Patents IV Nonobviousness Class 14 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner

Today’s Agenda Cleanup: Priority Issues The Nonobviousness Requirement The Graham Framework Challenge 1: Combining References Challenge 2: Secondary Considerations Challenge 3: Software & Business Models

The Basic Rule of Priority First to ‘reduce to practice’ = priority Priority of Invention The Basic Rule of Priority First to ‘reduce to practice’ = priority Exception A: Prior conception + reasonable diligence until reduction to practice. Exception B: The original inventor abandons, suppresses, or conceals her invention.

Priority of Invention

Priority of Invention Griffith v Kanamaru (1987) Issue: what is meant by ‘reasonable diligence’? Await confirmation of funding sources Await matriculation of graduate student What types of delays are ‘reasonable’? Important: assume an inventor does set aside her invention for an ‘unreasonable’ time/reason Is she unable to seek a patent? (Under what circumstances?) What if she abandons her invention?

Review: Requirements for Patentability A valid patent must be . . . Fully disclosed (§ 112) Novel (§ 102) Not subject to a statutory bar (§ 102) Nonobvious (§ 103) Within the appropriate subject matter. (Class 17)

Why require something beyond novelty? Is there a problem with this? Obviousness: History Why require something beyond novelty? Hotchkiss: Prior art: metallic doorknobs with particular hole Invention: clay or porcelain doorknob, same hole Court: no patent; a patent requires “more ingenuity and skill” than that of a “simple mechanic” Subsequent tests: “requirement for invention” “flash of creative genius” requirement Is there a problem with this?

Obviousness 35 U.S.C. § 103. - Conditions for patentability; non-obvious subject matter (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Obviousness: Graham Graham v John Deere (1966) Establishes the Graham Framework for obviousness analysis. The ultimate question of obviousness is one of law The analysis requires three factual considerations: Scope and content of the prior art Differences between the prior art and the invention The level of ordinary skill in the pertinent art

Graham in Action

Graham in Action Prior Art Invention

Challenge 1: Combining References Recall: under § 102 - each element of the claim must be found in the same document/reference Under § 103, you can ‘combine’ references to identify all elements. What is the primary challenge with this? How do you deal with it?

Challenge 1: Combining References How to ‘limit’ combining references? In re Vaeck/Dembiczak: Require ‘teaching, suggestion, or motivation to combine’ references Require ‘reasonable expectation of success’ in combinations Where can you find ‘teachings’?

Challenge 2: Secondary Considerations Note the Federal Circuit in 1980s: ‘jurisprudentially inappropriate’ to exclude consideration of secondary factors (Why?) The factors: (Which - if any - are probative?) Commercial success Long-felt need / failure of others Evidence of copying Skepticism (prior to invention) / praise (after invention) Licensing/acquiescence to the patent

Challenge 3: Software/Business Models Why do software and business model patents offer such a challenge? How should the courts deal with this? Lockwood v. American Airlines (1997) Do you agree with the court that the lack of detail about the software component was fatal? What does this suggest about software patents?

Challenge 3: Software/Business Models Amazon.com v Barnesandnoble.com (2001): Note the procedural posture. What do you think the court suggests about the validity of the one-click patent? What does the court’s analysis suggest about software/business method/Internet patents more generally? Is there a problem here?

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