Wednesday, November 14, 2012

Obviousness found in Norgren v. ITC

KSR arises in Norgren v. ITC :

“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious. See Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir. 2008); In re Translogic Tech., Inc., 504 F.3d 1249, 1260 (Fed. Cir. 2007). However, the Supreme Court held that “[t]he obviousness analysis cannot be confined” to a rigid application of the teaching, suggestion, or motiva- tion test. KSR, 550 U.S. at 419. The common sense and ordinary creativity of a person having ordinary skill in the art are also part of the analysis. Id. at 420-21. Moreover, “[o]ne of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Id. at 419-20. “[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.” Id. at 420. This includes, but is not limited to, the problem motivating the patentee. See id. (“The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject mat- ter.” (citation omitted)).
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 ordi- nary 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.
Id. at 421. (...)
The invention in the ’392 Patent was a combination of known elements with no more than
expected results. See KSR, 550 U.S. at 416-17.


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