October 13, 2013
Broadcom nailed Emulex for infringing 7,058,150, claiming a data transceiver. On appeal, the CAFC twisted now canonical case law regarding obviousness handed down by the Supreme Court in KSR v. Teleflex (2007). Thus the CAFC continues to build self-contradictory case law.
Broadcom v. Emulex (CAFC 2012-1309) precedential; Judges Rader (opinion), Lourie, Wallach
While a prior art reference may support any finding apparent to a person of ordinary skill in the art, prior art references that address different problems may not, depending on the art and circumstances, support an inference that the skilled artisan would consult both of them simultaneously. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (finding invention nonobvious when none of the "reference[ s] relate to the [problem] described in the patents" and no evidence was proffered "indicating why a person having ordinary skill in the art would combine the references").
In KSR, the Supreme Court did not countenance the ridiculous inquiry of considering whether a skilled artisan would consult different references simultaneously. Quite the contrary. SCOTUS in KSR:
[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.
The law under KSR is that if a combination can be found in the prior art, it is to be considered obvious unless there is evidence to the contrary.
[W]hen a patent "simply arranges old elements with each performing the same function it had been known to perform" and yields no more than one would expect from such an arrangement, the combination is obvious.
A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
The analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.
A person of ordinary skill is also a person of ordinary creativity, not an automaton.
An invention is not obvious just "because all of the elements that comprise the invention were known in the prior art;" rather a finding of obviousness at the time of invention requires a "plausible rational [sic] as to why the prior art references would have worked together." Power-One, 599 F.3d at 1351; Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009) ("An obviousness determination requires that a skilled artisan would have perceived a reasonable expectation of success in making the invention in light of the prior art.").
Here the CAFC sets a considerably higher bar to get over than the Supremes did in KSR, where "any need or problem" was sufficient for motivation to combine. SCOTUS said to consider what would have motivated a combination, while the CAFC here goes further, to have to demonstrate "why the prior art references would have worked together." KSR:
[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.
A person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.
What has long been called "secondary considerations of non-obviousness" gets promoted by the CAFC, at least for this ruling, as front and center in the line-up.
Objective indicia of nonobviousness are "not just a cumulative or confirmatory part of the obviousness calculus but constitute independent evidence of nonobviousness . . . [and] enable the court to avert the trap of hindsight." Leo Pharm. Prods., Ltd. v. Rea, No. 2012-1520, 2013 WL 4054937, at *11 (Fed. Cir. Aug. 12, 2013) (internal citations and quotation marks omitted). Here the district court averted the trap of hindsight by considering the evidence of the objective indicia as part of the obviousness analysis, and not just as an afterthought. See id. (citing In re Cyclobenzaprine Hydrochloride Extended- Release Capsule Patent Litigation, 676 F.3d 1063, 1073 (Fed. Cir. 2012)).
Substantial evidence supports the jury's finding of commercial success.... The jury's finding of long-felt, but unsolved need is also supported by substantial evidence.
"Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such 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."
Finally, the reminder from the Supreme Court about hindsight. In this case, the CAFC applied hindsight against finding obviousness.
A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. See Graham, 383 U. S., at 36 (warning against a "temptation to read into the prior art the teachings of the invention in issue" and instructing courts to "'guard against slipping into the use of hindsight'" (quoting Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F. 2d 406, 412 (CA6 1964))). Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.
District court affirmed.
Posted by Patent Hawk at October 13, 2013 11:40 PM | Prior Art