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January 31, 2011

Barbecued

5,697,775; 5,897,308; and 6,093,017 claim "lighters having extended lighting rods (useful for lighting barbecue grills, for example)" with "automatic child-safety mechanisms for preventing accidental ignition." Owner Tokai sued competitor Easton for infringement. Easton burned the asserted patents to the ground via summary judgment. Tokai thought it a pity to lose on validity, so it sang its ditty to a mostly tone-deaf appeals panel. Obzilla has a cook-out.

Tokai v. Easton Enterprises et al (CAFC 2010-1057, -1116) precedential

Tokai didn't get evidence in because of procedural error: failure to submit written reports for its experts, Jones and Sung.

Under Rule 26(a)(2)(B), the disclosure of expert testimony must be accompanied by a written report prepared and signed by the expert witness "if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony." Thus, Rule 26(a)(2)(B) contemplates an employee-expert exception to the written report requirement for "individuals who are employed by a party and whose duties do not regularly involve giving expert testimony." Torres v. City of Los Angeles, 548 F.3d 1197, 1214 (9th Cir. 2008).

Rule 37(c)(1) "gives teeth" to the written report requirement of Rule 26(a)(2)(B) by forbidding a party's use of improperly disclosed information at a trial, at a hearing, or on a motion, unless the party's failure to disclose is substantially justified or harmless. Yeti By Molly Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001). In reviewing the district court's decision to exclude the declarations, we are mindful to give "particularly wide latitude to the district court's discretion to issue sanctions under Rule 37(c)(1)." Id. ("Courts have upheld the use of the sanction even when a litigant's entire cause of action or defense has been precluded.").

With respect to Rule 26(a)(2)(B), Tokai failed to introduce evidence indicating that Sung qualified for the employee-expert exception.

In addition, Tokai's failure to submit the required written reports prejudiced Easton by preventing Easton from deposing Jones and Sung on the subject matter of their expert testimony.

Toasted experts aside, a look now at the patent burn site.

"Summary judgment is as available in patent cases as in other areas of litigation." Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1265 (Fed. Cir. 1991). Moreover, "a district court can properly grant, as a matter of law, a motion for summary judgment on patent invalidity when the factual inquiries into obviousness present no genuine issue of material facts." Ryko Mfg. Co. v. NuStar, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991); accord Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1571 (Fed. Cir. 1984); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed. Cir. 1983). Whether an invention would have been obvious at the time it was made is a question of law, which we review de novo, based on underlying facts, which we review for clear error. Media Techs. Licensing, LLC v. Upper Deck Co., 596 F.3d 1334, 1337 (Fed. Cir. 2010), cert. denied 79 U.S.L.W. 3201 (Oct. 4, 2010). When the facts underlying an obviousness determination are not in dispute, we review whether summary judgment of invalidity is correct by applying the law to the undisputed facts. Id.; Karsten Mfg. Co. v. Cleveland Golf Co., 242 F.3d 1376, 1384-85 (Fed. Cir. 2001).

We enter now into the realm of legal pyrotechnics. The law is that a granted patent is presumed valid, which may be overcome by clear and convincing evidence. Simple enough. Microsoft (v. i4i) finagled a Supreme Court review to lower the burden for prior art not considered by the patent examiner during prosecution. This is the backhand to case law that using prior art overcome during prosecution as invalidating enters in the nebulous environ of "an enhanced burden." The Supreme Court has taken an avid interest in patent cases in the past decade, owing to the craven incompetence of Congress and an overweening solicitude to mega-corporations.

Patent examiners, however supposedly specialized, are dullard bureaucrats. Where the rubber relevantly meets the road is that examiners mischaracterize prior art as a matter of practice, often to the vexation of prosecutors. But examiners also fail in the other direction, in not appreciating the invalidating power of a prior art reference. So, clear and convincing evidence seems particularly apropos across the board for any and all prior art thrown before a court, irrespective of whether it slid past an examiner's desk, cursory look-see or not. But, naturally, bureaucrats, including judges, stick up for each other, in a mi casa es su casa way, and so give a gumption to competence presumption.

Tokai first argues that the court failed to impose on Easton an enhanced burden to rebut the presumption of validity of the asserted claims, because some of the asserted prior art references were considered during prosecution of the asserted patents.

We agree with the district court that Easton did not have an enhanced burden of overcoming the statutory presumption of validity. Under 35 U.S.C. § 282, each claim of a patent shall be presumed valid; an accused infringer must prove invalidity by clear and convincing evidence. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004). Easton is correct in noting that, although the standard of proof does not depart from that of clear and convincing evidence, a party challenging validity shoulders an enhanced burden if the invalidity argument relies on the same prior art considered during examination by the U.S. Patent and Trademark Office ("PTO"). For example, we have stated that, "'[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job.'" PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984)). An added burden of deference to the PTO is not required, however, with respect to invalidity arguments based on evidence that the PTO did not consider. Am. Hoist & Derrick Co., 725 F.2d at 1360. Here, as the district court found and as Tokai itself acknowledges, not all of the asserted prior art was considered by the PTO. SJ Order, slip op. at 12-13.

On to the bonfire.

We turn next to the factual inquiries that form the background of any obviousness analysis under 35 U.S.C. § 103. Graham, 383 U.S. at 17-18. With regard to the first Graham factor, the scope and content of the prior art, the district court correctly found no genuine issue of material fact.

With regard to the second Graham factor, the differences between the asserted claims and the prior art, we again discern no error in the district court's analysis of the parties' contentions.

In sum, viewing all facts and reasonable inferences in the light most favorable to Tokai, we do not discern any error in the district court's analysis of the second Graham factor, the differences between the prior art and the asserted claims. The district court correctly found no dispute that the asserted prior art discloses each element of claim 1 of the '775 patent, claim 1 of the '308 patent, and claims 1, 3, and 4 of the '017 patent. The court also correctly found that the only difference between the asserted prior art and claims 10 and 13 of the '308 patent is the intended position of the thumb and finger for operating the lighter.

Although at the district court the parties disputed the third Graham factor, the appropriate level of skill in the art, neither party on appeal contends that the court erred.

With regard to the final Graham factor, secondary indicia of nonobviousness, the district court considered Tokai's evidence of commercial success and copying. Id. at 37-40. Regarding commercial success, this factor "may have relevancy" to the overall obviousness determination, Graham, 383 U.S. at 18, but a nexus must exist between the commercial success and the claimed invention. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) ("Evidence of commercial success . . . is only significant if there is a nexus between the claimed invention and the commercial success."). If commercial success is due to an element in the prior art, no nexus exists. Id. at 1312; see also Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (holding claimed invention obvious where patent holder "failed to show that such commercial success . . . was due to anything disclosed in the patent in suit which was not readily available in the prior art").

We agree with the district court with respect to the final Graham factor. Tokai proffered no evidence from which one could reasonably infer a nexus between its sales data and its utility lighters' automatic-locking features. SJ Order, slip op. at 38-39; see also Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985) (holding on summary judgment that even though commercial success could be deduced, it deserved no weight because a nexus was not established), overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en banc). However, even assuming the existence of a nexus, we see no error in the district court's determination that Tokai failed to establish "that any of these secondary factors are significant," SJ Order, slip op. at 37, in light of the strong showing of prima facie obviousness, as discussed infra. See Media Tech. Licensing, 596 F.3d at 1339 ("Even if [the patentee] could establish the required nexus, a highly successful product alone would not overcome the strong showing of obviousness."); Ryko Mfg. Co., 950 F.2d at 719 (holding on summary judgment that the claimed invention was obvious, despite "assum[ing] that a nexus existed," because "secondary considerations did not carry sufficient weight to override a determination of obviousness based on primary considerations").

From the foundation established by the aforementioned factual inquiries, we must determine whether the district court legally erred by invalidating the asserted claims for obviousness. In KSR, the Supreme Court stated that, in situations where "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). Such is the case here.

Ready comprehension of the invention, being a mechanical device, weighed heavily against novelty.

The district court correctly found no material factual dispute as to each of the Graham factors. By Tokai's own admission, the components required to assemble the claimed inventions are "simple mechanical parts that are well known in the art." Appellants' Opening Br. at 54. While that in itself does not render the claims obvious, KSR Int'l Co., 550 U.S. at 418, it is also undisputed that a need for safer utility lighters was recognized in the art as of the priority date. E.g., '775 patent col.1 ll.20-25 (noting that "a need exists for a lighting rod having enhanced safety characteristics" and that, "[t]o satisfy such a need, lighting rods provided with various safety devices have been proposed" in the prior art); Appellants' Combined Reply & Response Br. at 16 ("The district court correctly noted that the [asserted patents] identify a need for childresistant utility lighters. . . . To be sure, the problem in the art was how to make lighters more safe . . . ."). Furthermore, the parties agree that cigarette lighters and utility lighters are analogous arts. One of ordinary skill would thus be directed to the claimed safety utility lighters by combining available utility lighters with prior art automatic locking mechanisms on cigarette lighters. We have consistently stated that courts "may find a motivation to combine prior art references in the nature of the problem to be solved," and that "[t]his form of motivation to combine evidence is particularly relevant with simpler mechanical technologies." Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004); see also Rothman v. Target Corp., 556 F.3d 1310, 1319 (Fed. Cir. 2009); ProMold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996).

Another old-style patent, which stated a background problem area, solved by the claimed invention, is hoisted on its own petard.

Accordingly, the undisputed facts in this case-- including the state of the prior art, the simplicity and availability of the components making up the claimed invention, and an explicit need in the prior art for safer utility lighters--compel a conclusion of obviousness as to the subject matter of each of the asserted claims. KSR Int'l Co., 550 U.S. at 419-20 ("One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims."). A strong case of prima facie obviousness, such as that presented here, cannot be overcome by a far weaker showing of objective indicia of nonobviousness. See Media Tech. Licensing, 596 F.3d at 1339; Ryko Mfg. Co., 950 F.2d at 719.

Predictable. Literally. So the majority said.

Although a need in the prior art for safer utility lighters is not disputed, Tokai contends that the solutions to this problem were "not at all predictable" and required "radical modification" of the asserted prior art. We reject these arguments. One of ordinary skill in the art would not have viewed the subject matter of the asserted claims as unpredictable. As the Supreme Court recognized in KSR, the nature of the mechanical arts is such that "identified, predictable solutions" to known problems may be within the technical grasp of a skilled artisan. 550 U.S. at 421; see also Rothman, 556 F.3d at 1319 (stating that, in the predictable arts, a claimed invention may be invalidated more readily by showing "a motivation to combine known elements to yield a predictable result"). Moreover, it is undisputed that cigarette lighters and utility lighters are analogous arts and that a need for enhanced safety devices had been met in the field of cigarette lighters, as demonstrated by Floriot and Morris. It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters, as disclosed in Floriot and/or Morris, to fit a utility lighter as disclosed by Shike, even if it required some variation in the selection or arrangement of particular components. KSR Int'l Co., 550 U.S. at 417 ("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.").

The only missing claim limitation--the intended position of the finger and thumb when using the lighter--is nothing more than a predictable variation on the prior art. KSR Int'l Co., 550 U.S. at 417. In both the claimed invention and in Morris, the lighter is operated via sequential action of the finger and thumb; a mere reversal in the order of these actions does not confer patentability.

Scorch that family. Affirmed 2-1.

Careful with that match, Eugene (and apologies to Pink Floyd). The sharpest tack in the CAFC box, Queen Newman, respectfully lit one in dissent from the mistaken majority of Judges Lourie and Bryson.

The Tokai lighter has an ingenious safety design, whereby the device is simple to operate by adults but not by children, unlike prior art utility lighters, and locks automatically after use, unlike prior art utility lighters. The Tokai safety structure does not result from direct combination of the prior art. Nonetheless the district court, and now this court, hold on summary judgment that the asserted claims of the Tokai patents are invalid for obviousness. I must, respectfully, dissent.

Tokai's device provides two aspects of childproof safety: first, the device is not operable by a child's hand, and second, it locks automatically after use. The Tokai device requires an adult hand for concurrent twofinger operation, whereby the locking member is unlocked by the adult thumb while the trigger is simultaneously operated by the adult index finger; these steps must be concurrent, not sequential. After release the mechanism automatically returns to the locked position. The simplicity, the ease of operation, the child-proof effectiveness, and the safety of this design displaced the competition. The record states that Tokai has sold more than 100 million of these utility lighters in the United States; Tokai's Vice President testified that large retailers such as Wal-Mart told him that they were purchasing Tokai's lighters because of the improved child safety "as it relates to our mechanism versus the competition."

The district court held all of the claims invalid for obviousness, based on the combination of the Shike utility lighter, supra, which has no safety feature, with the safety features of a cigarette lighter patent to Morris, and/or a cigarette lighter patent to Floriot. However, these features, if combined, do not produce the Saito device.

[T]he Saito device is not a simple insertion of the Floriot or Morris cigarette lighter safety mechanism into a utility lighter, as in the combination of known structures exemplified in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Where, as here, the features of one reference cannot be substituted into the structure of a second reference, this weighs against obviousness. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) ("The fact that features of one reference cannot be substituted into the structure of a second reference may indicate that the claims were nonobvious in view of the combined teachings of the two references.").

Both Morris and Shike were cited in the '775 patent, and the specification of the '308 patent recognizes that "the aforesaid safety mechanisms for gas lighters cannot be directly applied to a lighting rod, which has a different structure." '308 Patent, col.1 l.52, col.2 ll.1-3. Floriot is cumulative to Morris, in offering a different safety mechanism for a cigarette lighter. "When an attacker simply goes over the same ground travelled by the PTO, part of the burden is to show that the PTO was wrong in its decision to grant the patent." Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984). Defendants have not met this burden.

The district court applied an incorrect standard. The determination of obviousness is not whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles. The question is whether it would have been obvious, without knowledge of the patentee's achievement, to produce the same thing that the patentee produced. This judgment must be made without the benefit of hindsight. It is improper to take concepts from other devices and change them in light of the now-known template of the patented device, without some direction in the prior art that would render it obvious to do so.

In a crowded and competitive field such as this is stated to be, a modification that achieves a valuable improvement is of significance in view of the many entrants seeking commercial advantage. See In re Hummer, 241 F.2d 742, 744 (C.C.P.A. 1957) ("applicant seeks a patent on only a narrow improvement. Progress is as important, however, in crowded arts as well as in those which are in the pioneer stage"). As the Hummer court recognized, incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.

The obviousness determination often presents a close question, as recognized by Judge Learned Hand: "Courts never tire, or at least in earlier times they never did, of expatiating upon the freshness of insight which observes a little, but fruitful, change which had theretofore escaped detection by those engaged in the field." Harries v. Air King Products Co., 183 F.2d 158, 162 (2d Cir. 1950). Precedent guides the decision-maker to take cognizance of the response of the marketplace to the invention. See Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 957 (Fed. Cir. 1997) ("The so-called 'secondary considerations' provide evidence of how the patented device is viewed by the interested public: not the inventor, but persons concerned with the product in the objective arena of the marketplace. . . . Such aspects may be highly probative of the issue of nonobviousness.") (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983)). The Court reiterated in KSR that "[s]uch 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." 550 U.S. at 406 (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985) ("Secondary considerations may be the most pertinent, probative, and revealing evidence available to the decision maker in reaching a conclusion on the obviousness/nonobviousness issue.").

Although the district court recognized the commercial success of the Saito utility lighter, the court declined to give it any weight, finding, on summary judgment, that there was no "nexus" between the Saito invention and its commercial success. SJ Order, slip op. at 38. The court erred in law, for "a prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent." Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The defendants did not dispute Tokai's evidence that its commercial success was due to its improved child-safety mechanism. It was improper for the district court to ignore the principle stated in Demaco and then resolve this material factual aspect against Tokai on summary judgment. See Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996) (vacating summary judgment of invalidity for obviousness, on the ground that a genuine issue of material fact existed as to whether a commercial success nexus was present).

The district court found that "copying is inarguably present here," but stated that it gave no weight to this finding, reasoning that copying is "only equivocal evidence of nonobviousness." SJ Order, slip op. at 39-40.1 While it is the province of the district court to determine the weight to be given to evidence of commercial success and copying, such evidence cannot be completely ignored. See Stratoflex, 713 F.2d at 1538 ("[E]vidence rising out of the so-called 'secondary considerations' must always when present be considered en route to a determination of obviousness. Indeed, evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.") (citations omitted); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983) ("objective evidence of nonobviousness . . . should when present always be considered as an integral part of the analysis").

1Despite the district court's recognition that Tokai had demonstrated copying, my colleagues find Tokai's evidence of copying "unpersuasive," stating that copying "requires evidence of efforts to replicate a specific product." Maj. Op. at 20. Defendants' internal documentation of its unsuccessful attempts to design around the Saito invention is such evidence. J.A. 1451-1457. The court improperly resolves this factual aspect against Tokai on summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (on motion for summary judgment "the evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor").

Tokai's evidence of commercial success and copying of the patented device, taken with the structural differences and the differences in operation between the prior cigarette lighter safety mechanisms and the Saito utility lighter safety mechanism, as well as the differences between the auto-locking Saito mechanism and manual locking prior utility lighters, created at least genuine issues of material fact bearing on obviousness. Summary judgment was improperly assessed by the district court, and is now incorrectly affirmed by this court. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (on motion for summary judgment the court must view the facts in the light most favorable to the non-moving party and give it the benefit of all reasonable inferences to be drawn from those facts).

My colleagues depart from the law governing determination of obviousness. The disputed facts cannot be adversely found on summary judgment. The question at least requires trial.

Exclusion of Mr. Sung as expert was singed.

Procedural error appears to have disadvantaged the patentee. The district court excluded from consideration on the summary judgment record the declaration of Mr. Kil Young Sung for failure to provide a written expert witness report. Federal Rule 26(a)(2)(B) provides that expert testimony must be accompanied by a written report "if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony." However, a party's employee who does not meet this Rule need not provide a written expert report. Tokai states that Mr. Sung was indeed an employee exempt from the Rule 26(a)(2)(B) report requirement, and that when the issue was raised in connection with the summary judgment proceeding, Tokai was improperly barred from showing his employee status. I must agree that this procedure was flawed.

Mr. Sung, as a designer of both utility lighters and cigarette lighters, offered a reasoned discussion of the prior art and its combination, relevant to the issues before the district court. The district court exceeded its discretion in denying Tokai the opportunity to establish the admissibility of this evidence under Rule 26(a).

Conclusion

The district court referred to the known need for an improved safety mechanism for utility lighters, and stated that this need was a reason to modify the prior art to make Tokai's improved lighter. To the contrary, the continuing need weighs against the obviousness of this successful device.

Nor is it reasonable to trivialize an improvement by its relative simplicity. To the contrary, the fact that this improvement eluded discovery, and that its advantages were immediately apparent to the marketplace and to the competition, weigh in favor of nonobviousness. At a minimum, summary judgment of invalidity was improperly granted. My colleagues err in sustaining that judgment.

Recent opinions have shown the CAFC to be a randomly competent judicial body. Panel composition itself can be dispositive, outside the merits of the case. This is but one of several examples in the past year. Patent holders should hold their noses and cross their fingers when before Judge Lourie. Judge Bryson, with a criminal law background, seems a random wild card. At the other end of stature: Queen Newman and Princess Moore, far more often than not, have shown beauty of mind in gracing the Court.

Posted by Patent Hawk at January 31, 2011 9:12 PM | Prior Art

Comments

Thanks for posting this case Hawk. Have not yet read the Decision but will now do so. Even more keen to read the Newman dissent because from your report I get the impression that she is a card-carrying supporter of the by now 30 year old EPO-PSA "could-would" test for obviousness.

By the way, when you write " clear and convincing evidence seems particularly apropos" I suspect that your word "apropos" is not quite right. Nor would "apt" be quite right. What were you trying to say?

Posted by: MaxDrei at February 1, 2011 12:43 AM

One thing clearly said - Lourie is bad news.

Posted by: Pedantic Pete at February 1, 2011 9:07 AM

"The Tokai device requires an adult hand for concurrent twofinger operation, whereby the locking member is unlocked by the adult thumb while the trigger is simultaneously operated by the adult index finger; these steps must be concurrent, not sequential"

She says that, but that is likely just her reading limitations into the spec AND claims. I doubt very seriously that the spec or claims actually state that, and embodiments covered by the claims likely do not require such, even implicitly.

Newman, go d help her, has got to start looking beyond the preferred embodiments.


"[T]he Saito device is not a simple insertion of the Floriot or Morris cigarette lighter safety mechanism into a utility lighter, as in the combination of known structures exemplified in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Where, as here, the features of one reference cannot be substituted into the structure of a second reference, this weighs against obviousness. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) ("The fact that features of one reference cannot be substituted into the structure of a second reference may indicate that the claims were nonobvious in view of the combined teachings of the two references."). "

I was afraid that might have been happening here. And I might agree with her if it is.

I can tell though that this is indicative of a case that I would have been eager to reject when I started, but then might not have rejected by the end.

"Although the district court recognized the commercial success of the Saito utility lighter, the court declined to give it any weight, finding, on summary judgment, that there was no "nexus" between the Saito invention and its commercial success. SJ Order, slip op. at 38. The court erred in law, for "a prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent." Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The defendants did not dispute Tokai's evidence that its commercial success was due to its improved child-safety mechanism. It was improper for the district court to ignore the principle stated in Demaco and then resolve this material factual aspect against Tokai on summary judgment. See Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996) (vacating summary judgment of invalidity for obviousness, on the ground that a genuine issue of material fact existed as to whether a commercial success nexus was present)."

Yeah see, promold was a bad decision. The existence of a nexus is a legal inquiry, not a factual one. But hey, nice try.

"1Despite the district court's recognition that Tokai had demonstrated copying, my colleagues find Tokai's evidence of copying "unpersuasive," stating that copying "requires evidence of efforts to replicate a specific product." Maj. Op. at 20. Defendants' internal documentation of its unsuccessful attempts to design around the Saito invention is such evidence. J.A. 1451-1457. The court improperly resolves this factual aspect against Tokai on summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (on motion for summary judgment "the evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor"). "

So wait, the court deciding that an undisputed fact (that their attempts to design around were unsuccessful) was not a fact directed to evidence of copying (since it was in fact evidence that attempts to not copy failed) is somehow resolving the "factual aspect" against the non-movant? The non-movant does not present a reasonable inference here, you cannot infer copying from the failure of non-copying. What sort of madness is this? SPARTTTTTTTTAAAAAAAAAAA?

Stop allowing people to make factual disputes out of every non-factual dispute that happens to be a dispute over a matter of law Newman.

"Tokai's evidence of commercial success and copying of the patented device, taken with the structural differences and the differences in operation between the prior cigarette lighter safety mechanisms and the Saito utility lighter safety mechanism, as well as the differences between the auto-locking Saito mechanism and manual locking prior utility lighters, created at least genuine issues of material fact bearing on obviousness. "

Issues of law are not genuine issues of material fact Newman. Sorry.

" The disputed facts cannot be adversely found on summary judgment. "

As I believe they addressed in the majority opinion, these facts were not disputed, indeed, they were specifically not disputed. The only thing that even maybe was "disputed" was the inferences that someone would make. However, the court did its duty in finding that it would be unreasonable to make such an inference.

This isn't rocket science Newman, stop trying to make it into rocket science.

In short, I might agree with your conclusion Newman, but stop fin with the way we get to that conclusion.

"Lourie is bad news."

maybe for patentees/applicants. For the rest of the world he's probably some of the best news they've had on this court for awhile.

Posted by: 6000 at February 1, 2011 3:05 PM

"The existence of a nexus is a legal inquiry, not a factual one. But hey, nice try."

It's a mixed question of law and fact. That's why we talk about "evidence" of secondary considerations. Evidence is anything that tends to make the existence of a material fact more or less likely.

Still don't understand the difference between evidence and facts, do you?

"The non-movant does not present a reasonable inference here, you cannot infer copying from the failure of non-copying."

Why not? At the very least the accused infringer's failed attempt to design around the patent may be relevant evidence, i.e. evidence that may make the fact that the accused infringer copied the patented invention because their design around efforts failed more likely. Copying is a material fact that bears upon the determination of obviousness and the issue of validity. If it was in dispute, summary judgment was not appropriate.

"Issues of law are not genuine issues of material fact Newman. Sorry."

The differences between the claimed invention and the prior art are facts. It's all part of those "factual inquiries" required by Graham. You may have heard of them. The scope and content of the prior art. The differences between the prior art and the claimed invention. The level of ordinary skill in the art. Secondary considerations when present.

But reading you throw around terms like "legal inquiry" and "genuine issue of material fact" when you clearly have no understanding of those concepts is still funny.

You're still that Damon Wayons character from "In Living Color." You know the one I mean, the guy in the prison cell using the big words completely wrong, but cracking us all up in the process.

Posted by: Long live J. Newman at February 1, 2011 3:39 PM

So, Long Live, Pete and 6000, Is it a "fact" that these barbecue igniters with their little plastic child-proof safety feature, sold in their millions at Wal-Mart, were made for pennies in China? Is it a "fact" that adding the little plastic detent to the otherwise standard trigger-fired igniter added a fraction of a penny to the cost of manufacture? Is it a "fact" that safety catches on devices with triggers are notoriously old? Is it a "fact" that fitting household objects with a child-proof safety feature (like a simultaneous sqeeze and turn feature to the caps of little tubs of pills) is notoriously old? How inventive is it then, to conceive of a trigger-actuated firing device with a child-proof safety?

Is that why the majority found the claim obvious, even without adequate "evidence"?

Should we be thanking the majority, China and Wal-Mart, that every American who likes to carry an extra heavy duty lighter in his pocket will from now on be even more free to choose a safe one that won't fire off prematurely?

Posted by: MaxDrei at February 2, 2011 1:16 AM

MaxDrei,

In spite of the picture you paint, or more correctly, precisely because of the type of picture you paint, we need to be vigilant about the danger of hindsight reconstruction.

If I may indulge in a level of "fact" discussion that you are at, isn't it a fact that even given all your facts, all those things notoriously old, that no one came up with this particular invention in that industry until Tokai? That the design, notwithstanding its particular cost, was an immediate commercial success? That the commercial success was widely copied?

MaxDrei, you display the classic mindset of "it's-too-easy-to-have-a-patent-because-patents-need-to-have-a-flash-of-genius-or-be-Nobel-Prize-winning-stuff". Why is that?

Posted by: Pedantic Pete at February 2, 2011 6:16 AM

Hi Pete, I would imagine that, even in your jurisdiction, there is by now caselaw on the notoriously old "why did nobody come up with it earlier" line of argument.

Tokai is the market leader, right? Since when did market leaders not enjoy commercial success? Since when did market leaders not practise incremental product improvements. Since when have we stopped getting incrementally and progressively more safety conscious and risk-averse?

The word "obvious" means "lying in the road". It is (I think) quite difficult to argue with a straight face that a child-proof safety on a firing trigger is something that is not lying in the road of increasing safety-consciousness.

But go to it, by all means. This is how patent lawyers earn their crusts.

I don't need hindsight. I don't like hindsight reasoning. But until we are able to go back in time, we are inevitably all afflicted by hindsight. What we can do though is to exclude ex post facto analysis. This we achieve by doing the obviousness analysis on the filing date of the claim and keeping strictly to an EPO-PSA TSM approach.

At the filing date, there were safety latches everywhere you look. Collectively, they generated at that date at least a hint of a suggestion or motivation to include one in a trigger on, also, something used in the company of children for lighting fires.

I act just as frequently for clients threatened by unimpressive patents of competitors, as for those applying for a patent, so I see both sides. You?

Posted by: MaxDrei at February 2, 2011 9:25 AM

Newman never fails to cough up nonsense.

http://www.google.com/patents/about?id=JSE3AAAAEBAJ&dq=4526532

Done is done no matter how it's done. Even when "children's hands" are inserted into the claim limitations sua sponte.

Posted by: Mud at February 2, 2011 10:56 AM

MaxDrie,

I am not sure you really understand what lying in the road means versus the concept of incremental improvements worth patenting. It appears that you think ALL incremental improvements are outside the scope of the patent system. Such is simply not true (regardless of whether you work both sides or not).

I actually like the EPO-PSA TSM method - even though it is not innoculated from the poison of hindsight reasoning that you like to think it is.

Posted by: Pedantic Pete at February 2, 2011 11:02 AM

Sorry Pete but I switch off when people pepper their sentences with stuff like "It appears that...." or "Apparently..." or "It seems that....".

Because it doesn't to me.

And I have learned that, if it doesn't "appear" to me, it doesn't "appear" to other readers either.

When the increment is in the direct path of technical progress, it's obvious. When it is off to one side or the other, it's not. I want progress on as broad a front as possible. So does every properly functioning patent system. What is on the road and what is off-road is what we debate when we argue "Obvious Y/N".

You write "worth patenting" and I think you mean "worth paying a patent attorney to file". But that's not my test of a properly functioning patent system.

We are done (it appears to me).

Posted by: MaxDrei at February 2, 2011 2:27 PM

"It's a mixed question of law and fact"

I'm not entirely convinced on that as you well know, as it seems that the "secondary considerations" are based on evidence, as opposed to facts which are, or could be drawn from that evidence. That is, you present your evidence, and it is or is not relevant to the legal determination of obviousness because it is, or is not evidence of one of the enumerated secondary factors. Notably, this takes place without having to make factual determinations based upon that evidence. Here, you will note, evidence of failing to not copy is not evidence of copying. Thus, technically, the evidence isn't even relevant to the secondary consideration at all because it is the wrong type of evidence.

But, if you insist, and I suppose you have some reason to believe this bizarro "secondary considerations are actually factual determinations to be made" view, I'll go with what you say. Although I would say more precisely, even if we go down this bizzaro road, it would be a legal inquiry based on underlying facts. And the factual portion is not under dispute in this case. Only the legal portion is being disputed.

"Evidence is anything that tends to make the existence of a material fact more or less likely. "

"Still don't understand the difference between evidence and facts, do you?"

I think you just explained it to me, and I'm pretty sure I have a pretty good grasp on it (and have for quite awhile), despite your constantly showing off your not grasping the ramifications of the difference very well between evidence, facts, legal determinations, and factors thereo, and constantly arguing against the determinations made by anyone except Newman and whatever lackeys she can muster that day.

"Why not?"

Because it is madness? And this isn't SPARTAAAAA? And the only reason to infer it is "because you say so"? Note that, by default we're not making an inference. You have to show a good reason to MAKE an inference not just an allegation that one should be made. Sure, there is a chance that a jury could decide as a factual finding that black is white, based upon testimony that the sky is blue, but is it reasonable to believe that a REASONABLE jury could make that factual finding? No.

But besides that, you're saying that evidence of "failure to not y" is relevant to a discussion about whether or not "y" is a fact which could reasonably be found in favor of the non-moving party. It isn't. It would be like saying that evidence that I failed to pickup cindy at a bar (perhaps a note explaining that cindy does not like me all that much) is evidence relevant to a factual determination of whether I did pickup sandy, or went home and got with my wife jenny later. Ridiculous, outrageous nonsense.

"At the very least the accused infringer's failed attempt to design around the patent may be relevant evidence, i.e. evidence that may make the fact that the accused infringer copied the patented invention because their design around efforts failed more likely."

It may be, in some dream world or SPARTAAAAAAAA. But not here irl. Here irl, we need evidence of copying, not of failure to not copy. I know this is hard for you to grasp, but why this is so is beyond me.

"Copying is a material fact that bears upon the determination of obviousness and the issue of validity. "

Copying is two things here in your bizarro interpretation of the secondary factors, a material fact, and a legal secondary cosideration within a legal determination to be made based on the facts as determined by the evidence. Here, there is no evidence relevant to copying as a fact. None. Whatsoever. Zip. Ziltch. Maybe in the next case we'll have someone introduce evidence that the sky is blue and claim that it is also relevant to whether or not copying did in fact take place. And we'll lol at them too.

I think I explained all that already, but I figured I'd just point it out again, hopefully clearly.

"The differences between the claimed invention and the prior art are facts. "

Yeah, and so far as I'm aware, they're undisputed facts in this case. Judge N just made up that they were disputed so far as I can see. Show me where in the record they were disputed. Senility at its worst I'm afraid. Funny that she didn't cite where they were disputed.

"But reading you throw around terms like "legal inquiry" and "genuine issue of material fact" when you clearly have no understanding of those concepts is still funny."

I admit, it would be funny if Judge N didn't do the same :(

" You know the one I mean, "

No, I didn't watch in living color. Maybe that's a sign that perhaps you have some senility ready to kick in as well. How old were you when you were watching this 1990 series? 40+?

Posted by: 6000 at February 2, 2011 3:46 PM

MaxDrei,

"I switch off when... Because it doesn't to me" - maybe you should try harder to see what is so obvious to the other person rather than simply switching off.

I think you will be amazed how much you can learn. PLus it is a hint that what follows is something you should know - you should be doubly attentive to figuring out why you do not.

As for your "direct path of technical progress", are you familiar with the television series called "Connections"? If you were to see that series, you would understand why I laugh at your notion of "direct path", because no such thing actually exists. You now confirm your lack of understanding of what lying in the road means versus the concept of incremental improvements worth patenting.

I have no clue what you mean by " I want progress on as broad a front as possible" - Do you want to be standing in a parking lot, with the "road" a full 360 around you?

I have no doubt that there is truth to "And I have learned that, if it doesn't "appear" to me, it doesn't "appear" to other readers either," but appealing to the lowest common denominator is a bit trite.

And no, I did not mean "worth paying a patent attorney to file", so stuff that straw away.

Posted by: Pedantic Pete at February 2, 2011 6:10 PM

6000,

“evidence of failing to not copy is not evidence of copying?”

Why Not?

“you're saying that evidence of "failure to not y" is relevant to a discussion about whether or not "y" is a fact which could reasonably be found in favor of the non-moving party. It isn't.”

Really? It isn’t? Are you sure?

“It would be like saying that evidence that I failed to pickup cindy at a bar (perhaps a note explaining that cindy does not like me all that much) is evidence relevant to a factual determination of whether I did pickup sandy, or went home and got with my wife jenny later.”

No actually it’s not like that at all.

Let’s say that y = you picked up Cindy. Then failure to not y, would = failure to not pick up Cindy. You failed to not pick up Cindy? Well it sounds to me like you picked up Cindy.

Can you give me a more coherent reason why a failed attempt to design around is not at least evidence of copying? Basically, you copied, but you tried to change something so that it wasn’t infringing, but you failed, it was infringing. So you copied, no?

Posted by: Smokey Joe at February 2, 2011 6:55 PM

6000,

“evidence of failing to not copy is not evidence of copying?”

Why Not?

“you're saying that evidence of "failure to not y" is relevant to a discussion about whether or not "y" is a fact which could reasonably be found in favor of the non-moving party. It isn't.”

Really? It isn’t? Are you sure?

“It would be like saying that evidence that I failed to pickup cindy at a bar (perhaps a note explaining that cindy does not like me all that much) is evidence relevant to a factual determination of whether I did pickup sandy, or went home and got with my wife jenny later.”

No actually it’s not like that at all.

Let’s say that y = you picked up Cindy. Then failure to not y, would = failure to not pick up Cindy. You failed to not pick up Cindy? Well it sounds to me like you picked up Cindy.

Can you give me a more coherent reason why a failed attempt to design around is not at least evidence of copying? Basically, you copied, but you tried to change something so that it wasn’t infringing, but you failed, it was infringing. So you copied, no?

Posted by: Smokey Joe at February 2, 2011 6:57 PM

"Well it sounds to me like you picked up Cindy."

/facepalm.

"Let’s say that y = you picked up Cindy. Then failure to not y, would = failure to not pick up Cindy. You failed to not pick up Cindy? Well it sounds to me like you picked up Cindy."

Try this on for size:

Let’s say that y = you picked up Cindy. Then not y = doing anything else in the whole entire world besides pick up Cindy, including picking up Julie, picking your nose, kicking JD in his retarded balls, etc. etc. on forever. Then failure to not y, would = failure to do anything in the world except pick up Cindy. You failed to pick up Julie? You failed to picked your nose? You failed to kicked JD in his retarded balls?

Well it sounds to me like I have no reason to believe you picked up Cindy, but we sure as f know what you failed at doing. Something besides picking up Cindy. Maybe, for intance, you may have failed at designing around. Or perhaps you failed at picking up Julie. Or perhaps you failed at picking your nose. Or perhaps you failed at kicking JD in his retarded balls.

Don't confuse "failure" with a logical "NOT" to cancel the other logical "NOT". And remember that "not y" is a logical grouping of things, in this case an infinite grouping of actions performed, not just a specific thing.

Although I suspect this to be JD posting I'm a little confused at how he'd do so well in his schoolin' with logic manipulation skills like that.

Posted by: 6000 at February 2, 2011 9:19 PM

6000,

I think that you are getting lost in the logic.

Consider: "evidence of failing to not copy is not evidence of copying?" and the retort was "Why not?"

The why not does not indicate the actuality, but rather, it indicates the possibility. Your hypothetical concerning picking up Cindy misses the actual logical issue.

The presence of the mere possibility rules out the conclusive statement inherent in the majority's ruling. In other words, because the mere possibility is not stamped out, this is an issue for the trier of fact.

Posted by: Pedantic Pete at February 3, 2011 7:01 AM

"6000,

I think that you are getting lost in the logic."

6tard's been off in the weeds for about 3 years now. Unfortunately the closest he is ever going to get to a legal education is a 2L at GW who won't give him the time of day.

Posted by: Long live J. Newman at February 3, 2011 7:27 AM

6000,

What you're saying now is that you meant to say: "evidence of a failure to x is not evidence of y". That would be true. But evidence of a failure to not y is clearly evidence of y. Evidence of a failure to not copy is evidence of copying. There is no question about that. The only "ridiculous, outrageous nonsense" here is your bogus logic.

Now, the real question is whether a failed attempt to design around is evidence of copying. I think it is. Basically, someone looked at the patent, and tried to make the same thing but change something insignificant, but they didn't even succeed in changing something, they made exactly what the patent covers. How is that not at least evidence of copying?

Posted by: Smoke Joe at February 3, 2011 8:14 AM

"Unfortunately the closest he is ever going to get to a legal education is a 2L at GW who won't give him the time of day."

Lulz, who might that be? I know a 1L at GW... and she's prepared to give me a lot more than the time of day lol. I feel kind of bad about never calling her back tho.

"What you're saying now is that you meant to say: "evidence of a failure to x is not evidence of y"."

Say it any way you want to, I don't care. You guys can argue with the majority.

"I think it is"

Because you're retarded. Go argue with the majority tard.

"The presence of the mere possibility rules out the conclusive statement inherent in the majority's ruling. "

O rly? So now evidence that the company had someone picking their nose also indicates copying? It indicates a possibility...

God you're retarded.

"How is that not at least evidence of copying?"

No. 1 it isn't because the only reason the patent covers what they came up with is because of an outlandishly large construction by the court. No. 2 it isn't because of the logic I just put forth above which you are too retarded to understand. My condolences.

I'm through discussing this with people who are obviously not even smart enough to reason their way into seeing that something other than evidence of copying is in fact not evidence of copying, even though they really really want it to be.

Posted by: 6000 at February 3, 2011 12:09 PM

"No. 1 it isn't because the only reason the patent covers what they came up with is because of an outlandishly large construction by the court. No. 2 it isn't because of the logic I just put forth above which you are too retarded to understand. My condolences."

You can argue with the claim construction if you want, but thats a separate issue. As for the "logic" you put forth above, I understand your "logic," I've explained why its completely bogus, and all you can do in response is call me "retarded." How old are you now?

"I'm through discussing this with people who are obviously not even smart enough to reason their way into seeing that something other than evidence of copying is in fact not evidence of copying, even though they really really want it to be."

Nowhere do you supply even one coherent reason why evidence of a failed attempt to design around, is not in fact, at least evidence of copying. Your entire reasoning consists of: "because it's not evidence of copying, it's something different, therefore it's not the same." Bravo son. Now go play with your Power Rangers.

Posted by: Smokey Jay at February 4, 2011 6:28 AM

Smokey,

6000 may have failed, but I have not.

It is subtle, but there is a difference between "possibility" and "actuality".

But don't be glum - you are way ahead of 6000.

Posted by: Pedantic Pete at February 4, 2011 9:07 AM

Pete,

I'm not glum, because not only am I way ahead of that juvenile 6000, but now that you mention it, I'm way ahead of you too.

I understand the difference between possibility and actuality. My point is and has always been that the evidence of a failed attempt to design around is, at the very least, evidence of copying, sufficient to defeat summary judgment.

In this case though, it seems to be rather strong evidence of copying. The evidence shows that the infringer was working directly off of the patent in making the infringing device.

Posted by: Smokey at February 5, 2011 10:25 AM

"is, at the very least,"

No, Smokey, you are mistaken. Evidence of a specific falls to the "actuality". You are not there. You are in the realm of "possibility". In this realm, it can be said to be "good enough", as this falls outside of the SJ providence and demands a trier of fact to determine (thus sufficient to defeat summary judgment) - as you say. Here you are right but for the wrong reason. I am supplying the correct reason.

As for additional pedantic discussion, your use of the phrase "working directly off" is clearly not the same thing as copying. There are instances of "working directly off" that are undeniably legal. Those instances are called "designing around". You cannot "design around" without knowing the area to be designed around.

Clear the smoke a bit before you proclaim that you are way ahead of me.

Posted by: Pedantic Pete at February 5, 2011 12:00 PM

Pete,

"As for additional pedantic discussion, your use of the phrase "working directly off" is clearly not the same thing as copying. There are instances of "working directly off" that are undeniably legal. Those instances are called "designing around". You cannot "design around" without knowing the area to be designed around."

My full use of the phrase was as follows: "working directly off of the patent in making the infringing device." This was not "designing around," rather, it was a failed attempt to design around. It was not "undeniably legal," but rather, undeniably illegal (unless one were to succeed in appealing the claim construction). But the issue is not legality or illegality, the issue is whether this is evidence of copying for purposes of obviousness. I see no reason why it should not be, and you, like 6000, have utterly failed to supply one.

"No, Smokey, you are mistaken. Evidence of a specific falls to the "actuality". You are not there. You are in the realm of "possibility". In this realm, it can be said to be "good enough", as this falls outside of the SJ providence and demands a trier of fact to determine (thus sufficient to defeat summary judgment) - as you say. Here you are right but for the wrong reason. I am supplying the correct reason."

There is no coherent point to rebut here. Apparently your game is to try to sound smart without actually saying anything.

Posted by: Smokey at February 5, 2011 7:00 PM

Nice to see you beat me at "my game" there smokey.

You've managed to say nothing, sound not smart, beat 6000, and be right for the wrong reason, and never even understand why.

There is no competing with that.

Posted by: Pedantic Pete at February 5, 2011 8:44 PM

Pete,

"You've managed to say nothing, sound not smart, beat 6000, and be right for the wrong reason, and never even understand why."

Actually I did say something. I explained why your point about "working directly off," was completely idiotic. You, once again, had no response, except to, once again, play your stupid and petty game.

I was hoping to have an actual reasoned discussion about the issue of whether a failed attempt to design around is evidence of copying, but you're just as bad as 6000, all you want is a 3rd grade pissing match.

Posted by: Smokey at February 6, 2011 12:31 PM

I can see the relevance of "copying" if the thread were to be about a copyright infringement case. You can't infringe copyright unless you have first seen the protected original. But in a patent case, it is surely irrelevant to the simple question "Infringement Yes or No" whether the accused infringer first saw the patented product.

Any patent system wants you to see the patent and the patented product, to take it away and make it different and better. That's how it promotes the progress.

I know that, in US patent law, studying the patented product then Designing Around is a white hat activity. I know that those who study the patented product then guess wrong what construction the court will put on the claim must bow their head to receive a Black Hat.

I'm thinking that, to hold the interest of a jury, every issue must be boiled down to a matter of equity, a Black/White, Winner/Loser question and that, if you fail to Design Around, that makes you a Loser. And, once you have been exposed as a Loser, you must be punished, by paying to the winner a triple damages forfeit. Is that it?

Posted by: MaxDrei at February 6, 2011 2:29 PM

"I was hoping to have an actual reasoned discussion"

You can start at the start and explain how your initial comments (sans the late addition of you late full phrase) is on point in the discussion in which my initial comments should be taken.

The NFL called - they want their goalposts back.

Posted by: Pedantic Pete at February 6, 2011 2:31 PM

MaxDrei

"I can see the relevance of "copying" if the thread were to be about a copyright infringement case. You can't infringe copyright unless you have first seen the protected original. But in a patent case, it is surely irrelevant to the simple question "Infringement Yes or No" whether the accused infringer first saw the patented product."

I agree that copying is irrelevant to the question of infringement. However, it is not irrelevant to the question of obviousness, and that is the context in which we are discussing it. Copying is a secondary consideration weighing against obviousness. The majority found no copying. The dissent pointed to the defendant's internal documentation showing that the infringing device was an unsuccessful attempt to design around the claimed invention, unsuccessful in that it ultimately was found to be infringing. The question is whether this is sufficient evidence at least to create a disputed issue of fact as to the secondary consideration of copying. I think it is, and no one has give any reason why not, (unless you count 6000's reason, the entirety of which was, "because its different").

"I'm thinking that, to hold the interest of a jury, every issue must be boiled down to a matter of equity, a Black/White, Winner/Loser question and that, if you fail to Design Around, that makes you a Loser. And, once you have been exposed as a Loser, you must be punished, by paying to the winner a triple damages forfeit. Is that it?"

No. But if copying is shown, that is one factor weighing against obviousness, and this factor should not be resolved against the plaintiff on summary judgment when there is solid evidence of copying.

Pete,

"You can start at the start and explain how your initial comments (sans the late addition of you late full phrase) is on point in the discussion in which my initial comments should be taken."

Late addition??? You can start by explaining how me quoting my exact original full phrase is a "late addition," and then you can refer back to those comments for an explanation of how it is on point. Then, if you still don't get it, I'd be glad to explain further.

Posted by: Smokey at February 6, 2011 9:57 PM

Thank you Smokey.

Every good answer raises as many questions as it answers. I can see how "peer group reaction", for example, might be a valid secondary indicator helpful for deciding obviousness. I can see how commercial success (with a nexus) might be indicative. I can see how "satisfaction of a long felt want" might be indicative. But copying? Why is not evidence of frantic "designing around" even more powerful as an indicator of non-obviousness than mere "copying"?

Posted by: MaxDrei at February 7, 2011 12:49 AM

"You can start by explaining how me quoting my exact original full phrase is a "late addition"

You added that phrase at February 5, 2011 10:25 AM.

You need to compare what you actually stated at February 2, 2011 6:55 PM with my response starting at February 3, 2011 7:01 AM

Seriously Smokey - does it take my cutting and pasting of the threads above for you to see through the haze?

Posted by: Pedantic Pete at February 7, 2011 10:04 AM

MaxDrei,

Interesting question. I'm not aware of any case law saying that designing around per se, that is, even successful designing around, is an indicator of non-obviousness, but from a pure policy perspective, perhaps it should be one. There is case law saying that copying is an indicator of non-obviousness. This is likely why the dissent pointed to the defendants' failed (because ultimately infringing) attempt to design around as evidence of copying, rather than evidence of designing around in and of itself.

Pete,

So you're asking me to compare my initial response to 6000, with your initial response to 6000? What specifically do you want me to explain?

And again, how is my full phrase a "late addition?" Because it wasn't in my initial response to 6000? So then, by that logic, what you just said is also a "late addition," because it wasn't in your initial response to 6000.

Did you just throw that "late addition" bit in there to distract from the fact that you took part of that phrase out of context and made a point that was completely asinine in the face of the full phrase, as I pointed out on February 5 at 12PM? Sure looks that way from here.

Posted by: Smokey Joe at February 7, 2011 10:37 PM

Smoke in your eyes prevents a true hindsight view.

Smokey, most people can get twenty twenty in their hindsight. Not you.

Posted by: Pedantic Pete at February 8, 2011 5:31 AM

I'm not aware of any case law saying that designing around per se, that is, even successful designing around, is an indicator of non-obviousness, but from a pure policy perspective, perhaps it should be one.

It's an indicator of a desire not to be sued. The real question of fact is whether you're designing around because you'd rather not suffer through the litigation process or you're designing around because you legitimately believe the patent is valid.

Same goes for copying. Sure, there's something desirable about the product you're copying, and there's some reason you didn't think of it yourself. But why? Is it because the device was technically non-obvious, or because it was easy to build but you couldn't have predicted its commercial success? Maybe it's because you don't have your own design or R&D department to begin with, so you were never going to invent it no matter how obvious it was.

If we say that every instance of commercial success proves non-obviousness, and any attempt to compete with a commercially successful product by either copying it or deliberately not copying it proves non-obviousness, we will never see an invalid patent in court.

Posted by: IANAE at February 8, 2011 8:33 AM

IANAE I read your "never see an invalid patent in court" and think it a good working definition of a uniquely "strong" patent system. Now isn't that what all America (except Microsoft and a few other misguided souls, like Professor Duffy) is crying out for, to save the nation from decline?

Posted by: MaxDrei at February 8, 2011 8:56 AM

Max, that's absolutely right. The only way to save the nation from decline is to strengthen the system that promotes innovation that mostly happens in other nations with much weaker systems.

It's clear that what's really ruining the US economy is the courts' insistence on not giving patents or injunctions to people who demonstrably don't deserve them. This "adjudicating from the bench" must stop.

Posted by: IANAE at February 8, 2011 9:21 AM

There's a simple solution - close the patent office and issue guns to everyone.

Last one standing wins.

Posted by: Pedantic Pete at February 8, 2011 9:39 AM

"issue guns to everyone"

What, and have the current gun owners whine about an imagined "taking" because their guns now have reduced value?

"Last one standing wins."

How can he win if we've closed the patent office and he therefore can't get a patent?

Posted by: IANAE at February 8, 2011 9:45 AM

He wins because no one is left standing to curb what he wants to do.

That is obvious.

As the immortal line goes (well, OK, I amended the line):

Patents? We don't need no stinking patents.

Posted by: Pedantic Pete at February 8, 2011 12:04 PM

He wins because no one is left standing to curb what he wants to do.

Which is great, as long as what he wants to do involves wilderness survival or necrophilia.

Posted by: IANAE at February 8, 2011 12:35 PM

He's the one with the guns - I am not going to question what he wants.

You be the brave one,and I will ask your corpse later what the answer is.

Posted by: Pedantic Pete at February 8, 2011 12:46 PM

IANAE,

"If we say that every instance of commercial success proves non-obviousness, and any attempt to compete with a commercially successful product by either copying it or deliberately not copying it proves non-obviousness, we will never see an invalid patent in court."

I don't hear anyone saying that "every" instance of commercial success or copying "proves" non-obviousness. Rather, copying and commercial success are factors that weigh against obviousness and must be weighed along with the Graham factors.

I agree with your point that its helpful, where possible, to look into the reason why the copying or designing around occurred, and that this might affect how much weight should be given.

I think in this case, where we have evidence of a failed attempt to design around, that is at least enough to raise a genuine issue of fact as to whether copying is present, and then perhaps the fact finder could look further into the motives for copying.

One last thing, I would dispute your characterization of designing around as "deliberately not copying," especially where the "design around" is ultimately found to be infringing. When one is designing around, one is working off of the patent, basically copying off of the patent, and then making an insignificant change in hopes of avoiding infringement. So one is attempting, at least, to copy particular features of the claimed invention, likely the most valuable ones.

Pete,

"Smoke in your eyes prevents a true hindsight view"

Well played. When all else fails, just make fun of the other guy's name.

Posted by: Smokey Joe at February 8, 2011 10:51 PM

"Well played. When all else fails, just make fun of the other guy's name."

Quite the opposite - I consider that icing on the cake.

Let us know when you complete your studies of set theory.

Posted by: Pedantic Pete at February 9, 2011 7:44 AM

One last thing, I would dispute your characterization of designing around as "deliberately not copying," especially where the "design around" is ultimately found to be infringing.

Designing around, when that's what you're actually doing, is a deliberate attempt to not infringe the patent claims. Just because you failed (for example, because the court construed the claims differently than your counsel) that doesn't make it any less a process of designing around.

When one is designing around, one is working off of the patent, basically copying off of the patent, and then making an insignificant change in hopes of avoiding infringement. So one is attempting, at least, to copy particular features of the claimed invention, likely the most valuable ones.

You're not "basically copying off the patent", because the only thing "copying" concerns itself with is the claims, and you're doing your best to not copy the claims. Whatever is in the spec and unclaimed is free for the public to use, and whether or not you use it should not have any implication for the validity of the claims.

Besides, if an "insignificant change" can avoid infringement, that's either the patentee's own fault for not claiming that insignificant change, or it's a job for the doctrine of equivalents (in which case your hopes of avoiding infringement are just that).

It doesn't matter if you're copying the "most valuable" aspects of the invention. What else would you expect the design-arounder to do but take the most valuable bit of the unclaimed territory? It's up to the patentee to claim what he thinks the valuable aspects are. The design-arounder is not responsible for the patentee claiming more narrowly than what is valuable to him.

The claims are the bounds of the patentee's right, and he has no recourse if someone else deliberately builds right up to his property line without crossing it. Nor does such practice imply that he has a property right at all. It simply means that someone has decided to take legal advice to avoid a business risk.

Posted by: IANAE at February 9, 2011 8:05 AM

IANAE,

Thank you for those interesting points.

Is your position then that internal documents showing a failed attempt to design around which ultimately leads to infringement is not sufficient evidence to raise a genuine issue of fact as to whether copying is present for purposes of obviousness? I'm still not convinced of that.

To me, the clearest example of an infringement which would not be copying is independent creation. On the other end of the spectrum, we have pure, intentional copying. It seems to me that a failed attempt to design around is somewhere in between. The intent was to get as close as possible to the claims without infringing, but what actually happened was that the claims were infringed.

A failed attempt to design around seems to me no less indicative of non-obviousness than a pure intentional copy. You point out that what is not claimed is free for others to use, and that the patentee has no recourse from a design around. All of this is true. But the reason that copying is indicative of non-obviousness has nothing to do with legality or illegality. There's nothing illegal about commercial success, but that too is a secondary consideration weighing against non-obviousness. The reasoning is more that, if this was obvious, then why did others need to copy it. That reasoning would seem to apply just as well to designing around or failed attempts to design around. So if a failed attempt to design around is evidence of non-obviousness, it seems close enough to copying to put the evidence in that "box" which has been established by precedent.

Of course, as you pointed out earlier, there are many reasons why one might copy or design around so this evidence certainly does not prove non-obviousness, it is just one factor to consider. But the issue here is whether that factor should be resolved as not present on summary judgment against the non-movant, when there is, it seems to me, sufficient evidence that the factor is present to raise a genuine issue of fact.

Posted by: Smokey Joe at February 10, 2011 12:07 AM

A lot of words Smokey - the gist of which is that you are moving closer to my original post (even if you don't like the way I put it).

Want another slice of humble pie, do you?

Posted by: Pedantic Pete at February 10, 2011 6:29 AM

Is your position then that internal documents showing a failed attempt to design around which ultimately leads to infringement is not sufficient evidence to raise a genuine issue of fact as to whether copying is present for purposes of obviousness?

Not exactly. My position is that the question of copying vel non (or designing around vel non) is not directly relevant to obviousness. What is potentially relevant is the state of mind of the person who decided to copy or design around, in particular why he did it instead of simply ignoring the patent and going about his business.

It would be much more relevant to find internal documents saying "wow, I wish we'd thought of that" or "they're stealing all our market share, so we need a competing product".

But the reason that copying is indicative of non-obviousness has nothing to do with legality or illegality.

No, it's the other way around. On those facts, the person is doing something other than infringing the claims, so his actions don't say anything in particular about the claims. You might as well say "he meticulously infringed patent A, which shows that patent B is obvious". You should fully expect the person to take what is given (something valuable and unclaimed) regardless of whether the claims are valid, because the validity of the claims would be no deterrent.

The reasoning is more that, if this was obvious, then why did others need to copy it.

Yes, exactly. We need to know why others copied it but didn't invent it before. If it's because they didn't think of making that, the claims are probably non-obvious. If they could have done it but simply didn't think anybody would buy it until the patentee sold a bunch of them, the claims might well be obvious.

The problem is that people (the courts included) seem to have lost sight of this. You see a rare glimmer of hope when they demand a nexus between the invention and the commercial success (for example), but so many people seem to think that sales figures or infringement alone are evidence of something patent-related, and they're not.

But the issue here is whether that factor should be resolved as not present on summary judgment against the non-movant, when there is, it seems to me, sufficient evidence that the factor is present to raise a genuine issue of fact.

There's only a genuine issue of fact if facts are in dispute, and if the case could go one way or the other depending on how those facts are decided. If there's no evidence of nexus at all, the evidence of copying or commercial success is completely irrelevant, and can properly be ignored on summary judgment.

Posted by: IANAE at February 10, 2011 7:49 AM

IANAE,

"No, it's the other way around."

You're saying that the reason that copying is relevant to non-obviousness has something to do with its illegality? I disagree with you on that. It's not about whether the copier thinks the claims are valid. It's about the invention. The fact that the copier did not think of the invention, but once he saw it, he felt the need to copy it (or design around it).

"We need to know why others copied it but didn't invent it before."

Yes I agree that the why is relevant, but this is a disputed factual issue.

"There's only a genuine issue of fact if facts are in dispute, and if the case could go one way or the other depending on how those facts are decided. If there's no evidence of nexus at all, the evidence of copying or commercial success is completely irrelevant, and can properly be ignored on summary judgment."

Yes but the point is that here there was some evidence of nexus, enough to survive summary judgment.

Pete,

First, thank you for your nuanced and wonderfully insightful contribution to the discussion, I've come to expect nothing less from you.

Second, I have in no way shape or form moved closer to your original post.

Posted by: Smoke Joe at February 10, 2011 6:28 PM

Smoke,

You have - you just lack the insight to appreciate it.

Posted by: Pedantic Pete at February 10, 2011 6:47 PM

Yeah? Then why don't you explain to me: (1) what your original position was, and (2) what I have said that indicates a change from my original position towards your original position.

Oh right, I forgot, articulating a clear position on anything would go against your m.o., which is mostly to write vague nonsense.

Posted by: Smokey Joe at February 10, 2011 7:06 PM

"I'm still not convinced of that."

That's because of what I said waaaaaaaaaaaayyyyyy up above. You're retarded.

Guess it took IANAE holding your hand to even get you to consider that as a possibility.

"To me, the clearest example of an infringement which would not be copying is independent creation."

Which is exactly what you have evidence of them TRYING to do here.

"It would be much more relevant to find internal documents saying "wow, I wish we'd thought of that" or "they're stealing all our market share, so we need a competing product"."

O gee wiz, it would have been relevant to find actual evidence of copying? Who'da thunk it? Agent Kane?

"You're saying that the reason that copying is relevant to non-obviousness has something to do with its illegality?"

I'll finish this one off for IANAE since he isn't around or got tired of talking to you. No, that isn't what he is saying. He simply quoted a passage near the passage he was actually responding to instead of the actual passage he was responding to. He was actually responding to:

"The intent was to get as close as possible to the claims without infringing, but what actually happened was that the claims were infringed."

Those are the "facts" he's referring to. And what he actually meant, though he was unspecific enough in saying it was:

"On those facts, the person is doing something other than INTENTIONALLY infringing what he understood the claims to mean (aka "copying"), so his actions don't say anything in particular about the claims."

Like I tried to explain to you before. They're intentionally doing something other than copying. They are in fact attempting to do exactly what you find to be the strongest evidence against copying, make something original. The evidence in this case is therefore about as valuable as evidence of them picking their nose in terms of determining if they were in fact copying.

"It's not about whether the copier thinks the claims are valid."

No, but it is about whether the alleged copier is actively attempting to do exactly something which he understands to be within the claims, aka copying.

The one thing here that seems to be your real problem is that you don't understand that copying doesn't include intentionally trying to not copy because for there to be a finding of copying you have to have been intentionally trying to copy what you understand from the claim, that is, in french, you were copying. You can't, as you would have it, copy by accident in this context.

There can be no finding by a court of copying where the evidence shows the person was intentionally trying to not copy. The court can't just say "Oh, whoopsie, you accidentally copied and now the claims are valid maybe, we'll just have to see after trial!". Fin ridiculous.

This is my last public service announcement for you tards and I only made it since IANAE was trying to hold your hand through this as you attempted to beat yourself in the face with it. I hate to see all that love and compassion for a disabled person go to waste.

Posted by: 6000 at February 10, 2011 8:44 PM

"[F]or there to be a finding of copying you have to have been intentionally trying to copy what you understand from the claim."

Well 6000, this does seem to be the crux of our disagreement. I don't see a strict intent requirement in copying as a secondary consideration. As MaxDrei pointed out, even successful designing around can be just as indicative of non-obviousness as copying. When the design around fails and turns out to be a copy, it is still just as indicative of non-obviousness. So I see no reason not to call it evidence of copying for purposes of secondary considerations.

You seem to think that a failed attempt to design around is equivalent to independent creation here. It's clearly not. Independent creation would be infringing with no knowledge of the patent or the patented product. It would actually be evidence of obviousness, because it shows that someone else independently thought of the same thing. A failed attempt to design around shows the opposite, that someone else couldn't (or at least, didn't) think of the same thing, but once they saw it, they felt the need to make the same thing.

But hey, you're good at calling me a retard, at least you've got that going for you. Run along now boy.

Posted by: Smokey Joe at February 10, 2011 9:32 PM

A couple more points:

"They are in fact attempting to do exactly what you find to be the strongest evidence against copying, make something original."

When someone is designing around, they are not exactly making something original. There is an important difference between an improvement and a design around which I think you and IANAE are failing to grasp. A design around is a change not for the sake of improvement, but merely for the sake of not infringing.

The thinking in a design around is: "I want to copy that invention. BUT I can't because it's patented, so I'm going try to get as close as possible but change something insignificant so that it's not covered by the claims." The important part for our purposes, the part which tends to show non-obviousness, is the first sentence, the "I want to copy that invention." The fact that the person was then smart enough not to outright copy the invention, but to try to design around instead, has absolutely nothing to do with whether the invention was obvious.

IANAE responded to this point by saying:

"If an "insignificant change" can avoid infringement, that's either the patentee's own fault for not claiming that insignificant change, or it's a job for the doctrine of equivalents (in which case your hopes of avoiding infringement are just that)."

These points are irrelevant to obviousness, especially where the design around fails. Here, in fact, the change was so insignificant that it did not succeed in avoiding infringement.

"No, but it is about whether the alleged copier is actively attempting to do exactly something which he understands to be within the claims, aka copying."

So 6000, you're saying that if the infringer here, had construed the claim correctly (the way the court did), and then done exactly the same thing, it would have been evidence of non-obviousness. But since the infringer was bad at claim construction, it's not evidence of non-obviousness. That, my friend, is "Fin ridiculous."

Posted by: Smokey Joe at February 11, 2011 12:01 AM

A failed attempt to design around shows the opposite, that someone else couldn't (or at least, didn't) think of the same thing, but once they saw it, they felt the need to make the same thing.

An attempt to design around, successful or not, shows only that someone else was aware of the patent. If I know a patent exists, I might try to design around the claims no matter how obvious they are, simply to avoid getting dragged into court. It's rather like building as close as you can to where you think your neighbor's property line is, possibly hiring a surveyor but without going to court to confirm exactly where the line is. All you're doing is taking as much as you can of what is apparently yours, without doing anything that will get you sued.

Whether or not you happened to build across the actual property line is relevant to infringement, but it's not necessarily relevant to whether your neighbor actually owns the land or where the property line actually is.

Yes I agree that the why is relevant, but this is a disputed factual issue.

It's a question of fact. Whether it's a "disputed factual issue" depends on whether any facts are actually contested in the particular case, and whether those facts would affect the outcome of the particular case depending on how they're decided.

If both parties agree on all the facts, or if the disputed facts would not affect the outcome of the case, the "why" is still relevant, but the case is perfectly appropriate for summary judgment.

There was no nexus in this case, because all the wonderful features Newman was gushing over, the ones that made the invention so terrific, weren't actually in the claims.

Posted by: IANAE at February 11, 2011 8:10 AM

"When someone is designing around, they are not exactly making something original. There is an important difference between an improvement and a design around which I think you and IANAE are failing to grasp. A design around is a change not for the sake of improvement, but merely for the sake of not infringing. "

Um, it can be both, tard.

"The thinking in a design around is: "I want to copy that invention. BUT I can't because it's patented, so I'm going try to get as close as possible but change something insignificant so that it's not covered by the claims." "

O rly? You don't know sht. Literally. It is as if you're a kindergartener walking into the room. The thinking, out loud, at my uncle's company which I happened to be privy to was: "We've been making this product and this dude just showed up accusing some people who use the same vendors as we do of infringing their patent(s) that looks somewhat similar to what we make. However, we're patent illiterate and don't know if we infringe or not or if the patent is valid or not. We don't want to be accused of infringing and maybe have to pay, so we'll get a lawlyer to tell us we're not infringing (so we're safe from accusations of willfully infringing) AND try to make some changes to the product so that it clearly could not be accused of infringing AND find prior art". Note that the above is nearly verbatim out of the CEOs mouth. It just so happened that they weren't infringing anyway, but their design changes also included an "improvement". Funny how that one real life situation hit on nearly all of your made up nonsensical points and blew them full of holes isn't it?

Gee, could this same thing have happened at other companys too? I guess maybe so. Is evidence that my uncle's company designed around, or failed to design around, evidence that they copied the patent or the patentees company's product? No. Tard. Is evidence that the instant company designed around, or failed to design around, evidence that they copied the patent or patentees product? No. Tard.

Bottom line, you don't know sht about what the thinking behind designing around is. You just made some up to suit your fancy.

Stop making ridiculous sht up and maybe you'll come to the correct conclusion.

"So 6000, you're saying that if the infringer here, had construed the claim correctly (the way the court did), and then done exactly the same thing, it would have been evidence of non-obviousness."

It MAY have been. But there are additional considerations. Note the whole nexus requirement.

"But since the infringer was bad at claim construction, it's not evidence of non-obviousness. That, my friend, is "Fin ridiculous.""

Bad at claim construction? You might not have noticed, but there is a great chance that the accused was better than the patentee at claim construction as his construction landed him in invalidity. Great work at construing a claim. He's just about as much of a tard as you are.

Here's how it hypothetically went down. Patentee brings patent against accused. Accused says, well we don't think your interpretation is right, and it would leave you open to invalidity, but even so, we'll try to design around. They are able to design around what they consider to be the proper claim construction. But they fail to design around the stretched and, they feel, likely invalid interpretation. Time comes for court. The patenetee comes in and says "hey, this is our construction of the claims, oh, and btw, it isn't obvious because they couldn't design around our super broad construction, where that construction does not involve a nexus with the designing around". The court says "lol", and then the rest you know, and is a completely reasonable outcome.

God, it is just so delicious smacking your weak as sht around, I simply cannot stop myself. I always did have a thing for taking candy from babes though. It is the most delicious kind.

Posted by: 6000 at February 11, 2011 10:51 AM

IANAE,

"An attempt to design around, successful or not, shows only that someone else was aware of the patent. If I know a patent exists, I might try to design around the claims no matter how obvious they are, simply to avoid getting dragged into court. It's rather like building as close as you can to where you think your neighbor's property line is, possibly hiring a surveyor but without going to court to confirm exactly where the line is. All you're doing is taking as much as you can of what is apparently yours, without doing anything that will get you sued."

You realize that this same logic could apply to copying. One could copy an obvious product as well. But copying is generally evidence of non-obviousness. If we know that someone copied, or have evidence that they copied, we don't say on summary judgment that they didn't copy.

6000,

Not only are you an a-hole, you're also wrong.

"Um, it can be both, tard."

No actually it can't. If it's an improvement, no one would call it a design around. They are mutually exclusive.

Your "real life situation" was first, an independent creation, the product was made before they knew of the patent. Then, an improvement. Its not a design around and thus not what we have here, not evidence of non-obviousness.

Go study, you don't want to fail out of your online university.

Posted by: Smoke Joe at February 11, 2011 9:36 PM

" no one would call it a design around. "

Oh really? Note, in the instant case, according to your definition they no longer even have evidence of a failure to design around. They would only have evidence of an "improvement". As I understand it, the accused design was an "improvement" in some ways, so since the term is mutually exclusive, it cannot be a design around. Right tard? So now you're left arguing that there actually was no evidence of a failure to design around. Brilliantly done tard.

You know what is funny? Every time I explain something to you you then manage to raise the level of your retardation to a new, as yet undreamt of level to justify your prior retardation. I suppose you're going to keep doing this until I just get tired of talking to you, or alternatively filling you in on everything in the entirety of patent law that you don't know.

Don't worry about it, its how all newbies start out. And I'm starting to get tired of it, so we'll just go with option no. 1 here shortly.

"the product was made before they knew of the patent"

Look tardface, you forgot about one crucial thing which I would have thought wouldn't have eluded even your razor (dull and used) sharp grasp of these situations. What is at issue in the real life scenario I presented to you? The new design. What of the new product they have designed? It is directly analogous to what happened in the instant case. They had an old product, and then made a new one in response to the patent. Same thing that happened in the instant case. And they're going to make the new product. Evidence exists that they tried to design around.

If they failed to design around the patent with their efforts they put in, because, say, of a court giving the claims a huge breadth that will land them in invalidity later, then is that new product design "copying"? No, of course not. And is evidence of it being a failure to design around, indicative of the non-obviousness of the patent? (indeed, we've already noted that it is something, an "improvement" that resulted from design around efforts, which is supposedly mutually exclusive with a "design around", according to your lame definitions lolololol, so there is obviously a failure to "design around" and evidence exists of this as well) Of course not, tardface.

In any event, enjoy chillaxin' with Newman in the dissent.

Posted by: 6000 at February 12, 2011 2:04 AM

Smoke,

You are blowing yourself.

"But copying is generally evidence of non-obviousness."

No. Copying can merely be evidence of laziness. The logical intersection with the obviousness state is only a probability function - not an absolute function. You really need to go back and learn your logic rules.

"If it's an improvement, no one would call it a design around. They are mutually exclusive."

Again - your logic is horribly wrong. The worst part here is that you are making even 6000 look smart. That's not an easy thing to do.

Posted by: Pedantic Pete at February 12, 2011 8:31 AM

"As I understand it, the accused design was an "improvement" in some ways."

An improvement over the patented products? Well I think you are mistaken about that, so that explains most of your asinine remarks above. The rest are explained by your apparent belief that the infringer had already independently created an infringing product before they learned about the patent. Not sure where you get either of those.

"No. Copying can merely be evidence of laziness. The logical intersection with the obviousness state is only a probability function - not an absolute function. You really need to go back and learn your logic rules."

Copying tends to show non-obviousness and should not be resolved as not present on summary judgment when there is solid evidence that it is present, (and by the way, the district court found that it was present). I never said that it definitively proves non-obviousness. I never said that it was an "absolute function." I said that it is "generally evidence of non-obviousness." You need to go back and learn how to read.

Posted by: Smokey Joe at February 12, 2011 9:24 AM

"An improvement over the patented products? Well I think you are mistaken about that, so that explains most of your asinine remarks above."

First of all, I didn't say an improvement over the "patented products". I said their efforts to design around ended up giving them an improvement, and in fact iirc (I'm not going to spend all day on your retardation) I meant over their previous design. That doesn't mean the improvement is over the "patented products" whatever the f those are, although I'll assume you mean the "claims in the instant patent". Whether or not any of the product designs that the accused company had pre-patent notice were in fact "patented products", i.e. covered by some claims, we really don't know, and is irrelevant. And likewise, whether or not the improvement thereupon was an improvement upon the "patented products" is irrelevant. In any event, try reading, oh, I don't know, the decision. Think I'm mistaken all you want until you go and read it yourself.

Note finally that the "improvement" in my little irl example was an "improvement" not over the "patented products" or "claims" but an improvement over my uncle's company's own previous design. In fact, since we note in the irl example it is doubtful that the patent even comes close to covering any of their designs so we cannot say if it was an improvement upon those "patented products" aka claims. So can it now be called a "design around"? Or can it still only be labelled "an improvement"? LOLtard your mind is like blowing the f up right now I bet. Trying to concoct retardation to account for your previous retardation is going to be a tall order this time. Somehow I'm guessing you'll attempt it anyway.

"The rest are explained by your apparent belief that the infringer had already independently created an infringing product before they learned about the patent."

I didn't say it was an infringing product before. It may have been. It may not have been. It is totally irrelevant either way. Blatantly they created some device with a safety feature that someone gave them some patent sht about, or they heard that there could be some patent sht on the horizon, so they tried to design around, we have evidence of that since they failed in their attempts. So perhaps at least one of their prior designs was infringing. Maybe, maybe not, we'll never know. But it really doesn't matter either way. Like I said, the air of retardation around you is suffocating.

Stop nitpicking about irrelevant nonsense and man up to getting your arse handed to you. Jez leweez. It'll be the only smart thing you've done all thread. There's no shame in it nubcakes. Just because I'm a ass to you doesn't mean you can't come clean and be like "fine, fine truce, truce, I was just wanking in the thread and got caught with my pants around my ankles". We'll all just have a good laugh at you and go about our way. And we're already having a good laugh at you anyway so you shouldn't fear that.

Posted by: 6000 at February 12, 2011 3:41 PM

I'm actually not nitpicking about irrelevant nonsense, you f-ing dumb-a d-bag.

"Blatantly they created some device with a safety feature that someone gave them some patent sht about, or they heard that there could be some patent sht on the horizon, so they tried to design around, we have evidence of that since they failed in their attempts."

So you are assuming that they had already created something infringing or at least close to infringing. This is a possibility. However it's also possible that they had created no such product, but when they saw the patented products, or perhaps when they saw the patent, they decided to make basically the same thing but design around so that it wasn't infringing. The later scenario would be evidence of non-obviousness. I see nothing in the decision that "blatantly" indicates that the former scenario is what happened.

"'patented products' whatever the f those are"

The products protected by the patent. In this case Tokai's patented lighters. Really? I had to explain that to you?

When I was speaking to the difference between an improvement and a design around, I was referring to an improvement over the patented products or the claims, that is, a change away from the claims for the sake of improvement vs. a change away from the claims simply to avoid infringement.

Alright, I'm done with this. Enjoy the last word, if you want. You are both wrong and an a-hole.

Posted by: Smokey Joe at February 12, 2011 9:00 PM

But copying is generally evidence of non-obviousness.

No, copying is generally evidence of commercial success. To a lesser extent, it's also evidence of laziness in designing new products.

Most people who copy someone else's product exactly probably don't have their own R&D department. That kind of weakens the argument that if it was obvious they would have thought of it first.

If it's an improvement, no one would call it a design around. They are mutually exclusive.

Even an improvement might infringe the original patent, so the patent might still need to be designed around. Even if the claimed device was so obvious you independently invented it before that patent application was published, you might still design around it just so you don't get dragged into a lawsuit.

There's no reason a company couldn't both improve its products and manage its litigation exposure at the same time. I've seen it done before.

However it's also possible that they had created no such product, but when they saw the patented products, or perhaps when they saw the patent, they decided to make basically the same thing but design around so that it wasn't infringing. The later scenario would be evidence of non-obviousness.

However, it's also possible that they decided to make basically the same thing when they saw how well it was selling. Which could well mean that the invention itself was obvious but nobody did it because they didn't realize so many people would buy it. Or nobody did it because they didn't think they could get a patent, since it's basically taking the safety from one lighter and putting it on another lighter.

Posted by: IANAE at February 14, 2011 8:19 AM