciding factor for a patentee when determining whether to bring suit. But it’s not “naturally” or necessarily a part of any determination of the obviousness of making the invention at the time of filing. It is, in fact, a great example of a hindsight analysis whose “reasoning” apparently goes something like this: “Given the commercial success observed years after the filing date, the invention can not be obvious otherwise it would have been invented earlier by another profit-seeking entity.” That is most definitely hindsight reasoning. If the hindsight reasoning of commercial success is accepted, then evidence of the near simultaneous (but post-filing) invention by others is, without question, extremely and directly relevant to the question of obviousness.

    Unfortunately for defenders of the “commercial success” hindsight consideration, we already know from case after case after case that the apparent “reasoning” provided above is out of line with reality. In part, that’s because so many patent claims out there don’t describe the infringing article in all its valuable details but rather describe simply one component out of many others. In part it’s because marketing and other factors plays such a huge rule in determining commercial success. And in part it’s because nobody purchases items based on their “non-obviousness.”

    Question: is there a single example out there of a case where a huge commercial success by itself was sufficient to flip a prima facie determination of obviousness to non-obviousness? Similarly, are there any cases where a borderline non-obvious case was deemed obvious because the product was not successful (relative to competing products)? And lastly, are there any instances where a non-practicing patentee (e.g., a failed business venture) was able to successfully rely on the commercial success of an alleged infringer’s product to prove non-obviousness of the allegedly infringed claim? That would seem to really take the cake.

    1. 12.1

      why consideration of the prior art is an essential step for determining the eligibility of most patent claims.

      Eligibility does not change based on time and whether or not an item becomes prior art.

      Leastwise, NOT as Congress as written the statutory law.

      Yes, we both know that you do not like (and do not accept) the law as written by Congress, but that is what you have to deal with.

    2. 12.2

      Second, from a logical standpoint, there is nothing at all “natural” or “necessary” about looking at post-filing evidence (e.g., “commercial success”) to determine the obviousness of a claimed invention where that determination is statutorily required to be made as of the filing date.

      Again, this has been explained to you – please stop your dissembling and pay attention.

  2. 11

    image inline

  3. 10

    There is simply no basis for a competitor that was late to the game to be allowed to invalidate a patent like this on summary judgment. There is a genuine dispute over several material facts. If it were obvious, then why didn’t the industry adopt it before? It is not a wakeboard with bluetooth connectivity or a wakeboard made comprising carbon nano-tubes. It is a wakeboard with technology that was available for decades before Glen Duff combined them into a useful commercially successful product.

    Nash, the competitor, should be required to use the old technology since they didn’t come up with the design first or even independently. If Duff was not first to invent/file under 102, then yes his patent is invalid. But not on 103 obviousness. If it was obvious then it was not inventive and Nash doesn’t need to use it, doesn’t need to invest in manufacturing and marketing a competing product with it, doesn’t need to wasted money in court, appeal, and petition just to gain the right to sell a non-inventive improvement. It it wasn’t an invention, then Nash would just save all this trouble and sell a product using the prior art.

    The idea that a competitor can learn a technology from an inventor, praise that technology, sell millions of dollars worth of copies/derivatives, and then say it was obvious is preposterous. All of the facts favor the inventor. Only subjective hindsight favors the infringer.

    1. 10.1

      Here is a photo of the infringing board. Why didn’t Nash use a carabiner or other secure means of attachment? Probably because there is an advantage to this mechanism, an advantage worth fighting all the way to the Supreme Court. Switching to a carabiner or similar would have saved hundreds of thousands in legal fees. This feature must be very valuable. If it is valuable, how can it not be inventive?

      link to cdn.gandermountain.com

      1. 10.1.1

        JM: If it is valuable, how can it not be inventive?

        Lots of things are valuable and not inventive in the least. Diamonds. Gold. Aspirin for the headaches that reading your comments causes me.

        You’re moving into self-parody here, by the way. Please stop. Wait — are you Ball00n Boy? Oh dear.

        1. 10.1.1.1

          Talking about self-parody…

          Aspirin was patented in Britain (filed 22 December 1898) and the United States (US Patent 644,077 issued 27 February 1900).

          1. 10.1.1.1.1

            Billy, nobody is arguing that aspirin was never patentable.

            Please resume that f cking yourself thing we discussed.

            1. 10.1.1.1.1.1

              s of things are valuable and not inventive in the least. Diamonds. Gold. Aspirin

              Check yourself.

                1. None really expected – this is pretty much routine for him to blather something, have that thrown in his face, and then have him run away (all while that he is “still here” ).

                2. Comments are stuck in filter and no idea why.

                  [shrug]

                  But aspirin is old and can’t be invented again in 2019. It can certainly be sold for a profit, however.

                3. Nice goal post move to “invent again”.

                  Let me check.

                  Nope.

                  No, that does not remove the foot from your mouth.

                  At least I think that’s a foot.

                  Maybe if you try your spin a couple of times…

                  Nope. That does not work either.

                  Ah well. Same result: Malcolm is and remains a doush.

              1. 10.1.1.1.1.1.2

                Last time I checked it was 2019 and aspirin hasn’t been “inventive” for a long, long, long time.

                It is still being sold, however, and profitably.

                Stay off the hard d r u g s, Billy.

              2. 10.1.1.1.1.1.3

                It’s 2019. Aspirin is not inventive now and never will be again. But people are still selling it, for a profit.

                That was the point, obviously.

    2. 10.2

      If it were obvious, then why didn’t the industry adopt it before?

      That’s a hindsight analysis. It’s rather unreal and incredibly frustrating to see wannabe patent attorneys asking silly irrelevant questions like this one.

      Here’s one possible answer (out of many other possibilities): the “industry” didn’t “adopt it” because it wasn’t clear that there was a market for it, and the “industry” perceived that even if there was a market it wouldn’t be possible to get a monopoly on the product because … it’s so friggin’ obvious. So the “industry” waited until the market for the product became clear and then the “industry” moved in.

      This kind of thing happens all the time. It’s called “doing business” in a competitive and (relatively) free market. It’s a tough thing for some patent attorneys to wrap their brains around, apparently.

      If it was obvious then it was not inventive and Nash doesn’t need to use it,

      Huh? That makes no sense whatsoever. People make, use and sell new but non-inventive things all the time. And they make money doing it. All. The. Time.

      The idea that a competitor can learn a technology from an inventor

      What “tech” are you talking about? There was no “tech” invented here. Some well-known existing solutions in the art were combined for their intended purposes.

  4. 9

    Martin and other below are playing little ig norant games. The difference between the 101 exception and secondary indicia of nonobvious is — you simians — that the statute in 103 merely refers to obviousness. All the crxp that you blab out was created by the SCOTUS.

    So secondary indicia of nonobviousness is not an “exception” or judge created common law. Instead it is a natural part of determining obviousness and, in fact, the opposite is true in that it is not only not an exception but not considering it would be judicial activism as the statute supports considering it. It is a natural part of determining whether something is obvious or not which is what the statute supports.

    (Anyway, in a big hurry so that didn’t come out completely right.)

    1. 9.1

      The CAFC keeps marching on in burning down the patent system. Chip. Chip. Chip.

      Not much left at his point. Applications of inventions made in the US declining, patent value 20 percent of what it was pre-AIA, uncertainty continuing to increase as opinion after opinion from the CAFC uses judicial activism to limit the patent right, Oil States so patents are not property, etc., etc., etc.

    2. 9.2

      Sure. But it’s completely unnatural to determine the subject matter of a putative invention to determine if it’s an “invention patentable” under the category of “process”. Totally unnatural.

      What a tool.

      1. 9.2.1

        to determine if it’s an “invention patentable” under the category of “process”.

        Try at least to get the terminology correct when you are calling someone else a t001.

          1. 9.2.1.1.1

            I forgot nothing – YOU should figure it out before YOU tr011 with the “t001” insults.

        1. 9.2.1.2

          § 101 – Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

          1. 9.2.1.2.1

            Great.

            Has nothing to do with you being a t001 while attempting to call someone else a t001.

            1. 9.2.1.2.1.1

              OK, I’ll figure out how using the identical words to the statutory language is not getting the terminology correct. I’ll get right on that.

              OK, I figured it out. You thought you caught me in the basic error of confusing patentability for eligibility, but because you are not especially bright, you forgot that section 101 is headed “inventions patentable” in relation to eligibility.

              You of course won’t cop to your obvious error, so you use the pediatric technique of suggesting that I figure it out.

              Done and done.

              1. 9.2.1.2.1.1.1

                I forgot nothing – you forgot context (and acted as if context did not matter in your attempted insulting of another as a t001 – thereby BEING the t001.

  5. 8

    Guess I got banned?

    1. 8.1

      So, quoting a SCOTUS case, get your post removed. Dennis turn off the snowflake filter, we can handle a SCOTUS dissent. Whatever. What we have here is a repeat of Marconi. The Frankfurter dissent: link to law.cornell.edu

      1. 8.1.1

        The fact is that the only way patents will continue in the USA is if we dissolve the CAFC.

        1. 8.1.1.1

          Do we have to use acid or will water work?

          1. 8.1.1.1.1

            Water works just fine with witches.

            Just ask Dorothy.

    2. 8.2

      There are new terms added to the filter I think.

  6. 7

    The dissent takes one sentence out of the majority opinion and tries to paint the majority as regulating secondary considerations to rebuttal status. That’s not what they did.

    But (hot take here) there’s nothing legally incorrect if they did. The dissent quotes Graham a lot, but this case is stunningly similar to Toledo Pressed Steel v. Standard Parts. There, as here, the invention was aggregation of known elements in the prior art for their usual purpose. The court held that:

    On the records before us, it is impossible to hold that production of the patented device required more than mechanical skill and originality attributable to those familiar with the art of protecting flames of kerosene and other burners.

    The patentee argued a long felt need, but the response was: plaintiff cites efforts to find something useful to protect open-flame torches from extinguishment by wind or rain put forth by one engaged in operation of a street railway and by another employed by a manufacturer of lanterns. But it does not appear that either was familiar with the relevant prior art. Nor is there any evidence of general or widespread effort to solve the problem here involved.

    Instead the holding was that mere aggregation (i.e. simple combination for predictable results) is not patentable.

    A&P Tea Co noted that “Commercial success without invention will not make patentability.” The only way to read that sentence is that secondary considerations are exactly what they claim to be – secondary. There appears to be no requirement that secondary considerations be taken at the same time or given the same weight as the other factors. There is simple a command they be considered.

    And in fact, even Graham was not so categorical in its statement. Instead it said: Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

    Secondary considerations MIGHT be utilized for the purpose of enlightening the subject matter.

    KSR quoted the above and said: While the sequence of these questions might be reordered in any particular case, the factors continue to define the inquiry that controls.

    In short – the purpose of secondary considerations is to provide background for the underlying question of whether the differences between the claimed invention and the prior art are sufficient to be non-obvious to one of ordinary skill. There’s nothing wrong with considering secondary considerations after the main analysis. There’s probably nothing wrong with barely considering the secondary considerations at all. Secondary considerations aren’t an element of non-obviousness, they’re indirect facts relevant to filling in the blanks.

    There’s a whole mess of cases where the Supremes constantly point out that simply combining known things for their usual purpose is never inventive (sidenote – looking at you, software people). This instant case is simple aggregation. There’s no problem with looking at all of the evidence and saying what A and P Tea essentially said – Secondary indicia of non-obviousness absent invention will not make patentability.

    1. 7.1

      Here’s what I think happened in this case – I do think the defendants copied. But what they copied was an idea. They saw a guy who had (unwittingly) taken several known stabilizing features and put them all on a single board, and they realized that there was a commercial market niche. They then designed their own board, because there was absolutely no problem in putting known things onto a board with ordinary skill, and their board was different from the claimed board.

      The plaintiff (and the dissent, probably) are a little miffed that someone so brazenly and “evil”ly copied the idea, and want to transmute that into an infringement action. But there’s nothing actionable about copying non-inventive subject matter, even if the purpose is specifically to screw the first mover out of the marketplace.

      The facts are that a guy worked for four years to reinvent the wheel three times (with the handgrips, the foot bindings and the rails, all of which the art already did) – maximized their benefits by putting them together, and promptly had his marketing theory snatched out from under him by a big corporation.

      The fact that nobody thought of his marketing angle before doesn’t mean the board design was non-obvious, any more than it is non-obvious to lock valuables inside a combination safe, inside a retinal-scan-entry room, inside a locked building. Taking three things designed to achieve a result and using them together to maximize the chances of the result occurring or the effect of the result is obvious, and it remains obvious even if nobody commercially exploits a segment of the market that would buy such a system.

      The patentee is not an inventor. An inventor advances the art. The patentee is a guy with a great marketing idea for known subject matter who didn’t protect himself with a contract.

      1. 7.1.1

        Thanks for that RG. As you have looked into the facts, and I have not, can you comment on my suspicion that the board in the illustrated embodiment is, as a fact, better for tyro riders than all the known boards, namely in its ability to facilititate their rising smoothly and confidently, from a prone to a standing position.

        I ask because I’m thinking how the EPO’s “problem and solution approach” to patentability might play out here.

        For the EPO, the patent application would need to explain the problem, and show that the claimed combination of technical features does indeed solve it, showing also that the prior art doesn’t. Then, in Europe, they might have surfed through to issue, and survived any attacks on patentability/validity. The very fact that the means to solve the problem were available for so many prior years points towards rather than away from patentability (I cite John Duffy’s “Timing” Paper on obviousness).

        As far as I can see, there is no patent family, no EP patent application. But (next best thing) what do you say, RG?

        1. 7.1.1.1

          Duffy? What a joke. He obviously has become a large-corporate advocate and he should be cited as such. For example, John Duffy, large-corporate advocate who works for the propaganda department of large corporations, has said that he feels that no patent asserted against his clients is valid.

          1. 7.1.1.1.1

            I cited Duffy’s paper because it argues that the longer the claimed features have been well-known, the more the indication is, that their aggregation is not (I repeat, not) obvious.

            But that was a long time ago. Perhaps, since then, he has (in NW’s mind at least) joined the anti-patent crowd (whatever that is).

            1. 7.1.1.1.1.1

              >>joined the anti-patent crowd (whatever that is).

              How about the crowd that is being paid crazy sums of money to help burn down the patent system.

      2. 7.1.2

        The marketing centered on a purely functional feature that had never been tried before. Zup was not marketing a wake board with an integrated cup holder. And even if that were the invention, a jury still should weigh the fact that adding a cupholder was followed by copying and commercial success. But this was not a cupholder. It was a feature that enabled unskilled riders to ride/control a board, rather than just get towed around on their bellies.

        1. 7.1.2.1

          It was a feature that enabled unskilled riders to ride/control a board, rather than just get towed around on their bellies.

          No, it was a series of features that had all existed before and all of which had been independently identified as enhancing the stability of the board, and all Zup did was use all three of them on a single board. To the extent the combination of features had never been tried before, everyone agrees the board was novel, but that doesn’t defeat the obviousness issue.

          And even if that were the invention, a jury still should weigh the fact that adding a cupholder was followed by copying and commercial success.

          That’s not the law. Obviousness is a question of law based on underlying fact issues. If you construe the copying and commercial success in favor of the patentee, it’s a question of law as to what is obvious.

    2. 7.2

      Random,

      We’ve had discussions on “mere aggregations” previously.

      Were you not the one that pointed me to the MPEP section that indicates that mere aggregation is NOT a basis for rejection?

      Do we (does anyone) have a citation to the words of Congress (or a legitimate Court interpretation — not a Court original writing — that points out a “synergy” requirement?

      I think that there may be (subtlety) more than “mere aggregation” in a standard obviousness rejection. Even for piece parts doing what piece parts have always done.

      1. 7.2.1

        2143(I)(A)

        1. 7.2.1.1

          Evidence of long felt need goes against a finding that the combination would have predictable results (like would help the novice user rise). This finding is required under 2143 (I) A.

          It is possible that the alleged infringer submitted other evidence that supported the finding that the combination would have predictable results, and that in totality, a conclusion of obviousness is justified.

          1. 7.2.1.1.1

            I do not think that your insertion of “of predictable results” is kosher here.

            Long felt need is a bit different than “we combined these features,” and I do not think the nexus is there that you want to rest upon.

          2. 7.2.1.1.2

            PiKa,

            But now that I see where Random was trying to go, I see where you are coming from.

        2. 7.2.1.2

          2143(I)(A) is NOT the section that we previously discussed as to the notion of “mere aggregations.”

          I was thinking more along the lines of:

          2173.05(k) Aggregation [R-08.2012]

          A claim should not be rejected on the ground of “aggregation.” In re Gustafson, 331 F.2d 905, 141 USPQ 585 (CCPA 1964) (an applicant is entitled to know whether the claims are being rejected under 35 U.S.C. 101, 102, 103, or 112 ); In re Collier, 397 F.2d 1003, 1006, 158 USPQ 266, 268 (CCPA 1968) (“[A] rejection for ‘aggregation’ is non-statutory.”).

          Sure, there are instances for which an aggregation may properly be rejected under 103. But importantly, there are also instances for which an aggregation would NOT properly be rejected under 103.

          That’s a rather important point to keep in mind.

      2. 7.2.2

        Do we (does anyone) have a citation to the words of Congress (or a legitimate Court interpretation — not a Court original writing — that points out a “synergy” requirement?

        Yeah its the word “obvious,” one of which’s definitions is “self-apparent.” When you do something and it results in the same thing that always happens, the act is obvious. I flip a switch because the switch has always controlled a light, and its dark outside. The switch is an obvious solution to my darkness issue because it controls the light. The same is true even if I flip four switches in four rooms. The same is true even if one switch controls four lights. Nobody would call turning on a light non-obvious.

        The same is true in any other art. If the hypothetical person of skill in the art knows about all the possible “light switches” there’s nothing non-obvious about flipping said switches. Known cause to effect relationships are obvious. Its only when a cause to effect is not known, or otherwise misjudged, i.e. it’s only when turning on four lightbulbs “synergizes” to use your word into the light of fifteen lightbulbs that you can say it is non-obvious.

        1. 7.2.2.1

          I’m grateful, RG, for the point that obvious means self-apparent. That’s useful in the EPO space, where technical effects are the key to patentability.

          But returning to the waterboard case, the claim recites the tow bar holder, the hand holds, the footholds and the rails under the board, and all of these are needed, in combination, to get the tyro rider from prone to standing. Omit even one of them and you lose the effect. See Fig 9 A-H of the patent, and its col 11, line 11.

          I see a degree of synergy in the claimed feature combination. You not?

          1. 7.2.2.1.1

            “All of these are needed in combination”

            That is not a universally accepted view.

            I see that you are seeing some synergy in a view that “all are needed.”

            But take for a moment the opposing view: all are not needed, and basically all that you have are multiple items contributing to a “same effect.”

            I have to wonder about “synergy.” The standard view is that the sum is greater than the parts.”

            To use an analogy, 1 + 1 = 3.

            But what is the sum when the parts are each geared to the same effect?

            Or in the analogy,

            1 + 1 = 1

            But in the second example, do you really have “just 1”…?

            Is there not value beyond the “just 1” inherent in having a redundancy plan? Is not the redundancy plan itself synergistic?

            Is not the analogy more like

            1 + (possibility/probability of -1) * “X” + “other 1” * “”X” – which is clearly a different equation (no matter an actual End answer).

            If there is “no synergy” in redundancy, then there would be no redundancy.

            Sometimes the simple terms (like synergy) have meanings layers that reach deeper than a first blush.

            Or in the analogy,

            1 + 1 = 2ish, and ANY “ish” is enough.

            1. 7.2.2.1.1.1

              This also may be akin to the Diehr case, in which each of the various items – in isolation – all existed prior, and existed for their claimed uses. What set Diehr apart (Diehr’s “Point of Novelty”) was the software running everything at once.

              Autoclaves existed prior.
              Thermocouples existed prior.
              Self-opening doors existed prior.
              Certainly, the Arhenius equation existed prior.

              Heck, even instances of “perfect cures” (if only by happenstance) existed prior.

              So not only did Diehr pass 101, but Diehr also passed 103.

              The integration of each item for its own effect – the system layered a level of “synergy” (depending on what you want to consider to be included in “synergy”)…

            2. 7.2.2.1.1.2

              After having reviewed the patent, Figs 9a-h and col 11, line 11, please explain “that is not a universally accepted view”. What is the basis for your statement?

              Compare a climbing wall. Remove one hold and, suddenly, you cannot get to the top. It’s just the same, with the subject matter claimed here. If you disagree, say why.

              All your 1 + 1 = 1 stuff, I don’t follow it at all. Sorry.

              1. 7.2.2.1.1.2.1

                I need a belt.
                I need suspenders.
                I need a belt AND suspenders.

                Do you really “need” a belt and suspenders?

                1. You still haven’t got round to looking at Figs 9A-H have you anon? Each of the elements recited in the claim performs a different function, within a sequence of steps from prone to standing. Remove one link in the chain and there is no chain any more. It’s a combination.

                  Conversely, belt AND suspenders is a collocation. Belt alone holds up trousers. Suspenders alone hold up trousers. Belt and suspenders together hold up trousers, no more effectively than one or other does alone.

                  In Europe, trainee patent attorneys are required in their first week or so to grasp the difference between a mere collocation and a true combination.

                2. In Europe, trainee patent attorneys are required in their first week or so to grasp the difference between a mere collocation and a true combination.

                  Somewhat off topic but the reference to the alleged distinction between “collocation” and “combination” reminds me of one of the better lines from Great A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 150 (1950):

                  While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test. It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention. In course of time the profession came to employ the term “combination” to imply its presence and the term “aggregation” to signify its absence, thus making antonyms in legal art of words which in ordinary speech are more nearly synonyms.

                3. Gregg,

                  That’s why above, I ask about the aggregation item.

                  (as well, that’s why I point out that synergy and obvious are NOT the same terms, nor necessarily aligned)

                4. Conversely, belt AND suspenders is a collocation. Belt alone holds up trousers. Suspenders alone hold up trousers. Belt and suspenders together hold up trousers, no more effectively than one or other does alone.

                  I get what you are saying, even as you miss the point that I made regarding a system designed to have redundancy.

                  But others (particularly Random) STILL will not agree with what you are saying.

                  Let me then modify the belt and suspenders hypo in the hopes of furthering your understanding, by laying out a system claim such as:

                  A method of ensuring a redundant fastening system, comprising
                  i) positioning an item to be fastened in place,
                  ii) sliding a belt through a series of belt loops,
                  iii) fastening the belt through a belt fastener,
                  iv) attaching a first suspender mechanism to a rear portion of the item to be fastened,
                  v) arranging the suspender over a portion of a body and aligning a second suspender mechanism to a forward portion of the item to be fastened, and
                  vi) fastening the second suspender portion
                  wherein the belt and the suspender provide a redundant fastener which prevents unfastening should one or the other of the fastening mechanisms fail in service.

                  Granted, this is meant as a “playful” read on “synergy,” and my “math” analogy is not being grasped by you, but consider that — as claimed — the full series of steps (much like the patents FIG 9A-9H series must be put in play for the fastener system to exist as claimed.

                  Yes, there certainly is the notion that each element of the fastener system does “what it does.”

                  But if you read what Random is saying, the exact same logic of each element of the waveboard steadying mechanisms are ALSO doing “what each does.”

                  Again, I offer this as a “bridge” from what you see as “synergy” to the mere possibility that a redundant system — in and of itself — has a certain type of “synergy.”

                  And if you do not think that redundancy is a synergistic effect, then I would put to you that you have never bothered thinking about real world engineering systems that employ critical failure path engineering.

                  Another way of thinking of the possible “synergy” of redundancy is to think of any type of “teaching” available in the prior art for each individual item of prior art.

                  Each individual item would NOT likely teach or suggest a redundancy combination. (and yes, I use your word of “combination” on purpose, and for effect). Why would any one item of prior art teach or suggest something more than what that item purports to resolve on its own?

                  So, just as you view some “sequence” of redundant features acting together in a system of a wake board (or for a system of a fastening system), there are those (i.e., Random) that see BOTH the wake board and presumably the fastening system as being nothing more than obvious elements doing what those elements previously had done.

                  Neither the wakeboard nor the fastening system differ in a desired End result from singular or plural items — at least as far as can be reasonably adjudged (which is to say, without giving credit to any sense of synergy from redundancy or the like). For the wakeboard, the desired End result of a rider stable and enjoying the wakeboard is reached. For the fastener system, the desired End result of something being fastened is reached.

                  Note that I am NOT arguing with you or disagreeing with you here, and that I am merely developing the conversation along certain viewpoints so that a deeper appreciation by all may be achieved.

                  I do “get” your view that for the claimed “system/method” as exemplified in Figures 9A through 9H, while reaching a certain same Ends, does so through some redundant features used in a particular manner. The admittedly simple (and slightly silly) belt and suspender system is analogous to your position (even though you have not yet grasped that fact).

                  Maybe now with the added (and amended) discussion points that I have offered, you can begin to see why Random would still not agree with your original wakeboard view.

              2. 7.2.2.1.1.2.2

                Why? Perhaps because there is in the USPTO nobody checking whether i) the performance reviewing managers in the silo responsible for the lipase arts and ii) the performance reviewing managers in the silo responsible for the data processing arts, are all on the same page. The essence of “quality” is consistency” is it not? Perhaps the new Commissioner is in the process of appointing a Quality Tzar tasked with achieving an overview of both of these silos, and then getting them consistent on their WD performance?

        2. 7.2.2.2

          Synergy is NOT legally synonymous with obviousness.

          That’s why I asked for a proper citation.

    3. 7.3

      Random >>There’s a whole mess of cases where the Supremes constantly point out that simply combining known things for their usual purpose is never inventive (sidenote – looking at you, software people).

      You are so ignorant of technology and innovation. And try to remember that almost all inventions are a combination of known elements that are used for their usual purpose.

      1. 7.3.1

        As noted previously, Random’s views hew to an eminently unsupportable system of patents ONLY for two types of innovation:
        a) Flash of Genius,
        b) Pure accidental serindipity.

        While both of these modes surely deserve patent protection, neither of these modes embrace the purpose of “promotion” and reflect how often innovation feeds more innovation.

        This may be a reflection of lack of touch with the real world, and would go hand in hand with his other Pollyanna statements.

        1. 7.3.1.1

          No, my patent system allows for only one type of innovation – an innovation that advances the sum total of knowledge of the art.

          Parroting back to the art what the art already knew in exchange for a patent isn’t innovation, it’s either reinventing the wheel or outright pay-for-play.

          1. 7.3.1.1.1

            I have explained previously how your views fail to reach that “advance” or “promote” aspect due to each of “Flash of Genius” and “pure serindipity.”

            In either of those two cases, there is no meaningful use of what is captured in the patent system.

            The patent system captures things so that those things can be used in additional innovation.

            You seem to want to ONLY have the patent system “capturing” things for future non-innovation things like pure copying.

            In this manner, you continue to show a lack of appreciation of the fundamentals of innovation itself.

            As I have noted, that you lack this sense of innovation fundamentals AND work in the patent office is a scary combination.

      2. 7.3.2

        And try to remember that almost all inventions are a combination of known elements that are used for their usual purpose.

        No, almost all patent applications which the office does not reject are a combination of known elements for their usual purpose. Don’t confuse what surpasses the office’s porous filter with what would be upheld in a court of law. The Supreme Court has constantly warned against combination patents in just such a situation.

        1. 7.3.2.1

          You are aware of the branches of government and how they interplay with statutory law, eh?

  7. 6

    I said it when this CAFC decision came out: Prost and Lourie on one side, Newman on the other? A no-brainer, Newman is right. But I don’t expect SCOTUS to correct this error by the CAFC, and more than I expect Prost and Lourie to admit that they’re wrong when they side against Judge Newman.

    Forget “RBG”, someone should make a movie about Judge Newman.

    1. 6.1

      A no-brainer, Newman is right… [S]omeone should make a movie about Judge Newman.

      +1

      1. 6.1.1

        +1

      2. 6.1.2

        +1

    2. 6.2

      It’s rare that she misses, and her reasoning typically leaves the other side looking like pikers.

      The only downside is simply how often she is fighting a rearguard action for strong patent rights and simply seems unable to garner that many majority decisions.

      In the sense of the proverbial psychological experiment of waterhosing simians in a cage, she has to deal with a lot of water hosed simians.

    3. 6.3

      + 1000

    4. 6.4

      I for one will be very happy when RBG –Ms. human behavior bozo–is gone.

  8. 5

    The patentee, just making stuff up: The ZUP Board is nonobvious if Nash tried and failed to invent it for over 50 years and then copied it after failing to partner with ZUP.

    LOL No, that’s not how it works and this sort of silliness highlights the problems with the “secondary indicia”.

    As an initial matter, let’s remember that the concept of “secondary indicia” was judicially created. If we may borrow from the maximalists (who — predictably — borrow from rightwing scripts quite often, and nearly always hypocritically, because that’s how rightwing scripts “work”), the “secondary indicia” are just “judicial activism”. Or, as Billy puts it five times a day, “The scoreboard is broken! Wah!” But somehow the maximalists manage to keep themselves quiet about the “secondary indicia.” Golly, I wonder why?

    Another point is that to the extent any “secondary indicia” allow post-filing data (e.g., “commercial success”) to enter into the picture, they are illegal. Validity is determined as of the filing date. The reward for making a commercially successful product is not a patent, but the profits that arise from sale of the product. The patent statute’s concern about “commercial success” appears in the remedies section, not in section 103 where it doesn’t belong.

    So, getting back to the point above, it’s not the case that if you make some obvious change to an existing product, e.g., moving a handle so it’s easier to hold, that you deserve a patent. The fact that you got it out of the PTO means that the burden for proving obviousness is on the defendant. But it doesn’t mean that you deserved the patent. The fact that you managed to market it successfully doesn’t change anything. And the fact that a commercially successfully product was “copied” in some respects by a competitor proves absolutely nothing about non-obviousness. That’s how competition in the marketplace is expected to work. Arguing “well why didn’t you invent it sooner” is no less of a “hindsight” analysis than any other kind of “hindsight” analysis.

    The bit about the defendant trying to make this product for 50 years is misleading to the point of being sanctionable. There was no technical hurdle solved by the patentee in some unexpected fashion and there was no teaching away from the solution. News flash: sometimes you need to rely on something else besides patents to succeed in a business venture. That’s going to be especially true when you are dealing with very simple “technology” (e.g., modifying existing water boards by changing where you put the handle, or holes).

    The cert petition here is “off” in many respects and should be denied. That said, it would be nice for the Supremes to revisit their “secondary indicia” case law because, at least to the extent that the indicia allow for post-filing evidence of “commercial success”, they are almost always illegal.

    1. 5.1

      MM hypocrisy:

      Judicially created secondary indicia in 103 is wrong.

      But judicially created exceptions in 101 is right.

      1. 5.1.1

        MM hypocrisy:

        Judicially created secondary indicia in 103 is wrong.

        But judicially created exceptions in 101 is right.

        Nice little strawman you built there. He is saying that maximialists generally hate all forms of judicial doctrine but not this one, for ahem….obvious…..reasons. He is not saying the secondary indicia are entirely illegitimate, excepting commercial success, which is a reasonable position.

        Obviousness is inherently subjective and no statutory language could overcome that fact. It’s like the narrow copyright cases where its a judgement call as to how close a copy is. Sometimes there are close calls that come down to a decider to make. Some of patent law is like that.

        Every variation may not be an innovation. People in authority sometimes have to make a choice as to which it’s going to be.

        So what?

        1. 5.1.1.1

          He is, of course, wrong Marty, for the reasons that I have supplied.

          Reasons that in the past have been well explicated, with Malcolm explicitly invited to take part in a meaningful dialogue, only to have him disappear time and again.

          He IS a hypocrite – and one of the very worst, given his number one meme of Accusing Others Of That Which Malcolm Does.

      2. 5.1.2

        Out of curiosity, is your position not the reverse?

    2. 5.2

      (who — predictably — borrow from rightwing scripts quite often, and nearly always

      Yay One-bucketing!

      Here’s a hint that may help you understand things: when exceptions to the judicial doctrines pull back from the severity of a judicial doctrine and put the law MORE in accord with the actual words of Congress, that’s a feature, not a bug.

      Of course, if you did not spend so much time running away from my simple set theory explication of the exceptions to the judicial doctrine of printed matter (for example), even you would have probably made that discernment.

      As it is, your cognitive dissonance and desire for anything that weakens patents just gets in your way.

      1. 5.2.1

        pull back from the severity of a judicial doctrine

        Section 103 isn’t a judicial doctrine.

        1. 5.2.1.1

          Obtuse.

          Is it deliberate?

          What do you call the Graham Factors?

          1. 5.2.1.1.1

            Secondary considerations are different from the other Graham factors in the “judicial activism” sense of the word.

            The basic Graham factors (scope and content of prior art, differences between prior art and claimed invention, level of ordinary skill) are clearly apparent from the plain text of 103(a) itself, which reads:

            “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”

            The basic Graham factors (scope/content of prior art, differences, POSITA) are basically just a restatement of what’s already contained in Section 103.

            But secondary considerations appear nowhere in the statute. The only way to shovel them into the statute is the last clause of 103(a), “the claimed invention as a whole would have been obvious,” which is pretty weak sauce from a statutory interpretation standpoint.

            But I am glad to see the CAFC decisions moving back to the plain language of the statute. Some of the early CAFC decisions, when Newman wasn’t viewed as an outlier, had sweeping statements, like secondary considerations “may often be the most probative and cogent evidence in the record.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed Cir. 1983). It’s difficult to even conceive of an invention that is supposed to be obvious under the basic Graham factors, saved because of secondary considerations.

            The real damage of secondary consideration is, of course, juries. They love secondary considerations because they’re far easier to understand than the prior art analysis. So juries routinely reject compelling obviousness defenses if the accused product or the plaintiff’s practicing product was commercially successful, regardless of whether that success had anything to do with any claimed feature. Juries simply do not grasp the “nexus” issue.

            1. 5.2.1.1.1.1

              Some of the early CAFC decisions… had sweeping statements, like secondary considerations “may often be the most probative and cogent evidence in the record.”

              That is because so-called “secondary” considerations (more accurately, “objective indicia”) really are the most probative and cogent evidence. Asking jurors or judges to determine what is “obvious” from the state of the art is a fool’s errand. The ability to check one’s priors about what a hypothetical person of “ordinary skill” might be said to “know” from the prior art against objective facts about what actually happened in the art field/industry is invaluable.

              I agree, however, that nexus is a hard concept to get a fact-finder (judge or jury) to think about clearly. This does not really mean that the objective indicia should be disregarded, or relegated to a secondary status. It just goes to show the inherent difficulty of leaving the determination of what is legally “obvious” to a bunch of high-school educated jurors, or an English major trial judge. There really should a specialized set of district courts for patent trials, whose judges are chosen based (at least in part) on their specialized technical education that prepares them for the role of assessing obviousness (and enablement, and written description, and claim construction, and any of the other myriad issues of patent law that ought not to be evaluated without a sound scientific education).

            2. 5.2.1.1.1.2

              The basic Graham factors (scope/content of prior art, differences, POSITA) are basically just a restatement of what’s already contained in Section 103… But… [t]he only way to shovel [the secondary considerations] into the statute is the last clause of 103(a), “the claimed invention as a whole would have been obvious,” which is pretty weak sauce from a statutory interpretation standpoint.

              Hm, I disagree that this is “weak sauce.” The statute directs us to consider whether something is “obvious.” As Martin notes in 5.1.1 above, this is an unavoidably subjective standard. Nevertheless, if you are going to consider whether something is “obvious,” it is unavoidable that you must also consider objective evidence that the putatively obvious thing is not obvious. That is what the objective indicia are: objective facts that—despite the after-the-fact just-so story that one can contrive about why a hypothetical PHOSITA already knew how to make and use the claimed invention—force one to reconsider whether the claimed invention really was already part of the state of the art. The very idea of such objective indicia are baked into the statutory term “obvious.”

              1. 5.2.1.1.1.2.1

                Trying to follow your line of thinking Greg. Wondering what you would say about using a TSM test to gauge what, back on the date of the claim, was or was not “obvious” to that notional being the PHOSITA. TSM is better than “subjective” isn’t it? Almost “objective” one might think. Was there a suggestion in the prior art universe, or wasn’t there?

                If your client had an interest in showing that a duly issued claim embraces something that was obvious, which would you prefer to decide the question: TSM or a jury?

                1. Was there a suggestion in the prior art universe, or wasn’t there?

                  One of the more egregious and damaging aspects flowing out of the KSR case was the notion that suggestion in the prior art universe may be replaced with a “generalized” suggestion, which was quickly piggybacked to being nothing more than a “generalized” motivation.

                  What then happened was that actual combinations — of pretty much anything — were deemed by the examining corps as de facto obvious, given that the “general” existence of ANY single item carries with that single item a “general” motivation for the single item itself.

                  Motivations to combine then habitually are listed as (and lifted directly from) the secondary references for the purported advance of the SINGLE secondary reference alone.

                  But that “motivation” for the attribute really does not on its face speak to why a PHOSITA would seek out and act to combine different items, each of which has their singular benefits.

                  I cannot tell you how many bogus 103 rejections I have seen in which the purported “motivation to combine” (NOWHERE evident in the more traditional “suggestion in the prior art universe”) is NOT a motivation to actually engage in the act of combining any one item with any other item, but instead is merely a more generalized “motivation” based solely on the attributes of the single feature itself.

                  By this “logic” that runs rampant, ALL combination items are de facto obvious based on the fact that an individual item merely exists (and through its mere existence, has some “motivation” for its existence).

                  Overcoming such a “generalized” rejection often takes the effort to find some reasoning provided in the main reference (or the additional references) as to why such a mere aggregation would impact the teachings of one of the references (similar to, but not necessarily rising to the level of a “teaching away”).

                  In a bit of a nuanced manner, the Court unleashed in KSR its clawback of “synergy” which is philosophically directly related to its (Congress expressly rejected) notion of Flash of Genius.

                2. If your client had an interest in showing that a duly issued claim embraces something that was obvious, which would you prefer to decide the question: TSM or a jury?

                  Of course I would prefer TSM. Not even a question. I would also definitely not prefer a jury (although this preference is not widely shared, in my experience).

        2. 5.2.1.2

          Billy, you were the one harping about the “severity” of some “doctrine” that needed to be “pulled back from.”

          Which “severe doctrine” were you referring to? Note also that your inability to communicate in direct English is a longstanding problem. (It’s a problem for everyone else, of course, but not for you since your main purpose is tr0lling, not informing. Dennis knows this. We all know it).

          1. 5.2.1.2.1

            More Accuse Others mindlessness from you.

      2. 5.2.2

        put the law MORE in accord with the actual words of Congress,

        Except that using post-filing evidence to determine validity is contrary to the words of Congress which expressly require that validity be determined as of the filing date (or as of the time of the invention, pre-AIA).

        Be careful, Billy! It’s only January 2 and you are already becoming The Patent J0ke of the Year.

        1. 5.2.2.1

          More of that (in)famous Accuse Others meme of yours Malcolm.

          Post-filing evidence is geared TO the state at the date of filing. You are confusing the compilation date and what the aim of the data being compiled are for – those are two different things.

      3. 5.2.3

        if you did not spend so much time running away from my simple set theory explication of the exceptions to the judicial doctrine of printed matter

        I’m right here. Tell everyone all about your “simple set theory explication”, Billy. You’re a very serious person! And it’s so simple.

        So just tell everyone, Billy. We’re really anxious to hear your profound insights.

        1. 5.2.3.1

          Your “I’m right here” is meaningless given how you have always refused to actually engage on the merits of my oft-referenced, oft-linked, and even oft-recopied for you, easy to understand, in plain and direct English, simple set theory explication of the exceptions to the judicial doctrine of printed matter.

          You actually need to DO more than merely proclaim “I’m right here.”

  9. 4

    This is a very important petition. KSR is being mis-applied by the lower courts. Shifting the burden of proof to the patent owner is in direct contradiction of the statute that a patent is presumed valid. Hindsight, hindsight, hindsight.

    Please consider filing an amicus in support of independent inventors here. Read the appeal for support from inventor and founder Glen Duff – link to bit.ly.

    The Supreme Court owes it to inventors who are being bludgeoned by decisions that targeted NPEs and turned the patent system upside down to where now only NPEs can participate.

    1. 4.1

      Shifting the burden of proof to the patent owner is in direct contradiction of the statute that a patent is presumed valid. Hindsight, hindsight, hindsight.

      The “burden” wasn’t shifted. The defendant proved that the claims were obviousness and the proof was strong enough to succeed on summary judgment. Are defendants supposed to “prove” that an otherwise obvious product was not commercially successful in order to show that it was obvious? That’s absurd.

    2. 4.2

      KSR is being mis-applied by the lower courts.

      Definitely agree with this.

      Shifting the burden of proof to the patent owner is in direct contradiction of the statute that a patent is presumed valid. Hindsight, hindsight, hindsight.

      Also with this.

      This is a very important petition.

      Not sure about this. Even if the Court were to take cert. and reverse in the strongest possible terms, I am not sure that there would be much long term impact. The question of “how much weight should be accorded to these objective indication data” is so case-specific that it is hard to make “precedent” out of a case like this.

      1. 4.2.1

        Careful Greg, you are likely to be “one-bucketed” again.

      2. 4.2.2

        Greg: Shifting the burden of proof to the patent owner is in direct contradiction of the statute that a patent is presumed valid. Hindsight, hindsight, hindsight.

        [I agree] with this.

        So do I but that’s not what happened here. The burden of proof was on the defendant and the defendant satisfied that burden such that the evidentiary bathtub overflowed with the filmy goop of obviousness.

        KSR is being mis-applied by the lower courts.

        Shocking! Lower courts not applying the law consistently in a manner that satisfies patentee-lovin’ patent attorneys? Well, guess what: the PTO fails to conduct proper 103 analyses all the time and obvious patents are granted by the many thousands. Is there really an argument being made here that the lower courts are systematically worse than the PTO at identifying obvious junk? That seems quite a stretch.

        1. 4.2.2.1

          Is there really an argument being made here that the lower courts are systematically worse than the PTO at identifying obvious junk? That seems quite a stretch.

          Your feelings aside, you may want to consider the existence and level of the legal presumption of validity (you know, the direct words of Congress).

          Funny that, as a supposed patent attorney who obtains patent rights for clients, you seem never to be able to remember that important “pro-patent” law.

    3. 4.3

      Josh, read 2 below. You have fallen for the miss-impression created in this brief that “Shifting the burden of proof to the patent owner” was done in the decision below.

  10. 3

    Hopefully it will be overturned.

  11. 2

    This case is unusual in that District Court summary judgments for defendants on 103 summary judgment motions are relatively rare, less than 5% of D.C. patent suit disposals the last time I looked. Also, Fed. Cir. reviews of such decisions are quite often reversals and remands for disputed fact issues. But they did not in this case and this cert petition is not on that basis.
    The responses to this cert petition will undoubtedly point out that the Fed. Cir. did NOT shift the clear and convincing evidence burden or the presumption of validity for secondary evidence of unobviousness from the defendant to the patent owner. That is, is the alleged “secondary considerations are properly relegated to rebuttal evidence” really the case, and what is the actual effect?

  12. 1

    Does Chevron deference play a role here…?

    (if not in the particulars of the case, then in the general sense?)

    1. 1.1

      No, this does not involve any PTO statutory interpretation.

      1. 1.1.1

        Ah thanks, so in that larger sense that I indicated, perhaps we can expect a brief from the executive branch discussing how the majority in this panel is not applying the law as the executive branch applies the law?

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