Appending Conventional Steps to Abstract Idea an Insufficient Inventive Concept

cafc-federal-circuit-statue-335b copyIn re Smith, U.S. App. LEXIS 4431 (Fed. Cir. Mar. 10, 2016) (Before Moore, Hughes, and Stoll, J.) (Opinion for the court, Stoll, J.). Click Here for a copy of the opinion.

In 2010, Smith filed a patent entitled “Blackjack Variation” relating to a game that  utilizes “real or virtual standard playing cards.”  The examiner rejected claims under 35 U.S.C. § 101 for ineligible subject matter, applying the machine-or-transformation test described in Bilski v. Kappos, 561 U.S. 593 (2010).  The examiner concluded that the claims represented “an attempt to claim a new set of rules for playing a card game,” which is an abstract idea.  The Board affirmed, under the the two step test in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).  The claimed subject matter was an unpatentable abstract idea, and “shuffling and dealing cards [was] conventional in the gambling art” and thus did “not add enough to the claims” to make them patent eligible.  Smith appealed.

The Court affirmed, noting that the two-step test in Alice required first determining whether the claims were directed to patent-ineligible subject matter, and second whether the claims contained an ‘inventive concept’ that was sufficient to transform the claimed abstract idea into a patent-eligible application.  The Court held that the claims were directed to a wagering game, comparable to fundamental economic practices previously found abstract by the Supreme Court.  Second, the Court held that dealing “physical playing cards” did not constitute patent eligible territory.  This constituted a “purely conventional” activity, like the conventional computer implementation that fell short in Alice.  The Court found there was no inventive concept sufficient to transform the subject matter into a patent-eligible application of an abstract idea.  For these reasons, the Court affirmed.


White LED Light That Combines Known LED with Known Down-Conversion Technique Is Obvious

In re Cree, Inc. (Fed. Cir. Mar. 21, 2016) (Before Chen, Clevenger, and Bryson, J.) (Opinion for the court, Bryson, J.). Click Here for a copy of the opinion.

Cree appeals from an adverse decision from the Patent Trial and Appeal Board (PTAB) affirming an examiner’s rejections in an ex parte reexamination proceeding.  Cree holds a patent on a device for producing white light from light-emitting diodes (LED’s).  The device consists of a high-output LED and a down-converting luminophoric medium.  The high-output LED is of a particular type which was invented by Nakamura, for which its inventor received the 2014 Nobel Prize in physics.  A luminophoric medium is a material which absorbs high-frequency light and re-emits that light as a lower-frequency light.  By combining the two, the claimed LED can send light of a single, high-energy wavelength (blue, violet, or ultraviolet) into the luminophoric medium, which converts it to a variety of lower wavelengths which together appear to be white.  This down-conversion process is well-known in the art, and is widely implemented in fluorescent lights, which create white light by down-converting UV light emitted by excited mercury gas.

Reexamination of the patent was granted in view of three references.  The Pinnow reference disclosed a display system that creates images by illuminating phosphors with a blue laser.  The disclosure of Pinnow further details how to create white light through the process of down-conversion.  The Stevenson reference discloses a particular type of LED made of gallium nitride which emits violet light, and discloses that the light may be down-converted to a variety of other wavelengths, including primary colors.  The Nakamura reference discloses the improved, high-output gallium nitride LED that emits blue light.

The Examiner rejected the claims reexamined in the patent, reasoning that it would have been obvious to substitute Stevenson’s LED with the higher-efficiency Nakamura LED to arrive at the claimed invention.  The combination was a simple substitution of one known element for another known element to obtain predictable results.  Further, a person of ordinary skill would be motivated to combine the references because the Nakamura LED would provide more light to be down-converted, resulting in a brighter emission by the luminophoric medium.  Pinnow was further used to illustrate that a person of ordinary skill would know that the down-conversion process described in Stevenson could be used to produce white light.  The Board affirmed the Examiner’s rejections in whole.

Cree first argued that the Board erroneously concluded that it was known in the art to make white light from a monochromatic LED.  Instead, it argued that Stevenson was silent about down-conversion to white light, and that Pinnow did not disclose the use of LED’s.  The Court rejected this argument, because Pinnow disclosed how to down-convert higher-energy light into lower-energy light, regardless of the source.  Therefore, a person of skill in the art would recognize that Pinnow teaches how to convert a monochromatic LED to white light.

Cree next argued that the Board misread the declarations of its experts, by inferring that those experts admitted that down-conversion of LED light was known. Cree’s expert declarations explained that there are two ways of producing white LED light. The first is to bundle a variety of LED’s that produce multiple wavelengths of light that appear white when viewed together, and the second is down-conversion.  Because a significant amount of energy is lost in the down-conversion process, Cree’s experts explained that down-conversion was a disfavored means of producing white light.  The Court agreed with the Board that these statements admitted that down-conversion of LED light was known—regardless of whether it was the preferred or disfavored means of producing white light.

Cree also challenged the Board’s motivation to combine the references, arguing that a person of ordinary skill would not be motivated to combine the high-powered laser down-conversion system of Pinnow with the teachings of Stevenson and Nakamura, which teach comparatively lower-powered LED’s. The Court disagreed, reasoning that the disclosure of Pinnow made explicit that down-conversion would work with any source of light, provided that light is of the correct wavelength.

Finally, Cree argued that the Board improperly rejected Cree’s evidence showing secondary indicia of non-obviousness based on industry praise, evidence of licensing, and evidence of commercial success. The alleged industry praise was from the research group responsible for the invention of the patent, which the Board properly discounted as a self-serving. The alleged licensing included a variety of blanket licenses incorporating large portions of Cree’s white LED technology, including the patent at issue along with numerous other patents.  The Board again properly rejected this evidence, as there was no suggestion that the licensing deals were driven by the patent at issue. Finally, the alleged commercial success consisted of historical and future projection of the growth of white LED lights generally. The Board again properly discounted this evidence, as there was no nexus between the general commercial success of white LED’s and the specific invention of the patent at issue.

The Court therefore affirmed the decision of the Board in whole, finding the reexamined claims were obvious over the Pinnow, Stevenson, and Nakamura references.


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