When attempting to determine whether an invention can be patented it is necessary to go through the patentability requirements in an effort to see whether patent claims can likely be obtained. Ideally you want patent claims that are meaningfully broad and commercially relevant, but at a minimum you must have claims that embody patent eligible subject matter, demonstrate a useful invention, cover a novel invention and which are non-obvious in light of the prior art. Obviousness is typically the real hurdle to patentability, and unfortunately the law of obviousness can be quite subjective and difficult to understand. At times obviousness determinations almost seems arbitrary.
The basic obviousness inquiry was set forth by the United States Supreme Court in Graham v. John Deere nearly 50 years ago, and remains good law even today. In order to determine whether an invention is obvious one must work through this analytical framework: (1) Determine the scope and content of the prior art; (2) Ascertain the differences between the claimed invention and the prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective indicia of non-obviousness (i.e., are there secondary considerations of non-obviousness that suggest a patent should issue despite an invention seeming to be obvious). See Understanding Obviousness: John Deer and the Basics. While this seems easy enough, the application of these factors or considerations is exceptionally difficult.
Prior to the Supreme Court’s decision in KSR v. Teleflex obviousness was rather mechanical. With obviousness we are asking whether there is any combination of prior art references that when put together would be the invention in question. In other words, could an ordinary mechanic create your invention or was there some kind of non-obvious innovation. Defining the concept with using the concept is hardly illuminating, but that is the way the law of obviousness works. This is true because what is obvious to some large degree is in the eye of the beholder.
Last year marked the fifth anniversary of the Supreme Court landmark decision in KSR v. Teleflex (April 30, 2007), when the United States Supreme Court addressed the obviousness of patents under 35 U.S.C. § 103 for the first time since Graham v. John Deere in 1966.
A few trends in the law of obviousness as pertaining to chemical innovations were readily apparent in 2012. Pharmaceutical patent holders in litigation fared well at the Federal Circuit, while patent holders appealing decisions from the Board of Patent Appeals and Interferences fared poorly, and a third more subtle trend suggests chemical patents in district court litigation may be less susceptible to invalidation for obviousness post-KSR.
In Part I of this article we explored the trends in pharmaceutical litigation during 2012. In this second and final segment we focus on PTO Board decisions and appeals from non-pharmaceutical litigation relating to chemical patents.
Last year marked the fifth anniversary of the Supreme Court landmark decision in KSR v. Teleflex (April 30, 2007), when our nation’s highest court addressed the obviousness of patents under 35 U.S.C. § 103 for the first time since Graham v. John Deere in 1966. But the patent-at-issue in KSR was mechanical. Patent holders in the chemical arts were wondering whether (more akin to hoping?) KSR’s loosening of the obviousness analysis might have less impact on chemical / pharmaceutical inventions, as opposed to mechanical inventions, because of inherent unpredictability in the art of the former. As we enter 2013, we think this is a good time to review Federal Circuit decisions from the last twelve months to discern trends and patterns in the post-KSR obviousness analysis of chemical patents.
A few trends were readily apparent in 2012. First, pharmaceutical patent holders in litigation fared well – in a series of cases, the Federal Circuit rejected obviousness attacks in pharmaceutical patent challenges on appeal from the district courts. Second, patent holders appealing decisions from the Board of Patent Appeals and Interferences (whether it be an original application, a reexamination, or a reissue) fared poorly – the Federal Circuit affirmed several Board decisions finding chemical patent claims obvious. While these trends are not surprising, a third more subtle trend suggests chemical patents in district court litigation may be less susceptible to invalidation for obviousness post-KSR. In 2012, when the Federal Circuit reversed the obviousness decision below on a chemical patent, those reversals favored non-obviousness three to one.
Our review lends itself to dividing the 2012 Federal Circuit obviousness decisions in chemical cases in three different categories: appeals from i) pharmaceutical litigation, ii) PTO Board decisions, and iii) non-pharmaceutical litigation over chemical patents. What follows is our review of appeals from pharmaceutical litigation. Part II of the article will focus on PTO Board decisions and appeals from non-pharmaceutical litigation relating to chemical patents.
The Board recognized multiple characteristics that differentiate the claimed invention in the “674 patent from the prior art combination of Song and Handong. Among these, the Board specifically determined that the claimed invention possessed a “supporting arm” and that the safety wheels of a resultant combination of Song and Handong would be raised off the ground, unlike what is depicted in the ‘674 patent and recited in the claims. Still, the panel determined that the claims were invalid. How is it possible to find an invention obvious when not all of the elements are within the prior art? This is unfortunately a disturbing trend that has been brought about by a misreading of KSR.
I have been doing a lot of research and writing on obviousness and KSR v. Teleflex lately, but not for publication on the blog so far. Last Friday, July 6, 2012, I filed a petition for rehearing en banc in Plasmart v. Kappos. I represent the Appellee-Patentee. The case arose out of what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner found some of the claims allowable, the Board found all of the claims allowable, and then in a nonprecedential opinion the Federal Circuit overturned the Board.
This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result. The problem with that reasoning, however, is that not all of the elements were found within the prior art. In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.
The 5th anniversary of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision is on April 30th. This is a good time to review the implications of this case, but an even better time to look into the origins and constitutionality of the Non-obviousness requirement. You might object that the jurisprudence of the non-obviousness requirement is so well established that nothing can be learned from this sort of analysis. I disagree. Patent law is under assault by the Supreme Court, the media, the ‘information wants to be free’ crowd, multinational corporations, and the economics profession. If we attempt to explain patent law based on the decisions of people who never passed the patent bar, never wrote a patent, never prosecuted a patent, and do not have a technical background, we are doomed. We need to define patent law as a natural law/right based on certain fundamental truths. This is the only way to get the non-patent attorney judge or the general public to understand patent law and understand that it represents justice. It is also why many of my comments and posts appear repetitive. For a list of some of the fundamental principles of patent law please see Foundations of Patent Law.
Holding in KSR
The holding in KSR was confused, but is generally accepted as stating that the teaching, suggestion, motivation rule (TSM rule) is not the only rule for determining if an invention is obvious. What other standards the courts and the PTO should use was somewhat nebulous, but clearly the three prong test of Graham v. John Deere Co., 383 U.S. 1 (1966) is still valid. In addition, the Supreme Court seemed to adopt the ‘I know it when I see it’ standard to obviousness. The decision overturned the relatively objective TSM test for a subjective non-test.
On Monday, April 30, 2007, the United States Supreme Court issued its final decision in the matter of KSR v. Teleflex, which overruled the Federal Circuit’s application of the so-called “teaching, suggestion, motivation” rule (or simply TSM) as it applies to determining whether an invention is obvious. This 5th Anniversary of the ruling provides an opportunity to revisit the decision and where we have come since. This will be a recurring theme this week on IPWatchdog.com as we look at the law of obviousness in the wake of this infamous decision.
At least for the last generation (and likely longer) no other Supreme Court case in the patent arena has been nearly as influential as the Court’s decision in KSR v. Teleflex. This is because obviousness is where the rubber meets the road for the patentability of inventions. It is not enough that the invention is different; it also must also be non-obvious. TSM sought to inject objectivity into the obviousness analysis, and did so rather successfully. There were from time to time patents granted on inventions that would make you scratch your head and wonder, but was that any reason to remove objectivity from the obviousness analysis? No, but that is what the Supreme Court did when they issued the KSR decision, taking many by surprise.
In the recent patent case of Mayo vs. Prometheus Labs, the United States Supreme Court continued its pattern of restricting the scope of patentable subject matter under 35 US 101. Historically, patents had been strictly limited to processes, machines, compositions of matter and articles of manufacture. Excluded from eligibility were business methods, software, laws of nature, naturally occurring phenomena and mathematical formulas. Then the US Court of Appeals for the Federal Circuit began to expand the patent eligibility rules.
In Diamond v. Diehr, decided in 1981 by the United States Supreme Court, established that an un-patentable formula could be transformed into a process by the addition of method steps after the formula. Most would agree, however, that software did not widely become patent eligible until 1994 when the Federal Circuit in the Alappat case held that a programmed computer was essentially a machine and when that same computer was programmed differently, it became a second different machine – both patentable. The Alappat holding led to the acceptance of “software plus token hardware” as being patentable. Ultimately, the Alappat ruling would give rise to the State Street Bank case, decided in 1998 by the Federal Circuit, which held that business methods were patentable.
One of the most common questions I receive, dating back to the very beginning of IPWatchdog.com, is whether recipes can be protected by any form of intellectual property. Typically the question presents specifically by a reader asking whether a recipe can be patented, or how once can patent a recipe.
In most cases the typical recipe for a “killer Margarita” or “the best barbeque sauce ever” will not be patentable because they won’t be unique enough, typically failing on the non-obviousness requirement. Of course, the only way to know for sure is to understand how the Patent Office reaches its conclusions relating to what can and cannot be patented. It is certainly possible to obtain a patent on a recipe or food item if there is a unique aspect, perhaps if there is something counter-intuitive or a problem (such as self live or freshness) is being addressed. The trick will be identifying a uniqueness that is not something one would typically think to try.
On Monday, April 30, 2007, the United States Supreme Court issued its much anticipated decision in KSR International Co. v Teleflex, Inc. For many months patent pundits tried to predict how the Supreme Court would handle the Federal Circuit “teaching, suggestion and motivation” test, used to determine whether a particular patent claim is obvious. Predictions of this sort are usually no more reliable than predictions of any other kind, and while everyone had an opinion, few actually anticipated what the Supreme Court would do. Whether the surprise that was KSR was owing to the patent bar being willful blind or simply having misplaced hope is another story for another day.
The Supreme Court dislikes bright line rules, but surely they wouldn’t opt for a totality of the circumstances approach to obviousness and throw away TSM, thereby leaving some 6,000+ patent examiners to make their own determinations about the qualitative value of an invention? Isn’t that what erasing “flash of creative genius” was meant to do away with? Sadly, the Supreme Court put on display their severe lack of understanding for all to see, believing obviousness to be about common sense. But who’s common sense? What boundaries would be put in place? As is all to familiar, the Supreme Court took the “we decide, you figure it out” approach. I guess they loathe showing their work, which is probably why they aren’t mathematicians!
Yesterday the United States Court of Appeals for the Federal Circuit, in a split decision with Judge Lourie writing and Judge Bryson joining, took a step forward in the evolution of the law of obviousness that confirms my worst fears about obviousness in this post-KSR era.
I have written about KSR v. Teleflex numerous times and we have engaged in thought-provoking and sometimes heated debate in the comments to those articles. We have argued about the extent to which the obviousness laws have changed, and many have sought to calm my fears by pointing out that even under the ridiculously naive approach to obviousness set forth by the Supreme Court in KSR it was still necessary under previous Supreme Court rulings that the prior art teach each and every element of the invention. In short, it has been argued by many that even after KSR it is not an appropriate rejection, or reason to invalidate an issued claim, that it would be “common sense” to modify elements within the prior art in a wholly new way and then combine the “common sense” modifications. I did agree that was true, at least until yesterday.
The January 17, 2011, edition of Fortune magazine has Chief Justice John Roberts on the cover. Roberts is the Chief Justice of the United States Supreme Court, a Court now made up predominantly of conservatives by a 5 to 4 majority. It is the contention of the author of the article on Roberts that the Roberts Court is the most pro-business Court the United States has ever seen. If that is the case, which I am not at all sure is the case, it would have to mean that one can be “pro-business” while being “anti-patent,” which given the state of American manufacturing and the future of the U.S. economy seems questionable.
Of course, if you are anti-patent then you are anti-innovation because those who innovate are not the behemoths of industry, but rather start-up companies that absolutely require patents in order to attract funding, expand and create jobs. Thus, given the hostility toward patents it is entirely accurate to characterize the Roberts Court as anti-innovation. The Roberts Court increasingly puts hurdles in the way of high-tech job growth. You see, it is easy for anyone to characterize the Supreme Court as “pro-business” because selecting a victor in a “business case” almost necessarily means that a business has been victorious. But what business? One that is likely to innovate, expand, create jobs and form new industry? Or one that once innovated and expanded, but now finds themselves stagnant and laying off employees?