Battle of the Experts

Althought non-precedential, B-K Lighting, Inc. v. Fresno Valves & Castings, Inc. (Case No. 2008-1537, April 28, 2010, Federal Circuit Court of Appeals) provides a good reminder what constitutes a factual issue for purposes of summary judgment.

In this case, at issue was whether certain claims for a lighting mount were obvious in light of the prior art:

“The question of obviousness was focused on the differences between the combination of these prior art devices and claims 3, 12, 15, 18, 19, 21, and 22 of the '084 patent, and in particular whether the Hydrel 7100 disclosed frictional pivoting. On appeal, B-K Lighting principally asserts that claims 3, 12, 15, 18, 19, 21, and 22 would not have been obvious because the Hydrel device did not disclose frictional pivoting.”

The parties’ experts submitted opposing declarations on summary judgment as to whether the Hydrel device disclosed frictional pivoting. The district court disregarded the patentee’s expert’s opinion and granted summary judgment on nonobviousness.

The Federal Circuit vacated, finding that:

“The district court disregarded Pratt's declaration, calling it "conclusory" and "factually unsupported." Summary Judgment Order, slip. op. at 31-32. It is not clear, however, why the court found Pratt's declaration any more conclusory than Dornfeld's. Both experts based their opinions on the same data sheets for the Hydrel 7100. This conflict in expert declarations regarding whether the Hydrel 7100 disclosed frictional pivoting created a genuine issue of material fact that made summary judgment inappropriate. See, e.g., Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330, 1338-39 (Fed. Cir. 2008); Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1351-52 (Fed. Cir. 2000); Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1338-39 (Fed. Cir. 2000); Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Because the conflicting testimony of the parties' experts regarding whether the Hydrel 7100 disclosed frictional pivoting created a genuine issue of material fact, we vacate the district court's judgment of invalidity for claims 3, 12, 15, 18, 19, 21, and 22 of the '084 patent.”

Secondary Considerations – Litigation Induced Licenses?

One of the secondary considerations to rebut obviousness is the acquiescence of others in the industry, often shown through licensing the patented invention. Presumably, a competitor does not act against his or her own economic interests (i.e., by paying a licensing fee) unless convinced of the validity of the patent.

Does it matter if the licenses are the result of litigation or the threat of litigation? Recently in the Eastern District of Texas, the district court denied defendants’ motion in limine to exclude litigation induced licenses. The plaintiff intended to introduce them not only for evidence of secondary considerations, but for damages as well. The court stated: “Defendants’ concerns about the reliability of litigation-related licenses are better direct to weight, not admissibility.” See Datatreasury Corporation v. Wells Fargo & Company et al., 2-06-cv-00072 (TXED March 4, 2010, Order) (Folsom, J.), available here.

No Crustless PB&J For You!

The Federal Circuit came through. Smuckers' method for crustless PB&J is not patentable. Article here, and in part:

The U.S. Court of Appeals for the Federal Circuit on Friday rejected an effort by J.M. Smucker Co. to patent its process for making pocket-size peanut butter and jelly pastries called "Uncrustables."

PB&J Crustless Sandwiches

The argument happened yesterday in front of the Federal Circuit. Is this patentable? Should the patent really be extended? We shall see. The USPTO said no way.

Contemporaneous Recognition and Appreciation

ISCO International, Inc. v. Conductus, Inc., No. 04-1007, 1008, Federal Circuit, February 3, 2005, non-precedential, affirmed

A jury found that the asserted claims of ISCO's '215 patent, which was directed to a receiver front end for a cellular base station, to be invalid and not infringed. Following the trial, ISCO filed a motion for judgment as a matter of law, which was denied. This appeal followed.

To begin, the Federal Circuit reminded all of us just how difficult it is to get a jury verdict overturned. On appeal from a judgment denying a motion for judgment as a matter of law, the Court need only find that the jury's findings are supported by substantial evidence – in other words, the Federal Circuit has to find that no reasonable juror could have reached such a result in order to reverse. Uphill climb? You bet.

ISCO argued that (1) the jury was not entitled to consider the ARPA report as prior art; and (2) the jury could not have reasonably reached its conclusion of obviousness based on the evidence presented at trial.

This ARPA report was released in February 1995. ISCO vigorously argued that it was not prior art because ISCO's conception date was December 1994, and submitted drafts of a proposal created in December 1994 in support. However, the Court agreed that the draft did not show conception of the invention – there was no "definite and permanent idea" of a "complete" invention. Conspicuously absent was the appreciation of an automatic bypass circuit:

“It is well-settled that conception . . . cannot be established nunc pro tunc. There must be contemporaneous recognition and appreciation of the invention represented by the [claims].” Breen v. Henshaw, 472 F.2d 1398, 1401 (CCPA 1973). Because ISCO’s predecessor failed to appreciate certain inventive features at the time of the alleged conception, ISCO cannot rely on a later recognition of those features to retroactively cure an incomplete conception.

Regarding the jury's obviousness finding, ISCO argued that the ARPA reference did not suggest a motivation to modify its teachings to achieve the claimed invention. The Federal Circuit ixnayed that argument:

"However, the suggestion or motivation to modify a reference may be derived from the knowledge of those skilled in the art or from the nature of the problem to be solved. Considerable evidence was presented at trial of the knowledge of a skilled artisan in the relevant art and the nature of the problem, from which the jury could have reasonably discerned a motivation to modify the ARPA report to obtain the invention of claim 10."

Next, ISCO argued that another prior art reference was non-analogous prior art because it was directed to military, not cellular applications. However, ISCO was caught with their foot in their mouth when the Federal Circuit noted that the aforementioned December 1994 draft proposal referred to both civilian and military communications systems.

In short, the Federal Circuit affirmed.

What Are Secondary Considerations?

In the Merck case this last week, we saw the Federal Circuit pretty much ignore evidence of commercial success in invalidating the Fosamax Patent. However, when all else fails, secondary considerations (or objective evidence) can often be used to overcome an obviousness rejection or challenge under § 103. Some examples of secondary considerations are:

(1) The invention's commercial success
(2) Long felt but unresolved needs
(3) The failure of others
(4) Skepticism by experts
(5) Praise by others
(6) Teaching away by others
(7) Recognition of a problem
(8) Copying of the invention by competitors


To the courts, all of the above can help establish that an invention is not obvious. Why? Logically it makes sense. If you look at all of the above factors, establishing any one of those things can help infer that the invention is not obvious. After all, for example, if an invention will bring commercial success, or if there is a need for it, or if there is praise by others, then it stands to reason that others may have tried to develop the invention, but failed. The same goes for copying by competitors – why wouldn’t they just design around it if it were that obvious? Hence, the inference of nonobviousness. However, as we saw in the Merck case, proving one of these factors is sometimes not dispositive, especially when proving commercial success of the invention.

Note that secondary considerations cannot be used to overcome a § 102 rejection or challenge.

Commercial Success When Others Are Legally Barred

Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., no. 04-1005, Fed. Cir. January 28, 2005

Merck owns the '329 patent, which teaches a method of treating and preventing osteoperosis through less than daily (i.e. weekly) administration of biophosphonate compounds and is marketed under the name Fosamax. Teva asserted that the patent was obvious under 35 U.S.C. § 103. The '329 patent was filed on August 14, 1998.

The prior art at issue, referred to as the "Lunar News articles," were a series of articles published in 1996 that recommended weekly doses (as opposed to daily doses) of alendronate (a biophosphate compound) to treat osteoporosis.

Both the articles and the '329 patent focused on GI problems that occur with daily dosing and the amount of the dose. The Federal Circuit found that the only difference between the articles and the '329 patent was the recommended dosage amount:

For the Lunar News articles to render claims 23 and 37 obvious, the district court need only have found a suggestion or motivation to modify the dosages from those in the articles to those in the claims. But as noted above, Merck’s own inventors admit the difference in dosing amount is obvious. (internal citations omitted).

The district court also had problems with the probative value of the Lunar Articles, because they were not peer reviewed and not authored by someone of skill in the art. The Federal Circuit countered, disagreeing with both views:

Although these indicia of reliability – whether a study is peer-reviewed, and the credentials of the author – properly go to weight when the trial court has not excluded evidence as unreliable and irrelevant, the district court’s reliance on these factors to distinguish Merck’s claimed invention is, again, misplaced. First, as noted above, these factors provide no relevant distinction between the articles and the claimed invention because the '329 patent also fails to explain how its higher dosing would overcome these dose-related side-effects. Second, as explained below the district court’s finding the author of the Lunar News articles not skilled in the relevant art is inconsistent with the court’s own definition of the relevant art.

The Federal Circuit finally addressed secondary considerations – evidence of (1) commercial success, and (2) some causal relation or “nexus” between an invention and commercial success of a product embodying that invention can be probative of whether an invention was nonobvious. (The thinking being that if it is commercially successful, someone else probably had tried to invent it earlier and failed). However, the Court found that Fosamax's commercial success had minimal probative value:

Although commercial success might generally support a conclusion that Merck’s claimed invention was non-obvious in relation to what came before in the marketplace, the question at bar is narrower. It is whether the claimed invention is non-obvious in relation to the ideas set forth in the Lunar News articles. Financial success is not significantly probative of that question in this case because others were legally barred from commercially testing the Lunar News ideas. Dr. Mazess, for example, could not put his ideas to practice in 1996 – he could only exhort Merck to try it. They did.

Why were others barred from testing out the ideas? Because Merck had another patent and an exclusive license through the FDA.

Flashback: Obviousness

Graham et. al. v. John Deere, 383 U.S. 1 (1966)

What do you need to know about this case? The facts are unimportant because this is the case where the Supreme Court established how to establish obviousness. You'll see this test quite often in the future around here. The factual inquiries for obviousness under 35 U.S.C. § 103 are:

(1) Determine the scope and content of the prior art;

(2) Ascertain the differences between the prior art and the claims in issue;

(3) Resolve the level of ordinary skill in the pertinent art; and

(4) Evaluate any objective evidence of nonobviousness (i.e., "secondary considerations"). Courts have considered the following secondary considerations in determining obviousness; (1) the invention's commercial success, (2) long felt but unresolved needs, (3) the failure of others, (4) skepticism by experts, (5) praise by others, (6) teaching away by others, (7) recognition of a problem, (8) copying of the invention by competitors, and (9) other relevant factors.

What Is Patentability?

In order to get a patent, an invention must meet three requirements: (1) it must be useful; (2) it must be new; and (3) it must not be obvious. I’ll give a brief, brief, brief overview of these areas. In the future we will delve into this in a lot more detail.

The Patent Act describes these as follows:

35 U.S.C. § 101 deals with utility/subject matter, and seems fairly basic: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore…”

35 U.S.C. § 102 deals with novelty, and is more complicated. Novelty deals with a single prior art reference that teaches all of the elements of the claimed invention. Furthermore, the Patent Office does not like it when people sit back and don’t file for a patent, so there are time requirements that can kill novelty.

102(a) says that if there is public knowledge or use by others in the United States, or a publication or patent issued anywhere in the world prior to the date of invention, the invention is not novel.
102(b) says that if there is a patent obtained or a publication anywhere in the world more than one year before the critical date (filing date), or if there is a public sale or use anywhere in the United States more than one year before the critical date (filing date), the invention is not novel.
102(c) says that if the inventor intentionally abandons the invention, it is not novel.
102(d) says that if the inventor files an application in a foreign country for the same invention more than 12 months before an application was filed in the United States (six months for design patents), and the foreign patent issued before the United States patent was filed, the invention is not novel.
102(e) creates “secret” prior art. Because patent applications are kept secret, there may be prior art out there by another person that you are not aware of when you file a patent application. When the patent is published or issued, it acts retroactively as prior art. This is a complicated area, so I’ll leave it at that for now.
102(f) says that if the “inventor” did not invent the invention, it is not novel.
102(g) creates a category of prior art when the same invention is made by another who did not abandon, suppress, or conceal the invention. Usually this leads to an interference, whereby the first inventor is determined.

35 U.S.C. § 103 deals with obviousness. Basically, if your invention is obvious to one of skill in the art, you can’t get a patent. For example, if some invents a red chair and gets a patent on it, you would not be able to get a patent for a blue chair because it would be obvious. That’s a very basic example, but you get the idea. This section differs from section 102 in that you can combine multiple prior art references to prove an invention is obvious.

So when does this come up? In general, either (1) when the patent is being examined (or re-examined) by the Patent Office, or (2) during litigation. In litigation, typically if you bring an infringement suit against someone else, they will counterclaim that your patent is invalid under section 102 or 103.

The U.S. Patent and Trademark Office offers a great glossary of patent terms.