Obviousness:

In Hoyt Augustus Fleming v. Cirrus Design Corp., the Federal Circuit affirmed PTAB's finding that claims to an “intelligent ballistic parachute system” which engages certain autopilot functions before and after deploying a ballistic (rocket-assisted) parachute. The Board held that the claim was obvious over a combination of a pilot operation handbook that describes maneuvers needed for safe parachute deployment and a patent related to autopilot functions. Cirrus argued that neither the handbook nor the patent disclosed an autopilot for performing flight maneuvers and deploying a parachute upon the aircraft's receit of a parachute deployment request. However, the Board explained that the patent discloses that in response to a request to deploy a parachute, an aircraft may automatically initiate shut down procedures, including deploying a parachute and taking certain actions in an emergency situation, including “shutting off all engines, terminating all flight functions, [and] deploying an emergency recovery parachute.” Furthermore, the Board found that James describes that these actions may include, for example, “slow[ing] the aircraft to landing speed and maintain[ing] a slow steady landing descent.” The Board further found that one of ordinary skill would have been motivated to program James's autopilot system to perform claimed flight maneuvers upon receipt of a parachute deployment request because they are suggested by the pilot operation manual in order to achieve safe and beneficial deployment of a ballistic parachute. The court found that the Board's finding is supported by substantial evidence and resulted from faithful application of law on obviousness.

• News article (paywall) (private cache)

In Magseis FF LLC v. Seabed Geosolutions, the Federal Circuit affirmed IPR decision to invalidate patents as obvious under 35 U.S.C. § 103. The court addressed two main questions presented by Magseis :

In response to Magseis' argument that the reference “Suggon” taught away from combining components into a single container, the court held that (citations omitted):

In response to Magseis' argument that the prior art lacked motivation to combine references to arrive at a disk-shaped housing, the court held that (citations omitted):

• Patents at issue: 8,228,761 and 8,879,362
• News article (paywall)

In the Chemours Co. FC, LLC v. Daikin Indust., Ltd. (20-1289), the Federal Circuit split on whether a prior art reference “taught away” from the claimed invention. Judge Rayna wrote the majority opinion, which held that “the Board appears to have ignored the express disclousre in Kaulbach that teaches away from the claimed invention and relied on teachings from other references that were not concerned with the particular problems Kaulbach sought to solve. In other words, the Board did not adequately grapple with why a skilled artisan would find it obvious to increase Kaulbach's melt flow to the claimed range while retaining its critical 'very narrow molecular-weight distribution.'”

In his dissent, Judge Dyk argued that “[a]lthough it is true that Kaulbach's invention is a narrow molecular weight distribution polymer, Kaulbach also acknowledges that 'the art t[aught] that a broad molecular weight distribution[wa]s needed to achieve such high processing rates,” . . . and that prior art 'mixtures ha[d] a very broad molecular weight distribution[,] which[,] according to conventional wisdom, results in an improved extrudability.' Thus, even though Kaulbach determined that 'a narrow molecular weight distribution performs better,' it expressly acknowledged the feasibility of using a broad molecular weight distribution to create polymers for high speed extrusion coating of wires. This is not a teaching away from the use of a higher molecular weight distribution polymer“ (internal citations omitted).

• Summary, analysis, discussion

In Koninklijke Phillips v. Google, the Federal Circuit addressed a situation in which Google challenged the validity of patent claims based on two grounds, one of which was that the claims were obvious in light of a primary reference in view of “general knowledge” of the skilled artisan [POSITA], which is established by a secondary reference and expert declaration. The PTAB instituted review on a three grounds, including the two cited by Google, and a third ground of obviousness over the primary and secondary references.

The Fed. Cir. rejected Phillips' argument that 35 U.S.C. § 311(b) expressly limits inter partes reviews to “prior art consisting of patents or printed publications” and therefore prohibit the use of “general knowledge” to supply a missing claim limitation in an inter partes review. The PTAB need not ignore the skilled artisan's knowledge when determining whether it would have been obvious to modify the prior art, and in fact, under 35 U.S.C. § 103, obviousness inquiry turns not only on the prior art but “whether the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art . . .” (internal citations removed). The court therefore held that Google properly alleged that although the primary reference did not disclose each and every element, the differences between the claimed invention and the primary reference are such that the claimed invention would have been obvious to a person having ordinary skill in the art when considering the primary reference.

See also: Fed Cir. holds PTAB cannot institute based on grounds not advanced in petition

• Summary
• Summary

In Honeywell v. Mexichem, the Fed. Cir. said that the PTAB's IPR analysis was “internally inconsistent” and furthermore that ”[e]ach part of that internally inconsistent analysis was individually flawed.“ The IPR concerned a mixture of refrigerant and lubricant that individually were known to be unstable but unexpectedly were stable when mixed by the inventors. More particularly, the Federal Circuit held that:

• “That which may be inherent is not necessarily known and that which is unknown cannot be obvious” (citing PAR Pharm, Inc. v. TWI Pharm., Inc. and In re Rijckaert which itself cites In re Spormann), internal quotations removed). “What is important regarding properties that may be inherent, but unknown, is whether they are unexpected. All properties of a composition are inherent in that composition, but unexpected properties may cause what may appear to be an obvious composition to be nonobvious.”
• “The Board made what ammounts to a finding that one of ordinary skill in the art would not have had a reasonable expectation in combining [the mixture's constituents], but then seemed to make a burden-shifting argument that Honeywell did not persuasively establish that one of ordinary skill would have expected failure. [. . .] [R]easoning that one would no more have expected failure than success is not a valid ground for holding an invention to have been obvious. [. . .] Even when presenting evidence of unexpected results to 'rebut' an Examiner's prima facie case for obviousness, a patent owner need not demonstrate that one of ordinary skill would have expected failure–rather, the patent owner need only establish that the results would have been unexpected. . . .”
• The Board improperly relied on the prior art reference Omure, which, although mentioned by third-party requestors Mixichem and Daikin, was never addressed by the Examiner. The Baord in fact “found Honeywell's evidence to be unpersuasive of nonobviousness, based on Omure's teachings. [. . .] Under the Administrative Procedure Act (“APA”), the PTO must ensure that the parties before it are 'fully and fairly treated at the administration level. [. . .] When considering whether the Board issued a new ground of rejection, the 'ultimate criterion' is 'whether applicants have had a fair opportunity to react to the thrust of the rejection.' . . . mere reliance on the same statutory baisis and the same prior art references, alone is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.” [. . .] In this case, the Board “rejected the Examiner's conclusions regarding the evidence of unexpected results and instead relied on Omure to find the evidence unpersuasive” and “Honeywell [did not have] a fair opportunity to react to the thrust of the rejection as premised on Omure.”

In Personal Web Technologies LLC v. Apple, Inc, the Federal Circuit expressed frustrations that the PTAB has not met its burden of adequately explaining its rationale for invalidating patents, stating, ”[w]e have repeatedly applied those requirements in reviewing the adequacy of the board's obviousness analysis. . . .“

Holdings:

• Unordered List ItemQuoting In re Lee ¹⁾, the Fed. Cir. held that “the agency tribunal must present a full and reasoned explanation of its decision. The agency tribunal must set forth its findings and the grounds thereof, as supported by the agency record, and explain its application of the law to the found facts.” The court continued, citing Synopsis, Inc. v. Mentor Graphics Corp. ²⁾, “the Board, as an administrative agency, must articulate logical and rational reasons for its decisions” (inner quotations omitted). The court then concluded that ”[t]he Board did not sufficiently explain and support its conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims . . . and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the '310 patent claims and reasonable expected success.“
• With respect to the rationale to combine, the Federal Circuit is clear that the Board's acceptance of Apple's argument that the references could be combined is insufficient. Stated the court:

• In its most harsh critique, the Boar stated, ”[i]ndeed, the Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work. At least in this case, such a clear, evidence-supported account of the contemplated workings of the combination is a prerequisite to adequately explaining and supporting a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.“

In Arendi S.A.R.L. v. Apple Inc., (Fed. Cir. 2016), the Federal Circuit reversed a holding by the BPAI that a claim to searching a contacts list for a matching contact on recognizing a name or phone number in a text was obvious in view of a reference teaching the phone number recognition, but not the search. As basis for the BPAI's rejection under 35 U.S.C. § 103(a) based on a single reference, the BPAI stated:

The Federal Court rejected “common sense” as a substitute for evidence when attempting to meet a claim limitation, and further expounded on appropriate uses for “common sense” in patent law:

1. First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.
2. Second, in Perfect Web, the only case Appellees identifies in which common sense was invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward.
3. Third, our cases repeatedly warn that references to “common sense”–whether to supply a motivation to combine or a missing limitation-—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.

• Summary and analysis

In Wrigley v. Cadbury, the Fed. Cir. upheld a lower court ruling of invalidity of anticipation and obviousness. With regard to anticipation, Judge Newman stated that the panel reached its conclusion by “relying on a . . . reference that does not show the claimed combination at all, but merely presents the ingredients on lists.” The Court held that the claims were obvious because, ”[c]laim 34 recites a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known cooling agent for another. […] Under these circumstances, it is fair to say that there were 'a finite number of identified, predictable solutions' to the problem of finding physiological cooling agents for chewing gum, and the combination of menthol and WS-23 was 'the product not of innovation but of ordinary skill and common sense“ (citations to KSR omitted). Newman argued in her dissent that the Court ignored significant secondary evidence that strongly points to nonobviousness.

• Summary with excerpts, discussion

In Anderson Corp. v. Pella Corp. et al., the Fed. Cir. reversed the lower court's holding of invalidity on summary judgment, holding that sufficient facts existed to warrant a trial. The invention was for a fine-meshed insect screening material with “reduced visability” – meaning more transparent, and less reflective than prior art insect screens. The prior art consisted of an existing screening material used for electromagnetic shielding (referred to as TWP mesh) in combination with a Japanese patent for a method of coating a screen with a light absorbable black color to reduce reflection. The Fed. Cir. found that genuine issue of material fact existed with regard to the scope and content of the prior art. Specifically, the Court held:

1. Previous use, physical characteristics, and expense of TWP material would tend to teach away from its use as an insect screen. Citing KSR citing United States v. Adams ³⁾, the Court noted that “when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.”
2. The Fed. Cir. points out that a certain amount of deference is to be given the PTO on Summary Judgment motions. In this case, the PTO examiner initially denied claims of the patent as being anticipated by the commercially available TWP mesh and obvious in light of the TWP mesh in combination with the Japanese reference, but the allowed the application because “the prior art does not disclose the screen material which has the structure recited which is used as an insect screen . . . .”

• Patent in suit: 6,880,612

In Ex parte Fu (cached copy) the BPAI upheld the rejection of a claim to an electrophotographic device having a chemical surfactant of a particular formulation. The prior art did not disclose the claimed species of chemical surfactant, but did teach a genus of which the surfactant is a species. The question presented was the correctness of the Examiner's conclusion that the claimed species was obvious over the prior art genus. The Applicant relied principally on In re Baird, ⁴⁾, stating that the prior art lacked motivation to select the specifically recited surfactant and that the Examiner applied an improper “obvious to try” rationale so support the obviousness rejection. Relying on KSR ⁵⁾ and Merck & Co., Inc. v. Biocraft Labs, Inc., ⁶⁾, the BPAI disagreed, stating: “While Yamamoto's genus of surfactants is arguably broad, it nevertheless consists of only a finite number of known perfluoroalkyl surfactants that predictably solve the dispersion problem…. Accordingly, a person having ordinary skill in the art would have had 'good reason to pursue' the use of GF-300, the claimed surfactant species. It would have been within the 'technical grasp' of that person having ordinary skill in the art to understand that this known surfactant, which was readily available in commerce, has the perfluoroalkyl group as required by Yamamoto. Because that person having ordinary skill in the art would have “anticipated success” in trying GF-300 perfluoroalkyl surfactant in view of Yamamoto's teachings, the subject matter of appealed claim 1 would have been prima facie obvious over Yamamoto alone.”

In Innogenics v. Abbott Laboratories, the Federal Circuit was highly critical of Abbott's lawyers, and ruled against Abbott on a variety of procedural grounds. With respect to obviousness, the Fed. Cir. approved of the District Court's rejection of Abbott's arguments for invalidity based on obviousness, stating that “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” In a footnote, the Fed. Cir. addressed KSR ⁷⁾, noting that the the relaxed standard for motivation under KSR “does not alter the district court’s pre-KSR conclusion in this case or our affirmance thereof.” This case is additionally referenced in procedure-forfeit, and claim construction sections.

In In re Sullivan, the Fed. Cir. reversed the BPAI's holding that it need not consider rebuttal evidence after establishing a prima facie case for obviousness. In particular, the BPAI held that the claims were drawn to a composition, and as such, arguments directed to a use of the composition, in this case, to counteract the effects of snake venom, were not relevant. Furthermore, amendments and arguments directed to the use were not relevant and need not be considered. In remanding the case to the BPAI, the Fed. Cir. stated, ”[w]hen a patent applicant puts forth rebuttal evidence, the Board must consider that evidence.“ As to the merits of the BPAI's position, the court stated, “the Board was mistaken to assert that the declarations only relate to the use of the claimed composition. The declarations do more than that; they purport to show an unexpected result from use of the claimed composition, how the prior art taught away from the composition, and how a long-felt need existed for a new antivenom composition. While a statement of intended use may not render a known composition patentable, the claimed composition was not known, and whether it would have been obvious depends upon consideration of the rebuttal evidence. Had the Board considered or reviewed the declarations in any meaningful way, it might have arrived at a different conclusion than it did.”

• Brief summary; discussion
• Summary with excerpts
• Analysis

In In re Icon Health and Fitness, Inc., the Fed. Cir. held that the teaching by Teague of gas springs used to hold a folding bed in an upright position is applicable to Damark, which describes a treadmill and meets the remaining limitations of Icon's claims. The Fed. Cir. upheld the boards ruling that Teague was resonably pertinent to the problem addressed by Icon, and therefore qualified as analogous art. The Fed. Cir. further rejected Icon's argument that Teague teaches away from single action springs, because, “the passage in Teague describing single-action springs does not indicate the undesirability of those springs for Icon’s application” (emphasis added). The Fec. Cir. further rejected Icon's argument that the combination would be inoperable using the dual action spring taught by Teague or springs sized for a bed verses a treadmill. While the Fed. Cir. did not elaborate on why Teague's dual action spring design would be operable, it did suggest that sizing the springs appropriately would be within the abilities of one skilled in the art.

• Brief analysis, discussion
• Summary with excerpts

In PharmaStem Therapeutics, Inc. v. Viacell, Inc., et al., the Fed. Cir. affirmed the district court's finding of infringement and overruled the non-obviousness. With respect to the issue of validity, the Fed. Cir. reversed the lower court's upholding of the jury verdict of non-obviousness, relying on admissions in the applications themselves that, “A human hematopoietic colony-forming cell with the ability to generate progenitors for secondary colonies has been identified in human umbilical cord blood” to refute assertions by expert testimony that cord blood was not known to contain stem cells. Furthermore, the Fed. Cir. noted that the prior art additionally suggested using cryopreserved cord blood for hematopoietic reconstitution. In her dissent, Judge Newman stressed skepticism in the field, long felt need, commercial success, and a number of other secondary considerations, concluding that, “A reasonable jury could have found that these inventors were not simply conducting a routine optimization.”

• Patents in suit
• Summary and discussion
• Summary and analysis
• Summary with excerpts - discusses storing service vs. sale of cord blood infringement issue

In Takeda Chemical v. Alphapharm, the Fed. Cir. upheld the district court's finding that a claim directed to a chemical compound used in treating Type II diabetes was not–ahem–“would not have been” – obvious.⁸⁾ The Fed. Cir. points to numerous facts in support of non-obviousness, including physical differences between the structures of the claimed compound and the closest compound (referred to by the court as “compound b”) described in the prior art, a reference that teaches away, and admissions by experts testifying that the closest compound would not have been a good candidate, or was no better than many other potential candidates, for further study in the treatment of diabetes. The court further rejected Alphapharm's arguments that the claimed compound was an “obvious to try” variant of compound b as suggested in KSR and Pfizer, stating that, unlike the situation in KSR, the prior art did not suggest a predictable solution, and unlike the situation in Phizer, here, the prior art lacked motivation to narrow the possibilities to compound b. Distinguishing In re Wilder,⁹⁾ the court further held that, even if the prior art directed one to compound b, there was no suggestion to make the particular modifications necessary to arrive at the claimed compound. Judge Dyk concurred with an opinion that appeared to be largely dicta.

• Brief summary and discussion
• Summary
• Summary
• Summary

In Leapfrog v. Fisher-Price, the Fed Cir. upheld the district court's finding that Leapfrog's patent was obvious based on a combination of prior art references. Citing KSR v. Teleflex, the Fed. Cir. reasoned that it would have been obvious to implement in an electronic device the functionality of the prior art reference for “commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.” The prior art device operated with a mechanism having an internal record player to reproduce sounds associated with selected letters. The court also noted that “Leapfrog presents no evidence that the inclusion of a reader [to identify what card or book is inserted] in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. […] Nor does Leapfrog present any evidence that the inclusion of a [reader] . . . represented an unobvious step over the prior art. Our conclusion is further reinforced by testimony from the sole inventor at trial that he did not have a technical background, could not have actually built the prototype himself, and relied on the assistance of an electrical engineer and Sandia National Laboratory to build a prototype of his invention.” The court further agreed with the district court that the secondary considerations presented by Leapfrog were not persuasive enough to overcome the strong prima facie obviousness showing. In a separate determination, the Fed. Cir. held that the Fisher-Price device did not infringe.

Leapfrog's Patent	Prior Art Device

• Patent in suit; Primary reference
• Summary, discussion
• Comments by Judge Rader, indicating that this decision was written prior to announcement of KSR, and that the KSR decision will not have a great impact on the Fed. Cir.'s approach to obviousness ~NEW~

The Supreme Court ruled today that the Teleflex patent is obvious in view of Asano. The court gave approval of the teaching, suggestion, motivation test, but stated that, in the present case, the Fed. Cir. applied the test too strictly, and failed to recognize motivations stemming from market forces. The Court repudiated several bases from which the Fed. Cir. concluded non-obviousness:

1. That the courts and examiners should look only to the problem the patentee was trying to solve;
2. that the a person having ordinary skill would be led only to those elements of prior art designed to solve the same problem;
3. that a patent claim cannot be proved obvious merely by showing that the combination of elements was “obvious to try;” and
4. that rigid rules designed to prevent hindsight reasoning are necessary and consistent with precedent.

The Supreme Court acknowledged the Fed. Cir.'s more flexible approach to TSM analysis in their more recent decisions in Dystar and Alza Corp., but did not comment on whether those decisions are consistent with the present holding.

• Opinion of the Court paper-saver version
• More on the Comprehensive Teleflex Page
• 04/30/07 - Brief Summary
• 04/30/07 - KSR summary and opinion regarding appearance of "inventive step"
• 04/30/07 - Another summary
• 04/30/07 - "Just a Patent Examiner"'s take on the decision, discussion
• 05/01/07 - analysis and opinion
• 04/30/07 - Opinion
• 04/30/07 - Opinion and commentary by Donald Zuhn
• 05/02/07 - Comments of Professor Gregory Mandel and discussion
• 05/01/07 - Comments regarding KSR and Sarbanes-Oxley
• 05/02/07 - Comparison of KSR with Dystar
• 05/03/07 - Opinion and discussion regarding the Legacy of the KSR decision
• 05/03/07 - Opinion of Professor Shubha Ghosh
• 05/02/07 - KSR's impact on biotech and pharmaceutical companies
• 05/03/07 - Opinion and discussion on the impact of KSR on pharmaceutical patents
• 05/01/07 - Everyone's talking about KSR!
• 05/06/07 - Commentary on how KSR makes obviousness a question of law
• 05/22/07 - Comments by Judge Rader indicating that KSR will not significantly impact the Fed. Cir.'s approach to obviousness
• 05/29/07 - Strategies for prosecuting in a post KSR era

In Pfizer v. Apotex, Inc., the Fed. Cir. reversed a lower court ruling that held Pfizer's patent for the drug commercially sold as “Norvasc” for treating hypertension. The Fed. Cir. determined that the the invention was obvious based on the amount of expectation of success. Specifically, the Fed. Cir. noted that “obvious to try” is not a valid rationale for finding obvious, but also that absolute predictability is not required. Factors weighing in favor of obviousness included:

1. Only one parameter was varied to make the amlodipine acid addition salt of the invention;
2. The prior art did not merely teach a “general approach that seemed to be a promising field of experimentation” or give “only general guidance as to the particular form of the claimed invention or how to achieve it.” Instead, the prior art “clearly pointed the skilled artisan to 53 anions that . . . were pharmaceutically acceptable. As [testimony] demonstrated, one of ordinary skill in the art was capable of further narrowing that list . . . to a much smaller group, including benzene sulphonate, with a reasonable expectation of success;” and
3. The prior art provided not only the means of creating acid addition salts but also predicted the results, which Pfizer merely had to verify through routine testing. The fact that Pfizer used trial and error to “discover” the invention is irrelevant.

• Patent at issue
• Summary, commentary, and analysis
• Summary
• Background of technology and summary of decision
• Summary and discussion
• Summary and Review
• Summary

Lee Petherbridge and R. Polk Wagner have published an article in the Texas Law Review on an empiracle assessement of the law of obviousness. Among the findings, ”[t]he more TSM was used, the lower the rate of nonobvious results.”

• Article (download link is in the upper left corner)
• short background

Oral Arguments now available. (Cached copy)

• More excerpts.
• Patent Baristas' take
• New York Times article
• Comprehensive Teleflex Page

KSR submitted a Reply Brief.

• Read more
• Comprehensive Teleflex page

The Federal Circuit, in Alza v. Mylan (Fed. Cir. 2006), appears to address many points raised in Amicea Curiea Briefs submitted in the Teleflex case to be heard by the Supreme Court. Specifically, the CAFC states that the “motivation - suggestion - teaching” requirement of 103 is required to guard against hindsight analysis. Furthermore, the obviousness standard is a flexible standard because motivation may be found implicitly in the art.

• Read More.

KSR petitioned the Supreme Court for review, arguing that the current CAFC-created obviousness standard inappropriate as it is not grounded in statute or Supreme Court jurisprudence. A large number of big corporations and law professors seem to agree with their position…

• (Links moved to the Comprehensive Teleflex Page.)