1. Nonobviousness II: KSR: Requiem for the Suggestion Test Patent Law – Prof Merges 10.18.2011

2. Federal Circuit: Post-Graham 1.Elevation of “secondary” factors to 4 th Graham factor 2.“Reasonable expectation of success” standard – ex ante perspective 3.Development of Suggestion Test – and rejection by Supreme Court

3. [T]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.

4. The claimed invention at issue in this case is a straightforward combination of (i) a pre- existing type of “adjustable pedal,” and (ii) a pre-existing type of “electronic control” that is commonly used on newer cars. KSR Int’l v. Teleflex

6. Claim 4 A vehicle control pedal apparatus (12) comprising: a support (18) adapted to be mounted to a vehicle structure (20); an adjustable pedal assembly (22) having a pedal arm (14) moveable in force [sic] and aft directions with respect to said support (18);

7. a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); and an electronic control (28) attached to said support (18) for controlling a vehicle system; said apparatus (12) characterized by said electronic control (28) being responsive to said pivot (24) for providing a signal (32) that corresponds to pedal arm position as said pedal arm (14) pivots about said pivot axis (26) between rest and applied positions wherein the position of said pivot (24) remains constant while said pedal arm (14) moves in fore and aft directions with respect to said pivot (24).

9. 298 F.Supp.2d 581, 592 (ED Mich 2003) The Court finds little difference between the teachings of the prior art and claims of the patent-in-suit. Asano teaches the structure and function of each of the claim 4 limitations, except those relating to an electronic pedal position sensor. Specifically, Asano teaches an adjustable pedal assembly pivotally mounted on a support bracket with the pedal moving in a fore and aft directions with respect to the support and the pivot remaining in a constant position during movement of the pedal arm. Thus, Asano "fairly suggests" the same mechanical assembly design asserted in claim 4 of the patent-in-suit.

10. Dist ct. opinion, cont’d The electronic pedal position sensor asserted in claim 4, however, is fully disclosed by other prior art references. Both the 503 Series pedal position sensor and the '068 patent teach an electronic pedal position sensor being responsive to the pedal pivot shaft and causing a signal to be sent to the engine to increase or decrease engine speed based on the rotation of the pivot shaft.

11. It is undisputed that in the mid-1990's more cars required the use of an electronic device, such as a pedal position sensor, to communicate driver inputs to an electronically managed engine. It is also undisputed that adjustable pedal assemblies have existed in the art since the late 1970's. Clearly it was inevitable that adjustable pedal assemblies would be joined with an electronic device to work in conjunction with modern electronically controlled engines.

12. [T]he Court finds that Defendant has offered sufficient evidence of a suggestion to combine a pivotally mounted adjustable pedal assembly with an off-the-shelf modular pedal position sensor to solve the problem of designing a less expensive, less complex, and more compact adjustable pedal assembly for use with electronically controlled vehicles. -- 298 F.supp.2d 594

13. Federal Circuit opinion The specification of the ’565 patent indicates that prior-art pedal assemblies incorporating an electronic control suffered from being too bulky, complex, and expensive to manufacture. See ’565 patent, col. 1, ll. 48- 53. It was this problem that the ’565 patent set out to address. See id. col. 2, ll. 2-5.

14. Fed Cir. We agree with Teleflex that the district court did not apply the correct teaching- suggestion-motivation test. We also agree that, under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper. -- Fed Cir case no. 04-1152, slip op at 10.

15. Under our case law, whether based on the nature of the problem to be solved, the express teachings of the prior art, or the knowledge of one of ordinary skill in the art, the district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent. See Kotzab, 217 F.3d at 1371; Rouffet, 149 F.3d at 1357. That is, the district court was required to make specific findings as to a suggestion or motivation to attach an electronic control to the support bracket of the Asano assembly.

16. KSR INTERNATIONAL CO. v. TELEFLEX INC. 127 S.Ct. 1727 (April 30, 2007)

17. [T]he Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to com bine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. -- casebook p. 666

18. Asano Pedal

19. Sensor prior art Integrated and freestanding pedal sensors, described and claimed in various prior art patents

20. Supreme Court Engelgau had not included Asano among the prior art references, and Asano was not mentioned in the patent’s prosecution. Thus, the PTO did not have before it an adjustable pedal with a fixed pivot point.

22. Supreme Ct. holding “We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.”

23. Highlights from opinion US v Adams and “teaching away”

24. Supreme Court When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.

25. “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.”

26. A “court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

27. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

28. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

29. In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988) “Obvious to try” is NOT the appropriate standard While absolute certainty is not necessary to establish a reasonable expectation of success, In re O'Farrell, 853 F.2d 894, 903-04, (Fed.Cir.1988), there can be little better evidence negating an expectation of success than actual reports of failure. A reasonable jury could conclude from these reports that one of ordinary skill in the art would not have had a reasonable expectation of success... – Life Technologies, supra.

30. Merges, “Uncertainty and the Standard of Patentability,” 7 [Berkeley] High Tech. L.J. 1 (1993).

31. Supreme Court A person having ordinary skill in the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4, and would have seen the benefits of doing so.

32. Graham v. John Deere Is it obvious to move the hinge plate from position A under the shank to position 1 above the shank? A B C 1 3 2

33. In re Kubin Facts: NAIL protein History: In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995), and the special law of biotech nonobviousness Holding: Brings biotech within the general framework of KSR

35. NK cells and NAIL protein NK cells are cytotoxic lymphocytes that play a major role in fighting tumors and viruses The NAIL protein is a surface molecule that acts as a cell binding site; when the right trigger binds with it (e.g., CD48), cell activity is stimulated Goal: Stimulate NK cells into fighting cancer

37. NAIL Protein: partial amino acid sequence

38. Claim 73 73. An isolated nucleic acid molecule comprising a polynucleotide encoding a polypeptide at least 80% identical to amino acids 22-221 of SEQ ID NO:2, wherein the polypeptide binds CD48.

39. Examiner’s rejection NAIL protein was in the prior art: Valiante patent, “p38” protein Valiante teaches that “[t]he DNA and protein sequences for the receptor p38 may be obtained by resort to conventional methodologies known to one of skill in the art.” Example 12 of Valiante’s patent further describes a five-step cloning protocol for “isolating and identifying the p38 receptor.”

40. Board holding Examiner final rejection affirmed; claimed invention was obvious Importance of NAIL protein would have “motivated” people in the field to isolate and clone the gene sequence Appeal to Fed Cir

41. Kubin holding Deuel reversed: Deuel statement, “[T]he existence of a general method of isolating cDNA or DNA molecules is essentially irrelevant to the question whether the specific molecules themselves would have been obvious, in the absence of other prior art that suggests the claimed DNAs,” at 1559 is no longer good law after KSR

42. Kubin holding (cont’d) When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421

43. Kubin (cont’d) [S]tated in the familiar terms of this court's longstanding case law, the record shows that a skilled artisan would have had a resoundingly "reasonable expectation of success" in deriving the claimed invention in light of the teachings of the prior art. See O'Farrell, 853 F.2d at 904.

44. Merges, “Uncertainty and the Standard of Patentability,” 7 [Berkeley] High Tech. L.J. 1 (1993).

45. Obvious to Try Kubin does not hold that an invention that was "obvious to try” is necessarily obvious under Section 103(a). But: when is an invention that was obvious to try nevertheless nonobvious?

46. Applying KSR: Leapfrog

47. Leapfrog v. Fisher-Price, 485 F.3d 1157 (Fed Cir 2007) Affirming District court (Delaware) Deadlocked jury, submitted to judge

48. At 1161 “[T]he common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.”

49. At 1162 We agree with the district court that one of ordinary skill in the art of children's learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.

50. Recent Developments Continued refinement of KSR “Common sense” combinations – new line of cases

51. Post-KSR standard Unigene v. Apotex, 99 USPQ2d 1858, 1863 (Fed Cir. 2011): “[O]bviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention....”

52. “[PHOSITA] would not have considered using about 20 mM citric acid with the narrowly claimed amounts of [other constituents], because the formulation would not be expected to perform properly to meet the specificity of a pharmaceutical use. Thus, even accepting that there was a design need and market pressure to develop a pharmaceutical formulation that is bioequivalent to Miacalcin®, there is no evidence in the record that claim 19 would be an obvious solution to those motivations.” 99 USPQ2d at 1865.

53. Citing... “When a field is ‘unreduced by direction of the prior art,’ and when prior art gives ‘no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ an invention is not obvious to try.” Bayer Schering Pharm. AG v. Barr Labs., Inc., 575 F.3d 1341, 1347 [91 USPQ2d 1569] (Fed. Cir. 2009).

54. Common sense cases Eg, Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 92 U.S.P.Q.2d 1849 (Fed. Cir. 2009), at 1329: “[T]he Supreme Court instructed that factfinders may use common sense in addition to record evidence. “[i]n many patent cases expert testimony will not be necessary because the technology will be easily understandable without the need for expert explanatory testimony.”

56. 25. An interactive learning device, comprising: a housing including a plurality of switches; a sound production device in communication with the switches and including a processor and a memory; at least one depiction of a sequence of letters, each letter being associable with a switch; and a reader configured to communicate the identity of the depiction to the processor, wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter, the sound being determined by a position of the letter in the sequence of letters.

57. Applying KSR: PTO Guidelines DEPARTMENT OF COMMERCE Patent and Trademark Office Docket No.: PTO–P–2007–0031] Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.

58. At p. 57527 In certain circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done. Factual findings made by Office personnel are the necessary underpinnings to establish obviousness.

59. Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations; however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. – p. 57528