“The technology involved in this appeal is simple” and Allows Common Sense to Substitute for Elements Not in the Prior Art

by Dennis Crouch

B/E Aerospace v C&D Zodiac (Fed. Cir. 2020)

Commercial aircraft lavatories are always oddly shaped in order provide some amount of functionality while minimizing space usage. B/E’s patent here covers the shape of the bathroom that includes the carve-out for a seat just forward — notice the “s” shape of the wall in the image below.  On appeal here the Federal Circuit has affirmed the PTAB obviousness decision.  This outcome was easy to guess once I read the court’s opening discussion line: “The technology involved in this appeal is simple.”  U.S. Patent Nos. 9,073,641 and 9,440,742.

The claims includes two “recesses” in the wall — you can see these in Figure 2 above.

  • an upper recess to receive the inclined seat-back; and
  • a lower recess for the back legs (“seat support”)

PTAB found the claimed invention obvious based upon the two prior art references shown below (and note the lower bottom recess):

Neither of the prior art references include the lower recess to support the back legs. However, the PTAB concluded that a skilled artisan would have found it obvious to modify these to include the claimed second recess. The Board concluded that this modification is was a “predictable” modification for solving a known problem — especially when “coupled with common sense.”

The Board was helped-along with its prior art analysis looking at several other contemporary references showing a lower recess.  I’ll note here that these contemporary references were not used as “prior art” but rather as information of the level of skill in the art.

On appeal, the Federal Circuit has affirmed finding the second recess “nothing more than the predictable application of known technology . . . because a person of
skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so.”  In addition, the court found that it would have been “common sense” to modify the prior art in order to try to save further space.

Here, the Board’s invocation of common sense was properly accompanied by reasoned analysis and evidentiary support. The Board dedicated more than eight pages of analysis to the “second recess” limitation and relied on
Mr. Anderson’s detailed expert testimony. The Board noted Mr. Anderson’s opinion that a “person of ordinary skill in the art would recognize that as a seat is moved further aft the seat support necessarily is also moved further aft.”

Slip Op. The court particularly noted that the simplicity of the technology aided in the conclusion of obviousness.

Here, just like in Perfect Web, the evidence shows that the technology of the claimed invention is simple. The patents relate to contoured walls that “reduce or eliminate the gaps and volumes of space required between lavatory enclosures and adjacent structures.” The missing claim limitation (the “second recess”) involves repetition of an existing element (the “first recess”) until success is achieved.

Id.

With regard to the design drawings submitted to identify the level of skill in the art.  The Federal Circuit determined that it need not reach the issue of whether they were improperly handled or prohibited by 35 U.S.C. 311(b).  Rather, the court held that the PTAB’s obviousness conclusion stands on its own – based upon the two prior art references coupled with the expert testimony.

62 thoughts on ““The technology involved in this appeal is simple” and Allows Common Sense to Substitute for Elements Not in the Prior Art

  1. 7

    “No.

    No, it does not.”

    Compellingly persuasive, as always.

    1. 7.1

      1. 7.1.1

        Again with the vague smiley face. That’s sad. Just sad.

        1. 7.1.1.1

          What is sad is that you think the emoticon is vague.

          1. 7.1.1.1.1

            Again with the ageism?

            1. 7.1.1.1.1.1

              Where is it that you think that I am engaging in ageism?

              This is not the first time you tried and
              F
              A
              I
              L
              E
              D
              miserably at playing some type of ‘ISM’ card, Mr. W.E. Coyote.

              1. 7.1.1.1.1.1.1

                Yeah, we all remember, Snowflake. You got so flustered you called yourself a liar. I can provide the link if you want to lie some more.

                1. I chuckle as YOU wait until this thread is ten stories deep AND you post a mindless nit (and do so in your typical way that has the anvil of your ‘trap’ fall in your own head).

                  It’s downright hilarious – in that train wreck sort of way.

                2. No idea what you think you’re trying to say, Snowflake. But we all remember when you called yourself a liar.

                3. Your mischaracterization failed (repeatedly) just as your attempt to classify my comments as ageism.

                  It’s not a matter of “what you think you’re trying to say “ it’s a matter of YOUR failures.

                4. ?

                  It is apparent that any response at all would have been met by you with the exact same response.

                  That is how empty your comments are.

                5. Is it a meme or a tell that you revert to talking in the plural and that you attempt to use an insult of ‘Snowflake’ that simply does not fit?

                  Those anvils keep dropping on your noggin, Mr. Wile E. Coyote.

    2. 7.2

      Morse, I saw the quote and wondered where you pulled it from. Answer, anon, last week-end, in reply to my very own 1111121 in this thread.

      I laughed, for I had completely forgotten that zero added value but nevertheless (if only in his own mind) “compellingly persuasive” anon-typical contribution to the thread.

      Morse, seriously, do you really have any interest at all, in hearing from anon how come “it does not”? Does anybody?

      But aside from all that, I’m pleased that you read my 111121 and that it aroused your interest. I find it pointless to engage with anon. So, when a post of mine appears as a reply to anon, my intention is to attract interest from other readers. As in 1111121.

      1. 7.2.1


        (how very sheeple of you, MaxDrei)

      2. 7.2.2

        “Morse, seriously, do you really have any interest at all, in hearing from anon how come “it does not”? Does anybody?“

        I think you answered your own question, MD.

        1. 7.2.2.1

          …and yet, let’s take a look at exactly WHO our shifty friend responds to on these boards (with greater than 95% directed to a single solitary person across his several pseudonyms).

          Answered his own question?

          You do not even recognize the form of the question, and your own 0bsess10n which paints the exact opposite of your desired narrative.

      3. 7.2.3

        “zero added value but nevertheless (if only in his own mind) “compellingly persuasive” anon-typical.

        Exactly. You got it.

        1. 7.2.3.1

          The blind leading the blind.

          Must be going to the woodshed together.

  2. 6

    Are we ‘getting sloppy’ because an Ends is what is wanted?

    From the decision (emphasis added):

    The Board’s conclusion is supported by substantial evidence, namely the expert testimony of Mr. Anderson, who opined:

    [A] person of ordinary skill in the art would recognize that as a seat is moved further aft the seat sup-port necessarily is also moved further aft. As the seat is moved aft the feet of the seat support may come into contact with the lower section of the wall. Creating one or more recesses to accommodate what-ever portion(s) of the seat support that would contact the forward wall of the enclosure is the obvious solution to this known problem.

    Last I checked, an expert witness is NOT to be taken for their pronouncements of law, but instead for their ‘expertise’ on the underlying factual matters.

    That does NOT appear to be what the court here did.

  3. 5

    The Federal Circuit acts in conflict with Supreme Court law when holding (as it often does) that simplicity of a novel combination suggests its obviousness. The opposite is so. Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1902) extensively quotes the Supreme Court’s prior holding that “it is evidence of invention” when a combination of known elements that were each “under their very eyes” of “even the most skillful persons . . . produce a new and useful result, never attained before:”

    We cannot better conclude this opinion than by the following extract from the opinion of Mr. Justice Bradley in Loom Co. v. Higgins, 105 U.S. 580, 591: “But it is plain from the evidence, and from the very fact that it was not sooner adopted and used, that it did not, for years, occur in this light to even the most skillful persons. It may have been under their very eyes, they may almost be said to have stumbled over it; but they certainly failed to see it, to estimate its value, and to bring it into notice. . . . Now that it has succeeded, it may seem very plain to any one that he could have done it as well. This is often the case with inventions of the greatest merit. It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”

    Id. at 446.

    1. 5.1

      Good cite, Robert. I like it.

      Let’s tease this out. Looking at this lavatory wall invention, is there any “new” result that was never before “attained”? If so, what would that be, please?

      But otherwise, is the Fed Ct really saying that the more simple something is, the more obvious it is? I had not appreciated that it was as simple as that, to decide on obviousness.

      1. 5.1.1

        Well, it should be clear that the new result is the more efficient use of space in a context for which space is a premium.

        (Perhaps akin to a mere color change in a context for which the color change has a material effect)

        1. 5.1.1.1

          Has there ever been a moment in the history of civil aircraft when space inside the aircraft has not been at a premium and therefore needs to be used efficiently? And you still assert that this use of space is “new”?

          Don’t know about you but the “efficiency” with which I already use the spare space behind my seat in the back row is unmatched. I don’t know where you get the idea that this invention has achieved any increase in efficiency.

          You see no difference between that and the totally surprising and fully unpredictable new result of using a blue instead of a black ball for a game of squash racquets, namely, that it provably lifts the standard of play to a higher level.

          I do. The two cases are not comparable at all.

          1. 5.1.1.1.1

            Hmm, per your rationale, since the requirement was always there, then the post “that you like” up above at 5 seems to point you in the opposite direction of your comment towards me.

            That you do not grasp that a mere simple change of color is not related here is a “YOU” problem.

            I have no help for that.

            1. 5.1.1.1.1.1

              The issue is whether the “new” result was “expected”. nobody expected that switching to blue would raise playing standards. Everybody would expect the amount of storage space, each side of the wall, to vary with the shape of the wall.

              1. 5.1.1.1.1.1.1

                Your response to post 5 (“I like it”) still points to a contradiction from you.

                That you seem to not want to recognize such….

  4. 4

    Frankly, you don’t even need the prior use evidence. Fig. 1 of the admitted prior art is sufficient to render obvious because it depicts the relevant chair up against a wall. The wall constitutes a boundary between storage containers, there’s no reason to think that forming a storage container of that shape was unenabled (in fact I would bet the patent relies upon prior art enablement to cause the shaping), and producing a container of that shape generates predictable results.

    i.e. if I want my room/closet to be a cube shape, my closet can be a cube. It can also be a cylinder shape, or oval or any other shape. It can jut out at the top or bottom. Any lay person knows this design can occur. It can form, as near I suspect, any shape I want my room to be, and reasonable expectation of shaping my room or closet like that is that I can access things within the boundary while I myself am in the boundary and other things (for example pipes and support structures) can exist outside the boundary. The natural effect of any particular shape is that it controls how much space there is for storage on either side of the boundary – personal effects on one side, and pipes on the other. Therefore you have a “motivation” (again, for those who mistakenly think a motivation is needed) to mold the wall to the shape of the chair so that there is a maximal amount of storage space on the outside, while still allowing a person to sit inside. But the motivation is besides the point. A motivation is a sufficient but not necessary rationale for proving obviousness. It’s non-obvious because the claim produces only expected results.

    “We need not go so far as to say that invention never can reside in mere change of dimensions of an old device, but certainly it cannot be found in mere elongation of a merchant’s counter — a contrivance which, time out of mind, has been of whatever length suited the merchant’s needs.” – A&P Tea Co

    A wall boundary has ‘time out of mind’ been whatever dimensions suited the needs, and the admitted prior art shows that the exact same-shaped chair has conventionally been placed up against a wall. Therefore it is obvious to mold the wall to fit the chair.

    1. 4.1

      Re: Common Sense –

      I understand why the argument was made because the Federal Circuit language on common sense is entirely overblown. When “common sense” is used in its ordinary usage – to essentially mean “There’s a motivation to do it but it’s difficult to describe in words exactly what that motivation is” – a claim is obvious because that is simply a statement that based on the cited evidence and the fact that a PHOSITA is entitled to use ordinary creativity, the claims lack a non-obvious distinction over the prior art. This usage of “common sense” is “bad” only because it is so easily avoidable. It really takes only a minor creativity to articulate some sort of reason or motivation beyond the words “common sense”. This isn’t like pronography that escapes definition but “I know it when I see it” – most all common sense acts are amenable to a logical description. If that description CAN be made, then it SHOULD be made, but that doesn’t mean that it is deficient to not do so. If you replaced “common sense” with “within the ordinary creativity of the art” you’d have no problem.

      The only time “common sense” is an improper usage is when it is used entirely in place of any kind of analysis. Here’s the prior art, here’s the claim, [waves common sense wand] poof, obvious. KSR requires that an analysis be made explicit, but in the very next sentence states “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” In other words – there is a distinction between using “common sense” as an avoidance of an analysis, which would frustrate the claimant’s ability to rebut, and using “common sense” as a statement that the necessary act to bridge the gap between the prior art and the claims has been determined to lie within the ordinary creativity of the art, which directly tells the claimant what evidence would rebut. The federal circuit historically does not make such a nuanced distinction in their writing. Here they did.

      1. 4.1.1

        The usual reaction to the jibe “Mere commonsense” is the “Why did nobody do it earlier, then?” or “It cannot have been obvious because it could have been done at any time over the last few decades but wasn’t”.
        There are plenty of echoes of that in the letter to the EPO Examiner that I mentioned earlier in this thread. It does have some traction (There is a Duffy Paper on it, as I recall, his “Timing Theory” of obviousness) but the argument is easily punctured (I recall the English case PARI with Hugh Laddie sitting as judge).

        But what do you say about such cases, Random, where the art applied is all very old, and the commonsense step that brings such benefits was something anybody of skill in the art (of fitting out a passenger aircraft) could have done over the last several decades.

        In my experience, it is often economic issues that explain the delay. So, here (perhaps) it is only in the last few years that the claimed S-shaped wall will give the aircraft operator cost-savings high enough to recoup the extra costs of having it installed in the aircraft being fitted out. Those shifting economic balances are not enough to render an obvious wall configuration patentably inventive. Or are they?

        1. 4.1.1.1

          Re: “it is often economic issues that explain the delay” [in publication of prior art for an entire claim of the patent]. That is an example of what could be in a 103 rebuttal in an IPR petitioner expert declaration. Not just the more complex manufacturing, and variable position side mounting for the plural-bends wall, it could also be having to provide different shelf widths for the the adjacent irregular width storage area? In other IPRs for other patents it could be, for example, the delayed development of commercially-suitable materials, tests, government regulations, etc. until near the filing date.

          1. 4.1.1.1.1

            Paul, I thank you for giving me an insight into how expert declarations can bang on about economic considerations, when arguing for or against obviousness. Over here in Europe, I live in the luxury of an approach to the obviousness enquiry which , as an intrinsic and inherent feature, ruthlessly excludes economics from the arguments for or against obviousness. Over here, it would be foolish to run them, for doing so will be seen as confirmation that, otherwise, you have no real case, or no real confidence in your case made on technology-based arguments.

            It is a poor thing, if cases in the USA routinely descend into the morass of argument and counter-argument, whether or not some step was “economic” because those are the arguments that are likely to carry the day.

            What explains the infection with cost arguments? I suppose courts can resonate to arguments in the area of “cost” more easily than judges can tune in to arguments taking place within a sophisticated technology space.

            1. 4.1.1.1.1.1

              The US Sovereign has chosen differently.

              This is NOT a “poor” choice.

              It is a different choice.

              Show just a little recognition (and just a little respect), please.

            2. 4.1.1.1.1.2

              Max, factual affidavits with evidence by experts seem to me preferable to leaving obviousness decisions to subjective views of EPO or US PTO board of appeal members, who cannot possibly be experts themselves on all the different technologies they rule on. Also, we are talking here about what we call “secondary evidence” re 103 and its rebuttal.

              1. 4.1.1.1.1.2.1

                Yes, Paul, I see what you mean, but i) at the EPO there are are around 25 Technical Boards of Appeal, and each looks exclusively at its allocated set of art units and each is staffed by specialist expert technical judges in that field ii) of course the statements of renowned technical experts carry weight with the Board when the claim is in a fast-moving new field iii) EPO-PSA is a TSM approach so docs created earlier than the date of the claim are what carries the day, less so than contemporaneous witness evidence, and iv) secondary factors are viewed with deep scepticism and nearly always given scant weight.

                What’s not to like? I suggest that we might ask those corporations which routinely dispute oppositions at the EPO, 50% of the time as patent owner, the other 50% of the time as opponent. What do they say?

                1. Max, when talking about US inter partes IPRs the more appropriate analogy would be the EPO Opposition system boards, not the EPO Technical Boards of Appeal.
                  More than once I had EPO agents that commented that somehow claims can become much more obvious at the former than the latter.

                2. Well that’s an eyebrow-raising comment, Paul, for sure. For every Board that corrects an OD decision to revoke for obviousness there is, in my experience, at least one that reverses an OD decision to dismiss the obviousness attack and, instead, finds the claimed subject matter to be obvious.

                  The OD’s are populated exclusively by Examiners. They are inclined to interfere with the pre-issue assessments of their Examiner colleagues only when they feel impelled.

                  Otherwise the Boards. ex-Examiners serving as technical members (Rapporteurs) on a Technical Board of Appeal generally relish the opportunity to put straight their erstwhile examiner colleagues, when they compose the written decisions of the Board they serve on.

                  The EPO likes to categorize the OD’s as “administrative” tribunals while the TBA’s are the judicial appeal instance. The Boards used to be appallingly lax about letting further evidence in, at the appeal stage but, just recently, they are ever-stricter about admitting any new evidence.

                3. With relish…?

                  That sounds like an ulterior motive and should be quashed.

                  Would you not agree that what is desired is objectivity?

        2. 4.1.1.2

          So, here (perhaps) it is only in the last few years that the claimed S-shaped wall will give the aircraft operator cost-savings high enough to recoup the extra costs of having it installed in the aircraft being fitted out. Those shifting economic balances are not enough to render an obvious wall configuration patentably inventive.

          Well this could certainly be a plausible explanation, but it’s an useless one because you’re going off on a legally irrelevant tangent.

          But what do you say about such cases, Random, where the art applied is all very old, and the commonsense step that brings such benefits was something anybody of skill in the art (of fitting out a passenger aircraft) could have done over the last several decades.

          I say that is the definition of obviousness. Section 103 exists to expand the reach of denial beyond Section 102. Being able to do something for decades, coupled with an assumption as to what would happen if you did it that is ultimately proven correct is as close to anticipation as you can get without it actually being anticipation. Legally, it inverts the law and raises the secondary considerations over the primary ones. The function of secondary considerations is to solve close cases, not to essentially write 103 out of the statutory scheme because “we could do this and we knew exactly what would happen if we did it” gets trumped by “but there’s no evidence a human actually did it.”

          The principal analysis error that occurs in that thought process is that it assumes that the legal PHOSITA is merely the sum of legally-irrelevant humans. In other words “since this had utility, and the whole industry did not do this, it must be non-obvious” but the standard isn’t what a human would do, or even what a collection of humans would do. The standard is what the hypothetical PHOSITA would find obvious. The hypothetical PHOSITA isn’t shackled by commercial solvency, biased toward ubiquitously-used methodologies, or willing to universally either ignore or be commanded by minor utility deltas. To the hypothetical person that knows everything, the act of selecting a tool or technique to achieve the known results of the technique is obvious. If I know that a given tool will solve a problem it is nonobvious (“common sense”) to open my toolbox and apply the tool, and that is true regardless of how large my toolbox gets, whether other tools exist, or how your average human in the art would fix the problem. The fact that an actual human may carry only a small toolbox, or may prefer to apply only certain tools they are more comfortable with when another tool would do is, for the purposes of our legal standard, irrelevant.

          It’s unquestionable there’s a technique here. I myself have a recessed (oh look, the technique is so common it has an industry term) nook for holding my tv in my house. The fact that one cannot find anticipatory evidence of a recessed wall for receiving a chair on an airplane is not a statement that the tool for solving this problem does not exist. There is no question that the wall of the airplane is not differently situated from the wall of a house, nor is chair different from a television, vis-a-vis the art’s ability to shape the wall. It is merely a statement that no human has bothered to apply this wall-shaping “tool” to this particular storage “problem” before. That would be a good argument if the standard was “what have humans done” (i.e. anticipation) and a terrible argument for “what does the sum knowledge of the art make possible” (obviousness).

          Hopefully the preceding paragraphs make clear why seeking out a “motivation” can get you into analytical trouble. When you start asking “why” a “human” is “motivated” to do something, you go on all sorts of pointless and confounding tangents. The vast majority of “why” things are done is to make money, which has little bearing on any art or its advancement. My car uses anachronistic mirrors rather than unquestionably superior cameras because (1) legal requirements and (2) the cameras would not make back their money commercially, and has nothing to do with whether it is obvious to use cameras and displays to see things that you cannot currently see with your eyes. The fact that all street-viable cars in the united states have used mirrors for probably 100 years now doesn’t mean a car-with-cameras claim is nonobvious. Is it plausible the same thing is going on with the plane wall here? Sure. But that’s not the point.

          The “why” of the nook is the intangible gut feeling that my television nook is there because its common sense or aesthetically pleasing. My television could work equally well hanging on a flat wall – many in fact do. The utility of such a nook, and therefore the motivation, is fact-specific and questionable at best. But if you instead ask the proper question of “if” the “art” “learned” something or, as MPEP 2143(I) puts it – if the art was enabled to use a technique that produced expected results prior to the instant invention, then the analysis becomes much more clear. That’s why KSR found a teaching, suggestion or motivation as a useful clue but the underlying test to be any rational basis supported by evidence, and went through a ton of cases that did not utilize motivations.

          1. 4.1.1.2.1

            Bravo! Thanks for that, Random.

            In your citing the PHOSITA I am reminded of a recent case in Europe where the argument in support of non-obviousness was that the cost of re-tooling the line to incorporate in it the claimed improvement would have been so high that nobody would give a moment’s thought to it. In dismissing that argument, the judge said something like: why must I think of the PHOSITA as an entity that is running an existing production line, one that is obliged to take into account the costs of its re-tooling? Why can’t the PHOSITA instead be setting up a new line from scratch?

            But never say never, eh? There might occasionally be what the English call a “long felt want” case, in which the evidence shows that there has been for many years a proliferation of attempts to solve a long-existing ,well-recognised and frequently mentioned technical problem, which the claimed combination of technical features in view undoubtedly solves. On that evidence, it might be a tad cavalier, might it not, to dismiss the claim as nothing more than plain common sense obvious (even to the fictional PHOSITA).

          2. 4.1.1.2.2

            RG, don’t you get the impression these days that effective arguments for or against “motivation to combine” are more important to most Fed. Cir. panels than 193 “secondary considerations”? [Other than perhaps good evidence of “long felt [unsatisfied] need”?] Here, for example, arguing that it is well known to a POSITA that a seat is more stable if the back legs extend further back, and that airplane toilet walls next to a storage container can, and already are, being bent back in desired areas with known manufacturing techniques, as motivation to combine?

            1. 4.1.1.2.2.1

              As noted in MPEP 2141: “As stated in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) [re-blessed in KSR] Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:
              (A) Determining the scope and content of the prior art;
              (B) Ascertaining the differences between the claimed invention and the prior art; and
              (C) Resolving the level of ordinary skill in the pertinent art.
              Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence, sometimes* referred to as “secondary considerations,” may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.
              *[Being cagey, since some Fed. Cir. judges object to the word “secondary.”]
              {Note the quaint PTO use of USPQ cites – does anyone else still use them?}

        3. 4.1.1.3

          I didn’t read your whole essay, but the answer likely is some combination of economics, materials, construction techniques, and seat shapes. There may very well have been patentable advances in materials, construction techniques, and seat shapes that made this wall shape economical or desirable where it previously wasn’t.

          Also, a recess in one space is merely a protrusion into another.

          1. 4.1.1.3.1

            Ah, but the ‘zero sum game’ of allocated spaces has some very different effects when those spaces are ‘walled,’ does it not?

            hmmmm

      2. 4.1.2

        “The federal circuit historically does not make such a nuanced distinction in their writing. Here they did.”

        I agree. They were distinguishing Arendi. The Arendi panel thought substituting a phone number for an address went beyond “common sense” because — computer!

        1. 4.1.2.1

          Ah, the ever (dull) ‘computer, therefore obvious lack view.

          See link to xkcd.com

      3. 4.1.3

        IMO it is much more straightforward than this. “Common sense” is fine when backed up by evidence focused on the claim element in question and why the claim element would have been an obvious modification.

        It really is that simple.

        Most of the time it never happens this way because the modification is too complex to just have an expert declare it to be common sense and have the expert be believable (the other side usually has their own expert saying the opposite anyway)

        Here, the difference was (1) that the applicant admitted very close prior art; (2) the modification was so trivial that any expert saying it WASN’T common sense probably would not be believed.

  5. 3

    Of course . . . the biggest problem with “common sense” is that it’s often neither as common . . . nor as sensible . . . as those positing such believe it to be.

    1. 3.1

      My thoughts as well. Indeed, the so called ‘common sense’ obvious patent was important enough to those in the business to be fighting over the claims. But, the CAFC, you now, so once sworn in get the secret omnipresent power of common sense.

  6. 2

    Another demonstration of the importance of good expert declarations in IPRs that are not effectively rebutted. But the really interesting, and apparently undecided, issue here is in including drawings of prior art products in such declarations to show the 103 POSITA level of skill in the art, even though IPR 103 challenges are limited to prior art patents and publications, not product public use or on sale. [The safer way to to do that is with product service manuals and proof of their legal publication, whenever available.]

    1. 2.1

      BTW, this Fed. Cir. decision properly specifically cites its controlling 103 case authority [which it does not always do, especially for design patents]: “In KSR, the Supreme Court opined that common sense serves a critical role in determining obviousness. 550 U.S. at 421.”

    2. 2.2

      Paul,

      I am reminded by your post some of the past ‘observations’ by our resident NON-US interlocuter as to the difference between actual prior art and this ‘other’ category of things that may be ‘known’ to this legal fiction of a Person Having Ordinary Skill In The Art (without themselves BEING prior art or having any of the burdens of being such).

  7. 1

    The family member at the EPO is EP-B-9073641. Nobody opposed it but, given the proceedings Dennis describes, I should think such an attack on validity in Europe would succeed too.

    For the time being though, Applicant’s compendium of imaginative non-obviousness arguments of 26 September 2017 explain how the EPO was persuaded to issue the patent, despite the simplicity of the technology.

    Indeed, that very simplicity of the solution to a real technical problem is generally reckoned to point to the non-obviousness of the novel combination of technical features.

    link to register.epo.org

    1. 1.1

      Max, “Applicant’s compendium of imaginative non-obviousness arguments” in the EPO file would need to be in an experts declaration, not just attorney argumentation, to be more effective for a patent owner rebuttal in an IPR trial. An important difference from ex parte application prosecution.

      1. 1.1.1

        Yes indeed Paul, but also an important distinction between English law and Roman civil law proceedings. At the EPO, even in inter Partes proceedings, attorney argument is well-received and expert declarations not so well. Why that? Because the expert technical judges do not like being lectured to by anybody else what is the “mental furniture” or the “common general knowledge” of the notional imaginary person of skill in the art. They have that in hand already and the system allows them to rely on it when they decide.

        An example of the well-known Golden Rule of advocacy commonly known as “Newton’s Rule” (that to every force there is an equal and opposite reactive force).

        1. 1.1.1.1

          Europe has subject matter experts presiding over patent tribunals? How can we replicate that here?

          1. 1.1.1.1.1

            Josh, far be it for me to answer your question but until others here, more qualified than me, put us both straight, I will suggest that it is a contradiction in terms, to have in the USA a patents court that is competent to know the knowledge of the person skilled in the art.

            Under English law, the court is an expert at assessing the evidence, and in deciding the case according to the evidence, all the evidence and (most important of all) nothing but the evidence. The skills to do that are different from the skills of a European-style “technical judge” as contemplated under the “Unitary Patent Court Agreement” that is on the point of coming into force in the EU.

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              PTAB “judges” are presumed subject matter experts. Isn’t superior agency subject matter expertise the entire logic behind a decision like Oil States?

            2. 1.1.1.1.1.2

              The skills to do that are different from the skills of a European-style “technical judge” as contemplated under the “Unitary Patent Court Agreement” that is on the point of coming into force in the EU.

              Different?

              Perhaps, but are not both judges to have the aspect of being able to discern evidence? Would not that discernment include evidence of ‘technology’ (however defined OR undefined)?

              Does your ‘answer’ really provide a viable explanation?

              1. 1.1.1.1.1.2.1

                Does my answer? I’m the wrong person to ask. Perhaps find somebody with 40 years of experience, litigating the same patent in i) the English common law courts in London and ii) before the civil law Boards of Appeal at the EPO in Munich?

                Cats and dogs both have tails but that doesn’t mean they are the same animal. Courts all over the world have to consider what weight to accord to the evidence presented by the opposed parties in litigation. What varies is how much weight to accord to different categories of evidence.

                Given that the obviousness issue is judged through the lens of that legal construct, the person of ordinary skill in the art, deciding how much weight to give to the opinions of so-called “expert” witnesses on what that construct knows or does not know can vary with the jurisdiction.

                Even Engish common law judges are deemed to know some technical facts. Technical judges in mainland Europe are credited with a lot more technical knowledge. It’s confusing for English litigators, but it does save time and money both in the run-up to trial and at the trial itself.What’s more, it spares the business people involved the unedifying “battle of the experts” that we sometimes see and which can erode trust in the courts to get it right first time.

                What do you say, Josh Malone?

                1. What’s more, it spares the business people involved the unedifying “battle of the experts”…

                  No.

                  No, it does not.

                  Why would you think such a thing?

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