by Dennis Crouch
The text of the Patent Act suggests that obviousness is a straightforward inquiry: find how the claimed invention differs from the prior art and ask whether, based upon those differences, an objective artisan would deem the invention obvious. 35 U.S.C. § 103. In reality, the analysis is not easy or straightforward. At the end of the day, tribunals are often left guessing whether the invention went far enough—are the differences from the prior art meaningful in some way or are they merely points of distinction. There are myriad ways that patentees endeavor to show results that are important, surprising, or synergistic—all terms that connote non-obviousness. One way to show meaning is through the use of what the Supreme Court has termed “secondary considerations” and others term “objective indicia.”
Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. See Note, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).
Graham v. John Deere Co., 383 U.S. 1 (1966). When courts ask about the importance of the advance, they must take care to ensure a nexus between the advance and its import. Focusing on the importance of the advance incentivizes advances that are important. Nexus is always relevant when considering if an advance is meaningful, but in recent years the Federal Circuit has aggressively used nexus particularly to limit the use of objective indicia such as industry praise or commercial success. Rather than permitting a fact to weigh the evidence, the court requires a proven nexus before any consideration of the objective indicia and its impact. Often industry praise and commercial success are tied to a commercial product rather than “the invention.” In this situation—where a product has been successful and praised—courts have permitted the patentee to prove a nexus linking the praise to the invention by pointing to the product and showing the product is an embodiment of the patent claim and the claimed invention is not merely a small component of the invention. In various formulations, the court has seen this as requiring the product to be “commensurate in scope” or “coextensive” with the claimed features. See Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000); Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A difficulty with this formulary is that there are always unclaimed features found in any product, and so it is difficult to know when the two are “coextensive.” In its important 2019 Fox Factory decision, the Federal Circuit drew a hard line, requiring the product and claim be “essentially” identical:
Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention. While coextensiveness is an issue of fact that should ordinarily be decided by the fact finder in the first instance, no reasonable fact finder could conclude, under the proper standard, that the X-Sync chainrings are coextensive with the patent claims.
Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) (citing to Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). I wrote about Fox Factory back in 2019 and explained:
The court here again raised the “nexus” hurdle by holding that a presumption of nexus can only be achieved by proving that the product being sold by the patentee is “essentially the claimed invention.” This is a situation where SRAM owned two patents in the same patent family — both of which covered aspects of its X-Sync bicycle chainring (gear). Each patent included elements not claimed in the other — for the court that was enough evidence to disprove coexistence.
Dennis Crouch, Nexus: Product must be “Essentially the Claimed Invention”, Patently-O (December 18, 2019). Since the product in Fox Factory included multiple inventions—each covered by its own patent—the patentee was unable to show that any one of the inventions had nexus with the product. (Note here in Fox Factory, we are not talking about some complex invention – it was only a chain ring, i.e. a gear, that sold well).
An important en banc petition is pending before the Federal Circuit in Zaxcom, Inc. v. Lectrosonics, Inc., 20-1921 (Fed. Cir. 2022) involving that nexus and asking the Federal Circuit to reconsider its Fox Factory precedent. The setup in the case is fairly typical: Zaxcom sued Lectrosonics for patent infringement back in 2019 (D.New Mexico); Lectrosonics responded with two inter partes review petitions. The PTAB granted both IPR petitions and then cancelled the challenged claims as obvious. On appeal the Federal Circuit affirmed, and Zaxcom has now petitioned for en banc rehearing.
The Zaxcom inventions relate to a wireless method for multi-track video recording. The problem with wireless was always timing, and the inventions here solve that with very particular time-codes. The invention here was said to change the industry, and the inventors were awarded both an Emmy and an Oscar. Here is the deal, the invention is embodied in the product, and the praise was tied to the new functionality offered. But, the invention also includes features claimed in a different patent. Because of that, the Board found no nexus and refused to consider the Emmy/Oscar results based upon Fox Factory. On appeal, the Federal Circuit affirmed. The petition now asks for reconsideration of Fox Factory and its progeny:
By deviating from established law, the Fox Factory panel precedent has triggered a need for en banc review. This Court has warned against unduly “strict requirements” in evaluating nexus. Rambus. Nowhere is the wisdom of this warning more apparent than in the present case. Here, it is undisputed that products embodying the claimed invention (Zaxcom’s wireless audio recording system) received industry praise, including a technical Oscar and an Emmy. Lectrosonics did not contend that the claimed invention is just a “small component” of this system. Under this pre-Fox Factory standard, this entitles Zaxcom to a presumption of nexus. Yet the Board and the panel not only rejected this presumption but quixotically failed to find that the claimed invention received any industry praise, because they found that another feature contributed to the praise but was not required by the claims. Put another way, the decisions below disregarded the fact that products embodying the claimed invention undisputedly received the equivalent of not just one Nobel Prize in its field, but two.
Zaxcom En Banc Petition. Retired Chief Judge Paul Michel added amicus support:
What started as a relatively straightforward evidentiary presumption to facilitate the obviousness analysis under 35 U.S.C. § 103 has now morphed into a complex analysis “requir[ing] the fact finder to consider the unclaimed features of the stated products to determine their level of significance and their impact on the correspondence between the claim and the products.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349 (Fed. Cir. 2021) (citing Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1375 (Fed. Cir. 2019)). In addition to the new “level of significance” factor, recent cases have imposed an “essentially claimed” factor in the presumption analysis. See, e.g., Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). These new “requirements” of the presumption-of-nexus analysis conflict with this Court’s precedent.
Judge Michel brief. I expect responsive briefs from both the USPTO and the patent challenger Lectrosonics in late April 2022.
It seems to me that patent lawsuits in particular represent a specialized form of dispute – unlike typical tort cases that may include important elements of technical or specialized knowledge, but still retain enough substantial aspects of credibility, reasonableness, and proportionality to mean that jurors who are ordinary citizens may be informed by experts, yet fairly thought of as peers.
Patent cases turning on obviousness seem different because the legal fiction of PHOSITA means that the facts to be determined are specialized enough that the common law protection of a jury of one’s peers is not served by the service of ordinary citizens, but really should be performed by people skilled in the pertinent art(s), because no practical amount of expert opinion can inform ordinary people enough to render a fair judgment on such a narrow question.
This would involve bifurcation once non-obviousness is determined, because damages are clearly in the realm of ordinary citizens, informed by experts.
>>are the differences from the prior art meaningful in some way or are they merely points of distinction
The test of whether something is functional should be enough. “Meaningful” is just another way to judge whether the difference in the functionality of the product meets the “I know it when I see” test of the CAFC.
Red paint vs. blue point shouldn’t count unless there is some reason. But the difference should merely have some utility and that should be the end of it.
Thanks NW – I’ll think about your idea here. Since utility is already a requirement, it seems like the test would really boil down just to novelty, right?
I can see there is an issue where the fear is that a product does well and then this is used for numerous patents as an indicia of non-obviousness when the court feels that not all the features had to do with the product doing well.
But, as someone that was really a product manager, I will tell you that features in a product are not added lightly. The pressure in product management is enormous. The cost of adding a feature too is enormous. This is particularly true of products that are technical and products that have to work and comply with various standards and expectations.
So, I think there should be rebuttable presumption that if a feature has been added to the product and the product has done very well that this feature had something to do with it.
I can also tell you that magazine reviews of products are typically not all that great. A product may do well and the magazine or product reviews may not catch why we the manufacturers think the product did well.
So, I can see abuses, but what I think the CAFC has come up with is another will do whatever we want test and you patentee go out there and pay experts 100’s of thousands of dollars to try and create a record that where we can’t do whatever we want–good luck.
I think the standard should be very low that if it is a new feature and the product did very well, then the presumption should be that this feature had something to do with it.
Note too that product management is often not some back-of-the envelope operation but that often product management is a science.
We paid people to do surveys to determine the features the consumer wanted. We listed all the features and their costs. We selected which features to included based on the surveys and their costs. We hired outside firms in SV that were experts in user interface and product design to give suggestions and evaluate our products.
And so forth. From what I’ve seen of the CAFC handling this issue, they again feel they are experts in a field they know nothing about.
I would pause and consider that not every product undergoes the scrutiny that you offer (and to which, I also know from personal experience to be true).
But such also misses the larger point in that the courts simply are overstepping their authority (and this overstepping dates back to the Supreme Court’s nanny-style Flash of Genius).
Prof. Crouch also missed this point below.
It is simply not up to the courts (or to academia) to be ‘worried’ about whether or not something “trivial” has been granted a patent right.
THIS “worry” and misplaced (and often misguided) is very much part and parcel of the problem.
People NEED WORRY LESS about whether or not a patented advance is “____ enough.”
I think that is right anon.
Plus I notice that hindsight reasoning is seldom mentioned by the CAFC and, yet, this is one aspect of patent law that is scientific. There are thousands of psychological experiments that demonstrate that it is impossible for a person to go back to not knowing something once they know it.
Plus the “_____ enough” game is so subjective and based on a judge’s feelings about what a patent should be for and not what the statute says.
>whether or not something “trivial” has been granted a patent right.
In practice, the use of 102 art for 103 analysis is already highly protective of the public. We all know that it’s very, very unlikely that a real POSITA working on a real problem (i.e., with budgets and deadlines) would find a dissertation sitting in some obscure university library in Podunkville, much less pull some random details out of paragraph [0189]. And yet, the PTO/Courts uniformly assume that this unlikely series of events would happen.
That is a really excellent point OC. The construction of the legal fiction of the person of ordinary skill in the art who just happens to know everything that everyone has ever done is a huge threshold to overcome already.
But OC, it has to be like that, doesn’t it, if you want the obviousness enquiry to be objective rather than subjective. Or would you prefer to dump objectivity?
My point was that we need to be careful about justifying multiple hurdles on the grounds that they’re necessary to prevent “trivial” things from being patented. Or put differently, we need to consider the cumulative effect of the full stack of such hurdles.
But, to answer your question, if I were in charge, I’d add more objectivity to the process: leave the dates as-is, but also restore TSM.
Couldn’t agree more OC.
I’ve said that for many years that TSM should be used.
Is there a sense of deja vu in that “meaningful” is taking on the (nanny) role of “good enough” or “worthy” that sounds in the Supreme Court’s (sma cked down) “Flash of Genius?”
Thanks Anon. There are three main complaints against ‘flash-of-genius,’ two of which are related here.
1. The first – unrelated issue – is that some saw flash of genius as requiring that the inventor actually have at least a momentary genius that led to the invention itself. That approach was clearly rejected in the last sentence of Section 103 codified in 1952 and slightly amended in 2011. “Patentability shall not be negated by the manner in which the invention was made.” 35 USC 103. My post does not enter into this debate.
2. Another problem with the flash-of-genius ‘test’ is that it suggests that a patentable invention must represent a major advance beyond the prior art.
Others argued (successfully) that the patent laws should not require an advance so great. I expect that this topic is hotly debated in law school patent classes each year, and students learn that U.S. patent law focuses at the artisan level. Regardless of the proper ‘threshold,’ I still believe that the test requires the advance be meaningful in some way. (Unless we regress to merely requiring novelty.) But, to be clear, I did not intend to suggest that ‘meaningful’ meant an advance beyond non-obviousness.
3. A final issue with ‘flash of genius’ was the procedure for proving such genius. Courts did not appear to create any real or repeatable methodology for judging the level of genius required. I believe that nonobviousness is easier to judge because it is more directly tied to the prior art — really any meaningful advance beyond the prior art is enough. That said, nonobviousness might be easier to determine than genius, it is still a mess.
Probably more to say here.
Both “more” and “less” to say here.
Identifying the actual drivers of the nanny-state actions might be a good place to start.
The Flash of Genius approach ITSELF was rejected by Congress – which speaks to not only “degree” but “kind” of attempted constraining of the grants of patents.
“Distinct from” is the guiding factor, and unlike your intimations to both myself and Night Writer, this is NOT only a “novel” aspect.
A mess? Not necessarily. I mean, what could be simpler than a TSM test? What, Dennis, could be more fair than a TSM test? What test is less vulnerable to hindsight commonsense misjudgement? What test is more accessible to scientists, engineers and business people, that if you enable a new solution to a technical problem, a solution for which there was no hint or suggestion anywhere in the state of the art, then you have made an inventive (ie non-obvious) contribution to the field, which ought to be recognised as patentable?
In other words, in what way is TSM, as developed by the EPO, a mess, or overly simple, or just not fair? Please tell.
2 thoughts on this.
1. I understand the “nexus” point — the inquiry is whether the claims are obvious. “Commercial success,” “long-felt need,” “industry praise,” “failure of others,” “copying,” of a patented product only shed light on obviousness to the extent they’re tied to what’s claimed. Courts and juries should keep in mind that these considerations aren’t ends in themselves, but are only relevant to the extent they bear on the obviousness of the actual claims. The closer a product is to the claims, the more relevant the product’s performance in the marketplace will be to the claims.
What I don’t understand is the “presumption” of nexus. Why does it exist? What purpose does it serve? What does it mean to “presume” a nexus? “Nexus” isn’t an element of a cause of action or a defense; it’s a description of how evidence gets weighed. Similarly, “commercial success” is a loosely-defined category of evidence, not a legal thing with independent significance. If you’re fighting about whether a “presumption of nexus” applies, you’re a few levels removed from the obviousness inquiry. The “presumption of nexus” seems to me to be a useless layer of complexity that the Federal Circuit has added for no discernible reason. If I’m wrong about this, I’d like to know.
2. The first sentence of this post is interesting to me: “The text of the Patent Act suggests that obviousness is a straightforward inquiry: find how the claimed invention differs from the prior art and ask whether, based upon those differences, an objective artisan would deem the invention obvious. 35 U.S.C. § 103.”
The apparent need to use the word “obvious” to define “obviousness” seems to me to show why the inquiry isn’t straightforward, or at least why courts have struggled with it.
Courts came up with the “flash of genius” test, and Congress rejected it when it enacted 35 usc 103. KSR and to some extent Graham muse at length about what obviousness is, what perspective a person of ordinary skill in the art, and the general idea that hindsight is to be avoided but without relying on rigid rules to prevent hindsight. Courts’ struggling to describe obviousness is sometimes unsatisfying, but I’m not sure what the alternative is other than treating the word “obvious” as self-defining and meaning whatever a jury thinks is obvious.
And I totally agree with the way Dennis describes how this actually works: “At the end of the day, tribunals are often left guessing whether the invention went far enough—are the differences from the prior art meaningful in some way or are they merely points of distinction.”
The best way that I have heard it out is: “A difference that makes a difference.”
Thanks!
This seems to be akin to most of 1L year in law school where students are presented with various cases and then asked to determine which precedent to follow in some hypothetical new situation. There are always factual differences, and students are asked to walk through whether those differences are meaningful.
That this may align with an easier to grasp notion that even a 1L might appreciate is an added benefit.
Some, however, may view your comment as speaking against this approach as perhaps too simplistic.
Throughout this debate about whether an algorithm can be an inventor, I have argued that resolving this question requires first clarifying the question itself. Because inventorship has two distinct functions:
(1) Documenting how the invention was created (i.e., by whom), and
(2) Assigning ownership to the patent rights.
I have also argued that when broken down into these components, the question becomes easy to answer:
(1) If we’ve reached an age of technology where algorithms can create inventions apart from meaningful human guidance, then identifying the algorithm as the creator of the invention should not only be permitted, but required. This is merely an extension of the reasons we require the identification of inventorship in the first place – i.e., as evidence of conception (instead of copying) and for attribution.
(2) Assigning an ownership share of patent rights to an algorithm is nonsense. There is no reason even to venture down this path given the basic concepts of legal property ownership as vesting in entities.
I am pleased to see the notion of corporations being brought into this conversation. Because in that case, the question of whether a corporation could be named as an inventor was bifurcated in exactly the same way – although it reached the opposite results:
(1) Corporations are not named as inventors, because conception remains the work of the individual employees, who are still named as inventors.
(2) Corporations can legally own property, including *ab initio* under employment contracts, so it makes sense to allow corporations to identify themselves as applicants rather than merely assignees.
Since we were willing to revise patent law to add the concept of “applicant” in order to solve the corporations-as-owners problem (without affecting inventorship), it makes sense to revise patent law again to add the concept of “algorithmic inventor” to solve the algorithms-as-inventors problem (without affecting ownership).
I would further venture that, in this process, we should step back and reconsider the purposes and contexts of inventorship. Why do we require inventors to be identified, including addresses and nationality, and to sign a declaration? What public notice function does that information serve? Conversely, is that enough information to serve the public notice function? Should we require more – e.g., a description of the inventive process (including “I used an algorithm”) and/or a description of their individual roles or contributions? What are the legal ramifications of collecting vs. not collecting this information?… etc. I do not have any answers here; I am just observing that the “AI as inventors” issue provides an opportunity to revisit this topic, which has remained largely ignored for 20+ years.
David – thank you for taking the time to set out some meaningful conversation points.
I think that I have noted this previously, and if so, then please bear with the repeated response.
I do NOT find your second function “of inventorship” to be compelling. Quite in fact, the world has shown that inventorship qua inventorship can be separated from property transfers. Sure, one would want to make sure that initial property rights are appropriately allocated, but really, and strictly, the legal view of what it takes “to invent” is just not so much concerned with what MAY happen AFTER such has occurred. This is easy to countenance for ALL of those occasions in which NO TRANSFER whatsoever is ever contemplated OR enacted. Those are numerous occasions that depart from the thrust and level of import that you want to make necessary.
That being said though (and as I have pointed out to the likes of MaxDrei, who clearly does not appreciate the Lockean nature of the US patent system), there IS import to the initial vesting. That import derives more so though from the nature of inchoate rights being turned into full LEGAL property rights. The reasoning in the US system (as was explicated in the Stanford v. Roche case) very much is tied to the notion of the genesis of that LEGAL property right. The US system fully takes a Lockean view to the true genesis point, but ascribes that point to be ONLY inchoate in view of the law.
This is why some have “got it wrong” with attempts to say that there could be only ONE “true inventor.” This is a very important aspect in understanding that the US envisioned MORE THAN one “true inventor” and in fact sets out the difference between “inchoate” and “full Legal” as having a race aspect.
The US simply did not countenance a “race of one,” but instead wanted a race of many.
This understanding ALSO informs why those who would imbue an elitist view of “meaningfulness” (be those elitists those of the Court or merely those of Academia) get it “wrong” when it comes to obviousness (this ties some of your post directly back to the topic of THIS thread).
This also points out though that your view on Corporation, *ab initio*, and ownership fall short. There is exactly zero corporations under US law that could EVER satisfy the Lockean inchoate nature of invention, which by default – and expressly DUE to what it means under Locke’s views, MUST include the inchoate formation under – solely – a human formation.
This though is NOT to say that ONLY humans are capable of inventing, as that legal term is to be understood. To invent – legally – in and of itself simply envelops MORE THAN the Lockean concept, which instead is geared to the turning of the human inchoate item into a fully legal item.
What this DOES mean – under the US legal understanding – is that there ARE some inventions, capable of being invented, that fall outside of US patent protection.
To your point of what Inventorship itself means – you get close, but miss.
It is not “conception and attribution.”
It IS “conception and reduction to practice.”
Your sense of attribution simply falls outside of the Lockean precepts.
As would non-human conception OR non-human reduction to practice (singularly or in any combination).
I DO agree with you on one point though: “ If we’ve reached an age of technology where algorithms can create inventions apart from meaningful human guidance, then identifying the algorithm as the creator of the invention should not only be permitted, but required.”
This though is still important from a Lockean perspective, because a human who merely “identifies” the invention of another is NOT an inventor.
I have laid this out in fine detail with my ‘black box’ examples in prior posts.
Nice to read reasonable and considered thoughts on this subject. Consider the UK patent statute of 1977. Section 39 bestows on an employer ownership of patentable inventions ab initio. The employee inventor never was the owner. But the Sections immediately following Sectio 39 set out an elaborate scheme of compensation to be paid by the employer to the employee inventor. This scheme was modelled on the law in Germany, going back to the 1930’s. The UK thought it might foster innovation by employees.
But the UK baulked at other, related provisions of the German statute which, to this day, ensure that German companies file about five times as often as do UK companies. For example, if the employer chooses not to file, that opens the way for the inventor emplyee to file in their own name and enforce against the employer.
I suppose that employers like the idea of naming AI’s as their inventors for it will surely save a tidy sum in pay-outs of compensation to human inventors. Of course, if the employer gets inventorship wrong and then the real human inventor files in their own name, that might be problematic for the employer, might it not?
dcl: This is more nonsense. “At the end of the day, tribunals are often left guessing whether the invention went far enough—are the differences from the prior art meaningful in some way or are they merely points of distinction.”
The patent statute tells us how to determine non-obviousness along with Scotus precedent. The statement above is another rephrasing of the same issue and done so to try and change how “non-obvious” is determined by using a new name “meaningful.”
The shxt storm from the CAFC never ends.
Great comments DCL!
With regard to the ‘presumption of nexus.’ The Federal Circuit has developed an unduly complex approach here.
The basic idea: When a product is praised as inventive, the patentee can use that statement as a secondary consideration of non-obviousness only if there is nexus between the praise and the patented invention. The patentee creates a ‘presumption of nexus’ by showing that the product is coextensive with the patent claim. The presumption is rebuttable. Thus, patent challenger can undermine the presumption by, for instance, showing that the praise was directed to a non-claimed aspect of the invention.
The reality is that this is just like any other area of law. The party with the burden on any particular issue must come forward with enough evidence to win the issue. At that point, the other side can still win providing its own evidence or undermining the already presented evidence. I think that the court felt compelled to create a complex procedural statement in this case because of the way the court has shifted the underlying burden on the issue of secondary considerations showing nonobviousness. The patentee never has the burden of proving obviousness, but does have the burden of coming forward with the evidence of secondary considerations.
One explanation for the complex nexus requirements was to remove those judgments from the hands of the jury who might be unduly swayed by commercial success and industry praise. Today, however, the nexus issues are most often being handled by hyper-technical PTAB judges who are willing to take any multi-factor procedural test to its extreme.
Thanks. This makes sense. I’m familiar with burdens of proof and persuasion, and thought Cyclobenzaprine did a few good things to clear up confusion in the obviousness caselaw.
I suppose the nexus might be defended this way:
1. The challenger always bears the burden of proof of obviousness.
2. But it makes no sense to ask the challenger to hypothesize and disprove “secondary considerations” evidence. If any such evidence exists, the patentee needs to provide it, or the factfinder is entitled to assume there isn’t any.
3. If the patentee puts in evidence like sales figures and industry praise, the challenger can still say that the evidence is worthless because it’s not tied to the claims (no “nexus”), and that the case is no different from when the patentee puts in no evidence.
4. Presumption of nexus. An exception to (3) is where the product is “coextensive” with the claims. The “nexus” is presumed, the factfinder has to consider the evidence, and if the challenger doesn’t respond persuasively, the challenger can’t complain later if that evidence ultimately carries the day.
It makes logical sense, but I think it’s unnecessarily complex and leads to confusing disputes like this case and Fox Factory. The parties apparently aren’t fighting about obviousness, or even about the strength of the secondary considerations evidence, but about this made-up presumption of nexus.
The court has said “coextensive,” but of course can’t literally mean coextensive. The law should be that the patentee has to put in secondary-considerations evidence, and then the factfinder evaluates it for whatever it’s worth with the burden of proof remaining with the challenger. The evidence can be weak or strong for many reasons, including a weak or strong “nexus” between the evidence and the claims. In other words, scratch out #3 and #4 above. If the evidence’s tendency to mislead the jury outweighs its relevance (e.g., impressive sales figures for a drug or an iPhone when the patent is on a minor detail), it can be excluded under Rule 403, with the ruling reviewable on appeal for abuse of discretion. As the last paragraph of Dennis’s comment may be read to suggest, this presumption of nexus seems especially useless in the PTAB context.
Awesome!
dcl, that is an interesting take on it.
My question is if the patent does not have the nexus and is just some worthless part of the product, then are they litigating this?
And why can’t the D just redesign their product without this feature?
It seems to me that the context of what is going on is being missed.
Imagine being the Wright Brothers and trying to prove the nexus between commercial flight success and control mechanisms. The context matters.
I may be wrong, but think this comes up more often in pharma patents than electronic patents.
In the electronics space, where the “some worthless part of the product” scenario arises, often the patentee doesn’t have its own product. The question of the patented component or feature’s contribution to sales of the accused device comes up in the context of damages. And if the patentee does have a product, it’s probably clear enough most of the time whether it can rely on a presumption of nexus or not. To use a variation on trite example, Apple probably knows no court will presume that iPhone sales, without more, are evidence of the nonobviousness of a swipe-to-unlock patent.
In pharma, though, the brand will get a patent on the active ingredient, followed by other patents on manufacturing processes, impurity levels, uses, and doses. Then it’ll list all of those things in the Orange Book and say that its sales are evidence of the nonobviousness of all of those patents and entitled to the presumption of nexus.
That said, this case and Fox Factory are electronics and mechanical cases, so what do I know?
I remember too that the CAFC judges hold themselves up now as product managers that understand product development and discount features on products saying that they just happen to be there.
Just offensive beyond measure again from these judges at the CAFC who are unfit to serve on the CAFC.
A product that sells 10’s of millions of units does not include features unless the product manager (and I was such a product manager) determines that it is worth having the feature and not other features that have not been implemented.
So the mere inclusion of a feature on a product is sufficient evidence that it is meaningful. Sophisticated marking is done. Features are selected based on a cost benefit analysis of including or excluding features.
Just more shxt from this group of shxtbags.
Interestingly, the CAFC completely bollixed the nexus requirement in Gamon v. Campbell Soup when it applied utility patent analysis to design patents link to cafc.uscourts.gov
See my blog at link to designlawperspectives.com
Thanks Perry – Yes, that was an interesting extension of Fox Factory. I have a student who is writing a case note for Missouri Law Review, we’ll post it when it comes out.
What the courts have yet to grasp is that the obviousness enquiry is changed fundamentally by the switch from First to Invent to First to File.
What counts under the latter is the state of the art the day before the patent application was filed, a date long AFTER the invention was conceived and later than its reduction to practice (constructive or real). Further, the touchstone is the thinking of the imaginary and omniscient PHOSITA on that date, rather than any real person. Events antecedent to the date of the obviousness enquiry inform that enquiry. One such event is the writing of the patent application. Thus, it is not just legitimate but also mandatory to assess obviousness relative to the content of the patent application.
What does the application declare to be the contribution to the art, the problem addressed, and solved without the benefit of any hint or suggestion in the stae of the art to solve the problem in that way? TSM under FtF is a beast quite different from TSM under FtI.
Obviousness is easy under First to File (once you get used to thinking about it in the right way).
You do relative that you drew no actual distinction in support of your assertion that FTI, FTF (and/or FITF) exists for the legal test of obviousness, eh?
Happy (throw C R P against the wall and see what sticks) Easter to you too.
OK, anon. Again, with more detail, the difference between First Inventor to Invent and First Inventor to File. Under FItF, the ONLY relevant inventive concept is that which is announced in the application as filed, crafted by the writer of the specification, who is the servant of the owner of the information in the specification and will define the inventive concept in the way that maximises its commercial value to the owner. Often, the actual inventor, the one who conceived some concrete process, product or machine, will look askance at what the drafter announces as the relatively abstract “inventive concept”.
The writer not only is deemed to but often actually does have full hindsight knowledge of i) the inventor’s machine or process, and ii) in contrast to the named inventor, full hindsight knowledge of the state of the art, right up to the day before filing at the PTO. That full hindsight knowledge of the prior art informs the drafting. For example, the drafter will put together and include in the specification detailed comparative data to reveal (wait for it) a surprising and unexpected difference between the claimed subject matter and the prior publication most relevant to patentability, which data will make a decisive difference to patentability. That’s the reality, very frustrating when one is an Examiner or Opponent at the EPO.
To level the playing field between patent applicant and the public, and to ensure that the rights go to the party that really was first to the PTO with an enabling disclosure of the claimed subject matter requires an approach to obviousness that not only gives full faith and credit to the drafting but also holds it to account for any deficiencies.
In particular, the courts will no longer be of a mindset that Applicant had no opportunity, prior to filing, to define the invention in the context of the most relevant prior art and so, in fairness, must be give full scope to re-define the invention during prosecution. Patent profanity will diminish. WD requirements will tighten progressively.
I do realise that the same hindsight knowledge was available to those who drafted back in the days of FItI. But when the courts grasp the role of hindsight for the FItF drafter, the assessment of obviousness will change accordingly, as the courts make the 30 year journey from assessing obviousness under FItI to FItF.
Let’s parse your additional points:
“Under FItF,
the ONLY relevant inventive concept is that which is announced in the application as filed, crafted by the writer of the specification, who is the servant of the owner of the information in the specification and will define the inventive concept in the way that maximises its commercial value to the owner.”
Often, the actual inventor, the one who conceived some concrete process, product or machine, will look askance at what the drafter announces as the relatively abstract “inventive concept”.”
What planet are you on? You do know that your putative “actual inventor” swears an oath as to what that drafter provides for filing in FItF, right?
Further, I DO hope that your ‘travels around that same small block – no matter how many times’ has informed you that OFTEN the “actual inventors” are taught that the LEGAL DOCUMENT known as a patent application must capture MORE THAN MERELY what an inventor thinks of initially as ‘the invention,’ which – in truth – is often hardly even only one embodiment of the actual invention.
I would even posit that this is a Sacred Duty of a skilled practitioner.
“The writer not only is deemed to but often actually does have full hindsight knowledge of i) the inventor’s machine or process, and ii) in contrast to the named inventor, full hindsight knowledge of the state of the art, right up to the day before filing at the PTO.”
Most definitely NOT.
That’s just plain foolishness. And will set the wrong expectation for the client.
Now mind you – at the client’s discretion and choice (often dictated by several factors), informing the writing can be augmented with prior art searches in order to better inform the writing.
But there is no such thing as “full knowledge” – hindsight or otherwise.
“For example, the drafter will put together and include in the specification detailed comparative data to reveal (wait for it) a surprising and unexpected difference between the claimed subject matter and the prior publication most relevant to patentability, which data will make a decisive difference to patentability.”
LOL – you love to disregard patent profanity, do you not?
“That’s the reality, very frustrating when one is an Examiner or Opponent at the EPO.”
You love to ignore actual reality of dealing with US examiners as well, eh?
Oh wait, for all of your ‘advice,’ you have fervently AVOIDED understanding US prosecution.
Well, then here is a hint (yet again): You run a very real danger with including any actual comparative view of the innovation in regards to what others have done. You also simply do NOT get to set the view of WHATEVER it is that is “most relevant to patentability” – THAT is what the Examiner will tell you. While certainly, it is indeed beneficial to know as much as possible what the landscape IS, but drafting NEED BE more than merely some “this is how we differ from “X” that we consider to be most relevant.”
BUT MORE TO THE POINT HERE, this applies to BOTH (and truthfully to all three of) FItF, FtI, and FtF.
Your statement of, “that not only gives full faith and credit to the drafting but also holds it to account for any deficiencies.” is mindless and ALSO has no difference in any of the realms that you would wish to draw some distinction to.
Your statement of “In particular, the courts will no longer be of a mindset that Applicant had no opportunity, prior to filing, to define the invention in the context of the most relevant prior art and so, in fairness, must be give full scope to re-define the invention during prosecution. Patent profanity will diminish. WD requirements will tighten progressively.” has NO bearing on reality.
None.
You simply have no clue as to what path the US Courts will take, and in fact have quite deluded yourself as to BOTH any existing differences and how any such differences would evolve over time.
When you have had 40 years of personal experience with disputes between corporations who filed independently on much the same subject matter at much the same date, resolved under a FtF legal system, we can resume our discussion. I expect the looming CRISPR cases, for example, to provide the courts of the USA with considerable enlightenment of the realities of priority disputes adjudicated under FtF. You too, I shouldn’t wonder.
You write that I have “no clue” but that’s not right. Those 40 years of experience of the unalterable reality of priority disputes under FtF give me a very good handle on what is going inevitably to happen in the USA under FItF.
You make the grievous error of thinking that your four decades plus of traveling around the same block informs you of the ongoings of OTHER blocks.
There is NOT a desire to “resume” any such discussion with you if you cannot recognize your own limitations.
This is just NOT a discussion of only that which you claim to know well based on those four decades.
You STILL have no clue as to how the US will evolve, because you cannot be bothered with even understanding how the US is different.
That you merely think otherwise only proves my point.
However different the USA is (and of course it is uniquely different, no question) it can’t do anything about the inevitable consequences of shifting to a system which resolves priority contests on the basis of FItF, as opposed to FItI.
Just wait and see.
>What does the application declare to be the contribution to the art,
When I started in this business, most patents had a proper discussion of the prior art and its deficiencies. Those discussions were, by far, the most useful section to read if you wanted to understand the dense patent-ese of the main claims.
But then, the Fed. Cir. started nakedly importing limitations from the background/spec into the claims. Predictably, everyone responded by deleting those background discussions and being generally vague about everything. (I cry a little every time I see something like “FIG. 1 might have a widget 100, a thingamajig 102….”)
The also-predictable result of that jurisprudence that obviousness is now really hard to judge, and everything sort-of looks abstract.
+1 OC.
To those who insist on wearing invalidation-colored glasses, very little is or ever was deserving of a patent.
Precious little.
“At the end of the day, tribunals are often left guessing whether the invention went far enough—are the differences from the prior art meaningful in some way or are they merely points of distinction.”
Do you really see it like this?
Such a worldview seems contradicted by things like the all-elements rule or the multitudes of OA responses that only discuss supposed deficiencies of the prior art.
The patent system was not targeted to reward meaningful advances, but rather to reward distinction. That may not be the only way the law could have been interpreted, but that is how the custodians of the patent system implemented the law.
Do you understand WHY such a difference in world views may exist?
Here’s a hint: those that have studied and understand innovation know that (oft times Central, or Authoritarian) “control” of innovation simply does not work, and thus, the simple notion of different ways is by far the best way to promote innovation.
As I have in the past, this is a great place to plug the very old English series on innovation: “Connections” with James Burke.
I mentioned in the post my view that: “Focusing on the importance of the advance incentivizes advances that are important.” Otherwise, we may be incentivizing more trivial advances.
In addition, it is possible that allowing patenting of any trivial advance would create a problematic level of non-productive speculation. I would be uncomfortable with a simple novelty test, but I don’t currently have the ability to totally evaluate its impact.
I think that you are letting some “nanny-type” concern get in your way here.
Who are you to deem anything “trivial?”
The long and short of actual innovation throughout history has LESS to do with any notion of how “trivial” any single item has been, and MORE to do with a healthy cross-fertilization of — yes, even trivial — elements.
The notion of “0h N0es, there may be (non-productive [again, who gets to decide this?]) speculation is ITSELF an item of speculation that is simply OUT OF BOUNDS.
NONE of this bespeaks any type of “simple novelty test.”
What is “spoken to” here is an insertion of a nanny-type of view that somehow “patents must be difficult” that is exactly the same flavor as had infected the Supreme Court in prior history, bringing forth BOTH their “Flash of Genius” AND their “The only valid patent is one that has not yet appeared before us.”
The marker itself is fully capable of handing any such “patenting of trivialities.”
…”marker” –> “market”
Thanks Ben – There are a few things going on here.
There is an ongoing battle about ‘how meaningful’ the advance needs to be. This was answered at one level with the 1952 Act and codification of obviousness relative to PHOSITA. But the debate continues with many regularly arguing (1) that a claim should be patentable if it includes a feature not found in the prior art; and (2) that POSITAs are not very good at linking ideas together from the prior art. The all-elements-rule cuts both ways – it does help patentees differentiate from the prior art, but it also limits the scope of the patent claims.
Part of all of this also has to do with process. I like to talk about ‘meaningful advances’ but the courts rarely if ever use the same or even similar terms. One reason is that the statute says “obviousness”–so obviousness is the test. This is perhaps akin to the the eligibility test that is largely designed to avoid improper preemption. Despite being its driving purpose, Federal Circuit has refused to consider the the existence/absence of preemption as relevant to the eligibility analysis.
I’m still thinking this through.
Setting aside my cynicism regarding the patent system, I think a problem with a focus on a “meaningful advance” is that some “meaningful advances” are obvious.
For example, after the invention of the PID controller, the application of PID control to other controllable systems may well have been an meaningful/important advancement to the world, but such applications should probably be obvious.
You dip into a colloquial view of “obvious” which — GIVEN your “cynicism” (I would use a different word) regarding the patent system — gets in your way of understanding innovation and innovation protection.
While I do somewhat agree with Michel’s point, in reality the things which are being evaluated are likely becoming more and more complicated and more and more tangentially claimed. You cannot have those both going on and keep the same old simplistic rule re nexus. Otherwise you’ll have people creating bizarro nexus assertions and having them be considered tots legit.
Does anyone out there even still use, let alone understand, the affected lingo of “tots?”
link to en.wiktionary.org
OK, so you present a link to understanding, but such a link will not address actual use.
Bottom line 6 is that your choice is an odd archaic and ultimately unhelpful “bizarro” choice of communication. Not sure what “effect” you are aiming for, but the one you are getting is not a good one.
anon, I understood. A “tot” is a toddler. The adjective “tots” (for “totally” is relatively new (at least for somebody of my advanced years) and favoured by (relatively) young things aiming to signal that they are indeed swinging and hip. Its use here, I would say, is as much in order as “legit” for “legitimate”, in order to keep the length of the posting to a minimum.
6, you set me wondering whether the “objective technical problem” of the EPO’s problem-solution obviousness enquiry is getting progressively more bizarre. Fortunately, I detected no such trend.
MaxDrei,
It may have been “swinging and hip” at one point in time.
Use now though has a definite opposite effect.
So no, it is most definitely NOT the same as using “legit” as a shortened form of “legitimate.”
Not even close.
Ah, my mistake. I see it now. You understood “tots” all along but felt it necessary to call out 6 for using it.
As to whether it is outmoded or pretentious, the Link below, with (C) 2022 suggests that it is still OK and that 6 wanted to signal playfulness. Legit, I would think. A judicious hint of levity never hurt anybody.
link to slangit.com
“You understood “tots” all along but felt it necessary to call out 6 for using it.”
He has a mental condition max.
says the one using “tots”….
“Bottom line 6 is that your choice is an odd archaic and ultimately unhelpful “bizarro” choice of communication.”
It’s literally gymbro speekin’s you geek.
“6, you set me wondering whether the “objective technical problem” of the EPO’s problem-solution obviousness enquiry is getting progressively more bizarre. Fortunately, I detected no such trend.”
That’s good max.
Uh, “gymbro’ went out like in the time of you mancrush on Dudas.
Thanks for making my point for me.
. . . as the CAFC continues to expand their invalidation bag-‘o-tricks.
Magician’s hats, robes, and staffs anyone.
It’s a wonder Gandalf still has his job.
All while our illustrious Congress . . . sits back in their plush seats . . . eating their popcorn and candy . . . as they take in the crippling of American innovation.
Very apt analogy Pro Say. That is exactly what their game is to reduce the patent right by any means possible. They are judicial activists that don’t care about creating a consistent, predictable body of law but only in reducing the patent right. Just a group of shxtbags.
The best thing that could happen is to dissolve the CAFC and hold all their opinions since 2000 as having zero weight.
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