Did the Connell case create a bright line rule, that was affirmed in i4i?
Within a post titled A Comeback for the Federal Circuit: This Term, SCOTUS Is No Longer the ‘Court of Correction’, one finds a discussion of the i4i case, labeled the most important of three recent Supreme Court reviews of CAFC rulings:
The most important of the three rulings, and perhaps the most surprising, was the Supreme Court’s decision in Microsoft Corp. v. i4i Ltd. That ruling addressed a long-standing legal doctrine: For a court to declare a patent invalid, the party seeking invalidity must prove its case by more than a preponderance of the evidence. The party must provide clear and convincing evidence of invalidity. (See “Tilting the Patent Scale,” April, page 20.)
In 1983, the Federal Circuit held in Connell v. Sears, Roebuck & Co. that this clear-and-convincing standard applied in all cases, even when the evidence of invalidity had not been considered by the U.S. Patent and Trademark Office.
When the Supreme Court granted certiorari in Microsoft, many experts anticipated it would overturn Connell. That case created a bright-line rule for patent suits, and the high court had repeatedly rejected such rules in recent years, in favor of more flexible approaches.
**In fact, one will not find mention of the Connell case in the Supreme Court i4i case. Rather, the Supreme Court relied on Supreme Court precedent: Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U. S. 1 (1934), was deemed authoritative. There, tracing nearly a century of case law, the Court stated, inter alia, that “there is a presumption of [patent] validity [that is] not to be overthrown except by clear and cogent evidence.” As to the CAFC, the Supreme Court discussed the 1984 case of American Hoist, 725 F. 2d 1350 (CA Fed. 1984) .
**The Supreme Court also rejected Microsoft’s argument that a preponderance standard must at least apply where the evidence before the factfinder was not before the PTO during the examination process. Supreme Court cases do not indicate, even in dicta, that anything less than a clear-and-convincing standard would ever apply to an invalidity defense. The Connell case has some relevance to this second point, but the Connell case (which was an affirmance) was not resolved on this point.
**The issues before the CAFC in the 1983 Connell case [722 F.2d 1542 ] were
(1) Whether there was error in granting the motion for judgment notwithstanding the verdict.
(2) Whether denial of costs to Sears amounted to an abuse of discretion.
As to remarks on "clear and convincing" in the CAFC decision, the CAFC corrected a misunderstanding by the lower court, a misunderstanding which did not change the outcome ["The grant of JNOV is affirmed" ]:
The opinion also says that when "any relevant" non-considered art is introduced, the burden upon the patent challenger is thereby changed from a requirement for clear and convincing proof to one of proof by a mere preponderance. Proof, however, relates not to legal presumptions, but to facts. The patent challenger may indeed prove facts capable of overcoming the presumption, but the evidence relied on to prove those facts must be clear and convincing. Thus, the introduction of art or other evidence not considered by the PTO does not change the burden and does not change the requirement that that evidence establish presumption-defeating facts clearly and convincingly.
PatentlyO had quoted from the i4i brief:
Throughout its existence, the Federal Circuit has held that the clear-and-convincing standard may be more easily satisfied with references the PTO did not consider. See, e.g., Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1549 (Fed. Cir. 1983)
**The CAFC in Connell criticized the district court decision at several points. For example, on obviousness:
The opinion says a patent is invalid if it "subtracts from former resources freely available to skilled artisans", citing Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950). The meaning of the phrase is obscure. If it means an invalid patent, if enforced, would subtract resources that would otherwise be available, it is a mere truism. If it means that upholding a multi-element claim as valid "subtracts" those elements (resources), it is untrue. All such elements remain fully available, albeit not in the particular arrangement claimed or in appropriate equivalent arrangements.
26
The phrase "patent monopoly" appears at various points. Under the statute, 35 U.S.C. Sec. 261, a patent is a form of property right, and the right to exclude recognized in a patent is but the essence of the concept of property. Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed.Cir.1983).
27
The opinion says anticipation may be shown by less than "complete anticipation" if one of ordinary skill may in reliance on the prior art "complete the work required for the invention", and that "it is sufficient for an anticipation 'if the general aspects are the same and the differences in minor matters is only such as would suggest itself to one of ordinary skill in the art.' " Those statements relate to obviousness, not anticipation. Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim. Soundscriber Corp. v. U.S., 360 F.2d 954, 960, 148 USPQ 298, 301 (Ct.Cl.1966). A prior art disclosure that "almost" meets that standard may render the claim invalid under Sec. 103; it does not "anticipate." Though it is never necessary to so hold, a disclosure that anticipates under Sec. 102 also renders the claim invalid under Sec. 103, for "anticipation is the epitome of obviousness," In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982). The reverse is not true, for the need to determine obviousness presumes anticipation is lacking. [IPBiz notes the statement about the presence of anticipation creating obviousness is incorrect.]
28
The opinion says that where a "combination" patent is involved the "linchpin" is whether the "aggregation produced a new or different result or achieved a synergistic effect." There is no support for those statements in the statute. There is no classification entitled "combination patents." Virtually every invention is a combination of elements or process steps, and synergism, or its equivalent "new and different result," is not required for patentability. Chore-Time Equipment, Inc. v. Cumberland, 713 F.2d 774, 218 USPQ 673 (Fed.Cir.1983); Bowser, Inc. v. U.S., 388 F.2d 346, 156 USPQ 406 (Ct.Cl.1967). See Miller, "Factors of Synergism and Level of Ordinary Skill in the Pertinent Art in Section 103 Determinations," 8 APLA Jrl 321 (1980).
**In passing, the Connell case also involved an issue of inequitable conduct:
It is undisputed that Connell concealed from the PTO at least the five prior art patents he received from the patent lawyer he first consulted and who advised that his invention might not be patentable. Connell then sought new counsel, who filed and prosecuted the application and testified at the trial.
AND
Sears' brief cites recent cases, dealing with the current and uncomprising duty of candor and good faith set forth in 37 CFR Sec. 1.56(a). It is regrettable but true that the present standard was not earlier recognized, promulgated, and enforced. The earlier standard described by the witness apparently led him to find room for the kind of gamesmanship practiced in connection with the Connell application pre-1969, as reflected in his testimony.
**Of the matter of --bright-line rule -- cases, it is true that the Supreme Court rejected a bright-line rule proposed by the CAFC in Festo. However, the exceptions created by the Supreme Court were of marginal relevance in practice.
Cross-reference
SCOTUS Is No Longer the ‘Court of Correction’
The most important of the three rulings, and perhaps the most surprising, was the Supreme Court’s decision in Microsoft Corp. v. i4i Ltd. That ruling addressed a long-standing legal doctrine: For a court to declare a patent invalid, the party seeking invalidity must prove its case by more than a preponderance of the evidence. The party must provide clear and convincing evidence of invalidity. (See “Tilting the Patent Scale,” April, page 20.)
In 1983, the Federal Circuit held in Connell v. Sears, Roebuck & Co. that this clear-and-convincing standard applied in all cases, even when the evidence of invalidity had not been considered by the U.S. Patent and Trademark Office.
When the Supreme Court granted certiorari in Microsoft, many experts anticipated it would overturn Connell. That case created a bright-line rule for patent suits, and the high court had repeatedly rejected such rules in recent years, in favor of more flexible approaches.
**In fact, one will not find mention of the Connell case in the Supreme Court i4i case. Rather, the Supreme Court relied on Supreme Court precedent: Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U. S. 1 (1934), was deemed authoritative. There, tracing nearly a century of case law, the Court stated, inter alia, that “there is a presumption of [patent] validity [that is] not to be overthrown except by clear and cogent evidence.” As to the CAFC, the Supreme Court discussed the 1984 case of American Hoist, 725 F. 2d 1350 (CA Fed. 1984) .
**The Supreme Court also rejected Microsoft’s argument that a preponderance standard must at least apply where the evidence before the factfinder was not before the PTO during the examination process. Supreme Court cases do not indicate, even in dicta, that anything less than a clear-and-convincing standard would ever apply to an invalidity defense. The Connell case has some relevance to this second point, but the Connell case (which was an affirmance) was not resolved on this point.
**The issues before the CAFC in the 1983 Connell case [722 F.2d 1542 ] were
(1) Whether there was error in granting the motion for judgment notwithstanding the verdict.
(2) Whether denial of costs to Sears amounted to an abuse of discretion.
As to remarks on "clear and convincing" in the CAFC decision, the CAFC corrected a misunderstanding by the lower court, a misunderstanding which did not change the outcome ["The grant of JNOV is affirmed" ]:
The opinion also says that when "any relevant" non-considered art is introduced, the burden upon the patent challenger is thereby changed from a requirement for clear and convincing proof to one of proof by a mere preponderance. Proof, however, relates not to legal presumptions, but to facts. The patent challenger may indeed prove facts capable of overcoming the presumption, but the evidence relied on to prove those facts must be clear and convincing. Thus, the introduction of art or other evidence not considered by the PTO does not change the burden and does not change the requirement that that evidence establish presumption-defeating facts clearly and convincingly.
PatentlyO had quoted from the i4i brief:
Throughout its existence, the Federal Circuit has held that the clear-and-convincing standard may be more easily satisfied with references the PTO did not consider. See, e.g., Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1549 (Fed. Cir. 1983)
**The CAFC in Connell criticized the district court decision at several points. For example, on obviousness:
The opinion says a patent is invalid if it "subtracts from former resources freely available to skilled artisans", citing Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950). The meaning of the phrase is obscure. If it means an invalid patent, if enforced, would subtract resources that would otherwise be available, it is a mere truism. If it means that upholding a multi-element claim as valid "subtracts" those elements (resources), it is untrue. All such elements remain fully available, albeit not in the particular arrangement claimed or in appropriate equivalent arrangements.
26
The phrase "patent monopoly" appears at various points. Under the statute, 35 U.S.C. Sec. 261, a patent is a form of property right, and the right to exclude recognized in a patent is but the essence of the concept of property. Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed.Cir.1983).
27
The opinion says anticipation may be shown by less than "complete anticipation" if one of ordinary skill may in reliance on the prior art "complete the work required for the invention", and that "it is sufficient for an anticipation 'if the general aspects are the same and the differences in minor matters is only such as would suggest itself to one of ordinary skill in the art.' " Those statements relate to obviousness, not anticipation. Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim. Soundscriber Corp. v. U.S., 360 F.2d 954, 960, 148 USPQ 298, 301 (Ct.Cl.1966). A prior art disclosure that "almost" meets that standard may render the claim invalid under Sec. 103; it does not "anticipate." Though it is never necessary to so hold, a disclosure that anticipates under Sec. 102 also renders the claim invalid under Sec. 103, for "anticipation is the epitome of obviousness," In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982). The reverse is not true, for the need to determine obviousness presumes anticipation is lacking. [IPBiz notes the statement about the presence of anticipation creating obviousness is incorrect.]
28
The opinion says that where a "combination" patent is involved the "linchpin" is whether the "aggregation produced a new or different result or achieved a synergistic effect." There is no support for those statements in the statute. There is no classification entitled "combination patents." Virtually every invention is a combination of elements or process steps, and synergism, or its equivalent "new and different result," is not required for patentability. Chore-Time Equipment, Inc. v. Cumberland, 713 F.2d 774, 218 USPQ 673 (Fed.Cir.1983); Bowser, Inc. v. U.S., 388 F.2d 346, 156 USPQ 406 (Ct.Cl.1967). See Miller, "Factors of Synergism and Level of Ordinary Skill in the Pertinent Art in Section 103 Determinations," 8 APLA Jrl 321 (1980).
**In passing, the Connell case also involved an issue of inequitable conduct:
It is undisputed that Connell concealed from the PTO at least the five prior art patents he received from the patent lawyer he first consulted and who advised that his invention might not be patentable. Connell then sought new counsel, who filed and prosecuted the application and testified at the trial.
AND
Sears' brief cites recent cases, dealing with the current and uncomprising duty of candor and good faith set forth in 37 CFR Sec. 1.56(a). It is regrettable but true that the present standard was not earlier recognized, promulgated, and enforced. The earlier standard described by the witness apparently led him to find room for the kind of gamesmanship practiced in connection with the Connell application pre-1969, as reflected in his testimony.
**Of the matter of --bright-line rule -- cases, it is true that the Supreme Court rejected a bright-line rule proposed by the CAFC in Festo. However, the exceptions created by the Supreme Court were of marginal relevance in practice.
Cross-reference
SCOTUS Is No Longer the ‘Court of Correction’
posted by Lawrence B. Ebert at 5:13 AM
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