1. Obviousness II Class Notes: February 11, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

2. 2/11/032Law 677 | Spring 2003 Today’s Agenda 1.Defining Prior Art for § 103 2.Determining the Scope of the Prior Art 3.The PHOSITA 4.Secondary Considerations

3. 2/11/033Law 677 | Spring 2003 Review: The Graham Framework 1.The ultimate question of obviousness is one of law (for the court) 2.The analysis requires three factual considerations: a)Scope and content of the prior art b)Differences between the prior art and the invention c)The level of ordinary skill in the pertinent art 3.‘Secondary Considerations’ are to be balanced against showings of obviousness from the references.

4. 2/11/034Law 677 | Spring 2003 Solving the Graham Framework The Key Problem for 103 Analysis: Hindsight Ways to combat hindsight: 1.Carefully define appropriate prior art 2.Restrict the combining of references 3.Evaluate secondary considerations

5. 2/11/035Law 677 | Spring 2003 The Scope of the Prior Art What art is appropriate for § 103? Basic point: all ‘prior art’ defined by § 102 102(a): publications, ‘known or used’ 102(b): publications, ‘known or used’, on sale 102(e): prior patent application by another 102(f): ‘derivation’ from prior invention [?] 102(f): ‘derivation’ from prior invention [?] 102(g): prior “invention” by another 102(c): abandonment 102(d): overseas patenting 102(f): derivation

6. 2/11/036Law 677 | Spring 2003 The Scope of the Prior Art What art is appropriate for § 103? Problem 1: § 103 allows references to be combined Concerns about scope of inquiry Analogous (or ‘pertinent’) Art requirement. Only art that is analogous to: oThe field of invention oThe types of problems to be solved

7. 2/11/037Law 677 | Spring 2003 The Scope of the Prior Art What art is appropriate for § 103? Problem 2: The problem of organized research § 103(c): Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person

8. 2/11/038Law 677 | Spring 2003 The Content of the Prior Art What does the prior art describe? Do you see a potential problem here: 1.§ 103 allows references to be combined at will to ‘knock out’ the claims 2.§ 103 presumes that all art related to the field or to the problems to be solved are ‘fair game’ 3.But we know that ‘we stand on the shoulders of giants’ – given (1) and (2), is there likely to be anything ‘nonobvious’?

9. 2/11/039Law 677 | Spring 2003 The Content of the Prior Art The Limitation on Combining References In re Dow Chemical (1988) Invention: combine A + B + C to yield high strength and heat resistance Prior Art #1 (PA1): combine A + B to yield high strength Prior Art #2 (PA2): combine B + C to yield heat resistance Key question: can you combine PA1 + PA2? What test does the court offer for determining an appropriate combination?

10. 2/11/0310Law 677 | Spring 2003 The Content of the Prior Art The Limitation on Combining References Pro-Mold & Tool Company (1996) Invention: card holder (transparent, rectangular, friction-fit), sized slightly larger than the card PA1: all elements except for the size PA2: sized slightly larger than the card Can you combine PA1 + PA2? Why? (Is this ‘fair’?) Where does the court find the ‘teaching or suggestion to combine’? Note: does Pro-Mold lose the patent?

11. 2/11/0311Law 677 | Spring 2003 The Content of the Prior Art The Limitation on Combining References Basic rule: must find a “teaching or suggestion to combine references” Sources of ‘teaching or suggestion’: References themselves (explicit or implicit) Knowledge of POSITA Teachings of special references in the field From the ‘nature of the problem to be solved’ (Pro-Mold)Notes: Standard of ‘teaching’: reasonable expectation of success Evidence of ‘teaching away’ is important oWhat if reference 1 provides a ‘suggestion’, but reference 2 provides a ‘teaching away’/discouragement?

12. 2/11/0312Law 677 | Spring 2003 The PHOSITA Attributes of the PHOISTA ‘Ordinary Skill’ oEducational level of inventor oType of problems in the field oPrior solutions to the problems oSophistication of the technology oEducational level of workers in the field Knowledge (and recall) of all pertinent references oThe hypothetical workshop from Winslow oDoes this requirement make sense?

13. 2/11/0313Law 677 | Spring 2003 Secondary Considerations Note the Federal Circuit in Stratoflex: ‘jurisprudentially inappropriate’ to exclude consideration of secondary factors The factors: Commercial success Long-felt need / failure of others Evidence of copying Skepticism (prior to invention) / praise (after invention) Licensing/acquiescence to the patent

14. 2/11/0314Law 677 | Spring 2003 Secondary Considerations Commercial Success Pentec v Graphic Controls (1985) GC’s “Series 39” pen: commercially successful Pentec introduces an infringing (“Series 390”) unit Why does the court reject the commercial success as evidence of nonobviousness? What sort of evidence would be required? Is commercial success a relevant secondary consideration?

15. 2/11/0315Law 677 | Spring 2003 Secondary Considerations Commercial Success The key showing in Commercial Success: Nexus Windsurfing Int’l: nexus was achieved, despite some evidence to the contrary What is the standard? What should it be? Note a recent trend at the Federal Circuit: tightening up the nexus requirement.

16. 2/11/0316Law 677 | Spring 2003 Secondary Considerations Long-Felt Need / Failure of Others Why is this factor seen as especially pertinent? oDo you agree? What is meant by the ‘need’? Where do you find the ‘long-felt need’?

17. 2/11/0317Law 677 | Spring 2003 Secondary Considerations Copying How relevant is this factor?Skepticism/Praise Where would one look to find it?Licensing/Acquiescence How relevant is this factor?

18. 2/11/0318Law 677 | Spring 2003 Parting Shots Consider: 1.Is the Federal Circuit overusing secondary considerations? Trend: tightening up the nexus requirement 2.How does the obviousness standard relate to other ‘objective’ standards in the patent law?

19. 2/11/0319Law 677 | Spring 2003 Next Class Obviousness III Obviousness III Class Exercise