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January 21, 2009

Strong Showing

Friskit sued Real Networks for infringing patents for multimedia file playback over the Internet. Prior to KSR, the district court denied Real on obviousness. Post-KSR, in a renewed motion, Obzilla danced a terminal playback, killing them all. Friskit appealed, arguing three unanticipated limitations, along with "secondary considerations indicative of nonobviousness." The CAFC didn't second that. Friskit had to get real that it couldn't get Real.

Friskit v. Real Networks (CAFC 2007-1583) non-precedential

The asserted patents were 6,389,467; 6,725,275; and 6,735,628.

The appeals court agreed with Friskit that prior art Winamp was questionable in anticipating the "direct control" limitation. So much for "that portion of the district court's summary judgment analysis." The other limitations were well met, the CAFC panel found.

Ah, obviousness.

Given the insignificant differences between the prior art media players and the claims, the advanced state of the art at the time, and the lack of persuasive secondary evidence to justify a contrary result, we affirm the district court's summary judgment that the claims at issue would have been obvious at the time of the invention.

Throughout most of the litigation, Friskit contended that the inventive step of the patents-in-suit was the combination of pre-existing media search and playback technologies to create an on-demand, digital music service. Friskit acknowledged that it did not invent streaming media, playlists or media players, but emphasized that its patents "deliver the glue to put existing technologies together into a single application." That characterization of the claimed invention did not overcome the showing of obviousness, however, because, as the Supreme Court noted in KSR, the "predictable use of prior art elements according to their established functions" is likely to be within the grasp of one of ordinary skill in the art. KSR, 127 S. Ct. at 1740.

By the time of Real's second motion for summary judgment of invalidity, Friskit's theory of nonobviousness had shifted. Since then, Friskit has argued that the novel aspect of the claimed invention was the manner in which integration was achieved.

In light of IUMA Radio and the state of the art at the time of the invention, we agree with the district court that a system employing "programmatic control" and "direct control" of the media player by the network-based server would have been obvious to one of ordinary skill in the art.

Having lost the primary considerations, could a secondary put a finger in the dyke of the obviousness flood? Let's not be silly. "Strong" obviousness is like body odor: it stinks up the joint. A little perfume doesn't cut the stench.

We have frequently stated that "secondary consideration evidence" such as commercial success, copying, and long-felt need does not necessarily overcome a strong showing of obviousness, as was made in the present case. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 719-20 (Fed. Cir. 1991).

Secondary considerations are no hole card for a strong hand of obviousness.

Friskit tried commercial success, but "Friskit failed to show that the success of those products was attributable to the subject matter that it contends is nonobvious."

Friskit claimed Real copied Friskit, but...

Copying by the accused infringer, however, has limited probative value in the absence of evidence of failed development efforts by the infringer, B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1583 (Fed. Cir. 1996); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 317 (Fed. Cir. 1985), or of "more compelling objective indicia of other secondary considerations," Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1381 (Fed. Cir. 2000) (citing cases). As the district court noted, Friskit failed to make such a showing, and it also failed to introduce sufficient evidence to show that the copied technology fell within the scope of the asserted claims. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1366 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1580-81 (Fed. Cir. 1995). The trial court therefore properly gave little weight to Friskit's evidence of copying.

"Long-felt need" just isn't felt anymore by the courts.

Finally, Friskit sought to show that there was a long-felt need for the invention and that prior art technology taught away from the claimed method. To do so, Friskit pointed to market forces that allegedly discouraged software developers from creating on-demand media services... But none of Friskit's evidence suggested that Friskit's approach presented any technical challenge to one of ordinary skill in the art once market forces had created a demand for integrated, streaming media services. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) ("[T]he fact that the two disclosed apparatus would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter fact is telling on the issue of nonobviousness."); see also KSR, 127 S. Ct. at 1740 (cautioning against rewarding obvious variations precipitated by "design incentives and other market forces"); Joy Tech., Inc. v. Manbeck, 751 F. Supp. 225, 232 (D.D.C. 1990), aff'd, 959 F.2d 226 (Fed.


In understatement, Matt Buchanan at Promote the Progress asked, "Are secondary considerations of nonobviousness beginning to wither?" Withered, Matt. Past tense.

Posted by Patent Hawk at January 21, 2009 8:28 PM | Prior Art


Gary - great post. I'm not as ready to pronounce secondary considerations dead as you appear to be, but it's clear that the role played by objective indicia of nonobviousness is changing.

It's interesting that you see Friskit as showing that they have already withered. In contrast to other recent opinions, the Friskit opinion actually shows a degree of respect to secondary considerations - the court addressed them even though each of appellant's arguments of secondary considerations was flawed by evidentiary failures. It's citation of Leapfrog and the "strong case of obviousness" rationale is interesting in that light, but the court didn't reject the idea of secondary considerations out of hand.

Compare that approach to the one taken in Sundance v. DeMonte Manufacturing, where the court completely closed the door on all secondary considerations arguments in "strong cases." According to the court, "[s]econdary considerations of nonobviousness - considered here by the district court - simply cannot overcome this strong prima facie case of obviousness."

Withering. Not withered.

Posted by: J. Matthew Buchanan at January 22, 2009 6:45 AM