Monday, September 22, 2008

CAFC discusses obviousness in CSIRO v. Buffalo

In an earlier post on the CSIRO patent case in ED Texas, IPBiz had noted:

Previously, Microsoft, Dell, Hewlett Packard, Intel and Netgear had taken legal action against the CSIRO in an attempt to break its US patents for wireless LANS, including elements of the 802.11a/g Wi-Fi technology that has since become an industry standard, and CSIRO still faces major hurdles in California with two separate cases taken against it by Intel and Dell, and Microsoft, Hewlett-Packard and Netgear a year ago.

In the appeal of the ED Texas case before the CAFC, one finds an amicus brief from Microsoft: Ruffin B. Cordell, Fish & Richardson P.C., of Washington, DC, for amicus curiae Microsoft Corporation. The CAFC uses the CSIRO case to give an exposition on the current law of obviousness, and does give Buffalo a chance on obviousness, because that portion of the ED Texas decision was vacated.

Of the permanent injunction portion of the case, the CAFC wrote:

Buffalo challenges the district court’s decision to enter a permanent injunction in
this case, and several amici have filed briefs supporting and opposing the issuance of
injunctive relief rather than remitting CSIRO to its legal remedy of an award of damages.
Because we are remanding this case to the district court for further proceedings on the
issue of obviousness, we do not reach the question whether the entry of a permanent
injunction constituted an abuse of discretion.

In reviewing the ED Tex decision, the CAFC noted:

After construing the disputed claim terms of the ’069 patent, the district court addressed the
parties’ cross-motions for summary judgment. In its order on those motions, the court
granted summary judgment in favor of CSIRO on the contested issues of patent validity
and infringement.


Following the district court’s entry of summary judgment of infringement, CSIRO
moved for the entry of a permanent injunction. After a hearing, the court entered an
injunction against Buffalo, as requested.

CSIRO had a problem at the CAFC:

With respect to the issue of obviousness, however, we conclude that the district court erred
by entering summary judgment against Buffalo because we hold that there was a disputed issue of material
fact as to whether the prior art references that were before the district court were
combinable in a manner that would have rendered the asserted claims of the ’069
patent obvious.

A rub in the case:

The summary judgment proceedings in this case were unusual in that the parties
stipulated that the district court could make findings of fact with respect to disputed
factual issues in the course of deciding the cross-motions for summary judgment.

TSM came up:

Invoking the so-called “teaching, suggestion, and motivation” (“TSM”) test,
the district court held that the
evidence was insufficient to show a sufficient teaching, suggestion, or motivation to
combine those references.

KSR [127 S. Ct. 1727 (2007) ]came up:

In KSR, which was decided after the district court entered its summary
judgment order in this case, the Supreme Court criticized this court’s application of the
TSM test for being unduly rigid. The KSR case involved the same kind of problem that
is presented here—the question of obviousness as applied to an invention that consists
of a combination of elements, all of which are found in prior art references.

In light of the analytical framework set forth by the Supreme Court in KSR, the
district court’s analysis of the summary judgment dispute was flawed.
CSIRO’s contention that the
prior art deals with a problem that is not directly analogous to the problem facing the
inventors of the ’069 patent is a factual question that has been put into issue by Mr.
Bagby’s declaration and report and cannot be resolved on summary judgment.

Note also the text of the CAFC:

Even before KSR, this court had made clear that the motivation to combine
particular references could be found in the nature of the problem to be solved. In re
Gartside, 203 F.3d 1305, 1320-21 (Fed. Cir. 2000); Pro-Mold Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (motivation to combine “may also
come from the nature of a problem to be solved, leading inventors to look to references
relating to possible solutions to that problem”). In that regard, this court’s decision in
Cross Medical Products v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir.
2005), is instructive.
See In re Translogic Tech., Inc., 504 F.3d 124, 1262 (Fed. Cir. 2007)
(“court can take account of the inferences and creative steps that a person of ordinary
skill in the art would employ”; a person of ordinary skill in the art “would have solved this
design need by pursuing known options within his or her technical grasp”); In re Dillon,
919 F.2d 688, 694 (Fed. Cir. 1990) (en banc) (a reference is not from non-analogous art
if “the reference is reasonably pertinent to the particular problem with which the inventor
was involved”).

A side issue in the case is "incorporation by reference" as it impacts anticipation analysis:

To support its contention that Bingham is incorporated by reference, Buffalo cites
Advanced Display Systems v. Kent State University, 212 F.3d 1272 (Fed. Cir. 2000).
That case sets forth the rule as to when a document will be deemed incorporated by
reference in another document for purposes of validity analysis.

It didn't work here:

At the point that Wilkinson refers to COFDM, it contains a
footnote citation, without comment, to Bingham. The footnote citation in Wilkinson could
provide a justification for combining the references for obviousness purposes, but there
is nothing about the reference to Bingham that appears to constitute an incorporation of
any or all of the information from the Bingham reference under the standard set forth in
Advanced Display Systems.

Of "how" scientific organizations, such as CSIRO or University of Rochester, are spending
resources, refer to a previous IPBiz post:

Has CSIRO spent about $10 million in the WiFi wars?

Cross-reference to the thread Educational Savvy on PatentHawk, wherein Kevin Noonan writes:

The basic question remains: do we let corporations take the fruits of academic research for free or do we promote university patenting to provide payback for commercialization? Setting aside post hoc arguments, that was the question I was discussing. What's your answer?

AND LBE responded as to the Rochester case:

As the CAFC noted: it is undisputed that the '850 patent does not disclose any compounds that can be used in its claimed methods. A method claim that requires the use of an undisclosed and untaught compound is invalid under patent law of 2000 or of 1790. Nevertheless, the University of Rochester, who had created nothing, sued Searle, who had brought such a compound to the marketplace without the help of Rochester. What "fruits of academic research" or commercialization is Kevin Noonan thinking of? In the short time since this thread developed, the University of Iowa sued Amgen AND Forbes ran a story on the "highest yielding" Bayh-Dole universities, which showed partnerships of universities with large corporations, not small ones.


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