Federal Circuit affirms Obviousness based upon General Knowledge of PHOSITA

by Dennis Crouch

Philips v. Google & Microsoft (Fed. Cir. 2020)

Google & Microsoft teamed-up to challenge Phillips’ U.S. Patent 7,529,806 in an inter partes review (IPR).  The Board complied and cancelled claims 1-11 — finding the claimed quasi-streaming method unpatentably obvious.  On appeal here, the Federal Circuit has affirmed — adding important context to obviousness determinations based upon general knowledge.

In KSR, the Supreme Court indicated that the obviousness analysis should consider the “background knowledge possessed by a person having ordinary skill in the art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).   Under KSR, information deemed within PHOSITA’s general knowledge is more powerful than that found buried in a prior art reference because we assume that PHOSITA would consider using their general knowledge in combination with the prior art — even absent any express motivation to do so. Because of its potential power, the Federal Circuit has been somewhat concerned that the approach could serve as an end-run around traditional obviousness analysis.  Here though, the court found that Google had presented enough evidence to assume that the pipelining (see next paragraph) was part of the general knowledge of PHOSITA.

The invention: The claims call for downloading the “next file” in the background while playing the prior file. This setup is effectively a form of buffering (also known as pipelining or stream emulation).  The approach uses a client-side “control information file” that facilitates sequential file retrieval.  The claims have an additional feature of having a variety of media file formats, and the client device is able to “choose the format compatible with the client’s play-out capabilities.”

In its petition, Google alleged (1) anticipation based upon SMIL 1.0 (Synchronized Multimedia Integration Language 1.0 Specification); and (2) obviousness based upon SMIL 1.0 when combined with the general knowledge of PHOSITA.  In describing the general knowledge that “pipelining is well known”, Google cited a prior art reference (Hua) and also an expert declaration.

Extra Ground on Institution: Before getting to the obviousness issue, I’ll note an appeal/SAS issue decided by the Court.  The Board instituted the IPR on both grounds raised by Google, but also added a third ground: SMIL in view of Hua.  On appeal, the Federal Circuit found the third-ground improper — quoting the Supreme Court’s decision in SAS to the effect that the AIA does not “contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).  Under the statute as interpreted in SAS, the petitioner decides how to structure the IPR, and the initiation stage is a yes/no determination.  The Federal Circuit did not address the no-appealability-of-institution-decisions provision of Section 314(d).

Role of General Knowledge in IPR Obviousness: The first Obviousness-focused question that the court considered was an interesting albeit fruitless contention — that “obviousness” in IPR proceedings should be treated differently than in other areas of patent practice. In particular, the patentee noted that Section 311(b) of the AIA limits IPR considerations to only “prior art consisting of patents or printed publications.” As such, Philips argued that “general knowledge” could not be considered in the analysis.  On appeal, the Federal Circuit rejected that argument — holding that the 311(b) limits the types of prior art available in an IPR, but does not otherwise alter the obviousness analysis of Section 103.

Although the prior art that can be considered in inter partes reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art. Indeed, under 35 U.S.C. § 103, the obviousness inquiry turns not only on the prior art, but whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103. Regardless of the tribunal, the inquiry into whether any “differences” between the invention and the prior art would have rendered the invention obvious to a skilled artisan necessarily depends on such artisan’s knowledge.

Slip Op.  The implication here is that “general knowledge” is not “prior art” but instead part of the definition of PHOSITA under Graham.

General Knowledge: A primary case in tension with broad use of general knowledge is Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016).  In that case, the court warned against invoking “common sense . . . to supply a limitation that was admittedly missing from the prior art” and that was not “supported by evidence and reasoned explanation.”  On appeal here, the Federal Circuit distinguished Arendi — holding that Google’s argument for general knowledge was supported by evidence and reason

In Arendi, the Board [improperly] relied on nothing more than “conclusory statements and unspecific expert testimony” in finding that it would have been “common sense . . . to supply a limitation that was admittedly missing from the prior art.” Conversely, here the Board relied on expert evidence, which was corroborated by Hua, in concluding that pipelining was not only in the prior art, but also within the general knowledge of a skilled artisan. Moreover, Philips offered no evidence to rebut the conclusion that a skilled artisan would have known about pipelining.

Id. “Pipelining” was the only claim feature not found in the asserted prior art reference.  However, since pipelining was part of the “general knowledge,” then its use was proper to invalidate the claims.

120 thoughts on “Federal Circuit affirms Obviousness based upon General Knowledge of PHOSITA

  1. 13

    After further of the opinion I want to note two things that are not clear based on either the post or the discussion below.

    1) There was evidence the technique was known in the prior art. (Hua provides a “review [of] the conventional pipelining scheme.”)

    2) There was a motivation for the combination. (In addition, relying on an expert declaration and Hua as evidence of a skilled artisan’s general knowledge, the Board found that a skilled artisan “would have been motivated to reduce the wait time to receive media content
    over the Internet by using pipelining with SMIL 1.0.”)

    1. 13.1

      By now you know it’s impossible to explain the facts and the law sufficient for the understanding of the Internet Tough Guys. But in the real world there’s the PTAB and a Rule 36 graveyard at the Federal Circuit. Appellate tribunals are — priceless.

  2. 12

    This goes to the heart of what we do. The biggest fight in prosecution and patent law is the judges and examiners looking at all the elements and then just patching together the invention themselves.

    The biggest thing real people in the real world who do real inventions find out is how hard it is to make something new. And anyone that has ever worked on solving a particular problem has had the experience where they spent tremendous amounts of time trying to come up with a solution and didn’t. But then someone else comes up with the solution and you think that was so obvious why didn’t I think of that. And then every little wa nk ie in the world thinks that it was easy because sitting at home and reading about it they think they could have done it. You could not have done it.

    And getting people like Prost who has zero experience in science and technology and got her appointment based on her serving powerful people in DC skills, is sickening.

    Trump needs to consider disbanding the CAFC. If the R’s win the House and Senate, then all in the same day, the CAFC could be disbanded with the old judges assigned to with their current pay to traffic court and then appoint new judges that actually have science backgrounds and extensive experience with technology and patents to the CAFC.

    1. 12.1

      Night, you urge restoration of “TSM”. I agree with “TSM” but not with “restoration”. TSM, as such, won’t work. Only if you adopt the EPO’s TSM methodology will it work. Otherwise, there is still too much room for illegitimate subjective obviousness findings. Back in the days of the TSM you want restored, it was ever thus.

      1. 12.1.1

        When I started in patent law, TSM was the law. I think that there with the proliferation of publications and the access to publications that –frankly–if you can’t find a TSM, then it is probably non-obvious.

        What do you suggest adding to the USA’s TSM?

        1. 12.1.1.1

          What to add? How about reliance on the “objective technical problem” which is the core concept in TSM at the EPO. It does away with the notorious difficulty of TSM exemplified by the 5 1/2 inch diameter dinnerplate claim.

          Hypo: Suppose 5 inch plates are known and 6 inch plates are known. One claims a 5 1/2 inch plate (which you have to accept is new). No TSM in the prior art. Ergo: non-obvious. But that can’t be right, can it?

          1. 12.1.1.1.1

            How about reliance on the “objective technical problem””…

            And there go the spectacles.

            MaxDrei, you should be well aware by now that the US Sovereign does not have a “technical arts” test which would be necessary for us to wear your spectacles, right?

            It’s not like your horse is unfamiliar with that well.

          2. 12.1.1.1.2

            Max, I have to think about it more, but from my experience with the EPO, it seems the technical problem makes it easier to get allowances.

            Seems like the TSM type of inquiry is limited to solutions to the technical problem.

            Not sure. We don’t have a technical requirement, but I think that is easier seen as what problem the invention is solving, which is relevant.

            1. 12.1.1.1.2.1

              Yes, Night, I think you appreciate the issue, namely, the reliance upon the specification as filed for defining the objective problem that the claimed subject matter solves. Don’t be distracted by the word “technical”. For application of the EPO’s TSM to the USA, think of it as “the objective problem within the realm of the useful arts”. And then it will work just as well in the USA as at the EPO.

              Crucial is to appreciate that the drafting of the application is done with foreknowledge of what the inventor has invented. Further, the drafter, being the PHOSITA, is deemed already to have a perfect knowledge of everything that has been already “made available” to the public up to the day before the filing date of the application. In a FtF jurisdiction, the patentability of the claim is assessed as of the filing date of the application, a date posterior to the writing of the patent application.

              1. 12.1.1.1.2.1.1

                One (perhaps not so minor) nit:

                Further, the drafter, being the PHOSITA

                That is not correct. The drafter is NOT the PHOSITA. There is NO such “perfect knowledge” presumed. So while indeed patentability of a claim is assessed timing wise, your notion of how PHOSTIA fits into this has no touchstone with reality.

                (I can accept this version of your typical “equivalence” between Useful Arts and Technical Arts — but just barely)

                1. To be “objective” about patentability, one has to presume the same knowledge base applies, on the same date, for everybody.

                2. You are seriously confusing yourself as to — and by whom — that knowledge base ‘applies.’

                  Hint: it is NOT the applicant (a real person).

              2. 12.1.1.1.2.1.2

                Max, I agree with you in the framing of the problem.

                I have found that it is actually very similar to prosecute a well-written application before the EPO and the USA. I usually add a paragraph or two to define what technical problem or problem is being solved and the advantages, although because of USA legal nonsense this has to be done very carefully.

                But usually I found the EPO examiners to be more reasonable in terms of not just wiping out my claims without considering what the current solutions to the problems I am solving are. EPO examiners are quite happy to contextualize the solution, which makes it easier to get allowances and also adds sanity.

                1. This probably should be emphasized:

                  although because of USA legal nonsense this has to be done very carefully.

                  Most all practitioners submit actions from related foreign applications to the USPTO in IDS submissions, and these added paragraphs may well be taken as applicant-admissions.

                  While certainly well-meaning, limiting oneself to solving a particular problem may well not garner the full deserving protection of the actual disclosed innovation.

                2. Night, would you like now to rehearse the 5 1/2 inch plate hypo, first i) under what the USA understands by TSM and then ii) under EPO-PSA. The comparison might be instructive.

        2. 12.1.1.2

          … it is less ‘adding to,’ and more “Here, wear my spectacles as they work for me.”

          MaxDrei is rather a dullard, and merely a shill for the system that he is familiar with.

        3. 12.1.1.3

          [I]f you can’t find a TSM, then it is probably non-obvious.

          My only objection to this is that I would lose the “probably.”

  3. 11

    Not that I support eliminating the requirement for a motivation to combine based on ‘common knowledge’, and not that there’s anything logically inconsistent with this position… but it’s kinda fun to see people who deride KSR race to defend KSR’s requirement for a motivation to combine. I guess we should all strive to appreciate how good we’ve got it before it is gone.

    (That probably goes double for attorneys whose practices depend on “processor configured to…” language not falling under 112(f).)

    1. 11.1

      Ben,

      Way to jump in and show how little you grasp the situation.

    2. 11.2

      [I]t’s kinda fun to see people who deride KSR race to defend KSR’s requirement for a motivation to combine.

      Er, o.k., if you say so. KSR took the old common law idea of the PHOSITA and bent it about as far out of frame as conceivably possible. In other word, KSR got one part of the law of obviousness badly wrong. The present cases menaces to get a second part—a part that not even Justice Kennedy’s monstrosity thought to warp—wrong in a manner that compounds the mistake.

      I am not sure why this would strike one as funny, but de gustibus non est disputandum, as the Angelic doctor wrote.

      1. 11.2.1

        Fair enough. I tried to make it clear that I don’t think there’s anything illogical about that position. It’s just an ironic juxtaposition akin to “The food here is terrible and the portions are too small!”.

        1. 11.2.1.1

          What is ironic about first you get smaller portions and you complain; then your smaller portions are given to you with lower quality food and you complain again?

          Sounds like a typical progression of a tyrant. Your comment sounds like what a prison guard would say to the prisoners to rub it in, i.e., put them under the boot.

          1. 11.2.1.1.1

            Life of a bureaucrat is evidenced from Ben’s disconnected views.

            My guess would be that Ben briefly held a job in the “real world” before landing as a patent examiner at the government job. Most likely, his ‘private’ experience left him bitter, and he has not been able to ‘climb the ranks’ within the Office.

            His lack of grasp and dearth of critical thinking indicate to me that he has some abilities in his technical field, but never has had to apply himself and never has been trained to challenge his own thinking.

            1. 11.2.1.1.1.1

              Sounds about right anon. I’d add that his comment reveals his intent and the fact that he can’t even see that his comment is tyrannical (right out of Dickens) should disturb any moral person.

    3. 11.3

      “… but it’s kinda fun to see people who deride KSR race to defend KSR’s requirement for a motivation to combine. ”

      KSR got the correct “result” or “outcome.” The claims were obvious. As was pointed out, the corresponding EP claims were easily tanked by PSA.

      But KSR is a train wreck of a decision. Idi0t Scalia derided TSM as “gobbledygook” but all KSR did was replace it with J. Kennedy’s law clerk’s “…an apparent reason to combine.”

      Wow. That’s so much clearer.

      And after J. Kennedy’s law clerk’s reminder about the need for “flexibility” in the obviousness analysis, what did the PTO do? Create 6 or 7 rationales to pigeon hole rejections into and declare that simply categorizing a rejection as “simple substitution” or “obvious to try” was all that was needed to establish obviousness, regardless of whether the rejection has any “rational underpinning” at all.

      The only people who think/thought that KSR eliminated a need to explain WHY one of ordinary skill would modify/combine the prior art are patent examiners, APJ’s, USDC J’s, and Fed. Cir. J’s. Regardless of whether the explanation as to WHY one of ordinary skill would modify/combine is called a teaching, a suggestion, a motivation, or an apparent reason, it is still a requirement to establish obviousness. Unfortunately the only people who, after KSR, still think it is a requirement are patent applicants and patentees, and their representatives. It’s our job to keep constantly reminding patent examiners, APJ’s, USDC J’s, and Fed. Cir. J’s.

      1. 11.3.1

        As you say, JJ, EPO-PSA makes it easy to “tank” undeserving claims.

        Conversely, above at 12.1.1.1.2 Night observes:

        “from my experience with the EPO, it seems the technical problem makes it easier to get allowances.”

        So where does that leave us? That at the EPO, patentable claims get to issue but ones that are not patentable don’t, and all thanks to EPO-PSA?

        Or something else, would you say?

      2. 11.3.2

        “The only people who think/thought that KSR eliminated a need to explain WHY one of ordinary skill would modify/combine the prior art are patent examiners, APJ’s, USDC J’s, and Fed. Cir. J’s. Regardless of whether the explanation as to WHY one of ordinary skill would modify/combine is called a teaching, a suggestion, a motivation, or an apparent reason, it is still a requirement to establish obviousness. Unfortunately the only people who, after KSR, still think it is a requirement are patent applicants and patentees, and their representatives. It’s our job to keep constantly reminding patent examiners, APJ’s, USDC J’s, and Fed. Cir. J’s.”

        Oh come on, hundreds of thousands of 103 rejections will be issued in the next month and they’ll nigh all contain exactly that.

        1. 11.3.2.1

          Quite to the contrary 6, most Office Actions do NOT properly develop the Graham Factors involved in any obviousness rejection.

          That’s just not in the “Cut-N-Paste” form paragraphs.

      3. 11.3.3

        “Unfortunately the only people who, after KSR, still think it is a requirement are patent applicants and patentees, and their representatives.”

        If this was actually true it would demonstrate a truly incredible inability to communicate on the part of the patent bar. I mean in your little fantasy here, thousands and thousands of attorneys and agents are explaining the law to examiners on a daily basis with no effect whatsoever. Maybe put down the bottle of self indulgent hyperbole.

        1. 11.3.3.1

          “I mean in your little fantasy here, thousands and thousands of attorneys and agents are explaining the law to examiners on a daily basis with no effect whatsoever.”

          It’s no fantasy. I’ve been following a slew of appeals by one particular assignee in TC 3740 for the past 3-4 years. This assignee frequently has claims that included “unbounded ranges,” e.g. “wherein the ratio of X to Y is at least 10.” They received 112(b) rejections on those claims in every case. They successfully appealed every one. I’ve seen more than 10 decisions in the past 3-4 years reversing all of them. In the most recent case that I reviewed the Assignee noted 3 of their prior appeals where the claims including such a feature were rejected under 112(b) and the rejections were reversed by the PTAB. The examiner responded that those 3 prior decisions were “non-precedential” and “not controlling.” The PTAB reversed the 112(b) rejection as it had done in every single case of that assignee where a claimed unbounded range was rejected under 112(b).

          You can’t educate the willfully ignorant. If YOU think you can you’re more than welcome to leave your safe space at the PTO and join us out here and try your hand at it.

          What are the odds you’re going to do that? (Hint: I’m thinking of a big round number.)

          1. 11.3.3.1.1

            I laughed and cried at the same time.

            (and then you have Shifty, celebrating the wrong end of the divide)

          2. 11.3.3.1.2

            “If YOU think you can you’re more than welcome to leave your safe space at the PTO and join us out here and try your hand at it.”

            I’m confident you’re smart enough to recognize that my post doesn’t suggest that I believe that the patent bar has a 100% failure rate on educating examiners. But if you actually believe that an anecdote regarding 112(b) and a single examiner demonstrates that not a single examiner understands 103, I will acknowledge the error in my assumptions.

            1. 11.3.3.1.2.1

              I do not think his post even comes close to YOUR paraphrase here of “NOT A SINGLE examiner understands 103

              That you seem to not grasp this is evidence aplenty of the lack of critical thinking by examiners (in general) that shows up in applicants nigh constantly having to teach examiners what the law really means.

            2. 11.3.3.1.2.2

              It’s not a single examiner. It’s 3 entire AU’s (3741, 3745, 3747) in TC 3740.

              I’m sure there are some practitioners posting on this site who can confirm that there are examiners that make the same improper rejection(s) over and over and over and over no matter how many times you get them reversed at the PTAB. I have multiple examiners like that. I have one examiner who combines 2, 3, 4 references and then cites me In re Best constantly. No matter how many times I explain that Best is inapplicable to such a rejection and get him reversed he just keeps doing it. Over and over and over. No amount of written responses and telephone interviews and pre-appeals and appeals will stop him from doing it. It’s been going on for 8+ years.

              1. 11.3.3.1.2.2.1

                “It’s been going on for 8+ years.”

                And you ain’t even mentioned this to the ol spe or anyone?

                1. The examiner is a primary. In all likelihood he’s doing 110+%. What is the SPE gonna say to him?

          3. 11.3.3.1.3

            “You can’t educate the willfully ignorant. If YOU think you can you’re more than welcome to leave your safe space at the PTO and join us out here and try your hand at it.”

            Um yeah, that’s hilarious. Most of it isn’t “willful ignorance”. Most of it is a failure to explain what is happening in the law in a way that makes sense to the person at hand. I’m surprised though that the cases you’re talking about didn’t just get reversed at pre-appeal conf.

            But if I may, what was the rationale for why they were indefinite with just unbounded ranges? Was it actually a 112(a) argument instead of 112(b) or something like that (not fully enabled scope etc?)?

            1. 11.3.3.1.3.1

              “But if I may, what was the rationale for why they were indefinite with just unbounded ranges? Was it actually a 112(a) argument instead of 112(b) or something like that (not fully enabled scope etc?)?”

              It’s interesting that you mention that.

              First to answer your question, the 112(b) rejections were for the claim being allegedly unclear for failing to recite an upper range.

              The powers that be in AU’s 3741, 3745, and 3747 have taken a new approach with “unbounded range” claims. They are now rejecting them under 112(a) for lack of written description and lack of enablement. The assignee has cited Scripps successfully in several reversals I’ve seen recently.

              “Most of it isn’t ‘willful ignorance’. Most of it is a failure to explain what is happening in the law in a way that makes sense to the person at hand.”

              This is willful ignorance.

              “I’m surprised though that the cases you’re talking about didn’t just get reversed at pre-appeal conf.”

              This assignee does not pre-appeal. Besides, shouldn’t they just be reversed at the appeal conference?

              1. 11.3.3.1.3.1.1

                “They are now rejecting them under 112(a) for lack of written description and lack of enablement. The assignee has cited Scripps successfully in several reversals I’ve seen recently.”

                Yeah that’s probably what they meant the whole time, but were just doing it wrong. But if they’re getting reversed on that as well, meh, just how it goes.

                “This is willful ignorance.”

                Well brosef if you’re sure, and esp if it’s at the overall AU/TC level, then you’re just going to have to plow through the bureaucratic mess. Gl to you. I’m not familiar enough with those AU numbers to even know what the subject matter is, or why those ranges might be a problem.

                “I’m surprised though that the cases you’re talking about didn’t just get reversed at pre-appeal conf.”

                This assignee does not pre-appeal. Besides, shouldn’t they just be reversed at the appeal conference?”

                One would think, unless it is coming from the overall TC/AU policy level (in which case the appeals guy/preappeals guy would be in on it as a policy matter most likely). Which, I suppose given the numbers you’re putting down it might possibly be. Right now as we speak they’re finally getting around to reviewing how consistently some terms are being used in rejections (claim interpreted) in some arts I’m involved in. Could very well be that the outcome is that we have to make sure everyone is clamping down on those terms, or it could be the result that everyone all of a sudden opens the floodgates for use of those terms more broadly (which is frankly fine by me either way tho it will save me trouble to open the floodgates).

      4. 11.3.4

        KSR explicitly overruled the Fed. Cir.’s “teaching, suggestion, or motivation” as the only test for obviousness. If you represent yourself as being in patent law, you should know that. Just say “I disagree” with the ultimate authority on patent law because “I’m an Internet tough guy.” But just suppose == what if you were a patent attorney and you had a client? What would you counsel?

        1. 11.3.4.1

          You do realize that the fact that the score board is broken IS the main issue, right Shifty?

          This has nothing to do with “Internet tough guy” (your new game…?), and everything to do with the ability to apply critical thinking.

          Oops, that does leave you on the outs.

        2. 11.3.4.2

          But just suppose == what if you were a patent attorney and you had a client?

          1. 11.3.4.2.1

            What is your line of work?

            1. 11.3.4.2.1.1

              You pretend you don’t know. He is the heavyweight champion of the world. And what is your line of work, anonymous blog typer?

              1. 11.3.4.2.1.1.1

                Thanks Shifty.

  4. 10

    See the last sentence on page 13 of the Decision “Philips offered no evidence to rebut the conclusion that a skilled artisan would have known about pipelining.”

    Is that because P mistakenly thought it unnecessary to adduce such evidence? Or was it because such evidence was not available or was so weak that it would not have been able to withstand scrutiny?

    Either way, it decided the outcome, right?

    1. 10.1

      “See the last sentence on page 13 of the Decision ‘Philips offered no evidence to rebut the conclusion that a skilled artisan would have known about pipelining.'”

      SFW? Are patentees now under a burden to prove a negative? WTF?

      All Philips can do is address the EVIDENCE that is put forth by petitioner to establish obviousness. Which they did. They argued there was no reason one of ordinary skill would have combined SMIL 1.0 and Hua. And the court ignored those arguments because they were relying on Hua for some amorphous and nebulous “general common knowledge.” So now it’s okay for Fed. Cir. J’s, USDC J’s, APJ’s, and examiners to ignore the parts of the evidence that tend to show non-obviousness and instead just insert “common general knowledge” to reject/invalidate any claim they don’t like.

      J. Prost is a complete and total h@ck. She should go back to picking Sen. Hatch’s dry cleaning.

      1. 10.1.1

        So now it’s okay for… examiners to ignore the parts of the evidence that tend to show non-obviousness…[?]

        I think that you are right to be concerned about this, and I am sure that certain parties will try to use this case in that manner. The best possible spin that one could put on this case, however, is that this is an appeal from an IPR, not an ex parte appeal. I am less troubled about the circumstance where an IPR petitioner establishes (by expert declaration) the content of the “common general knowledge” than I am about the circumstance of an examiner just making unilateral assertions of the “common general knowledge.”

        At least in the case of an IPR, they get an expert, and I get an expert, and we each get a chance to depose the other’s expert. In other words, we each have a fair chance to establish what the facts are, and may the party with the most convincing evidence win. In an ex parte circumstance, however, the “common general knowledge” would merely be the examiner’s unsubstantiated opinion about what the (purely hypothetical) PHOSITA knows. That is a recipe for nonsense triumphant over facts.

        1. 10.1.1.1

          To those writing the MPEP, the distinction that you raise will not matter one bit, Greg.

          1. 10.1.1.1.1

            +1

            1. 10.1.1.1.1.1

              +1

        2. 10.1.1.2

          “In an ex parte circumstance, however, the “common general knowledge” would merely be the examiner’s unsubstantiated opinion about what the (purely hypothetical) PHOSITA knows.”

          This seems a bit hysterical as there was written evidence in the record that this technique was well known. Perhaps the case law could eventually take us to such a place, but it would take several additional steps to get anywhere close to that.

          1. 10.1.1.2.1

            Ben you have zero credibility. You obviously just put out arguments to try and muddle issues and try and weaken patents. You have zero interest in intellectually honest debates. The only reason anon responds to you is to insure you don’t persuade the naïve.

            And yes I get that you getting a response from anyone is what you are looking for. I understand that bonuses are awarded to paid bloggers for the number of responses they get to their posts.

            1. 10.1.1.2.1.1

              Bingo.

              Plus, I love the view that those paying bloggers may be paying to see the views espoused by such bloggers being trashed. Even more, comments from same paid bloggers — or in relation to same paid bloggers — only, and I do mean only, highlight the insanity of those paid positions.

              It’s like they enjoy paying to see their views trashed.

              Keep paying f001s.

            2. 10.1.1.2.1.2

              Don’t worry. Your post didn’t actually address what I said in 10.1.1.2, so no one is going to consider your post a “response”.

            3. 10.1.1.2.1.3

              And yes I get that… bonuses are awarded to paid bloggers for the number of responses they get to their posts.

              Now don’t get all tetchy like that. Your posts get more replies than Ben’s. I dare say that your bonus will be at least three times the size of his. There is no need to be so testy and jealous.

              1. 10.1.1.2.1.3.1

                Especially jealous — see my post at 10.1.1.2.1.1.

                The more these ‘more on s’ post, the more damage they do to their position.

              2. 10.1.1.2.1.3.2

                You outed me Greg.

          2. 10.1.1.2.2

            This seems a bit hysterical…

            Does it? Well, I would be pleased to think that folks like AAA JJ, NightWriter, & I are all just overreacting. If this precedent is confined to its facts, I will have scant gripe about it.

            Perhaps the case law could eventually take us to such a place, but it would take several additional steps to get anywhere close to that.

            Somehow, the number of steps necessary to take this from merely awkward to genuinely pernicious does not seem so numerous to me. I would be delighted, however, to find that the distance between what the court did here and the untoward outcome that some of us fear is as hard to traverse as you consider it.

            From your lips to God’s own ears, as they say…

      2. 10.1.2

        “And the court ignored those arguments because they were relying on Hua for some amorphous and nebulous “general common knowledge.””

        This does not appear to be a fair characterization.

        The court found the “cannot be combined” argument unpersuasive because Philip’s argument was that you couldn’t combine Hua’s pipelining and dynamic resegmenting with SMIL. I don’t think we can evaluate that argument without seeing Hua. It appears to me that the court’s response is basically “The issue isn’t SMIL+Technique_1_demonstrated_conventional_by_Hua+Technique_2_taught_by_Hua, and instead the issue is only SMIL+Technique_1_demonstrated_conventional_by_Hua.”

        That is a far cry from your characterization of just ‘relying on Hua for nebulous ‘general common knowledge’.

        1. 10.1.2.1

          “I don’t think we can evaluate that argument without seeing Hua. ”

          Agreed. We also don’t know what is in the expert’s declaration.

          The point I’m trying to make is that the fact finder, whether it’s the examiner, the PTAB, or a USDC, is not free to disregard those portions of the evidence that suggest that the claims are non-obvious. Philips can only address the evidence that was produced to make the case for obviousness. That’s why they argued SMIL 1.0 and Hua could not, or would not, have been combined by one of ordinary skill.

          If there is objective evidence that supports the conclusion that one of ordinary skill would have an apparent reason with rational underpinning to modify SMIL 1.0 to arrive at the elements as arranged in the claim then the petitioner should have produced it. If Hua was the best they had, and if the patentees arguments why one of ordinary skill could/would not combine Hua with SMIL 1.0 were persuasive, the claims should have been found non-obvious. This approach of “Well, we’re relying on this part, but we’re ignoring that other part” is improper.

          1. 10.1.2.1.1

            So your point is that ‘assuming they were right that the references couldn’t be combined, they should have won?’ Bold stance. I suspect everyone here agrees.

    2. 10.2

      Thanks, guys, for your reactions. the set me thinking.

      Look again at the sentence from the decision. In it, you see the word “conclusion”. Is that word 100% apt? I mean, ought it rather to be something like “proposition” or “contention” or “assertion”.

      I mean, at least in proceedings at the EPO, the Examining Division will assert that something is within the common general knowledge of the PHOSITA (here “pipelining”) and expect to get back from Applicant (but only when Applicant disputes the point) evidence and argument why it is not cgk. What is not disputed is conceded.

      I must be missing something here. Philips, it seems, did not dispute the point. Ergo, Philips conceded it. What is wrong with that “conclusion” of mine?

      1. 10.2.1

        … so my conclusions, of which YOU choose not to contest, are conceded to…?

  5. 9

    Presumably there is no dispute here that i) the prism is the PHOSITA ii) what teaching that entity derives from any given document is decisively dependent upon the “mental furniture”, otherwise called the “common general knowledge” (cgk), of that entity. Each jurisdiction, however, has developed its own particular way of determining of what that cgk consists. Take England, for example. Determining the cgk often settles the entire obviousness issue. It is nothing unusual for the patent to be revoked by an obviousness attack based exclusively on the cgk.

    The cgk is determined in England by x-exam of the respective technical experts who appear for the respective parties in dispute. Typically the trial lasts 5 days, of which the middle three are consumed by that cross-examination. Well worth making time to observe such a trial. Simply gripping.

  6. 8

    “…here the Board relied on expert evidence, which was corroborated by Hua…”

    Why not just inclue Hua in the grounds of rejection, i.e. obvious over SMIL 1.0 in view of Hua?

    1. 8.1

      Because Hua was acting as a messenger for the community as a whole. It wasn’t his personal knowledge that was being used. It was his accurate uncontestable statements about basic knowledge that ordinary people possess.

      But go ahead and tell us otherwise if you feel like there was some unfairness in this case. Should we call Congress? Is the patent system destroyed now?

      1. 8.1.1

        “Because Hua was acting as a messenger for the community as a whole. It wasn’t his personal knowledge that was being used. It was his accurate uncontestable statements about basic knowledge that ordinary people possess.”

        Hua was not the petitioner’s expert. Hua was the “corroboration” relied on by the expert?

        And if pipelining is “basic knowledge” surely petitioner’s expert could find some “corroboration” that 1) would actually provide an apparent reason with rational underpinning to combine with SMIL 1.0 and 2) would, when combined, result in the elements as arranged in the claim. As is required by KSR.

        So why didn’t the expert rely on some better “corroboration”?

        1. 8.1.1.1

          [I]f pipelining is “basic knowledge” surely petitioner’s expert could find some “corroboration” that 1) would actually provide an apparent reason with rational underpinning to combine with SMIL 1.0 and 2) would, when combined, result in the elements as arranged in the claim. As is required by KSR.

          +1

          1. 8.1.1.1.1

            +1

    2. 8.2

      “Philips argues that SMIL 1.0 and Hua’s teaching of
      conventional pipelining cannot be combined because SMIL
      1.0 is incompatible with Hua’s teaching of dynamic re-segmentation of video content. See, e.g., Appellant’s Reply Br.
      3. However, the relevant inquiry is not whether a skilled
      artisan would have been motivated to combine SMIL 1.0
      with the teachings of Hua, but rather whether a skilled artisan would have been motivated to combine SMIL 1.0 with
      his general knowledge of pipelining.”

      So it’s okay to rely on Hua for its disclosure that pipelining was known, but it’s also okay to ignore the disclosure of Hua that point to a lack of reason to combine because Hua is “only being relied upon to show the general understanding of one of ordinary skill in the art”?

      Wow. That’s some terrible “reasoning.”

      This is the kind of case that the editors of the MPEP and the rest of the PTO are going to use to create a hole in the law of obviousness big enough to float an aircraft carrier through. I can see the 1o3 rejections already, “Claims 1-20 are rejected as obvious over the general understanding of one of ordinary skill in the art.”

      Good luck with that.

      1. 8.2.1

        I agree AAA JJ. This case could be used in very bad ways.

      2. 8.2.2

        +1

    3. 8.3

      Perhaps “corroborated by” merely signifies what it states (as opposed to being denoted as ‘THE’ source of the art as being the definitive “prior” stake in the ground.

    4. 8.4

      I haven’t reviewed in any detail at all, but I suspect this is the short version: “[W]e conclude that the Board erred by instituting inter partes review of claims 1–11 of the ’806 patent based on obviousness over SMIL 1.0 and Hua because Google did not advance such a combination of references in its petition.” Slip op. at 11.

      1. 8.4.1

        Edit: Whoops; my apologies, as I should have reviewed more before posting.

        It appears Google made the choice not to “make Hua ‘part
        of the combination’,” perhaps to avoid having to “‘explain[] how [Hua] would have been combined with SMIL 1.0.'” Slip op. at 6 (quoting Google Inc. v. Koninklijke Philips N.V., No. IPR2017-00447, Paper 6, at 42 (P.T.A.B. Mar. 13, 2017) (“Preliminary Response”)).

    5. 8.5

      Because the IPR Petitioner did not specifically assert an “obvious over SMIL 1.0 in view of Hua”103 ground, and the Fed. Cir. held that the PTAB cannot apply a new ground not suggested by the Petitioner.

    6. 8.6

      “Why not just inclue Hua in the grounds of rejection, i.e. obvious over SMIL 1.0 in view of Hua?”

      Because it avoids all that “motivation to combine” nonsense that the Fed. Cir. made up and still clings to even after KSR.

      1. 8.6.1

        Do you think that KSR eliminated ‘motivation to combine?’

      2. 8.6.2

        My Shifting Historical Pseudonymed Friend,

        I am also curious as to just why you think a notion of requiring a motivation to combine is ‘made up nonsense’ in relation to how to apply the legal difference between novelty and non-obviousness.

        Who knows, you may well be correct. But the mere conclusory assertion approach does not get you there. Can you do more?

        1. 8.6.2.1

          “Who knows, you may well be correct. . . . Can you do more?”

          Boundy told us about your powers of comprehension. So, no.

          1. 8.6.2.1.1

            Told…

            … “us” ….?

            Shifty, you have a bad poker tell (we’ll, several, but here one in particular): when YOU know that you are doing nothing but spouting excrement, you ‘cover’ by switching to talking about yourself in the plural.

            You would do much better by simply saying that you have no rationale and that you only have the conclusory assertion.

            I was trying to help you out my friend by giving you an opportunity to show some tiny bit of understanding of patent law. You respond by highlighting your games playing…

            No great loss then.

  7. 7

    With all of Google and Microsoft’s resources, one would have thought that they could have found a computer science textbook to show pipeling. After all, if it is common sense to a PHOSITA, it should be in numerous Freshman CS textbooks articulating the concept. Either Google/Microsoft should have lost for being lazy, or they should lose because they could not provide a winning motivation to combine argument.

    1. 7.1

      … that’s not how the “Common Sense” thing works (the Common Sense angle is expressly different than showable prior art — if it was the same, there would be no presence of ‘Common Sense’).

  8. 6

    I think this is the key part:

    We focus our attention on the Board’s analysis with respect to representative claim 1. The Board thoroughly explained why SMIL 1.0 combined with pipelining disclose all the limitations of claim 1. Final Written Decision, at 17–27. In addition, relying on an expert declaration and Hua as evidence of a skilled artisan’s general knowledge, the Board found that a skilled artisan “would have been motivated to reduce the wait time to receive media content over the Internet by using pipelining with SMIL 1.0.” Id. at 22–23; see J.A. 315; J.A. 199–200 (¶ 202). The Board also determined that there would have been a reasonable expectation of success. Final Written Decision, at 23. We therefore conclude that the Board’s findings are supported by substantial evidence.

    1. 6.1

      Still the problem is that the board is making up the reason to combine and taking things from an expert and not the printed publications.

      Go back to TSM.

  9. 5

    The right result for the right reasons. In a just society, there should be some sanctions.

    “We claim the prior art in all respects except the client is presented with options.”

    Good grief, what a farce.

    1. 5.1

      “We claim the prior art in all respects except the client is presented with options”

      I think it’s at least a combo of “the prior art” in all respects and then putting options on top of the combo. Which, I presume, they didn’t have as of examination time. Not sure why there would be sanctions there.

      MM bruh, do you even know?

      link to youtube.com

  10. 4

    By general knowledge all atoms are known so all molecules are obvious over the prior art.

    1. 4.1

      In part, this is why evidence of unexpected results and/or teaching away is routinely presented to the PTO when prosecuting bio claims (because there are often prima facia arguments against such claims). It’s also why you aren’t allowed to patent a claim to an allegedly new molecule without reciting a structure in the claim that distinguishes the claimed molecule from the prior art.

      The bottom line is that your silly comment reflects the huge truckload of your ignorance about patent law in general.

      1. 4.1.1

        Actually, what you are talking about is the use of the molecule and you’ve mixed in all sorts of strange logic to try and intertwine it with the structure.

        All molecules are prima facia obvious.

        The only thing that is needed is some use for the molecule and you can claim it.

        Seems I know quite a bit more patent law than you.

      2. 4.1.2

        And the uses of the molecules should be held to be ineligible as a natural law.

        1. 4.1.2.1

          There is no other way EXCEPT by natural law to actually use any molecules and assemble them in ANY configuration.

      3. 4.1.3

        LOL – you want a teaching away from the Protons, Neutrons and Electrons view…?

        Good luck with that.

        As for “structure,” you do realize that you are falling back to elevating an optional claim format as being non-optional, right?

        And even then, your ‘different structure’ WONT PASS the ‘all configurations of the basic items are obvious’ thing that Night Writer is alluding to.

        Which is why it is always absolutely hilarious to put you down with the Big Box of Protons, Neutrons, and Electrons line.

        That you don’t ever seem to get that just means that it is you that is driving that ‘huge truckload.’

        1. 4.1.3.1

          Actually, anon, MM’s game is to try and say that a first molecule that is different from a second molecule is non-obvious if it is different and yet performs a similar function.

          So by the molecule logic of MM, evidence of non-obvious in the electrical arts would be that the structure of the circuit is different, but performs the same function.

          That is the game they play.

          1. 4.1.3.1.1

            You give FAR too much credit to Malcolm.

        2. 4.1.3.2

          It is also just strange to say that information processing methods/apparatuses don’t have structure.

          1. 4.1.3.2.1

            That’s the old “Grand Hall experiment.”

            Notably, as old as that experiment is, never has any anti-patentist ever passed that experiment.

            Not
            Ever

  11. 3

    Cannot help but note that those complaining about Rule 36 affirmances of IPR decisions would have been far better off with a Rule 36 decision than this decision as a Fed. Cir. precedent.

    1. 3.1

      ?

      You are confusing and confounding the reasons for any such complaints, Paul.

      Not helpful. For anyone.

      1. 3.1.1

        Not only is Paul doing as you say anon, but imagine a world where the judges are applying their new obviousness rule without telling us as they prefer the convenience of Rule 36.

        1. 3.1.1.1

          You can always read the lower court decision if you are truly confused.

          1. 3.1.1.1.1

            You absolutely miss the point of the Rule 36 issue.

  12. 2

    Because PHOSITA is a well recognized and ‘universal’ legal construct, I am not expecting a lot of comments on this thread. There simply are not ‘any‘ interesting wrinkles to be found here.

    1. 2.1

      anon that there is the funniest thing I have seen all day. You absolutely h ate this decision.

      Nothing to see here. Move along! All is well!

      1. 2.1.1

        I expressed NO ‘h@t red’ for this decision, Marty.

        My post was along an entirely different thrust.

  13. 1

    Decent decision.

    Hey guys I was wondering the other day though, considering my newfound financial knowledges, and in view of what the hivemind of PO might know, would anyone here care to hazard a guess as how much the whole patent system relies on giving a small cut to inventors (be it corporations or individuals) of the vastly outsized profits that end up being made by the top 10% of companies? I ask because I recently found out that it’s like 10% of the companies that end up making a gigantic amount of profits in a given period, ongoing. And, the above is the case, anyone have any thoughts on what ramifications that might have for patent policy as a whole, in brief?

    1. 1.1

      6, many aspects of ecology and capitalism feature a power-distribution.

      The problem is that exactly who will end up in the top range is quite emergent and there is frequent turnover when innovation flourishes.

      The less dynamic a system becomes, the less turnover, which is a reflection of either less innovation or a more stable environment. Difficult to disentangle.

      1. 1.1.1

        Marty,

        In the economic sense (if which, capitalism is but a portion thereof), it is a known desire to have instability of the type that innovation brings.

        Such is very much part of the reason why we have the Patent Clause in the Constitution in the first place.

        Any ecology analogy is ill suited for the innovation terrain.

        1. 1.1.1.1

          Yes, it’s clear that the mechanism of survival of the fittest has no application to capitalism.

          Deep thoughts.

          1. 1.1.1.1.1

            Read again my post Marty: ill suited for the innovation terrain.

            Maybe instead of wanting to be so quick with snark, you pause and use some of those “deep thoughts.”

    2. 1.2

      6 there are several countries that have inventor compensation laws. It tends to be messy when enforced, with disputes about whether the inventor was hired to invent or not, what share of the product profit is due to the concept versus the developers of the actual product, joint inventorship, other employees claiming to be left-off [unnamed] inventors now that big bucks are at stake, claim coverage, especially what % of the product contains the invention or contributed to its sales, novelty/validity issues, etc.

      1. 1.2.1

        I hear you paul, but I was more referring to “inventors” where we just include the corporate overlord as the “inventor”, not just counting the small guy/hireling themselves.

        My point is that innovative individuals/corps (let’s just say those that get a patent, whatever entity that may be) are, as a whole, generally trying to get some of the money that ends up being made by the top 10% of corps (with those top 10% constantly changing as noted above) for the use of their inventions. So, considering that is what is happening irl it seems, what would be some of the pertinent considerations as to patent policy, if you have any things to note in brief?

        1. 1.2.1.1

          6, if your question was really why do corporations pay to obtain patents, there are several different good reasons applicable to different companies and situations. E.g., helping to get new venture funding or other financing. Increasing stock prices by looking more like a high tech company [which also benefits management stock options, etc]. Providing defensive protection by filing on ideas someone else might try to patent. Providing offensive and defensive protection for new product developments by filing before launch. Establishing an NPE portfolio. Etc.

          1. 1.2.1.1.1

            While some may find such things crass, others note the Executive Branch department in which the Patent Office is placed, or the context of Abraham Lincoln’s words (those with feelings and philosophies to the contrary should take a serious look at the cognitive dissonance created by working in a field that seeks to protect and promote innovators).

    3. 1.3

      Here some food for thought, 6. Germany’s 3rd Reich pioneered laws for compensation of employee inventors, to promote the Progress, of Course.

      Japan copied, thinking it a good idea, then the UK in 1978.

      Of course, 1978 is quite recent, in terms of patent law develoment. Never mind because, below, is a Link to a very recent decision of the UK Supreme Court, awarding employee Shanks compensation of 2 million pounds sterling.

      link to ipkitten.blogspot.com

      By now though, the judge-made jurisprudence on employee inventor law in Germany would fill a fair-sized library.

    4. 1.4

      I thank everyone for their replies tho it seems that I have given everyone the impression that I’m asking about systems where they necessarily give the “inventor themselves” rather than the patent owner (generally a corp) some compensation. I wasn’t referring to that here. I was just talking about the effects of the overall policy considerations that would perhaps be affected by the fact that generally people who file for patents (whatever kind of entity) or buy a patent and own it, are trying to collect, it seems, from the top 10% of corps that are pulling in the lions share of profits in any given time period. If that is even the case.

      Perhaps I’m just not wording this all correctly to make it make sense, but thanks fellas.

      1. 1.4.1

        Are you referring to some type of “aim at the deep pockets” type of thing, 6?

        1. 1.4.1.1

          Yeah bro that was the intention, but I will need to reorganize my question/thesis for later. No biggie, thanks for you guys thoughts.

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