Patent Law and Policy

1. Patent Law and Policy University of Oregon Law School Fall 2009 Elizabeth Tedesco Milesnick Patent Law and Policy, Fall 2009 Class 9, Slide 1

2. § 103 Obviousness If novelty and utility were the only fundamental requirements to obtain a patent (aside from the formal requirements of § 112, the timely filing of the application, and the very broad patentable subject matter requirement), relatively trivial technical advances over the prior art will be patentable. Policy reasons to avoid this: Where innovation is an obvious response to changes in economic, social, or technological circumstances, it is not fair or economically sensible to award exclusive rights to exploit changed circumstances.  On a basic level, prevents competition without meaningfully enriching the store of public knowledge. May compromise incentives to develop nonobvious inventions.  May remove from public domain essentially what was already owned by the public. Added administrative cost of search and license for obvious patents. Patent Law and Policy, Fall 2009 Class 9, Slide 2

3. § 103 Obviousness A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made. Patent Law and Policy, Fall 2009 Class 9, Slide 3

4. The basic parameters of obviousness • Several factual inquires: “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. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.” • We have been urged to find in 103 a relaxed standard, supposedly a congressional reaction to the "increased standard" applied by this Court in its decisions over the last 20 or 30 years. The standard has remained invariable in this Court. Technology, however, has advanced - and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard of a half century ago. It is but an evenhanded application to require that those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions… He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office. Graham v. John Deere (1966) Patent Law and Policy, Fall 2009 Class 9, Slide 4

5. Graham v. John Deere (1966) Patent Law and Policy, Fall 2009 Class 9, Slide 5

6. Calmar v. Cook Chemical, Colgate v. Cook Chemical (1966) Patent Law and Policy, Fall 2009 Class 9, Slide 6

7. Battery with magnesium and cuprous chloride electrodes, with water as fluid. The Prior Art • Marie Davy cell and De La Rue variations: battery with zinc anode and a silver chloride cathode with solution of ammonium chloride. • Wood patent: mentions magnesium as substitute for zinc but says “it had been generally accepted that magnesium could not be commercially utilized.” • Codd treatise: lists magnesium in an electromotive series table, but involves a cell containing an acid that would destroy magnesium within minutes. • Wensky patent: battery with zinc and cuprous chloride in zinc chloride solution, but no indication of water-activated system. • Skrivanoff patent: claims magnesium as an electrode, but with sulfuric acid. United States v. Adams (1966) Patent Law and Policy, Fall 2009 Class 9, Slide 7

8. The Prior Art • Asano: adjustable pedal with support structure that houses pedal so, when adjusted, pedal pivot point stays fixed. • Redding: sliding mechanism where both pedal and pivot point are adjusted. • ‘963: pedal with electronic sensor on pivot point. • Smith: to prevent chafing and wearing out, sensor should be on a fixed part of pedal assembly. • ‘068: modular sensor that can be taken off the shelf and attached to mechanical pedals. • Chevrolet: modular sensors attached to pedal support bracket adjacent the pedal and engaged with the pivot shaft. • Rixon: adjustable pedal assembly with an electronic sensor on pedal footpad. KSR v. Teleflex, Inc. (2007) Adjustable pedal with electronic sensor attached to support member of pedal Patent Law and Policy, Fall 2009 Class 9, Slide 8

9. “Neither the enactment of §103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a ‘patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.’ Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” • “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result,” whereas in Adams, “the elements worked together in an unexpected and fruitful manner.” KSR v. Teleflex, Inc. (2007) Patent Law and Policy, Fall 2009 Class 9, Slide 9