Single-Point-Of-Novelty Innovations and the Obvious-To-Try Analysis

Google v. Philips (Fed. Cir. 2020)

So far there are still no precedential opinions issued in 2020, and this is the first non-precedential patent related decision.

Philips’ patent RE44,913 (“text entry method”) claims a 2001 filing date. At that time, a key focus of mobile-device development was on how to facilitate typing on these small devices with relatively imprecise touchpads.  The basic idea behind the invention can be seen in the two figures below. On the left is a “default” keypad with  showing “primary characters.”;  holding down the “5” key will then switch the display to the keypad on the rights that has more available options (“secondary characters”). After selecting one of those options, they keypad returns to the default state.

Philips sued Acer and others for infringement based upon their use of the Chrome and Android OS — that led Google to petition for inter partes review (IPR).

In its final decision, the PTAB sided with the patentee in holding that Google failed to prove that the claims were obvious.  On appeal, the Federal Circuit has reversed.

On appeal here, the Federal circuit has reversed the PTAB’s final decision siding with the patentee and holding that Google failed to prove that the claims were obvious. The basic issue here is that there is only a minimal difference between Philips’ claimed invention and the key prior art reference. The court explains:

The parties do not dispute that the [Philips’] ’913 patent claim differs from that Sakata II method in only one respect. In the ’913 patent claim, after a secondary character is selected, the relevant key “return[s] . . . to the default state” rather than, as in the described Sakata II method, changing to the selected secondary character.

It was also clear that the “return-to-default” option was available and familiar to someone skilled in the art (e.g. shift key).   Philips argued that particular step would not have been obvious-to-try since it one of many potential keypad techniques available.  On appeal, the Federal Circuit rejected the “wide-scope inquiry” as a red herring in this case — finding language from KSR directly on point:

[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”

KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007).  The Fed. Cir. explained somewhat obliquely that:

[T]he obvious-to-try inquiry at least sometimes must focus on known options at what is undisputedly the sole point of novelty in the claim at issue.

See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009).  The practical point here is that inventions with a sole-point-of-novelty set themselves up as a target for an obviousness finding because the court will ask “if the sole contested step of the claim at issue was obvious to try, taking the remaining steps as a given.”

In this case, the Court found additional reasons for obviousness — notably the primary prior art reference was actually an improvement over prior return-to-default techniques.

Sakata II itself asserts that the character substitution at the last step provides an efficiency benefit over the evident alternative of requiring that the secondary-character menu be summoned each time one of those characters was to be re-used. . . . This efficiency assertion is on its face a comparative one, and what is plainly being compared to the Sakata II choice is  the no-substitution option—where the primary character returns to the key upon disappearance of the secondary-character menu. That is Philips’s returnto-default claim element.

Slip Op.  In the end, the appellate panel did not appear to directly fault the Board’s factual conclusions but rather Board’s legal analysis — in particular the meaning of “obvious-to-try” and its impact on the ultimate (legal) conclusion of obviousness.

We hold that claims 1 and 3–16 of the ’913 patent are unpatentable for obviousness. The Board’s decision is reversed.

 

64 thoughts on “Single-Point-Of-Novelty Innovations and the Obvious-To-Try Analysis

  1. 7

    Has anyone else thought of this. After Oil States, the PTO can invalidate any claim under the AIA. The only appellant review is the CAFC and Scotus.

    But shouldn’t the PTO under administrative law be the one to interpret the statutes under which it operates including 101?

    (Not fully formed arguments, but I think there is something there.)

      1. 7.1.1

        Yes anon. I am wondering the boundaries of that now that the PTAB has been elevated as an equal to a federal district court.

        Maybe the PTAB does have the power to interpret the patent statutes.

      2. 7.1.2

        Particularly as the patent “right” is now a public right.

        Maybe that wipes out the Scotus’s jurisprudence.

        1. 7.1.2.1

          As Greg may be want to distinguish, “Public Franchise right” does not necessarily mean “Public right.”

          Franchise rights are still property rights.

          1. 7.1.2.1.1

            But you said multiple anecdotes are still not date (per Gregg). Comment 2.3.2.1.2.1, “Elijah E. Cummings Lower Drug Costs Now Act.”

            1. 7.1.2.1.1.1

              Hi Shifty,

              Are you taking issue with which item of Greg’s, the “Franchise rights are still property rights” or the “anecdotes are not data”…?

              Or did you not have anything actually on topic to add, and just wanted to tr011 a little?

                1. I am reading: you inserted a reference in regards to a comment made by Greg, in reply to a comment I made in regards to a comment made by Greg.

                  Maybe you should give me something more clear to read if you actually wanted me to take away a different point…

                2. “Maybe you should give me something more clear to read if you actually wanted me to take away a different point…”

                  I was repeating something you said. That’s, . . . the point.

                3. What you repeated had nothing to do with the thread (as compared to what I repeated was on point to the thread).

                  Be that as it may, what you repeated was what Greg said (and I had merely pointed out what Greg had said in a manner that was on point in that thread).

                  So…

                  Your point is that you like to repeat random things that others have said, out of context and having no relation to the discussion that you want to insert yourself…?

                  O’Tay.

                  (you really are not good at this blogging thing — what is your line of work?)

                4. … so I nail you again and your response is to refer to yourself in the plural…?

                  That an odd coping mechanism that you have.

                5. We ASSuMED there’s more than one reader of whatever it is you’re trying to pontificate. But you’re probably right. BTW, is that a Dijon smiley?

                6. That’s more than a little pretentious to place yourself in the place of multiple readers.

                  What is your line of work that generates such a ‘mind’-set?

                7. In addition, your reply at 7:58 is a non sequitur to my post at 7:51 (which does include ‘explanation’ that you suggest that I cannot give).

                  You are really bad at this blogging thing.

  2. 6

    I don’t receive many “obvious to try” rejections but the ones I do invariably fail to include any evidence that the “problem” allegedly being solved by the “obvious to try” approach is a known problem or any evidence, other than the application, that the “solution” is “known option” within the “technical grasp” of PHOSITA.

    No idea if evidence was provided/of record in this case because I didn’t bother to read it.

      1. 6.1.1

        Great Points!!! Especially the part about the application [sic; specification] being evidence, but not !!!!

            1. 6.1.1.1.1.1

              Come now Shifty, reading AAA JJ’s comment it was pretty clear that he meant that the examiner could not use the applicant’s own application in a hindsight manner as evidence against the applicant.

              You seem to like to use a lot of “examiner-speak,” but you don’t seem to know which form paragraphs to use where.

              What line of work are you in, by the way?

              1. 6.1.1.1.1.1.1

                Is that what AA meant to say? That’s a leap. Together, you sound like two blind guys describing an elephant.

                1. AAA JJ is certainly able to correct me if I misconstrued what he said, but the multiple blind men and the elephant parable does NOT fit the situation here.

                  What is your line of work? Maybe you should go back to that…

              2. 6.1.1.1.1.1.2

                Oh, now I remember. AA was the “registered practitioner” with the specification that incorporated by reference the prior art publication that demonstrated, undeniably, that the solution was a known option within the technical grasp of PHOSITA. And argued “you can’t use the specification against the inventor.” Affirmed; Rule 36.

  3. 5

    Philips argued that particular step would not have been obvious-to-try since it one of many potential keypad techniques available.

    If they had read the caselaw, they would know that obvious-to-try is defeated when it is *unknown* techniques, not known techniques. If the art knows of 1000 ways to achieve a result, and application of each of those techniques does what one would expect, then each of the 1000 ways is obvious (a simple check would tell you that regardless of OtT, “application of a known technique” is its own exemplary rationale). Obviousness is not a comparative test (i.e. it’s not a question of what would be “the most obvious” solution, or what one of skill would “try first”). It’s a question of what the art is motivated to try with a reasonable expectation of success.

    Could you imagine how ridiculous things would be if the opposite rule prevailed? It would lead to everything being patentable. Take obvious claim + particular processor, argue that “There’s no reason to select this particular processor,” get patent, repeat 1000 times for every known processor.

    1. 5.1

      … and yet, that is exactly what Malcolm would have with his lack of Ladders of Abstraction and “single objective structure.”

      1. 5.1.1

        “that is exactly what Malcolm would have with his lack of Ladders of Abstraction and “single objective structure.”

        Anybody?

  4. 4

    “Moreover, the return-to-default option is the long-familiar function of a keyboard’s Shift key—which, while it is being held, makes available a secondary character (e.g., an upper-case letter), with the primary character (e.g., the corresponding lower-case letter) restored to availability when the Shift key is released. See J.A. 228 (¶ 177); J.A. 2537 (¶ 43). And in this case, recognition of the alternative option does not require a skilled artisan to bring to bear knowledge from outside the principal reference. ”

    I think the outcome was a foregone conclusion with Lourie and Taranto on the same three judge panel.

    Plus, this isn’t exactly the same thing and requires abstracting the shift key with the special key solution to make it a “single” point of novelty. Really this is a finding of fact by an appellant panel that has no expertise in user interface design. Just ridiculous to see this type of fact finding at an appellant level by judges with no training in the art field.

    1. 4.1

      The cite “See J.A. 228 (¶ 177); J.A. 2537 (¶ 43)” shows that it is based on the factual record below [expert witness declarations subject to cross examination and rebuttal], not the independent conjecture of the appellate judges.

      1. 4.1.2

        Paul, the factual record may have had one opinion from an expert that said so, but it was contested with other opinions.

        That makes it a finding of fact to pick which interpretation is correct. The lower court selected which they thought was the most convincing –a finding of fact. This was overturned based on what? Based on a private finding of fact of the appellant court, which did not even quote the correct standard for overturning the finding of fact.

        1. 4.1.2.1

          Ssshhh!!! You are correct. But (how) facts (are properly treated under the law) are such pesky things.

    2. 4.2

      “I think the outcome was a foregone conclusion with Lourie and Taranto on the same three judge panel.”

      Yes.

      At least they didn’t sua sponte say the claims fail under 101.

      1. 4.2.1

        I’ll bite Atari Man. I never met a case I can’t squeeze into my 101 scheme.

        Is it a method? Yes Is the result of the method an item of information Yes (in this instance, the information is the state of the keyboard to be displayed) is the consumer of the information a human being? No. The consumer is the keyboard driver, a non-human actor. The method is eligible. Also, obvious ;-)

    1. 3.1

      That’s a better question than you might realize, given that perfectly valid claims may not encompass even a single “point of novelty” for individual claim elements (with the entire claim, as a whole, providing the novelty).

    2. 3.2

      What is a “single point of novelty” innovation and how does one avoid that characterization?

      Invent something that hasn’t been entirely conceived by another except for one part. Your question seems to beg for a legal trick, but there isn’t one.

      If you don’t want to be called mundane, don’t do mundane things.

      1. 3.2.1

        That you see only the mundane is a reflection of you, Random, rather than the asker of the question.

        1. 3.2.1.1

          “That you see only the mundane is a reflection of you, Random, rather than the asker of the question.”

          O.M.G ! You watch Bosom Buddies too ! (or is it from three’s company?)

          1. 3.2.1.1.1

            Hi Shifty,

            I don’t think that I have watched any episodes of “Bosom Buddies,” but do recall an episode or two of “Three’s Company.”

            Neither, as far as I know, have anything at all to do with the reflection here that Random is the mundane one who cannot see anything worth while in H2H’s question.

            Maybe you can provide a YouTube clip (or a funny gif) while you take a break from whatever line of work you are in so that we all can enjoy the reference that you attempt here…

  5. 2

    The last paragraph of this decision’s discussion is interesting as a possible argument for distinction from other such 103 cases:
    “Here, the record reveals only [n.b.] two options [n.b.] for what happens to a key in Sakata II’s method after the secondary character is selected: (1) character substitution and (2) returning to the default state. And “even without experimentation, simple logic suggest[s],” id., that returning to the default state is a readily achievable option and often will serve the undisputed goal of “reducing the user’s burden” of obtaining the desired character, J.A. 312. We conclude, on this record, that the return-to-default alternative to character substitution would have been obvious to try and, as in Perfect Web, obvious.”

    1. 2.1

      Would your opinion change if it was ten options, or 100? Do you think the court would write “here the record reveals that there are 100 different brands of lightbulbs. But the inventor selected this particular one to include in his method for lighting a room, and therefore the invention is non-obvious?”

      1. 2.1.1

        RG, you gave a good answer to that yourself at 5 above. However, the authors of this decision in the paragraph quoted at 2 above [and note its location in the decision] apparently did find it significant that the record showed only two known options. Also, contrary to NW 4.1.2 above, a court decision would not normally say that if in fact there was factual rebuttal expert testimony in the record.
        Also, of course, the Fed. Cir. is not bound by the weight or lack of weight given to facts of record by the PTAB to the PTABs conclusions of unobviousness or obviousness therefrom, since that ultimate legal question can be independently decided by the Fed. Cir. The Fed. Cir. panel can also read contents of prior art patents of record cited in appellate briefs for themselves, and does so quite often, especially when it has been ignored by lay juries and not effectively rebutted in reply briefs. Reversing or remanding IPR decisions [other than on due process issues], as here, is far less common.

        1. 2.1.1.1

          Also, contrary to NW 4.1.2 above, a court decision would not normally say that if in fact there was factual rebuttal expert testimony in the record.

          It appears that you missed NW’s point there Paul.

          It wasn’t to note that “other facts” were below, it was to point out that an reviewing court cherry-picking only certain facts below — and NOT following recognized legal procedure with dealing with a “total facts below” lower court determination — is a problem created by the reviewing court.

  6. 1

    Certainly the correct result for the right reason. Of course, this reasoning obliterates nearly all “do it on a computer” patents because nothing is quite so predictable as logic, or “X does this when Y is selected”.

    1. 1.1

      I think that you confuse and conflate “predictability” as a general notion.

      This sounds in Random’s nonsense: such is nonsense because it would the patent system ONLY available for purely accidental discoveries or “flashes of genius” – of which was the mindset of the anti-patent Supreme Court of the 30’s and 40’s (self-christened “The Only Valid Patent Is One That Has Not Yet Appeared Before Us”), which of course was one of the “awakening” drivers of Congress acting to curb the Court abuses with the Act of 1952.

      1. 1.1.1

        …to wit, ALL engineered items are done so because “logic dictates” (also known as the Scientific Method).

        Your “view” simply applies this at far too gross a scale (very much like the Big Box of Protons, Neutrons, and Electron metaphor that I chide you with).

        Applying your “logic” eviscerates nearly most all actual innovation.

        1. 1.1.1.1

          Shorter Bildo: “I love my junk patents!”

          Also, discovering an unpredictable result through use of the scientific method is not the same as claiming logical functionality.

          My goodness but you are a dim bulb.

          1. 1.1.1.1.1

            Try again – and this time without the mindless ad hominem and try actually being on point to what I posted.

      2. 1.1.2

        Wrong. It just means that when you have a small number of pre-existing solutions to a general problem, evidence of predictability of functionality in the specific context of the claim will destroy the patentability of the claim.

        This isn’t difficult stuff. It’s reasonable. It’s not the result that YOU like but … who cares about what you think about anything?

        Please take a shot at a rolling donut and return to your true calling: blaming Dems for the crimes of the Repu-k-k-k-es. You’re a very serious person!

        1. 1.1.2.1

          Your first paragraph here does not say the same thing as above (you moved the goalposts).

          Also, your notion of my true calling is (sadly and oh so predictably) false.

          Try less spin.

          1. 1.1.2.1.1

            I didn’t move any goalposts.

            Just admit that facts and basic reasoning mean nothing to you because all that matters to you is your precious patent rights and you never saw a patent claim involving a computer that you couldn’t fluff all night long.

            [shrugs]

            1. 1.1.2.1.1.1

              You are doing that Accuse Others thing again, projecting that it is me (instead of you) that does not care about facts and basic reasoning.

              Again, try less spin (and try responding to what I have actually posted).

      3. 1.1.3

        A typical “pound the table” argument. You’ll notice he can’t cite a case where the hypothetical person of ordinary skill just “gives up” because he has too many options. Instead the law is, unsurprisingly, that the person of ordinary skill attempts everything he is motivated to attempt so long as there is a reasonable likelihood of success. How did the multiple options tactic work for Phillips in this case?

        1. 1.1.3.1

          Random, you moved the goal posts too (with at least adding that ‘reasonable likelihood of success’ expectation — note that this relates to an expectation rather than a factual condition; an item may well be factually successful (if tried), but the legal notion at point is different.

          1. 1.1.3.1.1

            Random, you moved the goal posts too (with at least adding that ‘reasonable likelihood of success’ expectation — note that this relates to an expectation rather than a factual condition; an item may well be factually successful (if tried), but the legal notion at point is different.

            No anon, applying what the art knows isn’t goalpost moving. Something that works in one context is reasonably expected to work in another context unless there’s some sort of known reason it wouldn’t. That’s why you can walk into an entirely foreign room and flip a switch on the wall and expect the light to come on – you know that light switches exist, you’ve used a light switch, and you reach out exactly because you expect this switch to function like all the other ones. The same is true with anything else in any art – a light switch is just one example of a generic widget that a person of ordinary skill knows how to apply.

            As long as the light switch keeps resulting in the light coming on, the act is obvious. If I expect the light to come on and instead the light switch activates my car, then I might have a non-obvious invention. Getting a predictable, expected result from what someone has done before is obvious. It is only non-obvious when it it results in what the art would call the unexpected (what you would call “flash of genius,” although the actual category is broader than that) or when applying the known thing to the new context is actually beyond ordinary skill. Unfortunately for most scriveners in the computer area, they draft their specifications in a manner that excludes the latter option, and the former rarely applies.

            Your problem isn’t with me, it’s with KSR and its parentage. When Kennedy wrote

            For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

            He invalidated a whole host of possible inventions, including the one above. It is not my hand which wrote that simple if-then, it is only my hand which applies it. You argue with the supreme court, and unfortunately for you, you’re a nobody.

            This isn’t really an OoT case. KSR was an OoT case. This is a simple “we know a technique that computers can interpret signals from buttons as either permanent or temporary mode-switchers to provide for more inputs than there are buttons” and a simple application of the temporary mode-switch technique for the known benefit of allowing for more inputs than buttons. It would improve the input functionality of a phone keyboard the same way it improves the input functionality of a desktop or typewriter keyboard. It is not beyond the art’s skill to apply. The fact that the art knew of permanent mode-switching, or knew of other techniques for achieving additional input functionality is irrelevant, because the test is only if they would recognize that it would generate a similar improvement and if it could be done. Therefore it is obvious. The fact that a legal conclusion can be reached without any additional fact finding is precisely what allows the federal circuit to reverse rather than remand for the fact question. You seek to add a fact question when the law unquestionably has none. You misapply the law.

            You’re misapplication is also obvious, because its exactly what an ordinary reader of this board would expect from your post.

            1. 1.1.3.1.1.1

              Wow – so many words and most all of them (the ones that you attempt to describe me and my views) are just completely wrong.

              Yes, I do take issue with (more than one) Supreme Court decision. I do so because the Score Board is broken. You take the lazy route and presume that the Supreme Court cannot get the law wrong (even as the Supreme Court MUST be wrong since their own decisions are self-conflicting).

              You also happen to ONLY pay attention to those things you like and agree with, which leads only to your own self-delusion and a LACK of ability to employ critical thinking.

            2. 1.1.3.1.1.3

              No anon, applying what the art knows isn’t goalpost moving.

              Great — you are trying to refute something I did not say.

              Something that works in one context is reasonably expected to work in another context unless there’s some sort of known reason it wouldn’t.

              You have that arse backwards.

              You want someone else to provide a showing while you assume the conclusion that you need to show.

              There is a reason why examiners have the onus of following the Graham Factors and simply cannot demand the applicant to show non-obviousness.

              You are most definitely one of the type of examiners that makes a joke out of US patent examiners.

              Also, your rant on fact versus law is so deep into the weeds that there is no hope for you.

              That “ordinary reader of the board” comment does not come out like you think it does (in no small part due to your rampant and out of control confirmation bias self-induced blindness.

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