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February 28, 2016


Zoltek sued the US Air Force and Navy for making carbon fiber sheets for its aircraft claimed under Re 34,162. The federal trial court gave the government a ridiculous degree of deferrence, and found in its favor out of legal ignorance. Fortunately for Zoltek, the CAFC decided to play its role with decency.

Zoltek v. United States (CAFC 2014-5082) precedential; Judges Newnan (author), Clevenger, Moore

The Court of Federal Claims (CFC) found '162 "invalid for lack of written description." It stupidly decided so based upon rum arguments by government lawyers.

The government argues that the asserted claims are not supported in the specification because the specification does not state that these steps need not be performed by the same entity. The question of who performs steps of a fully described invention, including preparation of a known starting material, is not a matter of the written description requirement.
The purpose of the written description requirement is to assure that the public receives sufficient knowledge of the patented technology, and to demonstrate that the patentee is in possession of the invention claimed. See In re Skvorecz, 580 F.3d 1262, 1269 (Fed. Cir. 2009). The requirement is applied in the context of the state of knowledge at the time of the invention. Capon v. Eshhar, 418 F.3d 1349, 1358 (Fed. Cir. 2005). The written description "need not include information that is already known and available to the experienced public." Space Sys./Loral, Inc. v. Lockheed Martin Corp., 405 F.3d 985, 987 (Fed. Cir. 2005); see Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002) ("[The written] description is the quid pro quo of the patent system; the public must receive meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.").
The government does not argue that a person of ordinary skill would not be able to make or acquire the starting material based on the description in the specification.
The written description requirement relates to whether the patentee possessed the invention that is claimed. There was no suggestion that a person of ordinary skill would not have understood that Boyd was in possession of the invention that he claimed.
The CFC stated its concern that the reissue patent claims could be infringed by an entity that did not itself make the starting material, but purchased the known starting material from a commercial source. The CFC's emphasis on who might infringe the broadened reissue claims is an issue of infringement, not written description.

The CFC also found the patent obvious.

The '162 patent teaches carbonized sheets that "require no insulating elements such as glass fiber in order to adjust the surface resistances of the sheet product to a desired surface resistance volume." '162 patent, col.2 ll.7- 11. The novelty of such sheets was not disputed.

'162 instead went to an improved method of manufacture.

The CFC relied on the government's expert Dr. Sullivan, who cited references concerning carbon fiber products and developed a mathematical formula from which he generated a graph duplicating that in Figure 4 of the '162 patent. To produce this graph, Dr. Sullivan used data from the '162 patent record, from a Zoltek publication issued in 2000, and various references and articles.
On cross-examination, Dr. Sullivan agreed that these references alone do not establish obviousness.
Dr. Sullivan testified that he was not aware of anyone, including himself, who had previously used the mathematical formula he created to determine carbonization temperature-resistivity relationships. There is no teaching or suggestion in the prior art to select the data that Sullivan selected, and to plug the selected data into the mathematical equation that Sullivan devised.
Zoltek also points to several errors made by Dr. Sullivan, to which Sullivan admitted on cross-examination.
Dr. Sullivan conceded that there were errors in his calculations, stating that the reason was that he did not have complete information. That is not surprising, for there was not complete information in the prior art-- weighing against the government's argument that it would have been obvious to a person of ordinary skill to recreate the Boyd graph from known information. Dr. Sullivan's plaint that he could not accurately duplicate Boyd's discovery because of lack of information is powerful evidence of non-obviousness--not the contrary.
Neither the government's attorney argument, nor Dr. Sullivan's testimony, nor the opinion of the Court of Federal Claims, points to any suggestion in the prior art to select the data selected by Dr. Sullivan and create the mathematical formula to construct a graph to track Figure 4. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007) ("Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it 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. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.").
Even Dr. Sullivan called his reconstruction of Figure 4 "somewhat arbitrary." Trial Tr. 259:18. Hindsight reconstruction for litigation ends is not of probative value. See Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012) ("Precedent recognizes the pitfalls of judicial hindsight exercised at the time of litigation . . . .").
The Court has recognized "the distortion caused by hindsight bias" and "arguments reliant upon ex post reasoning" in determining obviousness. KSR, 550 U.S. at 421; see InTouch Technologies, Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) ("It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a 'jigsaw puzzle' together."); W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) ("To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.").
The government does not attempt to rehabilitate Dr. Sullivan's errors. Instead, the government's argument appears to be that since Dr. Sullivan is a renowned scientist in this field, and since Dr. Sullivan was able to reproduce the Figure 4 graph, it was obvious to do so. This was error, since, as we have repeatedly cautioned, "[t]hat which may be made clear and thus 'obvious' to a court, with the invention fully diagrammed and aided . . . by experts in the field, may have been a break-through of substantial dimension when first unveiled." Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988) (internal quotation marks omitted); see also KSR, 550 U.S. at 421 ("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") (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) as "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 use of hindsight") (internal quotation marks omitted); W.L. Gore, 721 F.2d at 1553 ("It is difficult but necessary that the decisionmaker forget what he or she has been taught at trial about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.").

Reversed and remanded.

Posted by Patent Hawk at February 28, 2016 2:12 PM | ยง 112