Guest Post by Prof. Dmitry Karshtedt: Nonobviousness and Time

Dmitry Karshtedt is an Associate Professor of Law at GW Law whose work I’ve followed for years.  Below he introduces the core idea underlying his new article on nonobviousness forthcoming in the Iowa Law Review.  -Jason

Nonobviousness and Time
Dmitry Karshtedt

Over the years, courts and commentators have said many thoughtful things about secondary considerations evidence and its role in the law of § 103, and reasonable minds have expressed significant disagreement about the value of this evidence. Consider, for example, the Federal Circuit’s fractured en banc Apple v. Samsung decision in 2016 and the never-ending debate over whether secondary considerations are best treated as rebuttal evidence to a prima facie case of obviousness based on the prior art, or whether all obviousness evidence should be analyzed holistically and at once.

My take is different: the whole primary/secondary categorization is unhelpful, especially in litigation and during post-issuance PTAB review. Let’s take one illustration. Commercial success and the skepticism of experts are both classified as “secondary considerations,” while teaching away is usually considered to be a part of the primary inquiry. However, skepticism has much more in common with teaching away, which directly tells us that the claimed invention would have been challenging to come up with, than with commercial success, which represents a market response to the invention that may indicate nonobviousness only indirectly. So what is the point of these evidentiary silos?

My answer is that there is no point. In Nonobviousness: Before and After, forthcoming in Iowa Law Review, I examine the different types of evidence used in the obviousness analysis and conclude that the primary/secondary framework does not make sense or have a strong precedential basis. The framework comes from throwaway language in Graham v. John Deere, in which the Supreme Court was grasping for some kind of a label for non-prior art evidence in § 103 cases. It has no grounding in established pre-Graham obviousness (and “invention”) precedent—which, for example, repeatedly supported the proposition that evidence like failure of others can be highly probative of validity. And it is inconsistent with KSR v. Teleflex, which sang a veritable paean to non-prior art evidence (e.g., market pressure and design need) in rejecting the Federal Circuit’s “blinkered focus on individual documents”—as the court acknowledged in one post-KSR opinion. Yet despite its lack of a coherent normative or precedential basis, classification as primary or secondary is well-entrenched and matters a lot in practice because the label can lead to arbitrary bolstering or discounting of certain evidence. On the one hand, the “secondary” scarlet letter can lead courts to ignore good evidence like failure of others, harming the patentee’s case. On the other hand, a boost from the “primary” label can sometimes cause courts to overvalue evidence like unexpected results in favor of the patentee.

I propose a better approach to structuring § 103 analysis based on the timing of the evidence. Under my approach, the filing date provides a useful default dividing line between different kinds of obviousness evidence: rather than categorizing obviousness evidence as primary or secondary, we should instead view the evidence as ex ante or ex post. With this framing, we can see precisely why skepticism has more in common with teaching away than with commercial success: skepticism and teaching away reflect the pre-filing state of the art and thus speak directly to a PHOSITA’s lack of motivation or reasonable expectation of success to pursue the invention at issue, while commercial success is (usually) a post-filing response to the invention and thus constitutes only indirect evidence of nonobviousness. The readers of this blog are very familiar with the concept of nexus—in the sense that a proponent of objective indicia evidence must establish a link between that evidence and the technical merit of the invention as claimed.  My article’s proposal extends this concept to timing in that the party relying on ex post evidence must demonstrate a connection between that evidence and the elements of motivation and reasonable expectation of success at the time of filing. With ex ante evidence, however, temporal nexus is not an issue.

In my scheme, commercial success has more in common with evidence like copying or licensing than with the skepticism of experts and failure of others, which is classic ex ante evidence. And unexpected results, which the Federal Circuit has had great trouble fitting into Graham’s silos (some cases characterize that evidence as primary while others, as secondary), are instead divided into ex ante and ex post unexpected results.  As I show in the article, there is (pre-Graham) Supreme Court precedent supporting this general scheme and even some modern cases sometimes (almost) get it right. However, there is too much confusion in the case law to sustain a consistent approach, suggesting the need for an explicit adoption of the proposed ex ante/ex post framework. The tables below illustrate the key moves (indicated in italics), and the article explains why the proposed scheme will help decision-makers determine the relevance and weight of various nonobviousness evidence with greater accuracy.

 

Table 1. Graham’s Primary-Secondary Framework

Primary Evidence Secondary Evidence
Content of the prior art and the differences between it and the claimed invention  

Commercial success

Prior art teachings “toward” or “away” from the claimed invention  

Failure of others

Comparison of the properties of the claimed invention with those of the prior art, including unexpected results (?)[1]  

Long-felt need

Expert skepticism
Copying of the claimed invention, licensing, and other forms of industry acquiescence
Industry praise (or disbelief)
Simultaneous invention
Unexpected results (?)

 

 

Table 2. Proposed Time-Based Scheme

Ex ante evidence
(relating to state of the art facing a PHOSITA at time of filing)
Ex post evidence
(in reaction to or during further development of the invention)
 

Content of the prior art and the differences between it and the claimed invention

 

Commercial success

Prior art teachings “toward” or away” from the claimed invention, as well as market pressure and design need Copying of the claimed invention, licensing, and other forms of industry acquiescence
Comparison of the properties of the prior art with those of the claimed invention, including unexpected results, if discovered before filing Comparison of the properties of the prior art with those of the claimed invention, including unexpected results, if discovered after filing
Failure of others Industry praise (or disbelief)
Long-felt need
Expert skepticism
Simultaneous invention

        [1].     Question marks next to “unexpected results” reflect their inconsistent classification

Read the draft article here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3820851

123 thoughts on “Guest Post by Prof. Dmitry Karshtedt: Nonobviousness and Time

  1. 11

    If it’s not too late for this thread, I want to pick up on what quasar18 wrote yesterday at 311122. From Graham, he says:

    “Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of THE SUBJECT MATTER SOUGHT TO BE PATENTED.” (caps for emphasis)”

    I wonder, how does such a utilization comply with the command that the manner of conceiving the invention shall have no relevance to the 103 determination. Is it that the manner of making the invention is to be seen as independent of the surrounding circumstances ?

    1. 11.1

      My understanding is that portion of the statute was specifically meant to overrule the “flash of genius” test link to en.m.wikipedia.org

      Reading too much into that part of the statute beyond that seems like a dead end to me. But maybe there is more historical context I am missing. I know Dennis has pointed out that part of the statute in a few prior posts.

      The circumstances are also relevant to the question of what a posita would have known at the time of filing. That question, which is a counterfactual inquiry based on a fictional posita, is not the same as how the invention was actually made (a question of fact).

      This (perhaps shuttle and overlooked) distinction is also my quibble with the paper in general incidentally (that it seems to treat obviousness like a purely factual question that can be assessed temporally rather than as a counterfactual legal fiction).

      1. 11.1.1

        Sorry, should say subtle, not shuttle (autocorrect)

      2. 11.1.2

        Quasar18,

        It is beyond clear by this point that the author is simply too invested in his paper, and ANY attempt to educate him is for naught.

        1. 11.1.2.1

          Agreed anon. I just thought MaxDrei had an interesting question and I wanted to address it on its own merits notwithstanding the paper.

      3. 11.1.3

        Good answer. Thanks Quasar. I agree that what is key to the obviousness determination is what the notional skilled person would have known, at the relevant date. I wonder whether the professor has thought much about the difference between the state of knowledge of i) any real person, including the named inventor, and ii) that legal fiction, the person skilled in the art. What the named inventor (or indeed any other real person) knew or did not know is irrelevant to the determination of obviousness, right?

        1. 11.1.3.1

          Thanks. Not sure if it is irrelevant. It is certainly not dispositive though.

          1. 11.1.3.1.1

            Is it relevant or not? Interesting, quasar18, to debate. For me, the obviousness enquiry should be objective, not subjective. Renowned England patents judge Robin Jacob (I think it was) declaimed that the named inventor is the last person one should ask, if one is after an objective determination of obviousness.

            1. 11.1.3.1.1.1

              Objective/Subjective is a continuum – not a binary.

  2. 10

    I don’t actually see a point to this paper.

    The biggest problem by far and one that is supported by thousands of research papers (real ones by scientists that are peer reviewed not ridiculous law review “articles”) is hindsight reasoning. It is well established that it is impossible to reason based on not knowing something that you have learned.

    This is by far and away the main problem with a 103 analysis.

    Plus the current system is focused on primary–actually prior art–and secondary –more tenuous–considerations where more flexibility is necessary due to the nature of the evidence.

    Plus–this need to prove a nexus sounds to me suspiciously like the real point of this paper is to weaken patents by providing the lowlife at the CAFC a cite to support some new outrageous holding.

    1. 10.1

      Yet another post caught in the George Carlin filter.

      1. 10.1.1

        Not directly in the post stuck in the filter, but the statement below of,

        With the proposal, we are avoiding the secondary considerations trope which in practice has caused endless problems.

        There are several indicators that the “interest” may be more than a bit tainted.

        A word such as “trope” seems to not only ‘get’ the procedural aspects, but tends to denigrate anything NOT in the direct procedural path (or perhaps more accurately, seeks to ‘reset’ things so that those things that may be ‘favored’ are used and ANYTHING not ‘favored’ could be eliminated.

        The real ‘tell’ though is “endless problems” – when, as had been pointed out, the Re-Label game does not address the actual underlying problems.

        It is this type of “there is a problem, and I am just trying to make things better” that betrays itself as a type of “Politeness, while holding a dagger behind your back.”

        1. 10.1.1.1

          Yes anon this paper is not about trying to make 103 a more fair analysis.

      2. 10.1.2

        The reality is that primary is merely referring to evidence that is recognized by the statute and secondary is referring to court recognized evidence. This whole paper is borderline absurd and seems to be directed to finding new ways of weakening patents.

        1. 10.1.2.1

          This point is recognized in the paper. In practice, though, the “secondary” label has left to the devaluing of objective indicia. I’m not sure how making sure that this evidence receives due consideration weakens patents.

          1. 10.1.2.1.1

            Pleas pardon potential (re)peat (due to George Carlin Filter):

            It is because of your insistence on playing a “let’s change labels” game – even as it has been made clear to you (by those actually practicing in the field) that this opens the door to more mischief, and simply does not address the core of the problem that you purportedly seek to address.

            I “get” that no one likes to think that their

            “baby is
            u
            g
            l
            y,”

            but your baby is
            u
            g
            l
            y.

            1. 10.1.2.1.1.1

              It’s telling that you think that continuing to do the same thing that doesn’t work over and over is a better approach.

              1. 10.1.2.1.1.1.1

                It’s telling that you are still not getting what I have plainly – and directly – told you.

              2. 10.1.2.1.1.1.2

                The problem is that we stopped trying to apply the law with KSR when TSM was thrown out.

                TSM was a means to have a workable solution to the problem that removed a lot of the subjective component.

                Now, after the Obama appointments, there is little to no acknowledgment of the problems of hindsight reasoning and there are activist judges that are trying to remove the person of ordinary skill in the art. Those are the big issues.

                1. Those certainly are big issues.
                  Those certainly are other problems.

                  Of course, one is free to choose any problem that one finds of interest, and talk about that problem.

                  One would hope though that having chosen a (different) problem, one would not be so enamored with a predetermined “solution” to be able to accept constructive criticism when it it is instructed that the predetermined “solution” does not actually address the driver of the problem.

    2. 10.2

      While I agree that there are bigger and other problems to which “interest” could be applied, I do not agree that the subject is verboten per se.

      I do also agree with you that the choice of treatment is suspect.

      I have pointed out its infirmities, and the notion that “something is off” does appear to have a sense of “something is off and not enough patent applications are being rejected” as opposed to the opposite — which does tend to raise the suspicion that you voice.

  3. 9

    Interesting article, thank you! As a humble and not very scholarly patent practitioner, I do think the issues sometimes get muddled so it is helpful to put them in a clearer framework, at least for discussion. I also appreciated MaxDrei’s comments on this issue, which led me to think about my limited experience (in biotech), in which I have the strong impression that non-US countries give more weight to difficulties in obtaining the invention, whereas in the US it doesn’t matter and the analysis is more purely based on the prior art, including “obvious to try.” That’s entirely anecdotal and based on limited data but it might be interesting to see some kind of comparison across a large number of patent families (by anyone, probably automated in some way, looking at countries in which applications are filed vs where granted, although of course looking at claim scope would give a better picture but is hard to quantify–but I think even a statistical difference in grant rates would be interesting–for example, of 1000 patent families where applications were filed in the US and EPO, x% obtained an issued patent in US vs y% in EPO, by technology). I applaud your thoughtfulness and also your good cheer in not being deterred by nasty comments. Onward!

    1. 9.1

      Thank you! From what I heard (and MaxDrei’s comments confirm), post-filing evidence doesn’t count at all in some jurisdictions, which I think is too extreme of a view (but I agree that evidence can be suspect without a showing of temporal nexus). The comments don’t really bother me – but I’m surprised by the implicit suggestion of some of them that the current system is working well and should be left as is.

      1. 9.1.1

        Thanks Dmitry! I appreciate your willingness to participate and your thoughtfulness!

        1. 9.1.1.1

          Thank you for the blogging!

      2. 9.1.2

        Connor, Dmitry, it could be that I have failed to get across to you the role of evidence, generated post-filing, under the EPC. The courts of England, for example, do not rule out evidence of commercial success: it is just quite hard to prove the nexus between the commercial success and the inventive step.

        At the EPO, in the chemical arts, it is routine, banal, everyday practice, to generate and adduce post-filing evidence to prove the presence of an inventive step under the Problem-Solution Approach to obviousness. I refer to the comparative numerical data generated in experiments conducted years after the filing of the application, that reveal in numbers a technical effect flagged up and rendered plausible in the application as filed , but then called into question, first by an EPO Examiner and then, after issue, by an Opponent.

        1. 9.1.2.1

          I was thinking about the examination guideline below – to be relevant, commercial success has to be tied to long-felt need, which deprives that evidence of independent significance. To be clear, this is not a position that I support because there are many ways to establish a temporal nexus.

          epo.org/law-practice/legal-texts/html/guidelines/e/g_vii_10_3.htm

          “Commercial success alone is not to be regarded as indicative of inventive step, but evidence of immediate commercial success when coupled with evidence of a long-felt want is of relevance . . . “

      3. 9.1.3

        by the implicit suggestion of some of them that the current system is working well and should be left as is.

        I think that you are overreading the response to YOUR label game.

        I am reminded of the Hippocratic oath: First, do no harm.

        I “get” the interest that you have.

        But your labels do not help things.

    2. 9.2

      Conner, any comparison of U.S. and EPO allowance rates for the same base applications must of course take into account the large differences in cost and extent of their prior art searches and examinations. I would think that has a far greater allowance effect than any of these Graham factors?

      1. 9.2.1

        Paul, my view is that the different fate, at the USPTO and at the EPO, for the same subject matter, is instructive. A nice example is coming up, with CRISPR-Cas9 cases under the AIA and at the EPO. Opposition activity at the EPO is already intense and funding is adequate (to say the least) for a no holds barred scrap. It would be nice to see a similar ding dong on both sides of the Atlantic for a simple engineering invention, such as a vibration damper in a vehicle drive shaft.

    3. 9.3

      Systems can always be improved.

      The question is whether the proposed changes make things better or worse. Maybe comment 9 isn’t referring to me, but my intent is not to be “nasty,” it is to provide the type of feedback that would exist if the law had a more thorough system to vet articles.

      If a proposal can’t withstand anonymous commenters on patently-o, perhaps it needs to be re-thought and refined.

      In sum, this proposal will make the law more confusing, so things would be better left as is rather than adopt this specific proposal. That does not mean things are perfect as they are, it just means the status quo is better than the proposal.

      1. 9.3.1

        Pretty sure the proposal “withstood” the comments. Failure is others is very different from commercial success (for timing reasons) and shouldn’t be in the same category of evidence. The comments fail to grapple with this point.

        1. 9.3.1.1

          Take the (or not) feedback as you choose, it’s your article. You can choose to be defensive or take the feedback into account and revise.

          The obviousness analysis is counterfactual, so the timing difference is acknowledged and understood, yet is immaterial.

          1. 9.3.1.1.1

            This statement goes against evidence law principles – if we are to measure obviousness at the time of filing, relevance to that time must be shown. For that reason, the difference between ex ante and ex post evidence is material. In contrast, under the current scheme, failure of others evidence (for example) is often discounted because it’s secondary – even though it’s often strong evidence of nonobviousness that can speak directly to challenges leading up to the time of filing.

            1. 9.3.1.1.1.1

              What evidence law principles? The last time I checked, there is nothing about patent law in the FRE.

              Again, obviousness is not about what was known at the time of filing; it is about what would have been known (the counterfactual).

              It doesn’t seem like you are grasping this distinction. For instance, you can also examine what commercial success would have been expected at the time of filing under the proper counterfactual analysis.

              1. 9.3.1.1.1.1.1

                Pretty sure FRE applies to patent law even though patent law isn’t mentioned specifically in the rules. And yeah my proposal suggests that a link must be made to the time of filing, so I’m glad you’re onboard.

                1. Dmitry, you are now the one being difficult and snarky here.

                  This is far less about anyone else “being onboard” as it is about you being obtuse.

                  Your “interest” in playing a game of labels is something that you have every right to play.

                  But don’t be an arse when people are attempting to poitn out to you why your game is not a game worth pursuing in view of the patent law principles at point (and to which the problems of the current methodologies are NOT fixed with your change of labels).

                  As it is NOW, ALL items of evidence are necessarily brought back to bear on the critical point of time.

                  Changing labels does not change that.

                2. Yeah, evidence should be tied to a particular point in time but sometimes decision-makers forget that. The prposed heuristic would at least help them remember because it is focused on the correct characteristic, which is time. No need to resort to insults especially when you actually agree with the basic premise of the paper.

                3. More of obtuseness from you, as well am not “resulting to insults.”

                  You are insisting on missing the point – in some desire to maintain an illusion that your paper is just more important than it is.

                  It is not – for the ample reasons given.

                  As always, you can choose to ignore anything said to you.

                  You are not free to ignore the reality that what people have told you indicate that your “pet” is just not as illuminating as you appear to want it to be.

                  Calling this “an insult” is itself a bit insulting.

                4. I have no idea what principle of evidence you are referring to. It sounds like you are making an argument from authority without even citing the basis for it.

                  And you keep glossing over the distinction between the counterfactual (what would have been known to a hypothetical POSITA) versus the temporal (what was actually known, which may be relevant, but is not dispositive to obviousness).

                  It is analogous to the common mistake in TM law of conflating actual confusion, which is a factual question, to the likelihood of confusion, which encompasses that factual question but includes a larger analysis.

                  Best of luck with the paper. I think the proposal needs substantial reworking and relies on misunderstandings of obviousness jurisprudence (including Graham v. Deere, which uses the term “would” 23 times), but “you do you.”

                5. The reason Graham uses “would” is that what would have been obvious has to necessarily be determined after filing. The statute says “would” for the same reason – you don’t want to say “is obvious” because that invites hindsight. It’s an important point but once that creates potential for confusion that your comments appear to exhibit. Thanks for the kind words on the paper!

                6. Given your tendencies to not accept criticism, Dmitry, your words of “Thanks for the kind words on the paper!” come across as a “and F___ you very much.”

                  … just trying to cut through the ‘politeness’ and translate the messages ….

            2. 9.3.1.1.1.2

              Yes, we should assess obviousness at the time of filing and, yes, failure of others is ante, and indicative of non-obviousness whereas commercial success is post and therefore unlikely to be helpful.

              Personally, then, I welcome your Table 2. But nevertheless, I’m sceptical whether the article provides much help to “do” obviousness better, in the real world. You see, “failure of others” seems to me something which in theory happens but in the real world occurs, as such, vanishingly rarely. Unless of course, one squeezes in under the rubric “failure of others” all sorts of irrelevant evidence about how others were contemporaneously addressing the same technical problem. It happens all the time, in my experience.

              As I wrote at the outset of this thread, it would be nice if courts could decide on the “primary” fact matrix what was technically obvious at the filing date to the relevant PHOSITA, rather than dodging the hard question by resorting to tie-breaker commercial rather than technical “secondary” factors.

              Like the UK Supreme Court did in the TAXOL-coated stent case called Conor/Angiotech, reversing hugely experienced specialist patent judges at first instance and in the court of appeal. Was there in that case an unpleaded “failure of others” line? You bet. Pleading it would have made the case grotesque, and all for no good reason.

              link to bailii.org

  4. 8

    To me this makes no sense. Obviousness/non-obviousness must be determined as of the time of filing.

    When you make a distinction between pre and post filing, you start to raise questions about whether the post filing activity is actually supported and enabled by the disclosure.

    If the post filing activity is within the scope of the original disclosure, then it is not post filing activity!

    Why create this mess? Graham seems like a better approach.

    1. 8.1

      Also who cares when the distinction between the invention and the prior art was actually discovered? The prior art existed before filing. If the inventors didn’t know about certain art (e.g., because the application was not examined yet), why should that matter?

      1. 8.1.1

        It doesn’t! The PHOSITA is presumed to be omniscient.

        1. 8.1.1.1

          Right, but your proposed approach, above, creates this distinction and I do not understand why this would or should matter.

          1. 8.1.1.1.1

            It matters only for the need to establish a temporal nexus to the pre-filing state of the art.

    2. 8.2

      To be a little more concrete, let’s say you discover a range of chemical X of 1 % to 10 %. This range is included in the application or patent.

      “After filing” you discover in an experiment that 3%, 7%, and 9% of chemical X in a formulation performs better than the closest prior art.

      That is NOT post filing activity because the data points were in the originally disclosed range. If your experiment was for 11%, then that should be given zero weight, even if this data point was discovered before filing.

      Why? because you never disclosed or claimed that data point.

      Hopefully this example illustrates the lack of logic in any temporal determination of obviousness in a first to file system

      This

      1. 8.2.1

        I don’t think it does.

        1. 8.2.1.1

          Well, that settles it lol. Great rebuttal /s

        2. 8.2.1.2

          The question is whether the new data is probative of a challenge a PHOSITA would have faced at the time of filing. Your example doesn’t provide sufficient information to answer that question and even less to say about the logic of the proposal.

          1. 8.2.1.2.1

            I agree, that the hypo is not clear. I need to know what it means to “discover” a range of chemical X?

            1. 8.2.1.2.1.1

              That part is not relevant. I could have left that sentence out. I am trying to illustrate that when a particular unexpected result is discovered should not have any effect on the weight of the evidence.

              A “new” result that is within the scope of the originally filed claims (meaning with any properly supported amendments) should not be given less weight than a data point that was present at the time of filing but is outside the scope of the originally filed claims.

              Likewise, a data point that is within the scope of the claims should not be given less weight if the same data point is discovered after filing. This approach seems to indicate that this should be the case, which does not make much sense. Both data points are within the originally filed claims.

              I am sure litigants complain a lot about this issue because they have difficulty establishing a nexus. That just means they aren’t very good, not that there is an issue with the law.

    3. 8.3

      Noted prior to this dedicated thread (here: link to patentlyo.com ), this appears to be an academic “answer” looking for a problem.

      It is not all that interesting because it merely seeks to “change labels” but does not address any of the actual problem (that is, the tendency of the courts to instigate patent profanity).

      Further, here; the author errs with an apparent false selection in a binary choice of: “never-ending debate over whether secondary considerations are best treated as rebuttal evidence to a prima facie case of obviousness based on the prior art, or whether all obviousness evidence should be analyzed holistically and at once.

      The actual (and proper) choice is that IF secondary evidence comes into play (on a secondary basis), then the sum total of the evidence is weighed anew.

      This is NOT a “rebuttal” situation (and any court that leans that way should be chastised).

      This is also NOT a ‘pure’ “all at once” because there IS a procedural lag and the fact that there may be a secondary incidence of evidence being provided does not (appear) to meet the “all at once” command that would naturally apply in cases in which the second procedural action did not occur.

      Implicitly, this type of “academic navel-gazing” opens the door to cheapen the full process. As also stated, ALL aspects in the secondary procedural step are still (necessarily) concerned with the item as filed. Verification of the item — as filed that may come from post filing fact and data analysis STILL deals with the item as filed.

      (the late Malcolm Mooney had often obfuscated on this point)

      1. 8.3.1

        I agree with most of this (other than the part that the paper is not interesting!) – except in practice the secondary label leads to devaluing of some evidence and is otherwise useless

        1. 8.3.1.1

          The law currently deals with this by evaluating whether any secondary considerations have nexus with the claimed invention. As you know, the claimed invention must be supported as of the filing date.

          This is the reason why commercial success arguments often fail. How does one tie commercial success to a specific claim limitation of the originally filed application? It is an issue of proof, not a problem with the law.

          Creating a new distinction between ex-ante and ex-post also obscures and undermines the fact that we are in a first to file system. Under first to file, the correct amount of weight to give to evidence not supported by the originally filed disclosure is zero. Whether the data is “ex-ante” or “ex-post” as per the proposed definition should continue to be immaterial to the question of what was non-obvious as of the filing date.

          What exactly are we solving or accomplishing by this new approach other than muddying the waters?

          1. 8.3.1.1.1

            With the proposal, we are avoiding the secondary considerations trope which in practice has caused endless problems.

            1. 8.3.1.1.1.1

              The simpler approach would be to consider the weight of the evidence holistically and acknowledge that “secondary considerations” are only secondary because they are more difficult to prove (in terms of nexus). This is the legal realist view of jurisprudence. Your approach takes the doctrine at face value, which, to me, is a naive approach.

              1. 8.3.1.1.1.1.1

                Courts had years to do that with the current scheme and haven’t.

          2. 8.3.1.1.2

            I think Table 1 (Graham) and Table 2 (proposed) make sense and are useful.

            1. 8.3.1.1.2.1

              “The question is whether the new data is probative of a challenge a PHOSITA would have faced at the time of filing.”

              Answer: If the data is within the scope of the original claims, in view of the disclosure as filed, then yes.

              If not, then no. Any rebuttal to the prima facie case of obviousness must be as of the filing date, even if an unexpected property WITHIN THE SCOPE OF THE CLAIMS is discovered after.

              This really isn’t that complicated and does not need to be made more complicated for no reason by introducing a distinction of when data is introduced.

              Again, who cares when data is provided? Is the data within the scope of the claims or not? Is there a sufficient nexus or not?

              The law deals with this fine, it is just litigants who are horrible at proving the nexus.

            2. 8.3.1.1.2.2

              The portion of “or during further development of” in the heading of Table 2 is misleading, as it (implicitly) indicates that such evidence is NOT evidence of the invention as filed.

              As I have already pointed out that people WILL obfuscate into this point, better clarity is recommended.

              1. 8.3.1.1.2.2.1

                The current state of affairs presents some problems, so I’m hoping to provide a measure of clarity with the proposal!

                1. You miss.

                  Again – you want to play with labels, without addressing the underlying driver of any issues.

                  Worse – as mentioned, you supply a host of opportunities for obfuscation and misapprehension.

                  Simply better it would be to clear away the patent profanity and — shockingly — embrace a view of stronger patents.

                2. Yea, it makes the law more confusing. Sorry to be harsh, but I hope this paper does not see the light of day as is, because it will cause harm if cited.

        2. 8.3.1.2

          “(the late Malcolm Mooney had often obfuscated on this point)”

          Is MM confirmed passed? Did I miss the announcement?

          Also anon, along the lines of the discussion we had on the modern monetary theory the other day, I just noticed today that if it is correct, and sovereign state entities basically cannot run out of money to cover their liabilities if a few conditions are met, just by printing (creating in a computer) money, then this has a rather large implication. It seems to me that if this is the case, then all the “conditional grants” that the gov is handing out to state/local entities that come with policy strings attached turn the government into basically a mafioso sort of organization for real 100% instead of only half way as they were being discussed often in that context already.

          1. 8.3.1.2.1

            Is MM confirmed passed?

            We are NOT likely to see official confirmation (unlike Ned Heller).

            But given that Malcolm had been his virulent self for 15 straight years, and given that it has been over a year now since his last post, you can pretty much bank on his having departed this realm.

          2. 8.3.1.2.2

            As to the monetary discussion, such works — until it doesn’t.

            Me? I am just not so quick to jump on any “inflation is not real” bandwagon.

            Even as Psacki has (non)answered, corporations could choose not to raise consumer costs (but are). The power of the juristic person is far mightier than the “D’s.”

            1. 8.3.1.2.2.1

              “I am just not so quick to jump on any “inflation is not real” bandwagon.”

              Not sure where you got that from. Are you referring to my discussing that the reported official inflation rate is not reflective of the true inflation rate experienced by the everyman?

              “Even as Psacki has (non)answered, corporations could choose not to raise consumer costs (but are). The power of the juristic person is far mightier than the “D’s.””

              I’m not even sure what you’re talking about there. I am discussing the interplay between the gubmit having the ability to always meet its outflow (usually statutory) costs by printing money as necessary, and how this makes them basically mafioso when they start to tie those monies dispersed to states/localities adopting their preferred policies (because the federal gubmit is the only ones with this special super power).

              1. 8.3.1.2.2.1.1

                Multiple strands being woven here 6.

                One of the aspects that is at a level that you “omitted” (in your attempted Big Picture) was the role of inflation. It is one of the critical lower level levers that does need to be accounted for — and for which, that is some seriously sharp disagreement — at that higher level that you wanted to take as somehow universally understood.

                1. “It is one of the critical lower level levers that does need to be accounted for ”

                  Everyone that I know of in the serious economist discussion of MMT agrees that this is the case.

                  “Psacki (as mouthpiece of the “D” machine) attempts to portray that inflation is not a real thing.”

                  Technically speaking, perhaps true, but irrelevant as it is still a thing that happens. I think what she is likely referring to (tho I cannot find her saying what you are paraphrasing in google atm) is that inflation will not become too large as a result of their proposed spending. That they are likely correct about.

                  “It is more than a bit of smoke and mirrors out of whose pocket any actual cash inflow is going to come from.”

                  As you know, should inflation happen, it largely acts as a regressive form of taxation, overall. So it comes out of the pockets of everyone, tho the poor mostly. That being said however, you are likely more concerned about the likely need for increased regular taxation that would increase your tax burden in 2 or 4 years time. Which you are correct to be concerned about, likely to the tune of a few k a year.

                  Only thing I could find that was close to what you were talking about was Psaki saying that they’re always constantly monitoring inflation (in response to a question that seems to be directly what you’re talking about, which is her dodging the question effectively, tho her answer is basically just that they are not concerned overall about their spending making inflation get out of hand tho they will monitor the situation as the spending happens).

                  link to whitehouse.gov

                2. The whitehouse piece is pablum – C’mon man.

                  The point being that the “D’’s” are selling a “new monetary policy” that is missing more than a few fundamentals.

                  If people don’t push back (even – and perhaps especially those that happen to like the Ends for which this Sell-job is occurring for), the price to be paid the piper will end up wiping away ALL those Ends to be achieved.

                  There really is no such thing as a free lunch.

                  Or, to turn a phrase from my Uncle Ben, with great power comes great responsibility.

                  Of course, that is a phrase that should not be 1984’d into meaningless, and it should be recognized that accountability accompanies that responsibility and the “for thee, but not for me” Liberal Left mantra just does not cut it.

              2. 8.3.1.2.2.1.2

                And no, my comment does not (directly) have to do with your very interesting piece on “Everyman” inflation.

                That’s not to say that THAT does not play a role — it certainly does.

              3. 8.3.1.2.2.1.3

                Next in list got caught in Count Filter.

              4. 8.3.1.2.2.1.4

                Psacki (as mouthpiece of the “D” machine) attempts to portray that inflation is not a real thing.

                This is directly to leverage a “no-accountability” aspect of all the social re-engineering programs (euphemistically called “infrastructure+national health crisis+whatever).

                It is more than a bit of smoke and mirrors out of whose pocket any actual cash inflow is going to come from.

                The “D’s” definitely do not want any critical thinking in that area.

              5. 8.3.1.2.2.1.5

                As to “special powers,” with the reality that even those “Mafioso” style as you would characterize them HAVE their limits.

                It does NOT end well when those limits are breached.

                It never has.

            1. 8.3.1.2.3.1

              It was blood magic, don’t tell mm tho he doesn’t think other cultures exist or at all different.

              1. 8.3.1.2.3.1.1

  5. 7

    Dmitry, you write:

    “With ex ante evidence, however, temporal nexus is not an issue.”

    but I’m not sure about that. The drafter of the patent application has hindsight knowledge of the invention and can sculpt a plausible supporting story of its patentability, relative to the declared prior art, of surprising and unexpected effects, delivered by the claimed subject matter, relative to the closest prior art. It is routine to find in patent applications Tables of comparative experimental data which tell a story of significant technical effects which nobody would have supposed, and with a tight nexus to the precise subject matter of the claim (and nowhere else). Except that, often, these data are misleading.

    The data which a party attacking validity will file is created after the patent is granted. In your terminology, ex post, I suppose The data found within the patent specification, the evidence of unexpected effect, is delivered prior to the filing date of the application. In your terminology ex ante, I suppose. Are you advocating that we give more weight to the evidence in the patent specification than to the evidence filed by the petitioner for revocation?

    1. 7.1

      ALL evidence is to be weighed for the merit it brings onto the question at hand — and at the time of the invention at that invention’s filing. Post or ante — those labels in and of themselves are meaningless.

  6. 6

    Given that, because of eBay v. Merc Exchange, inventors who do not commercialize their patents cannot get injunctions against proven infringers;

    Given that patent maintenance fees have risen greatly over the years (and that there even *are* maintenance fees);

    Then commercial success should be the only factor in determining patent validity.

  7. 5

    What an astonishing post, at least for those who litigate patent validity in England, where evidence of events post filing date is seldom given any weight.

    What an astonishing post, for anybody experienced in arguing obviousness at the EPO, where evidence of events post filing date is rarely given any weight.

    What an astonishing post, for anybody accustomed to arguing obviousness under a TSM approach (such as at the EPO). Hindsight cannot be excluded, of course. That’s just a fact of life. But ex post facto analysis certainly can, and should be, if you want to be fair to the inventor.

    I put it to you, gentle readers, that obviousness in the USA has gone wrong because the judges (lacking an education in the natural sciences) are not capable of judging obviousness under the “primary” factors. So, in 50:50 cases, they take refuge in “secondary ” considerations such as “commercial success” which they can understand. A disaster, as far as I am concerned.

    1. 5.1

      We’ve turned into a third-world country.

    2. 5.2

      I don’t see why the timing at which the evidence is memorialized would be an important factor for deciding how much weight to give to that evidence. It would not cross my mind that DNA evidence should not be given weight in a homicide case just because the DNA was sequenced after the victim died.

      1. 5.2.1

        I don’t think DNA evidence is a good analogy to motivation and RES at the time of filing (plus the paper doesn’t say that the ex post evidence should be given less weight – just that the nexus to the time of filing should be established).

        1. 5.2.1.1

          Dmitry, I agree that the paper says that ex post evidence should be given less weight, MaxDrei says that this is the position of the courts in England/EPO. Sorry for the confusion.

          1. 5.2.1.1.1

            … that the paper does not say that …

            I need more coffee.

            1. 5.2.1.1.1.1

              If the evidence is not going to be given less weight, why make a distinction? The law has always been that there must be a nexus to the claims.

              The law has never been biased against any particular secondary consideration, it is just hard to prove a nexus of a specific limitation to, e.g., commercial success. Anon is right in saying this is a solution looking for a problem.

              1. 5.2.1.1.1.1.1

                It’s not a priori biased, but in practice it’s been a huge problem.

      2. 5.2.2

        I do. Consider for example the expert evidence adduced during litigation, of what the person skilled in the art would have known and would have done, back on the date of the claim. That evidence is often decisive of the case, in patent validity litigation in England. Consider how difficult it is, to prepare the expert so that their evidence is not tainted by hindsight knowledge of the invention.

        I also do not see the DNA scenario as relevant here, where we are discussing how to enquire into obviousness. Novelty, yes, but obviousness is something qualitatively different.

        As to secondary aspects like copying and commercial success, and how much weight to give them, in the obviousness enquiry, hardly ever is there a nexus with an inventive step revealed by the content of the patent application as filed. Nearly always, there’s some other reason for the success and the copying. To give it patentable weight, routinely, is to skew the obviousness enquiry and reward patent owners for their commercial drive and acumen rather than their non-obvious contribution to the useful arts.

        Dmitry, do I read you wrong? I say that to give weight to unexpected effects discovered only after filing the patent application is wrong because it undermines the policy objective of giving the patent rights to the inventor who was First to File. To be true to First to File, you have to find in the application as filed the announcement of the effect. But you, I think, are arguing the opposite, right?

        1. 5.2.2.1

          MaxDrei, you seem to be confusing expert testimony and evidence. A testimony is not evidence in itself. It is an explanation on how some evidence relates to a question of facts, such as a motivation to modify the art. The testimony must identify the evidence it is relying upon, otherwise, it is tossed out as conclusory.
          Regarding unexpected effects, I somewhat agree with you. I think that unexpected effect are relevant only when arguing the validity of a claim directed to such effect. Such a claim should satisfy the written description requirement at the time it is filed. However, while there should be in the application some support for the effect, I do not think the application must include evidence that the effect is unexpected.

          1. 5.2.2.1.1

            Now that is, to me, PiKa, really interesting. In England, the heart of the obviousness enquiry is the mind of the PHOSITA and what was its “mental furniture, namely the “cgk” the fact of the common general knowledge of that notional person. The only way to arrive at the cgk is by rigorous cross-examination, of the respective expert witnesses, six feet in front of the nose of the single judge at trial.

            The evidence comes from witnesses, and the facts are found, by the judge, from that evidence.

            Perhaps it’s different in the USA. Quite why that is, I don’t know.

            As to what to have in the specification as filed, yes, in Europe one needs to i) announce the effect, and ii) render it at least “plausible”. Drafter chooses how best to do that. Comparative experimental data works well but is not mandatory.

            1. 5.2.2.1.1.1

              I would dare say that an effect has to be more than plausible.

              1. 5.2.2.1.1.1.1

                With your “has to be” are you putting me straight about what the law currently is in Europe? Or are you informing us all how it ought to be, in a patent system that functions properly?

                If you want to find out what you dare to say next time around, first ask a colleague who routinely drafts for filing outside the USA, and then chooses when a case is ready to file under First to file law.

                1. Does “plausible” meet “sufficiency?”

                  When you quip “plausible” (to which I took as merely plausible), which of these were you referring to:

                  c) Enabling disclosure
                  In T 1724/08 the board held that the criterion of “direct and unambiguous disclosure” was quite different from the criterion submitted by the appellant, namely whether a person skilled in the art in view of the disclosure was enabled to achieve the envisaged result, i.e. the claimed functionality, without undue difficulty. This latter criterion would allow many different new definitions of subject-matter, none of which would need to be derivable “directly” and “unambiguously” from the earlier application as filed.

                  In T 2593/11 the examining division had taken the view that it was not self-evident that devices according to claim 1 could actually be manufactured using a specific fabric and, therefore, the manufacturing of the device using this fabric was not disclosed. The board observed that the requirements of Art. 123(2) EPC differed from those of Art. 83 EPC. Art. 123(2) EPC aimed more particularly to prevent inventors from obtaining protection for inventions they had not thought of at the date of filing, respectively not put into their application as filed. Art. 83 EPC aimed more particularly to prevent them from obtaining protection for “theoretical” inventions which could not be carried out at the date of filing. While in some specific instances there might be a link between the two, in the case at issue, the manufacturing of the device using the specific fabric was clearly disclosed.

                  See: link to epo.org

                2. Those are some excellent links…

                  For showing just how thinly sliced even the EPO and UK can slice some bologna.

                  In this sovereign, the equivalent would fall under “lack of possession,” as we do not permit research plans to be patented.

                  The whine of “but it’s related to medicine, and actual innovation is just so tough so we have to give patents for ‘close enough’ is ear-piercing.

                3. anon, you lament that the EPO slices the salami too thin. But for the EPO, the over-riding priority is to grant patents whenever patentable matter is presented, and ensure that the scope of protection is no wider than is commensurate with the contribution to the art. No contribution means no patent.

                  It may be that you misunderstand what “plausible” entails. A lot more is required than unsupported speculation.

                  Granting patents encourages technical progress. Refusing patent applications because the non-obvious contribution to the art is too “thin” discourages progress. Often, it is the smallest non-obvious increments of progress that nurture progress the most.

                4. bologna, not salami.

                  over-riding priority is to grant patents whenever patentable matter is presented,

                  Actually, your link shows just the opposite.

                  That you seem unable to recognize the tilt being applied “because it’s medicine, and here, innovation is the hard” is rather unsurprising.

                  No contribution means no patent.

                  In our Sovereign, mere research plans are NOT considered contributions. You do NOT actually possess something with a mere research plan. As I have often provided in the past, just take a look at all the items that DROP OUT OF the FDA testing program for lacking the very utility that is aimed for with those research plans.

                  Refusing patent applications because the non-obvious contribution to the art is too “thin” discourages progress

                  That’s an obvious argument. How thin is too thin? How thin becomes itself a discouragement because (and I purposefully use your own words) something is ly1ng in the road?

                  Why would “obvious to try” (or ANY other standard) BE a detriment in one art area, but not in an0ther?

                  Do you even get the uneven playing field that you have with the link that you provided?

  8. 4

    There may be an unexplored meta temporal factor at work when analyzing prior art, which is the state of patenting activity and/or publication activity customary at the time for a given domain. Sometimes items are considered so basic and banal that nobody bothers to write about them, let alone apply for patent involving them, especially when they are antecedent to valuable methods, machines, compositions, and manufactures that arrive later, when patenting and publishing norms have changed.

    There are myriad software methods that everyone knows, but that are neither described (even in textbooks) nor patented. The prior art is essentially silent because these things are too obvious to mention.

    1. 4.1

      Agree, with acclamation. When one technologist writes for others, a lot of stuff “goes without saying” (because to include it would be to insult the intelligence of the intended reader). Finding such stuff, written down in a prior-published patent application, is going to be a never-ending and futile endeavour.

      That’s an opportunity for patent claim scriveners and a headache for those trying to demonstrate that the claim is devoid of any inventive step.

    2. 4.2

      This ‘classic’ WAH was first floated in the 1960s.

      That was five decades ago.

  9. 3

    Seems like an extraordinary focus on a semantic issue. You can think of secondary factors as the things are most likely dated after filing, and primary factors as things you are most likely dated prior to filing, but we don’t need new language to muddy the waters. And what would you call commercial success, acclaim, etc. that arises prior to filing, for example if Pfizer could have demonstrated pre-filing commercial success in the shortest claim every issued (by word count): Tetracyline (claim 2 of US Patent 2699054). That would be a secondary factor but ex ante evidence, and because it is ex ante, I would not need to prove a nexus?
    Since we all know there is no purpose is silo-ing difference non-obviousness evidence, but we all know what we are referring to when we refer to primary factors and secondary factors, why can’t we just keep using those terms. Changing the terminology won’t cure the second class status of secondary factors.

    1. 3.1

      In the proposal, any evidence that is responsive to the invention is ex post.

      1. 3.1.1

        Already, the proposed semantic adjustment has confused even me.

        1. 3.1.1.1

          It’s not semantic: instead of looking to whether the evidence is in the prior art or outside of it, I want courts to look at whether it’s prior to the invention or responsive to it.

          1. 3.1.1.1.1

            This seems like a misconception about what is “prior art.”

            Prior art is not synonymous with “publication date.”

            For instance, if I publish an article about the sewing machine that has existed for 100 years, it could be temporally after a sewing machine invention, but that doesn’t make the sewing machine described in the article, not “prior art.”

            The sewing machine is still 100 years old and the publication date article does not change that.

            Obviousness analysis does not exist in our temporal universe. It exists in a counterfactual universe where we can hypothesize about what would have been known at the time of filing.

            1. 3.1.1.1.1.1

              Obviousness analysis does not exist in our temporal universe

              Well, actually, the current “labels” merely DO reflect a sense of the procedural temporal nature.

              As I have noted, the effort in pursuing the “interesting” (but ineffectual) re-labeling would be better spent championing clarity of purpose and stopping the obfuscation of mere temporal procedural aspects.

          2. 3.1.1.1.2

            link to people.howstuffworks.com

            (… to insert some “actual” semantics)

            But as I have already noted, your suggestion does nothing to the actual underlying problem — and as also noted — will be (and has been) used as a point of obfuscation.

            The better — and more direct — path is simply to be clear that “primary” and “secondary” are merely procedural stances.

            1. 3.1.1.1.2.1

              Yeah, if people want to obfuscate even more there isn’t much I can do about it! My goal is only to call attention to the problem.

              1. 3.1.1.1.2.1.1

                I hear the call.

                You still miss because your “answer” to that hearing is not a true answer.

                Placing a different set of labels really does not solve anything.

            2. 3.1.1.1.2.2

              Exactly. Also, I am highly skeptical about whether primary and secondary considerations actually exist in practice. Secondary considerations are secondary because they are hard to prove nexus with the claims and should thus be weighed secondarily to the claims.

              That appears to be what the court was driving at in Graham:

              “Under § 103, the scope and content of the prior art are to be determined; differences between the prior art AND THE CLAIMS at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. AGAINST THIS BACKGROUND, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of THE SUBJECT MATTER SOUGHT TO BE PATENTED.” (caps for emphasis)

    2. 3.2

      Yup – see above and the link above to prior comments.

  10. 2

    Two words come to mind:

    Patent Profanity.

    (Gee, we have run into problems when the Court wanted to pull back from the actual words of Congress and scriven their own view….

    Shockers)

  11. 1

    Post filing date 103 evidence – an appropriate and interesting topic for a legal article.

    I have the impression that “commercial success” is both the most commonly asserted and the least successful* of Graham v. John Deere 103 secondary evidence arguments, and would be interested in the Authors opinion?
    *usually for inadequate evidence tying the commercial success to the claimed invention’s novelty, as for not excluding marketing, sales prices, FDA approval, and other commercial success factors.
    Also, is “commercial success” ever considered as another way of showing [related to] “long-felt need?”

    1. 1.1

      Paul, I agree with all that (and thanks for the kind words on the paper). Commercial success is the best-known secondary consideration but also the weakest, for the reasons discussed in the paper – it’s hard to establish nexus to the challenge facing the PHOSITA at the time of filing. Some authors think that commercial success should only count if coupled with a showing of a long-felt need, but I see how commercial success could imply the presence of long-felt need in some circumstances.

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