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November 14, 2012

Clamp Cramped

The core concept behind rule of law is that evidence is required to make a determination. Rule of law is turned into a sham when courts have the power to arbitrarily decide matters based upon their own bias. That sham is exactly what patent law (using the term "law" loosely) became with the 2007 Obzilla ruling by the Supreme Court (KSR; Obzilla a portmanteau for the Godzilla of obviousness). This week's episode involves a hand-waving incantation of obviousness by the ITC, affirmed by the CAFC...

Norgen v. ITC (CAFC 1211-1349) precedential; Judges Lourie, Linn (author), Moore (dissent)

5,372,392 claims "a 'four-sided, generally rectangular clamp' for connecting two fluid flow elements." The prior art that the ITC and CAFC allowed for invalidation, according to Judge Moore:

would not have been obvious to one of skill in the art in light of the SMC prior-art clamp. In particular, I cannot agree that the SMC prior-art clamp is "a four-sided, generally rectangular clamp."

Here is the mystical incantation, a denigration of the notion of rule of law, employed to steal this intellectual property away from its owner.

An invention may not be patented if it would have been obvious at the time of the invention to a person having ordinary skill in the art. 35 U.S.C. ยง 103(a). Obviousness is a question of law. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007); Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, several factual inquiries underlie the determination of obviousness: the scope and content of the prior art, the differences between the claims and the prior art, the level of ordinary skill in the art, and secondary considerations. Graham, 383 U.S. at 17-18. The burden is on the challenger of the patent to prove by clear and convincing evidence that the patent claims are invalid. Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 2242 (2011).

"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious. See Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir. 2008); In re Translogic Tech., Inc., 504 F.3d 1249, 1260 (Fed. Cir. 2007). However, the Supreme Court held that "[t]he obviousness analysis cannot be confined" to a rigid application of the teaching, suggestion, or motivation test. KSR, 550 U.S. at 419. The common sense and ordinary creativity of a person having ordinary skill in the art are also part of the analysis. Id. at 420-21. Moreover, "[o]ne 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." Id. at 419-20. "[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. This includes, but is not limited to, the problem motivating the patentee. See id. ("The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent's subject matter." (citation omitted)).

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

Id. at 421.

"Ordinary skill and common sense" would lead one to the conclusion that, under rule of law, some evidence should be necessary to indicate obviousness, in contrast to adjudicative bodies not being confined to evidence, but free to employ biased inference, which is what the current regime allows.

Posted by Patent Hawk at November 14, 2012 1:51 PM | Prior Art