Understanding Non-obviousness in Patent Law: Ingenuity Threshold and Determination Standard

1. Nonobviousness II Intro to IP – Prof Merges 1.26.12

2. “flash of creative genius” test Patent Act of 1952 Defining the “Invention” Threshold: Ingenuity Problem: articulating an objective and determinative standard; otherwise subjective and vague “I know it when I see it.” Non-obviousness reqt made express • flash of genius Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941)

3. 35 USC Sec 103 § 103. Conditions for patentability; non-obvious subject matter (a)[Even if novel, no patent], if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

4. 35 USC Sec 103 (a)[Even if novel, no patent], if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

5. Bench Scientist 1 year experience Bench Scientist 15 years experience Nobel Laureate Hobbyist Level of Ordinary Skill in the Art Factors that may be considered: • Educational level of the inventor • Type of problems encountered in the art • Prior art solutions to the problems • Rapidity with which innovations are made • Sophistication of the technology • Educational level of active workers in the field But Extraordinary Knowledge: A person of ordinary skill is presumed to know of all relevant prior art.

6. Comparison of Differences • Subject matter sought to be patented must be considered as a whole • Strict identity not required • less precision than §102

7. Upper Plate Hinge Plate Graham v. John Deere Upper Plate Prior Art Hinge Plate Is it obvious to move the hinge plate from under the shank to above the shank? Improved Design Enhanced flexibility

8. Claim Chart Invention Compared with Prior Art Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Smith Article X X X Jones Patent X X Adams Slicer X X INVENTIONNOT ANTICIPATED; BUT OBVIOUS?

9. Graham v. John Deere Is it obvious to move the hinge plate from position A under the shank to position 1 above the shank? C 3 2 B 1 A

10. The Graham Test • Scope and content of the prior art • Difference between the prior art and the claims at issue • Level of ordinary skill in the pertinent art • Factor 3 ½: “Secondary considerations” such as (1) commercial success; (2) long felt need; or (3) failure of others

11. Developments: Graham (1966) to Teleflex (2007) • Secondary considerations  “objective indicia”, the 4thGraham factor • “Teaching, suggestion or motivation test” (TSM test)

12. Invention Compared with Prior Art TSM Test Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Smith Article X X X Jones Patent X X X OBVIOUS TO COMBINE SMITH AND JONES?

13. KSR Int’l v. Teleflex, 550 US 398 (2007) The claimed invention at issue in this case is a straightforward combination of (i) a pre-existing type of “adjustable pedal,” and (ii) a pre-existing type of “electronic control” that is commonly used on newer cars.

15. Claim 4 A vehicle control pedal apparatus (12) comprising: a support (18) adapted to be mounted to a vehicle structure (20); an adjustable pedal assembly (22) having a pedal arm (14) moveable in force [sic] and aft directions with respect to said support (18);

16. a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); and an electronic control (28) attached to said support (18) for controlling a vehicle system; said apparatus (12) characterized by said electronic control (28) being responsive to said pivot (24) for providing a signal (32) that corresponds to pedal arm position as said pedal arm (14) pivots about said pivot axis (26) between rest and applied positions wherein the position of said pivot (24) remains constant while said pedal arm (14) moves in fore and aft directions with respect to said pivot (24).

17. ASSEMBLEY ARM SENSOR

18. District Court Opinion • It would have been obvious to combine the moveable gas pedal with well known automotive sensors that were widely available to those skilled in the art • Patent invalid

19. Federal Circuit opinion The specification of the ’565 patent indicates that prior-art pedal assemblies incorporating an electronic control suffered from being too bulky, complex, and expensive to manufacture. See ’565 patent, col. 1, ll. 48-53. It was this problem that the ’565 patent set out to address. See id. col. 2, ll. 2-5.

20. Fed Cir. We agree with Teleflex that the district court did not apply the correct teaching-suggestion-motivation test. We also agree that, under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper. -- Fed Cir case no. 04-1152, slip op at 10.

21. Under our case law, whether based on the nature of the problem to be solved, the express teachings of the prior art, or the knowledge of one of ordinary skill in the art, the district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent. See Kotzab, 217 F.3d at 1371; Rouffet, 149 F.3d at 1357. That is, the district court was required to make specific findings as to a suggestion or motivation to attach an electronic control to the support bracket of the Asano assembly.

22. KSR INTERNATIONAL CO. v. TELEFLEX INC. 127 S.Ct. 1727 (April 30, 2007)

23. [T]he Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to com bine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.

24. Asano Pedal

25. Sensor prior art • Integrated and freestanding pedal sensors, described and claimed in various prior art patents

26. Engelgau [Teleflex patent inventor] had not included Asano among the prior art references, and Asano was not mentioned in the patent’s prosecution. Thus, the PTO did not have before it an adjustable pedal with a fixed pivot point.

28. Supreme Ct. holding “We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.”

29. 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. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.

30. “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.”

31. A “court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

32. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

33. 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. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

34. PHOSITA and Nonobviousness A person having ordinary skill in the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4, and would have seen the benefits of doing so.

35. Graham v. John Deere Is it obvious to move the hinge plate from position A under the shank to position 1 above the shank? C 3 2 B 1 A

36. Merges, “Uncertainty and the Standard of Patentability,” 7 [Berkeley] High Tech. L.J. 1 (1993).