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October 13, 2007

Obvious Discrepancy

Translogic Technology sued Hitachi and Renesas over electronics multiplexer patent 5,162,666. Beginning shortly after assertion, Hitachi threw mud until it stuck: filing a series of five reexamination requests, later consolidated into one. The reexam and litigation trains rolled on dual tracks. The patent having withstood invalidity assault in court, Translogic scored an $86 million damages award from an Oregon jury, and a permanent injunction from the judge. But the reexam examiner found the patent combo-obvious; a finding upheld by the patent appeal board. Hitachi appealed the court decision, while Translogic appealed the patent office invalidation.

In Re Translogic Technology (CAFC 2006-1192; 2005-1387, 2006-13333)

The Hitachi appeal was mooted by the CAFC upholding the BPAI obviousness finding.

The legal setup -

Section 103 within title 35 of the U.S. Code "forbids issuance of a patent when '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 Co. v. Teleflex Inc., 550 U.S. ----; 127 S.Ct. 1727, 1734 (2007); (quoting 35 U.S.C. § 103). "Determination of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts." In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005). This court reviews "the Board's ultimate determination of obviousness de novo." In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). However, the Board's underlying findings of fact receive review for substantial evidence. Id. "If the evidence in [the] record will support several reasonable but contradictory conclusions, we will not find the Board's decision unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative." In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).

Translogic argued that the appeals board erred in claim construction: they should have followed the claim construction of the companion Oregon infringement case. But the patent office construes claims broadly -

"[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).

This is an anomalous dichotomy between the agency and the courts: the courts construe claims consistent with the specification, in view of one highly ordinarily skilled in the art.

In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), this court set forth the best practices for claim construction. According to that decision, the words of a claim "are generally given their ordinary and customary meaning." Id. at 1312. The ordinary and customary meaning "is the meaning that the term would have to a person of ordinary skill in the art in question." Id. at 1313. For this reason, "claims must be read in view of the specification, of which they are a part." Id. at 1315. (internal quotations omitted). The specification "is the single best guide to the meaning of a disputed term." Id.

The obviousness difference is that the patent office, in construing broadly, would more readily find patents obvious in light of prior art than a court, which more closely hews to the specification, and thus is likely to construe claim terms more narrowly, on the margin. In many instances, no difference would be told; but the difference here was between life and death for the patent at issue.

Translogic argued that one of references did not go to the same problem that '666 solved, and so taught away. Not so, opined the CAFC: following KSR, the problem area is irrelevant; combine anything in the prior art.

[T]his argument overlooks the fundamental proposition that the.. circuits in [the prior art reference] are prior art within the public domain and the common knowledge of a person of ordinary skill in the art.

As articulated by the Supreme Court in KSR, an obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." 550 U.S. at ----, 127 S.Ct. at 1741.

“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 1741. Instead, the Supreme Court advised that “common sense” would extend the use of customary knowledge in the obviousness equation: “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

Posted by Patent Hawk at October 13, 2007 10:27 PM | Prior Art

Comments

“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

According to Roget's thesaurus:

"Main Entry: creative
Part of Speech: adjective
Definition: imaginative
Synonyms: artistic, clever, cool*, demiurgic, deviceful, fertile, formative, gifted, hep, hip*, ingenious, innovational, innovative, innovatory, inspired, inventive, original, originative, productive, prolific, stimulating, visionary, way out*
Antonyms: mindless, stale, uncreative, unimaginative, uninspired, unoriginal, untalented
Source: Roget's New Millennium™ Thesaurus, First Edition (v 1.3.1)
Copyright © 2007 by Lexico Publishing Group, LLC. All rights reserved.
* = informal or slang"

And:

"The ordinary and customary meaning "is the meaning that the term would have to a person of ordinary skill in the art in question."

So ordinary creative is a synonym for ordinary inventiveness and ordinary innovation. So one of average skill is defined by KSR as an ordinary inventor. The thesaurus defines ordinary as:

" Roget's New Millennium™ Thesaurus - Cite This Source - Share This
Main Entry: ordinary
Part of Speech: adjective 1
Definition: common
Synonyms: accustomed, customary, established, everyday, familiar, frequent, general, habitual, humdrum*, natural, normal, popular, prevailing, public, quotidian, regular, routine, settled, standard, stock, traditional, typical, usual, wonted
Antonyms: abnormal
Source: Roget's New Millennium™ Thesaurus, First Edition (v 1.3.1)
Copyright © 2007 by Lexico"

So a normal, typical, traditional inventor is now precluded from inventing something. Or to put it another way, if a typical inventor would have made an invention without undue experimentation then that invention is obvious. However an inventor is surely defined as one who has a statutary right to a patent. If not then using the word invention in a patent would itself raise questions of being made by an ordinary inventor and thus being obvious.

So that only leaves an abnormal or atypical inventor, presumably on a normal curve so many standard deviations from the average. Say for example that atypical here means the top 10% of inventors as sufficiently better than the average inventor. So that means that 90% of all patents must logically be invalid, because they must have been conceived by an ordinary innovator.

Even then working out the atypical top 10% of patents would be impossible. So isn't this KSR decision logically incorrect?

Posted by: MJC at October 13, 2007 11:30 PM

In reply to MJC, yes!
please read: Ordinary Skill in the Art [http://www.patenthawk.com/blog/2007/05/ordinary_skill_in_the_art_1.html] from May 9, 2007.

KSR was not only a semantic fiction, it was flippant disregard to statutory law.

Posted by: Patent Hawk at October 13, 2007 11:50 PM

Also a creation is an invention:

" Roget's New Millennium™ Thesaurus - Cite This Source - Share This
Main Entry: invention
Part of Speech: noun 1
Definition: creation
Synonyms: apparatus, black box*, brainchild*, coinage, concoction, contraption, contrivance, creativeness, creativity, design, development, device, discovery, doodad*, gadget, genius, gimmick, gizmo*, imagination, ingenuity, innovation, inspiration, inventiveness, novelty, opus, original, originality, resourcefulness
Source: Roget's New Millennium™ Thesaurus, First Edition (v 1.3.1)
Copyright © 2007 by Lexico Publishing Group, LLC. All rights reserved.
* = informal or slang "

Also:

Roget's New Millennium™ Thesaurus - Cite This Source - Share This
Main Entry: discovery
Part of Speech: noun 2
Definition: invention
Synonyms: algorithm, bonanza*, breakthrough, conclusion, contrivance, coup, data, design, device, find, finding, formula, godsend*, innovation, law, luck, luck out*, machine, method, principle, process, result, secret, theorem, treasure, way
Source: Roget's New Millennium™ Thesaurus, First Edition (v 1.3.1)
Copyright © 2007 by Lexico Publishing Group, LLC. All rights reserved.
* = informal or slang

A discovery is an invention according to the constitution:

"The Congress shall have power ... To promote the Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

So to be creative is to be innovative and to be inventive, and:

“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

So a person of ordinary skill is an ordinary inventor. The power rests with Congress to give this exclusive right to a patent, which the Supremes took away with the KSR decision. So isn't this decision unconstitutional?

An average inventor no longer has the right to an invention, yet he was granted this right in the patent act. Since the average inventor is no longer entitled to a patent but an atypical inventor is, then:

"Section 1. All persons born or naturalized in the United States, and subject to the jurisdiction thereof, are citizens of the United States and of the state wherein they reside. No state shall make or enforce any law which shall abridge the privileges or immunities of citizens of the United States; nor shall any state deprive any person of life, liberty, or property, without due process of law; nor deny to any person within its jurisdiction the equal protection of the laws."

So isn't the one of average creativity or inventiveness being discriminated against? Denied property? Denied equal protection? The term inventor becomes meaningless because it is now only defined by the non average inventor. It is like an IQ test, where IQ is defined as being whatever the test measures because some people are better at them than others.

To determine an average creativity by common sense is circular reasoning. Common sense is the sense of what is common or average. One can determine what is common creativity and thus what is a common or average inventor. But there is no dividing line between a common or average inventor and one above average enough to get a patent. The definition of average here is completely subjective, just as it is in mathematics with a normal curve.

Posted by: MJC at October 14, 2007 6:39 AM