“Evidence of simultaneous invention, on its own, is not sufficient for obviousness. However, such evidence can influence the determination of the level of skill in the art and whether there was motivation to combine prior art.”
Is an invention arrived at by multiple inventors within a short space of time necessarily obvious? If not, how far may the evidence of simultaneous or contemporaneous invention go toward proving obviousness? Simultaneous invention is not common, but evidence of such invention, when present, can be important for reaching a conclusion of obviousness. Simultaneous invention can sometimes occur in the aftermath of the introduction of an enabling or foundational technology, when multiple groups working independently solve a problem, which, but for the foundational technology, would not have been possible. A recent example of this scenario can be found in the litigation related to the CRISPR-Cas9 technology, which culminated in a decision by the Federal Circuit in September 2018. University of California v. Broad Institute, Inc. (Fed. Cir. 2018) (UC v. Broad). The decision affirmed the Patent Trial and Appeal Board’s (PTAB’s) finding that the invention at issue was not obvious, evidence of simultaneous invention notwithstanding. The relevant foundational technology in UC v. Broad was gene editing using the CRISPR-Cas9 system. Simultaneous inventions can occur also in the absence of a technological breakthrough. The facts of UC v. Broad and those of another case, Geo. M. Martin Co. v. All Mech. Sys. Int’l, 618 F.3d 1294, (Fed. Cir. 2010) are used below to discuss the link between simultaneous invention and obviousness. Unlike UC v. Broad, in Geo. M. Martin, the invention was found to be obvious.
The concept of simultaneous invention as a factor in obviousness can be traced to the 1925 United States Supreme Court case, Concrete Appliances Co. v. Gomery, 269 U.S. 177 (1925). At issue in Concrete Appliances were claims directed to an apparatus that conveyed materials such as wet concrete from an elevated central point to varying working points in building operations using gravity. In addition to the patentee, several other groups had applied for patents on combinations for conveying wet concrete through spouts or chutes. These applications had resulted in interferences. The Court characterized the claimed apparatus as a combination of familiar devices long in common use (separately or in smaller groups) and questioned its inventiveness, observing, “[t]he adaptation independently made by engineers and builders of these familiar appliances to the movement and distribution of wet concrete in building operations and the independent patent applications, within a comparatively short space of time, for devices for that purpose are in themselves persuasive evidence that this use in combination of well known mechanical elements was the product only of ordinary mechanical or engineering skill and not of inventive genius.” Concrete Appliances at 185 (citation omitted) (Emphases added).
Ecolochem v. S. Cal. Edison Co
More recently, the Federal Circuit explained simultaneous invention by referring to earlier cases, one stating, “[t]he fact of near-simultaneous invention, though not determinative of statutory obviousness, is strong evidence of what constitutes the level of ordinary skill in the art” (citation omitted), and another that “[t]he possibility of near simultaneous invention by two or more equally talented inventors working independently, may or may not be an indication of obviousness when considered in light of all the circumstances.” (citation omitted) Ecolochem v. S. Cal. Edison Co., 227 F.3d 1361, 1379 (Fed. Cir. 2000). (Emphasis added). Importantly, the Federal Circuit has also stated that since 35 U.S.C. provides for interference proceedings, it implicitly recognizes that contemporaneous independent invention may not alone show obviousness. Lindemann Maschinenfabrik GmbH v. American Hoist Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir. 1984).
UC v. Broad
UC v. Broad arose in the context of an interference proceeding between the University of California, the University of Vienna, and Emmanuelle Charpentier (collectively, UC), and Broad Institute, Inc., Massachusetts Institute of Technology, and the President and Fellows of Harvard College (collectively, Broad). The outcome of the interference rested on whether the claims of 12 patents and one application owned by Broad, all directed to CRISPR-Cas9 system, were obvious over those of UC’s Application No. 13/842,859 (“’859 application”). The PTAB decided that they were not, and the decision was appealed to the Federal Circuit. The background facts of UC v. Broad, as outlined by the court, are as follows.
In August 2012, UC researchers published an article (UC article) showing that isolated elements of the CRISPR-Cas9 system could be used in vitro in a non-cellular experimental environment. In February 2013, Broad researchers published an article describing the use of CRISPR-Cas9 in a human cell line. Both parties applied for a patent. Broad’s patents and application were limited to the use of CRISPR-Cas9 in eukaryotic cells. In contrast, claims in the ’859 application did not refer to any particular cell type or environment. The UC article also did not report results of using CRISPR-Cas9 in a eukaryotic cell. Of note, CRISPR-Cas systems occur naturally in prokaryotes such as bacteria but have not been found to exist in eukaryotes such as plants and animals. Importantly, their potential as a genome editing tool depends on how well they work in eukaryotic cells.
To determine whether it was UC or Broad that first invented the use of CRISPR-Cas9 system in eukaryotic cells, the PTAB instituted an interference. During the interference, Broad argued that its claims were patentably distinct from UC’s claims because a person of ordinary skill in the art would not have had a reasonable expectation that the CRISPR-Cas9 system would work successfully in a eukaryotic cell given the differences between prokaryotic and eukaryotic systems. Interference 106,048 at 13. Conversely, UC’s position was that the inventors of the ’859 application fully expected the system to work in eukaryotic cells and that a person of ordinary skill would have had a reasonable expectation of success in implementing the CRISPR-Cas9 system in eukaryotes. Id. at 16.
UC’s case for obviousness included the argument that six research groups had independently applied CRISPR-Cas9 in eukaryotic cells within months of its disclosures. UC v. Broad. at 14. It argued that simultaneous invention was strong objective evidence of what constituted the level of ordinary skill in the art and relevant as a secondary consideration under the fourth Graham factor.
The Federal Circuit pointed out that simultaneous invention may bear upon the obviousness analysis in two ways: (i) as evidence of the level of skill in the art, and (ii) as objective evidence that persons of ordinary skill in the art understood the problem and a solution to that problem. Id. (citation omitted). It agreed with the PTAB that the fact that six research groups succeeded in applying the CRISPR-Cas9 technology in eukaryotic cells within a short period of time after the publication of the UC article was strong evidence that there was a motivation to combine prior art to arrive at the solution. Id. at 15. However, it agreed with the PTAB’s finding also that simultaneous invention evidence was not “necessarily” an indication of an expectation of success prior to the completion of the experiments. Id. In this regard, the court noted that UC had wanted the PTAB to infer that because several research teams pursued a particular approach, and that approach was ultimately successful, they must have expected that approach to work. Id. It is noteworthy that the PTAB had rejected such a bright line rule, explaining that “[e]ach case must be decided in its particular context, including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.” Id. (citation omitted).
The conclusion that there was no reasonable expectation of success that the CRISPR-Cas system would work in eukaryotic cells was based on several types of evidence, including expert testimony, contemporaneous statements made by skilled artisans, statements by the UC inventors themselves, and prior art failures. Id at 11. A few examples of some of these different types of evidence are as follows. One Broad expert had testified that the CRISPR-Cas9 system relies on two RNA components, crRNA and tracrRNA, but eukaryotic cells contain a number of ribonucleases which cut up RNA molecules; ribonucleases are not present in prokaryotic cells. Id at 8. Then, there was the acknowledgement by Dr. Jennifer Doudna, one of the named UC inventors, that “huge bottleneck” existed in making genetic modifications in animals and humans and her statement after the publication of the UC article: “[o]ur 2012 paper was a big success, but there was a problem. We weren’t sure if CRISPR/Cas9 would work in eukaryotes.” Id. at 9-10. There was also the recognition by Dr. Doudna’s colleagues that Broad’s development was significant as reflected by a colleague’s statement to Dr. Doudna when informing her of Broad’s success: “I hope you’re sitting down,” “CRISPR is turning out to be absolutely spectacular in [Broad researcher] George Church’s hands.” Id. at 10. Thus, substantial evidence appeared to exist supporting that there was no reasonable expectation that CRISPR-Cas9 system would work in eukaryotic cells.
Geo M. Martin
In Geo M. Martin, the Federal Circuit upheld a district court decision invalidating claims directed to a machine for separating stacked sheets. The claims were deemed obvious independently in view of three machines. The patent owner swore behind one of the machines by showing reduction to practice before the machine had become known, thus disqualifying it as prior art. At trial, the parties stipulated that this machine met every limitation of the asserted claims. Regardless of the disqualification, the district court relied on the machine as indicia of obviousness for showing simultaneous invention. On appeal, the patent owner argued that the timing of the machine could not constitute “contemporaneous” invention as a matter of law. The court disagreed, pointing out that evidence of simultaneous invention was not provided only by this machine and that the existence of the other two machines showed that the third machine was invented within a comparatively short space of time. Geo. M. Martin at 1305. Of the other two machines, one was installed three years prior and the other sold approximately five years prior to the reduction to practice. Based on these facts, the Federal Circuit found that the district court was correct in concluding that the invention of the third machine, occurring only a year later than the earliest possible reduction-to-practice date of the claimed invention, qualified as a simultaneous invention and provided strong evidence of what constituted the level of ordinary skill in the art. Id.
Evidence of simultaneous invention typically does not include disclosures qualifying as prior art under 35 U.S.C. 102 or 103. Interestingly, in Geo. M. Martin, a non-prior art disclosure, that, standing alone, constituted but a weak evidence of simultaneous invention, was considered together with prior art under 35 U.S.C. 103 to bolster its effect.
Evidence of simultaneous invention, on its own, is not sufficient for obviousness. However, such evidence can influence the determination of the level of skill in the art and whether there was motivation to combine prior art. It can also influence the determination of whether there was a reasonable expectation of success but does not imply that such expectation was necessarily present. High level of unpredictability can preclude a finding of reasonable expectation of success even when there is evidence of simultaneous invention.