1. Patenting Wireless Technology: Obviousness Dr. Tal Lavian http://cs.berkeley.edu/~tlavian tlavian@cs.berkeley.edu UC Berkeley Engineering, CET

2. Review–Patentability Five basic requirements for patentability:  Subject matter requirement  Written description (enablement)  Utility  Novelty  Nonobviousness 2

3. Review–Subject Matter Patentable subject matter consists of “any…process, machine, manufacture, composition of matter, or improvement thereof” (35 USC §101) Invention must fall into one of these categories to be considered patentable subject matter Currently some debate surrounding process (e.g., software) and composition of matter (e.g., human gene sequences) patents 3

4. Review–Written Description Specification in the patent must include a description of the invention that enables one skilled in the art to practice it  35 USC § 112 Generally known as the enablement requirement You must teach others how to do it  Cannot obtain patent for time machine unless you disclose how to make one that works 4

5. Review–Utility “Whoever invents or discovers any new and useful [invention] may obtain a patent thereon” 35 USC § 101 Basically, must be able to prove that invention has a use Usually only an issue in chemical engineering patents:  Sometimes companies want to patent new chemicals whose use they do not yet know 5

6. Patent Law Basics–Novelty Outlined in 35 USC § 102(a) Can obtain patent so long as no one has disclosed or patented invention before you Basically, it hasn’t been done before To reject patent claims for lack of novelty, every element must be contained in a single piece of prior art 6

7. Patent Law Basics–Nonobviousness 35 USC § 103(a) Like novelty requirement, yet trickier  Novelty requirement looks to a single piece of prior art  Nonobviousness requirement looks at multiple pieces of prior art Novel means new Nonobvious means that a person having ordinary skills in the art wouldn’t have easily thought of it given the plurality of prior art 7

8. Patent Law Basics–Nonobviousness (cont.) For example, you invent a glow-in-the-dark toothbrush and file for patent 8

9. Patent Law Basics–Nonobviousness (cont.) But patent examiner might say it is obvious considering the following two pieces of prior art Glow stick Tooth brush 9

10. Patent Law Basics–Nonobviousness (cont.) It may seem obvious to combine these two prior art references to make glow-in-the-dark toothbrush How could you argue for nonobviousness in light of these two references? 10

11. Patent Law Basics–Nonobviousness (cont.) One good argument would be to mention that the cited prior art references come from very different fields Someone designing new toothbrush is unlikely to look at alternative lighting technologies such as glow sticks for solutions Thus, it is less obvious to combine the two than one might think 11

12. Patent Law Basics–Nonobviousness (cont.) Also, the more prior art references an examiner needs to cite in order to reject claims based on obviousness, the weaker her argument against patentability Naturally, needing to cite fifteen pieces of prior art to show obviousness less credible than showing obviousness with two 12

13. Example: KSR

14. Manufacturing of All Pedal Systems Adjustable and fixed pedal modules Foot and hand-operated brakes Electronic throttle controls Electronic sensors Defendant: KSR Intl. 14

15. Diversified Global Company Medical Aerospace Commercial Plaintiff: Teleflex Inc. 15

16. What is it all about? 16 Teleflex sues KSR Claims KSR infringed on their patent of connecting a sensor to a pedal to control throttle in a car KSR argued that it is not patentable because it is obvious KSR argued that it is not patentable because it is obvious

17. KSR – The Patent 17

18. Claim 4. A vehicle control pedal apparatus (12) comprising: A) a support (18) adapted to be mounted to a vehicle structure (20); B) an adjustable pedal assembly (22) having a pedal arm (14) moveable in force and aft directions with respect to said support (18); C) a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); and D) 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). KSR – The Patent (cont.) 18

19. KSR’s Defense 19 Adding a sensor to the pedal is not patentable because it is obvious Won initially in district courts Teleflex won in appeals court by relying on TSM test, which was one of the most widely used tests to determine obviousness prior to KSR

20. KSR – The Case 1) DISTRICT COURT Ruling: Favor KSR Basis: Section 103 2) APPEALS COURT Ruling: Favor Teleflex Basis: TSM Test 3) SUPREME COURT Ruling: Favor KSR Basis: Section 103

21. Title 35 USC Section 103 A patent may not be obtained though the invention […] 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. Graham vs. Deere 21

22. There must be a Teaching, Suggestion, or Motivation in the prior art to combine elements in the prior art in order to find a patent obvious “Obviousness” 22 TSM Test:

23. Graham Analysis 23 Since 1966, Graham vs. Deere established the objective framework for applying Sec. 103 (1) Determination of the scope and content of the prior art (2) Identification of any di ff erences between the prior art and the claims at issue (3) Determination of the level of ordinary skill in the pertinent art, that warrants the award of a patent. (4) Review of any relevant secondary considerations, such as commercial success, long felt but unresolved needs and failure of others KSR makes clear that the TSM test sets the patentability bar too low and allows too many technically trivial inventions to receive patent protection.

24. Federal Circuit’s Four Errors 24 The Supreme Court stated that the Federal Circuit erred when it applied the well-known teaching- suggestion-motivation (TSM) test in an overly rigid and formalistic way.

25. Federal Circuit’s Four Errors (KSR, 82 USPQ2d at 1397) 25 (1) "[H]olding that courts and patent examiners should look only to the problem the patentee was trying to solve." (2) Assuming "that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem."

26. Federal Circuit’s Four Errors (KSR, 82 USPQ2d at 1397) 26 (3) Concluding "that a patent claim cannot be proved obvious merely by showing that the combination of elements was 'obvious to try.' " (4) Overemphasizing "the risk of courts and patent examiners falling prey to hindsight bias" and as a result applying "[r]igid preventative rules that deny fact finders recourse to common sense."

27. New Standard? 27 “Obvious to try” is not the new standard, certain conditions must apply:  Design need or market pressure to solve the problem  There are a finite number of foreseeable solutions to the problem  The result obtained is reasonably predictable This is closer to the broader Graham’s ruling in 1966

28. The Final Ruling 28  Supreme Court ruled in favor of KSR unanimously  Justice Kennedy: “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”  Motivation could be found implicitly when it is obvious to try with the conditions listed in previous slide  Electrical sensors are becoming a norm over mechanical connections in everything, so market pressure dictated that KSR putting a sensor on the pedal is obvious as sensors are widely known to be more reliable and cheaper

29. “Obviousness” 29 Supreme Court: Narrow and rigid application of TSM test “A person of ordinary skill in the art is also a person of ordinary creativity, not a automaton.”

30. Application of the TSM Test PHOSITA KSR vs. Teleflex cited in about 60% of decisions related to obviousness (reversal rates still the same) Implications 30

31. Results 31 TSM test is no longer the standard for determining obviousness TSM can no longer be rigidly applied No inconsistency between TSM and Graham analysis. Overall, scope of what is obvious is broadened, and it is much easier to invalidate patent based on obviousness

32. KSR Obviousness 32 Obvious to Try: If a combination was obvious to try, it might show that it was obvious under Sec. 103 depending on the instance. Anticipate Success: If a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and it leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Common Sense: Common sense teaches that familiar items may have obvious uses beyond their primary purposes and will be able to fit the teachings of multiple patents together like pieces of a puzzle. Combination of Familiar Elements: The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Predictable Results: A combination must do more than yield a predictable result.

33. KSR Obviousness (cont'd) 33 Predictable Use: An improvement is more than the predictable use of prior art elements according to their established functions Synergy: The device did not create some new synergy, the combination did no more than they would in separate, sequential operation. Improvement: Improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way Range of Needs: The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen benefit in upgrading Asano with a sensor.

34. KSR Summary 34 reaffirmed the four-prong analysis for obviousness set forth in Graham; stressed that a reasoned analysis must be provided to support any conclusion of obviousness; recognized the continued viability of the "teaching, suggestion, or motivation" (TSM) approach when properly applied;

35. KSR Summary 35 explained that TSM is not to be employed in a rigid or formalistic manner; clarified that TSM is not the exclusive test whereby obviousness may be determined; and explained that a broader range of rationales may be employed to support an obviousness rejection.

36. Example 36 The water faucets and towel dispensers that have built in sensors to sense the proximity of your hands and turn on the water, eject a towel. These were considered inventions at the time, even though the underlying mechanical/electrical parts were all known and when combined certainly worked according to well known laws of mechanics and electronics. It is the combination that was the insight. However, under this new "predictable" standard, this invention, like many others, would have to be declared obvious.

37. Summary To reject patent claims for lack of novelty, every element must be contained in a single piece of prior art Obviousness means that a person having ordinary skills in the art would have easily thought of it given the plurality of prior art KSR example:  TSM  Graham vs. Deere