Transcript Nonobviousness II: Requiem for the Suggestion Test

Nonobviousness II: KSR:
Requiem for the Suggestion
Test
Patent Law – Prof Merges
10.16.2012
Federal Circuit: Post-Graham
1. Elevation of “secondary” factors to 4th
Graham factor
2. “Reasonable expectation of success”
standard – ex ante perspective
3. Development of Suggestion Test –
and rejection by Supreme Court
[T]the differences between the
subject matter sought to be
patented and the prior art are
such that the subject matter as
a whole would have been
obvious at the time the
invention was made to a
person having ordinary skill in
the art to which said subject
matter pertains.
KSR Int’l v. Teleflex
The claimed invention at issue in this case is a
straightforward combination of (i) a preexisting type of “adjustable pedal,” and (ii) a
pre-existing type of “electronic control” that
is commonly used on newer cars.
Claim 4
A vehicle control pedal apparatus (12) comprising:
a support (18) adapted to be mounted to a vehicle
structure (20);
an adjustable pedal assembly (22) having a pedal arm
(14)
moveable in force [sic] and aft directions with respect
to said support (18);
a pivot (24) for pivotally supporting said adjustable
pedal assembly (22) with respect to said support
(18) and defining a pivot axis (26); and
an electronic control (28) attached to said support
(18) for
controlling a vehicle system;
said apparatus (12) characterized by said electronic
control (28) being responsive to said pivot (24)
for providing a signal (32) that corresponds to
pedal arm position as said pedal arm (14) pivots
about said pivot axis (26) between rest and
applied positions wherein the position of said
pivot (24) remains constant while said pedal arm
(14) moves in fore and aft directions with respect
to said pivot (24).
298 F.Supp.2d 581, 592 (ED Mich 2003)
The Court finds little difference between the teachings of
the prior art and claims of the patent-in-suit. Asano
teaches the structure and function of each of the claim 4
limitations, except those relating to an electronic pedal
position sensor. Specifically, Asano teaches an adjustable
pedal assembly pivotally mounted on a support bracket
with the pedal moving in a fore and aft directions with
respect to the support and the pivot remaining in a
constant position during movement of the pedal arm.
Thus, Asano "fairly suggests" the same mechanical
assembly design asserted in claim 4 of the patent-in-suit.
Dist ct. opinion, cont’d
The electronic pedal position sensor asserted
in claim 4, however, is fully disclosed by
other prior art references. Both the 503
Series pedal position sensor and the '068
patent teach an electronic pedal position
sensor being responsive to the pedal pivot
shaft and causing a signal to be sent to the
engine to increase or decrease engine
speed based on the rotation of the pivot
shaft.
It is undisputed that in the mid-1990's more
cars required the use of an electronic
device, such as a pedal position sensor, to
communicate driver inputs to an
electronically managed engine. It is also
undisputed that adjustable pedal
assemblies have existed in the art since the
late 1970's. Clearly it was inevitable that
adjustable pedal assemblies would be
joined with an electronic device to work in
conjunction with modern electronically
controlled engines.
[T]he Court finds that Defendant has offered
sufficient evidence of a suggestion to combine a
pivotally mounted adjustable pedal assembly
with an off-the-shelf modular pedal position
sensor to solve the problem of designing a less
expensive, less complex, and more compact
adjustable pedal assembly for use with
electronically controlled vehicles.
-- 298 F.supp.2d 594
Federal Circuit opinion
The specification of the ’565 patent indicates
that prior-art pedal assemblies incorporating
an electronic control suffered from being too
bulky, complex, and expensive to
manufacture. See ’565 patent, col. 1, ll. 4853. It was this problem that the ’565 patent
set out to address. See id. col. 2, ll. 2-5.
Fed Cir.
We agree with Teleflex that the district court
did not apply the correct teachingsuggestion-motivation test. We also agree
that, under that test, genuine issues of
material fact exist, so as to render summary
judgment of obviousness improper.
-- Fed Cir case no. 04-1152, slip op at 10.
Under our case law, whether based on the nature of
the problem to be solved, the express teachings of
the prior art, or the knowledge of one of ordinary
skill in the art, the district court was
required to make specific findings as to
whether there was a suggestion or
motivation to combine the teachings of
Asano with an electronic control in the particular
manner claimed by claim 4 of the ’565 patent. See
Kotzab, 217 F.3d at 1371; Rouffet, 149 F.3d at 1357.
That is, the district court was required to make
specific findings as to a suggestion or motivation to
attach an electronic control to the support bracket
of the Asano assembly.
KSR INTERNATIONAL CO. v.
TELEFLEX INC.
127 S.Ct. 1727 (April 30, 2007)
[T]he Federal Circuit has employed an
approach referred to by the parties as
the “teaching, suggestion, or
motivation” test (TSM test), under
which a patent claim is only proved
obvious if “some motivation or
suggestion to com bine the prior art
teachings” can be found in the prior art,
the nature of the problem, or the
knowledge of a person having ordinary
skill in the art. -- casebook p. 666
Asano
Pedal
Sensor prior art
• Integrated and freestanding
pedal sensors, described and
claimed in various prior art
patents
Supreme Court
Engelgau had not included Asano
among the prior art references, and
Asano was not mentioned in the
patent’s prosecution. Thus, the PTO
did not have before it an adjustable
pedal with a fixed pivot point.
Supreme Ct. holding
“We begin by rejecting the rigid
approach of the Court of Appeals.
Throughout this Court’s engagement
with the question of obviousness,
our cases have set forth an expansive
and flexible approach inconsistent
with the way the Court of Appeals
applied its TSM test here.”
Highlights from opinion
• US v Adams and “teaching away”
Supreme Court
When a work is available in one field
of endeavor, design incentives and
other market forces can prompt
variations of it, either in the same
field or a different one. If a person
of ordinary skill can implement a
predictable variation, § 103 likely
bars its patentability.
“Often, it will be necessary for a court to look
to interrelated teachings of multiple
patents; the effects of demands known to
the design community or present in the
marketplace; and the background
knowledge possessed by a person having
ordinary skill in the art, all in order to
determine whether there was an apparent
reason to combine the known elements in
the fashion claimed by the patent at issue.
To facilitate review, this analysis should be
made explicit.”
A “court can take account of
the inferences and creative
steps that a person of
ordinary skill in the art
would employ.”
In many fields it may be that there is little
discussion of obvious techniques or
combinations, and it often may be the case
that market demand, rather than scientific
literature, will drive design trends. Granting
patent protection to advances that would
occur in the ordinary course without real
innovation retards progress and may, in the
case of patents combining previously known
elements, deprive prior inventions of their
value or utility.
When there is a design need or market
pressure to solve a problem and there are a
finite number of identified, predictable
solutions, a person of ordinary skill has good
reason to pursue the known options within
his or her technical grasp. If this leads to the
anticipated success, it is likely the product
not of innovation but of ordinary skill and
common sense. In that instance the fact that
a combination was obvious to try might
show that it was obvious under § 103.
In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988)
“Obvious to try” is NOT the appropriate standard
While absolute certainty is not necessary to establish a
reasonable expectation of success, In re O'Farrell, 853
F.2d 894, 903-04, (Fed.Cir.1988), there can be little better
evidence negating an expectation of success than actual
reports of failure. A reasonable jury could conclude from
these reports that one of ordinary skill in the art would
not have had a reasonable expectation of success . . . –
Life Technologies, supra.
Merges, “Uncertainty and the Standard of
Patentability,” 7 [Berkeley] High Tech. L.J. 1
(1993).
Supreme Court
A person having ordinary skill in
the art could have combined
Asano with a pedal position
sensor in a fashion encompassed
by claim 4, and would have seen
the benefits of doing so.
Graham v. John Deere
Is it obvious to move the hinge plate from position A under
the shank to position 1 above the shank?
C
3
2
B
1
A
In re Kubin
• Facts: NAIL protein
• History: In re Deuel, 51 F.3d 1552 (Fed. Cir.
1995), and the special law of biotech
nonobviousness
• Holding: Brings biotech within the general
framework of KSR
NK cells and NAIL protein
NK cells are cytotoxic lymphocytes that play a
major role in fighting tumors and viruses
The NAIL protein is a surface molecule that acts
as a cell binding site; when the right trigger
binds with it (e.g., CD48), cell activity is
stimulated
Goal: Stimulate NK cells into fighting cancer
NAIL Protein: partial amino acid
sequence
Claim 73
73. An isolated nucleic acid molecule
comprising a polynucleotide
encoding a polypeptide at least
80% identical to amino acids 22-221
of SEQ ID NO:2, wherein the
polypeptide binds CD48.
Examiner’s rejection
NAIL protein was in the prior art: Valiante patent,
“p38” protein
Valiante teaches that “[t]he DNA and protein
sequences for the receptor p38 may be obtained
by resort to conventional methodologies known
to one of skill in the art.” Example 12 of Valiante’s
patent further describes a five-step cloning
protocol for “isolating and identifying the p38
receptor.”
Board holding
• Examiner final rejection affirmed; claimed
invention was obvious
• Importance of NAIL protein would have
“motivated” people in the field to isolate and
clone the gene sequence
• Appeal to Fed Cir
Kubin holding
Deuel reversed: Deuel statement, “[T]he
existence of a general method of isolating
cDNA or DNA molecules is essentially
irrelevant to the question whether the
specific molecules themselves would have
been obvious, in the absence of other prior
art that suggests the claimed DNAs,” at 1559
is no longer good law after KSR
Kubin holding (cont’d)
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of
ordinary skill has good reason to pursue the
known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense. In that instance the fact that a
combination was obvious to try might show that
it was obvious under § 103.
KSR, 550 U.S. at 421
Kubin (cont’d)
[S]tated in the familiar terms of this
court's longstanding case law, the
record shows that a skilled artisan
would have had a resoundingly
"reasonable expectation of success"
in deriving the claimed invention in
light of the teachings of the prior
art. See O'Farrell, 853 F.2d at 904.
Merges, “Uncertainty and the Standard of
Patentability,” 7 [Berkeley] High Tech. L.J. 1
(1993).
Obvious to Try
Kubin does not hold that an invention that was
"obvious to try” is necessarily obvious under
Section 103(a).
But: when is an invention that was obvious to
try nevertheless nonobvious?
Applying KSR: Leapfrog
Alcon Research, Ltd. v. Apotex Inc.
687 F.3d 1362 (Fed Cir 2012)
Alcon patent
• Claimed topical administration of
olopatadine compound for treating allergies
in the eye
• Prior art showed olopatadine was an
effective antihistamine – good against
allergies
Alcon prior art
• Guinea pig studies
• District court held: “at the time of invention a
skilled artisan ‘understood that there were
significant barriers to adapting a known
systemic antihistamine for topical use in the
eye.’ – all claims NONOBVIOUS
Federal Circuit
• Reference discloses treating eye allergies in
guinea pigs using eye drops with olopatadine
concentrations ranging from 0.0001% to
0.01%
• It was obvious under KSR to claim any
compound that overlaps with this range
Holding
Here, the motivation to adapt Kamei's
formulation for human use is that it is an
effective antihistamine in guinea pigs and
that animals models are (as the district court
expressly found) predictive of antihistaminic
efficacy in humans. – 687 F.3d at 1369
BUT: reference does NOT teach the 0.1%
composition recited in claims 4 and 8, and
there was no motivation here; VALID
Recent Developments
• Continued refinement of KSR
• “Common sense” combinations – new line of
cases
Post-KSR standard
• Unigene v. Apotex, 99 USPQ2d 1858, 1863
(Fed Cir. 2011): “[O]bviousness requires the
additional showing that a person of ordinary
skill at the time of the invention would have
selected and combined those prior art
elements in the normal course of research
and development to yield the claimed
invention . . . .”
“[PHOSITA] would not have considered using about
20 mM citric acid with the narrowly claimed
amounts of [other constituents], because the
formulation would not be expected to perform
properly to meet the specificity of a
pharmaceutical use. Thus, even accepting that
there was a design need and market pressure to
develop a pharmaceutical formulation that is
bioequivalent to Miacalcin®, there is no evidence
in the record that claim 19 would be an obvious
solution to those motivations.” 99 USPQ2d at
1865.
Citing . . .
“When a field is ‘unreduced by direction of the
prior art,’ and when prior art gives ‘no
indication of which parameters were critical
or no direction as to which of many possible
choices is likely to be successful,’ an invention
is not obvious to try.” Bayer Schering Pharm.
AG v. Barr Labs., Inc., 575 F.3d 1341, 1347 [91
USPQ2d 1569] (Fed. Cir. 2009).
Common sense cases
Eg, Perfect Web Technologies, Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 92 U.S.P.Q.2d 1849 (Fed.
Cir. 2009), at 1329:
• “[T]he Supreme Court instructed that
factfinders may use common sense in addition
to record evidence. “[i]n many patent cases
expert testimony will not be necessary
because the technology will be easily
understandable without the need for expert
explanatory testimony.”
25. An interactive learning device, comprising:
a housing including a plurality of switches;
a sound production device in communication with the
switches and including a processor and a memory;
at least one depiction of a sequence of letters, each letter
being associable with a switch; and
a reader configured to communicate the identity of the
depiction to the processor,
wherein selection of a depicted letter activates an
associated switch to communicate with the processor,
causing the sound production device to generate a signal
corresponding to a sound associated with the selected
letter, the sound being determined by a position of the
letter in the sequence of letters.
Applying KSR: PTO Guidelines
DEPARTMENT OF COMMERCE
Patent and Trademark Office
• Docket No.: PTO–P–2007–0031]
Examination Guidelines for
Determining Obviousness Under 35
U.S.C. 103 in View of the Supreme
Court Decision in KSR International
Co. v. Teleflex Inc.
At p. 57527
In certain circumstances, it may also be
important to include explicit findings as
to how a person of ordinary skill would
have understood prior art teachings, or
what a person of ordinary skill would
have known or could have done. Factual
findings made by Office personnel are
the necessary underpinnings to establish
obviousness.
Prior art is not limited just to the
references being applied, but includes
the understanding of one of ordinary
skill in the art. The prior art reference
(or references when combined) need not
teach or suggest all the claim
limitations; however, Office personnel
must explain why the difference(s)
between the prior art and the claimed
invention would have been obvious to
one of ordinary skill in the art. – p. 57528