Monday, May 07, 2007

Winning hearts and minds in the war for common sense

At pages 121-123 of Innovation and Its Discontents (Jaffe and Lerner), there is text:

An illustration of the difficulty of proving that an invention is obvious is the 2002 decision, In re Lee, which revolved around a technology at the very heart of the American way of life: the television remote control. (...)
The patent examiner had rejected this patent on the grounds of obviousness. In his decision, he cited two previous pieces of prior art. The first was a patent, awarded in 1984 to RCA, which called for the display of a menu of functions on a television, which the user could then adjust by pressing the associated key (for example, "press 9 to adjust picture sharpness"). This patent did not, however, describe any demonstration of how to adjust the functions; perhaps RCA presumed that the average "couch potato" would be able to figure this out for him or herself. The second relevant bit of prior [p. 122] was a video game, "Thunderchopper Helicopter Operations," which had a demonstration mode.
Upon selecting this option, the user can learn how to play the game. The demonsration mode did not involve, it should be noted, any provisions to change the settings of the game. But the examiner concluded --and the PTO's appellate board concurred--that the combination of these two forms of art made Lee's patent application obvious assuming "common knowlege and common sense of a person of ordinary skill in the art." As the examiner explained in his response, it was straightforward to add instructions on how to program a menu to an electronic tutorial.

The CAFC rejected this reasoning. In particular, the court concluded that the examiner had not justified why the combination of the earlier RCA function menu with the demonstration mode of the video game was an obvious step. The court noted that there was no reference in the examiner's writings or the Board's decision of a specific suggestion in the prior literature to combine the features of the two previous inventions. When rejecting a patent on grounds of obviousness, the court held, "all material facts ... must be documented on the record, lest the 'haze of so-called expertise" acquire insulation from accountability."

"...any patent application that entails a common sense combination of two previously well-known ideas must be granted, unless there is an explicit pre [123] vious description of the particular combination that is described in the application. Since there are always going to be myriad combinations and recombinations of different approaches that no one finds time to, or bothers to, write down, the possibilities for patenting "new" combinations are virtually unlimited. Run out now, and get your patent on selling dog food on the Internet, naviating the Internet while riding one's bicycle, or playing the piano while feeding one's cat. Even lawyers generally sympathetic to the CAFC have expressed concern about the implications of these decisions. (footnote 111)

footnote 111 cites Paul F. Morgan

Within the Morgan text, one finds a discussion about "academic speculation" by "persons with little or no experience" with the patent system, which might encompass Jaffe and Lerner. At page 13, Morgan does discuss the "specific suggestion" requirement of the obviousness inquiry (ie, TSM) and Morgan does mention In re Lee (discussed in Innovation and Its Discontents, above) and In re Kotzab, cited by the CAFC in KSR v. Teleflex. In context, Morgan is talking about "concern by some patent attorneys." Morgan does NOT identify "who" these patent attorneys are, and does NOT say he shares the concern. Morgan does not says these patent attorneys are generally sympathetic to the CAFC. Footnote 111 is another example of the questionable citation practice found in Innovation and Its Discontents. The contents of footnote 111 do NOT allow one to learn "which" lawyers generally sympathetic to the CAFC have expressed concern about the implications about Lee or "what" the concerns might be. This is slipshod scholarship by Jaffe and Lerner. Furthermore, a deeper inspection of what was going on in Lee illustrates that Jaffe and Lerner did not even get the basic facts correct.

In DYSTAR TEXTILFARBEN GMBH v. PATRICK, 464 F.3d 1356, 80 USPQ2d 1641 (CAFC 2006), the CAFC said:

Seeking to support their assertions about Federal Circuit caselaw, these few commentators have quoted isolated statements from three of our precedents in particular, including Dembiczak, 175 F.3d at 1000, wherein we stated
that the analysis by the Board of Patent Appeals and Interferences ("Board")
"fails to demonstrate how the [two cited] references teach or suggest their
combination" (emphasis added), and In re Lee, 277 F.3d 1338, 1341, 1344 (Fed. Cir.
2002), where we characterized the Board's statement that "[t]he
conclusion of obviousness may be made from common knowledge and common sense of a
person of ordinary skill in the art without any specific hint or suggestion in a
particular reference" as "[o]mission of a relevant factor required by
precedent". They have also cited our repeated use of the word
"references" in the following list from Ruiz v. A.B. Chance Co., 234 F.3d 654 (Fed.
Cir. 2000), where we suggested a motivation to combine may be found:

1) in the prior art references themselves;

2) in the knowledge of those of ordinary skill in the art that
certain references, or disclosures in those references, are of special
interest or importance in the field; or

3) from the nature of the problem to be solved, leading inventors
to look to references relating to possible solutions to that problem.

Id. at 665 (emphasis added) (internal quotation marks omitted).

Despite containing arguably imprecise language in these
statements, quoted out of context, each of the above-cited cases correctly applies the suggestion test and by no means requires an explicit teaching [**26] to combine
to be found in a particular prior art reference. Dembiczak involved the
combination of a reference in the plastic trash bag art with children's arts and
crafts books that included, among innumerable fanciful drawings, jack-o-lanterns.
[page 1366]
Contrary to some interpretations, we stated explicitly that evidence of
a motivation to combine need not be found in the prior art references
themselves, but rather may be found in "the knowledge of one of ordinary skill in
the art, or, in some cases, from the nature of the problem to be solved." 175
F.3d at 999 (citation omitted). When not from the prior art references, the
"evidence" of motive will likely consist of an explanation of the well-known
principle or problem-solving strategy to be applied. Our analysis in Dembiczak
focused on an explicit teaching in the prior art not because our case law requires
it, but because the Board had stated that "the [two cited] references would
have suggested the application of . . . facial indicia to the prior art
plastic trash bags." Id. at 1000 (emphasis added). We held the Board's obviousness
determination legally insufficient because, in addition to
failing to make Graham findings, the Board's analysis was "limited to a discussion
of the ways that the multiple prior art references can be combined to read on
the claimed invention", "rather than pointing to specific information in
[the two references] that suggest the combination". Id. On appeal to this court,
the Commissioner of Patents and Trademarks attempted to defend the Board
decision by laying out, using the Graham factors, a clear--and likely
affirmable--rationale establishing the level of ordinary skill and explaining the motivation to combine. Id. at 1001. We declined to consider these arguments, newly
raised on appeal, stating that they did "little more than highlight the
shortcomings of the decision below." Id.

In Ruiz, as in Dembiczak, we vacated a conclusion of obviousness
because the factfinder failed to make Graham factor findings. 234 F.3d at 660. Far
from requiring evidence of an explicit motivation to combine, we suggested
in Ruiz that there may have existed an implicit motivation to combine, based on
testimony that the invention was an improvement over the prior art
because it is "easy to install" and "low cost". Id. at 666. We explained that
such "[e]vidence which suggests that the combination of two references would
suggest the resulting improvement is one way in which to determine a reason,
suggestion, or motivation to combine" and instructed the district court to consider
the evidence on remand. Id.

Likewise, a close reading of In re Lee reveals that our objection
was not to the Board's statement that "[t]he conclusion of obviousness may be made
from common knowledge and common sense of a person of ordinary skill in the
art without any specific hint or suggestion in a particular reference", but
its utter failure to explain the "common knowledge and common sense" on
which it relied.
See 277 F.3d at 1341, 1344. Lee involved a patent combining a
prior art video game instruction handbook describing a "demonstration mode" with
a prior art television set having a menu display allowing video and audio
adjustments. The Board, without comment, adopted the Examiner's Answer, which merely
stated that the combination of the two cited references "'would have been
obvious to one of ordinary skill in the art since the demonstration mode
is just a programmable feature which can be used in many different devices for
providing automatic introduction by adding the proper programming software' and
that 'another motivation would be that the automatic demonstration mode is
user friendly and it functions as a tutorial.'" Id. at 1341. We explained
that "[c]onclusory statements such as those here provided do not fulfill the
agency's obligation" to explain all material facts relating to a motivation to
combine. Id. at 1344. In other words, we instructed the Board to explain why
"common sense" of an ordinary artisan [page 1367] seeking to solve the problem at
hand would have led him to combine the references.
We noted that our
predecessor court held more than thirty years earlier that "common knowledge and
common sense" were sufficient to establish a motivation to combine, In re
Bozek, 57 C.C.P.A. 713, 416 F.2d 1385 (C.C.P.A. 1969), and distinguished that
case because, in Bozek, the examiner first "established that this knowledge
was in the art". Id. at 1390. We instructed that assumptions about common
sense cannot substitute for evidence thereof
, as the Board attempted to do in Lee. 277 F.3d at 1345; see also In re Zurko, 258 F.3d 1379, 1383, 1385 (Fed.
Cir. 2001) (reversing as unsupported by substantial evidence a finding of
motivation to combine cited references, where the Board adopted Examiner's
unsupported assertion that claim limitation missing from cited references was
"basic knowledge" and it "would have been nothing more than good common sense"
to combine the references, and explaining that "[t]his assessment of basic
knowledge and common sense was not based on any evidence in the
record"); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (affirming finding of
high level of ordinary skill and the Board's explanation as to why cited reference
implicitly would suggest missing claim limitation to ordinary artisan,
but reversing its reliance on high level of ordinary skill as basis of
motivation to combine, and stating, "The Board did not, however, explain what
specific understanding or technological principle within the knowledge of one of
ordinary skill in the art would have suggested the combination. Instead, the
Board merely invoked the high level of skill in the field of art. If such a
rote invocation could suffice to supply a motivation to combine, the more
sophisticated scientific fields would rarely, if ever, experience a
patentable technical advance.").

It is difficult to see how our suggestion test could be seen as
rigid and categorical given the myriad cases over several decades in which panels
of this court have applied the suggestion test flexibly. Obviousness is a
complicated subject requiring sophisticated analysis, and no single case lays out
all facets of the legal test. DyStar's argument and the above-cited commentary
highlight the danger inherent in focusing on isolated dicta rather than gleaning
the law of a particular area from careful reading of the full text of a group
of related precedents for all they say that is dispositive and for what they hold.
When parties like Dystar do not engage in such careful, candid, and complete
legal analysis, much confusion about the law arises and, through time, can be
compounded. n3

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

n3 Indeed, the United States Supreme Court recently granted
certiorari in a case involving this court's application of the suggestion test. KSR
Int'l Co. v. Teleflex, Inc., 126 S. Ct. 2965, 165 L. Ed. 2d 949, 2006 U.S. LEXIS
4912 (June 26, 2006). In KSR, we vacated a district court's grant of summary
judgment of invalidity for obviousness. The district court found a motivation to
combine not in the references but "largely on the nature of the problem to be
solved", which we did not deem erroneous. Teleflex, Inc. v. KSR Int'l Co., 119 Fed.
App'x 282, 287 (Fed. Cir. 2005) (unpublished). Rather, we vacated because the
court did not explain sufficiently its rationale, and failed to make "findings as to
the specific understanding or principle within the knowledge of a skilled
artisan that would have motivated one with no knowledge of [the] invention to
make the combination in the manner claimed." Id. at 288 (citation omitted).

[IPBiz post 2700]


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