1. Patents IV Nonobviousness
Class Notes: March 5, 2003
Law 507 | Intellectual Property | Spring 2003
Professor Wagner

2. Today’s Agenda Clean Up: Priority Analysis
The Nonobviousness Requirement
The Graham Framework
Challenge 1: Combining References
Challenge 2: Secondary Considerations
Challenge 3: Software & Business Models
3/5/03
Law 507 | Spring 2003

3. 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.
3/5/03
Law 507 | Spring 2003

4. Priority of Invention
3/5/03
Law 507 | Spring 2003

5. 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’?
Key point: assume an inventor does set aside her invention for an ‘unreasonable’ time/reason
Is she unable to seek a patent? (Under what circumstances?)
3/5/03
Law 507 | Spring 2003

6. 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. (March 19)
3/5/03
Law 507 | Spring 2003

7. 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?
3/5/03
Law 507 | Spring 2003

8. Obviousness
35 U.S.C. § 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.
3/5/03
Law 507 | Spring 2003

9. Obviousness: Graham Graham v John Deere (1966)
Establishes the Graham Framework for obviousness analysis.
The ultimate question of obviousness is one of law (for the court)
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
3/5/03
Law 507 | Spring 2003

10. Graham in Action
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Law 507 | Spring 2003

11. Graham in Action
3/5/03
Law 507 | Spring 2003

12. Challenge 1: Combining References
Recall: under § 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?
3/5/03
Law 507 | Spring 2003

13. 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’?
3/5/03
Law 507 | Spring 2003

14. 3/5/03
Law 507 | Spring 2003

15. 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
3/5/03
Law 507 | Spring 2003

16. 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?
3/5/03
Law 507 | Spring 2003

17. 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?
3/5/03
Law 507 | Spring 2003

18. Next Class
Patents V
Claim Construction
3/5/03
Law 507 | Spring 2003