Bill Goodwine's Wiki - User contributions [en]

Here in list of arguments in Quanta

2011-04-29T18:28:43Z

Adam Mahood:

Post a link to your summary of the brief you read here.

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

[[Homework 8 (due Friday 28)~jnosal | Quanta Brief Summary 901438174]]

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

[[901419437 Quanta v. LGE Brief Summary]]

[[Quanta Brief 901437068]]

[[901281608: Quanta Brief]]

[[901444263: Quanta v. LGE Reply Brief of Petitioners]]

[[901479977: Quanta for Petitioners]]

[[Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride]]

[[Reply Brief of Petitioners (Quanta) - Adam Mahood]]

[[Quanta Brief Summary 901360293]]

[[Quanta Brief Summary 901431048]]

[[Quanta Brief Brobins]]

[[Quanta Brief hwong1]]

[[Quanta Brief: Tennant]]

[[Quanta Brief (John Gallagher)]]

[[Quanta brief - 901338276]]

[[Brief of Amici Curiae for Respondent - Eric Leis]]

[[Quanta Brief - Kschlax]]

[[Quanta Brief - Christine Roetzel]]

[[Quanta Brief: In support of Federal Circuit Ruling (eguilbea)]]

[[Quanta Brief: 901424607]]

[[Quanta Brief - 901425018]]

[[Quanta Brief- Xiao Dong]]

[[Quanta Brief - Ackroyd]]

[[Quanta Brief - Karch]]

Reply Brief of Petitioners (Quanta) - Adam Mahood

2011-04-29T18:27:50Z

Adam Mahood:

*Petitioner Brief (Quanta)
** Starts out by saying that LG said Quanta conceded that licenses could have conditions and that this is all that this case deals with
*** Manufacturing licenses can have conditions on what sales are authorized but the sale still ends the patentee’s rights
**** Contract law issues not dealt with here
*** LG claims that their ability to put make and sell restricitions on Intel is the same thing as limiting our right to use the product – Once it’s understood that these aren’t the same thing, the respondent’s arguments fail
** Arguments
*** The Federal Circuit has revived the precedent from A. B. Dick decision that a purchaser’s rights are essentially an implied unlimited use rather than patent exhaustion and these rights can be limited if the patentee puts conditions
**** Should not be the rule because SCOTUS has expressly overruled this in prior decisions
*** Quanta wants to point out the distinction between licensee sales and patentee sales
*** Now deals with the authorized sale issue
**** Respondent points to Western Electric as precedent that if the licensee does not have position to pass on all the rights, then the purchaser can be sued
**** Quanta claims that this principle does not apply here because Intel was authorized to make these sales
**** Licenses can have conditions and Intel obliged by these, however SALES can not have conditions – A sale exhausts the patent!
*** Really thinks that LG is overstepping its bounds to get around exhaustion that would normally be thought of as taking place
**** “When the patentee…sells a machine or instrument whose sole value is in its use, he receives consideration for its use and parts with the right to restrict its use.”
*** Overall, there is a difference between sales and licenses but not between patentee sales and licensee sales – Exhaustion still applies
*** The precedent needs to be established that no clever claim drafting can avoid exhaustion – Really trying to get at that methods are not exempt from exhaustion
*** What LG could have done was signed a contract or included a license saying that Intel is not authorized to sell the chips unless the purchaser signs a contract saying they won’t use them in a way other than that intended
*** Respondent’s seem to be missing the obvious in that A. B. Dick was expressly overruled and it was held that any notice restrictions on the use of sold goods are unenforceable because or patent exhaustion
** Main Points
*** The sales of Intel to Quanta were authorized and thus didn’t breach the license AND
*** The sales because they were authorized triggered the exhaustion principle AND
*** Just because the sale included only a piece of the method, there was no other use for it, so it also still triggers the exhaustion

Reply Brief of Petitioners (Quanta) - Adam Mahood

2011-04-29T18:26:02Z

Adam Mahood: Created page with "Petitioner Brief (Quanta) • Starts out by saying that LG said Quanta conceded that licenses could have conditions and that this is all that this case deals with ➢ Manufacturi..."

Petitioner Brief (Quanta)
• Starts out by saying that LG said Quanta conceded that licenses could have conditions and that this is all that this case deals with
➢ Manufacturing licenses can have conditions on what sales are authorized but the sale still ends the patentee’s rights
• Contract law issues not dealt with here
➢ LG claims that their ability to put make and sell restricitions on Intel is the same thing as limiting our right to use the product – Once it’s understood that these aren’t the same thing, the respondent’s arguments fail
• Arguments
➢ The Federal Circuit has revived the precedent from A. B. Dick decision that a purchaser’s rights are essentially an implied unlimited use rather than patent exhaustion and these rights can be limited if the patentee puts conditions
• Should not be the rule because SCOTUS has expressly overruled this in prior decisions
➢ Quanta wants to point out the distinction between licensee sales and patentee sales
➢ Now deals with the authorized sale issue
• Respondent points to Western Electric as precedent that if the licensee does not have position to pass on all the rights, then the purchaser can be sued
• Quanta claims that this principle does not apply here because Intel was authorized to make these sales
• Licenses can have conditions and Intel obliged by these, however SALES can not have conditions – A sale exhausts the patent!
➢ Really thinks that LG is overstepping its bounds to get around exhaustion that would normally be thought of as taking place
• “When the patentee…sells a machine or instrument whose sole value is in its use, he receives consideration for its use and parts with the right to restrict its use.”
➢ Overall, there is a difference between sales and licenses but not between patentee sales and licensee sales – Exhaustion still applies
➢ The precedent needs to be established that no clever claim drafting can avoid exhaustion – Really trying to get at that methods are not exempt from exhaustion
➢ What LG could have done was signed a contract or included a license saying that Intel is not authorized to sell the chips unless the purchaser signs a contract saying they won’t use them in a way other than that intended
➢ Respondent’s seem to be missing the obvious in that A. B. Dick was expressly overruled and it was held that any notice restrictions on the use of sold goods are unenforceable because or patent exhaustion
• Main Points
➢ The sales of Intel to Quanta were authorized and thus didn’t breach the license AND
➢ The sales because they were authorized triggered the exhaustion principle AND
➢ Just because the sale included only a piece of the method, there was no other use for it, so it also still triggers the exhaustion

User:Adam Mahood

2011-04-29T18:24:44Z

Adam Mahood:

=My Selected US Patent=
*Patent : The Portable Computer
**Patent Number: 4497036
**Filing date: Apr 12, 1983
**Issue date: Jan 29, 1985
**My idea was to try and find the "first" patent for a portable computer. Laptops and mobile technology have revolutionized how we live and work on a day to day basis and trying to trace their origins should prove to be a worthwhile venture. The actual patent is for a revolutionary new portable computing device that allows for a larger display than the one portable computer patented by Epson in the same year. By allowing the whole screen to fold over the keyboard, the keyboard and display sizer are both increased. The one revolutionary aspect of this design is that it allows for the insertion of CMOS RAM expansion cartridges so that the performance can be scaled. I found the patent while digging for laptop origins on Google Patents. The link is [http://www.google.com/patents?id=eP8wAAAAEBAJ&printsec=claims&zoom=4#v=onepage&q&f=false]

=Non-Obviousness Assignment - 1/28/11=
[[Non-Obviousness - My Selected Patent]]

=Engineering Analysis/Non-Obviousness - 2/4/11=
[[Engineering Analysis - Adams Patent]]

=Non-Obviousness - Adam Mahood - 2/9/11=
[[My Non-Obviousness Page]]

=Printed Publication Case - Adam Mahood - 3/22/11=
[[Printed Publication Case - Adam Mahood]]

=Doctrine of Equivalence Case - Adam Mahood - 3/30/11=
[[Doctrine of Equivalence Case - Adam Mahood]]

=Brief for LG v. Quanta Case - Adam Mahood - 4-28-11=
[[Reply Brief of Petitioners (Quanta) - Adam Mahood]]

Doctrine of Equivalents Case List

2011-04-04T21:19:01Z

Adam Mahood:

Add your case to the list with a one-paragraph (approximately 250 words) summary of the facts at issues, i.e., "an umbrella is or is not equivalent to a parasol because..."

Please put the cases in chronological order. If two are from the same year, then put them in alphabetical order. Also put your name, your login name or NDID number with your case. Use the following for a template.

* Goodwine v. Batill, 123 US 4567 (1066)
This case concerned a patent for an iPad and the patentee sued the maker of an iPod for infringement. The important part of the claim was "a device for playing music and other media comprising a touch screen..." The court held that iPod infringed the iPad patent because the ... was equivalent to the ... because ...

Bill Goodwine

Patrick Lane (901431645)
* Union Paper-Bag Machine Company v. Murphy 97 U.S. 120 (1877)
In this case, the patents in question were machines used to make paper bags. The machines are loaded with large rolls of paper and then stamp out the bag pattern, or "blanks," which are then folded and pasted to make a paper bag. Union Paper was granted a patent in 1859 for this type of machine which used a long, straight knife which would move up and down to punch the pattern out of the paper. In 1874, Murphy was granted a patent for a similar device that used a serrated knife which cut the paper from below as the rolls moved over it. Union is suing Murphy for infringement, claiming the devices which cut the paper in each machine are substantially equivalent, and therefore are under protection by Union's 1859 patent. Murphy argued that the serrated knife is an improvement over the straight knife, and that the method of cutting was different enough to constitute patent protection. However, the expert witness explained that the paper is essentially being cut in the same way in each device: a fast moving, sharp edge is slicing through the paper. Even though one knife was serrated, the cutting occurs in the same mechanical fashion, and therefore is equivalent. The court found in favor of Union, stating that the two methods of cutting the blanks were substantially equal because they performed the same function in the same way.
* I had also read this case. The above is a good summary, though perhaps also worth noting is the fact that the court made specific mention of the fact that changing the name of the invention had no bearing on its nonequivalence (though this seems pretty obvious). - Kurt Riester 901425018
* I read this case as well. The decision can be best summed: "Nor can it make any difference that the cutter is made to cut the paper by its own gravity, while the knife is made to cut by the fall of a device which performs no other function than to fall upon the paper at the proper moment, and cause the stationary knife to cut for the same purpose." Because the cutter and the knife accomplish the same purpose in substantially similar ways, they are equivalent. - 901239065
* I also chose to read this case. The summary stated above accurately states what this case is about. My addition to what has already been previously said would be that this case establishes the doctrine of equivalents in saying that "if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape." - 901360293

hwong1
* Absolute Software Inc. v. Stealth Signal Inc.
The patents in question deal with security apparatus’ that are used to retrieve lost or stolen electronic devices. Absolute accused Stealth of infringing on their patent, and in effect Stealth filed a counterclaim stating that Absolute infringed on another prior art. Both companies filed for summary judgment stating that neither infringed on any patent. The doctrine of equivalence was used to determine if either company infringed on other patents. Absolute proves that It does not infringe on the prior art because the transmission message to the central site is not done at a semi-random rate. Absolute did not literally infringe, but the doctrine of equivalence was needed to verify. The courts found that since Absolute’s product makes the call to the central site every 24.5 hours, it is not ‘random’ by any means but rather ‘uniformly randomly distributed’. Thus, Absolute does not infringe on its prior art. Stealth was analyzed on in infringing on Absolute by the use of an XTool agent. Doctrine of Equivalence is again applied, finding that Stealth’s invention differed in providing a step at the end of the communication that Absolute does not have. Absolute has written in their claims on their Xtool agent “without signaling the visual or audible user interface.” Therefore, when Stealth created an audible user interface, it made its invention nonequivalent to Absolutes. Thus, Stealth is found to be non-infringing with their patent.

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
This case was discussed in class and presented by another student, but I read it as well. This case concerned a patent for a gyroscope owned by Adkins, the inventor of an improved gyroscope, and Lear, the company that sells gyroscopes. Lear and Adkins had a written agreement that allowed Lear to sell Adkin’s patented invention, where Adkins received a small percentage of the net sales price as royalties. In 1957, Lear refused to pay royalties to Adkins with the claim that they were selling gyroscopes that differed from Adkin’s invention. However, the “new” gyroscopes differed only in “size, form, and shape,” but “contain[ed] the same elements.” The essential elements were the same between Adkin’s patent and Lear’s other steel gyroscopes, but the scale and exact assembly was different. Since those did not constitute a substantial difference, the jury of the Supreme Court of California held Adkins in favor and required Lear to pay royalties to Adkins for the sales price of the other gyroscopes sold. This case is an example of clear infringement.

901431048

* Adkins v. Lear, Inc. (1968)(67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
I am the other student^^^(see case above). Other items of note in the case, aside from the summary above, include that the court ruled that infringing the doctrine of equivalence is a matter of fact and that the jury should be the one to establish it. This brings up an interesting qualification, as it seems almost every other case considered with respect to the doctrine of equivalence was decided by judges, not juries.

Brobins

*AMEC Liquidating Trust v. IVAC Corporation, 885 F.2d 1574 (1989)

AMEC had a patent for a thermometer with a plastic cover held on by a hooking type mechanism. IVAC created a thermometer with a cover held on by a ring that created a friction lock. The CAFC held the IVAC invention was non-infringing on the AMEC patent because under the doctrine of equivalents, it did not perform the same function in the same way. The AMEC thermometer cover used an inscription fit, which created deep scratches in the cover. The IVAC thermometer used a friction fit, which only created superficial scratches in the cover. The CAFC found that the superficial scratches did not constitute an inscription fit. Also, the CAFC decided that AMEC did not present any evidence proving that the ring in the IVAC patent was equivalent to the “hook” in the AMEC patent. Because of this, the patent was non-infringing under the doctrine of equivalents.

901444263

*Johnston v. IVAC Corp., 885 F.2d 1574 (1989)

The inventor, Turner, invented a thermometer probe cover that stays on (this was owned by AMEC). It kept the cover on via a sharp metal hook to tear into the cover’s plastic. IVAC developed a thermometer that served a similar purpose of keeping the probe cover on, except that it did so with a ring on the probe (to hold the cover via friction). IVAC intentionally left the probe free of any sharp edge to ease the removal of the probe cover when needed. District Court of Southern California ruled in summary judgment that IVAC’s thermometer probe covers do not infringe AMEC’s. On appeal from AMEC, the Court of Appeals affirmed the judgment. A ring that does not tear the plastic cover is not equivalent to the hook that does. [http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?mt=CampusLaw&db=ALLCASES&rlt=CLID_QRYRLT4121840350313&origin=Search&sp=003654480-2000&method=TNC&cfid=1&rp=%2fwelcome%2fCampusLaw%2fdefault.wl&eq=welcome%2fCampusLaw&rltdb=CLID_DB1095239350313&srch=TRUE&query=TI(JOHNSTON+%26+IVAC)&vr=2.0&fmqv=s&action=Search&fn=_top&service=Search&sv=Split&rs=WLW11.01]

901471466

**I also read this case for the assignment and agree with the discussion above. The one thing that I would add, just to give insight into the amount of stretching certain companies due in order to show equivalence is the expert testimony that AMEC presented. AMEC had an engineer look for stratching and indentation on the IVAC device. He did so by using a 20x microscope to find superficial nicks and cuts. Luckily the court saw through this empty analysis and ruled that the IVAC device did not perform the same function as the patented article. - Adam Mahood

*Unitronics Ltd. v. Gharb, 318 Fed.Appx. 902 C.A.Fed. (Dist.Col.) (1989)

This case involved a patent for programmable logic controllers with Global System for Mobile communications. The main issue was infringement based on the capabilities of the programmable logic controllers (PLCs). The court held that alleged infringers PLCs did not contain a “digital recording device having at least one emergency message” or an equivalent. The alleged infringers PLCs also did not have the “data set for transmission to the mobile telephone including alarm information.” The court also ruled that they did not have anything equivalent to either of these claims. Based on the ruling in Warner-Jenkinson the device is not infringing unless it “contains each limitation of the claim, either literally or by an equivalent.” The alleged infringing PLCs did not have a similarity to all of the limitations to the claim and were thus allowed to continue selling their device. [[http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?mt=CampusLaw&db=ALLFEDS%2cALLSTATES%2cSCT&rlt=CLID_QRYRLT3654057332134&origin=Search&sp=003654480-2000&method=WIN&cfid=1&rp=%2fWelcome%2fCampusLaw%2fdefault.wl&eq=Welcome%2fCampusLaw&rltdb=CLID_DB3890056332134&srch=TRUE&query=unitronics+gharb&vr=2.0&fmqv=s&action=Search&fn=_top&service=Search&sv=Split&rs=WLW11.01]]

901479977

*Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990)

Wilson is suing DGA/Dunlop for infringement under the doctrine of equivalents of its patented design for a golf ball. Wilson's patent is for a golf ball modeled as an icosahedron with dimples placed in such a way as to have 6 "great circles" of symmetry instead of the typical 1. The patent specifies where dimples should be placed on the ball and requires that no dimples be placed on the great circles. The accused DGA balls use the same "great circles" design, but with dimples placed on the great circles. DGA's defense is that there is "no principled difference" between its design and a design of the prior art (prior to Wilson's patent). Therefore, allowing Wilson to utilize the doctrine of equivalents would extend protection of claims already in the prior art to Wilson's patent. The CAFC decided that Wilson can only utilize the doctrine of equivalents if it can make a hypothetical claim that literally covers Dunlop's design (in this case, claim a ball with dimples placed on the great circles) and is also nonobvious considering the prior art. Wilson is unable to make such a nonobvious hypothetical claim and therefore no infringement was found.

901338276

* Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990) 904 F.2d 677

I see that someone else and I did the same case, but I'll summarize in my own words here. This case involved the design of a golf ball, and the placement of the dimples on a golf ball. There are aerodynamic benefits as to where the dimples are placed and how the dimples themselves are shaped. The Wilson golf ball had a design where the face of the golf ball is divided using 6 great circles, creating an equal number of equally sized triangles. Then the midpoints of each leg of the resulting triangles are joined, creating 4 triangles inside each larger triangle. See the patent document as it is better shown than explained. This way of dividing the golf ball is not the novel idea, but rather the placement of the dimples relating to the previously mentioned division is. The Wilson ball left all 6 great circles untouched by dimples. They deemed this an aerodynamic advantage. At the time of the application filing, the prior art had already taught of the great circles, just not leaving them completely intact. The accused infringing ball from Dunlop had the same 6 great circles, but they did not make an effort to leave them uncovered, and rather had a significant number of dimples covering them. The court held that the Dunlop ball could not be considered equivalent to the Wilson ball because the prior art limited Wilson's claims in the first place, and those claims could not now be expanded to enclose the Dunlop ball. The court laid out a framework for deciding doctrine of equivalents cases: First, take the claim that is proposed to enclose the accused infringer, and reword it to literally enclose the infringer. Next, see if that claim would pass in light of the prior art. If yes, then the doctrine of equivalents can be used, if no, then it cannot. In this case, the hypothetical claim would not have passed in light of the prior art, so the doctrine of equivalents could not be used.

901417119 - Bcastel1

* Lemelson v. General Mills, Inc., 968 F.2d 1202 (1992)

Lemelson sued Mattel, alleging that Mattel's "Hot Wheels" toy car track infringed on his patented toy track. The U.S. District Court for the Northern District of Illinois found in favor of the plaintiff. Mattel appealed to the CAFC. The Court held that the "Hot Wheels" track did not contain all the limitations of the patent; it was equivalent to the prior art. That is, Lemelson's patent could not be both valid in light of the prior art and infringed upon by Mattel. Furthermore, upon his first application, claim 3 of Lemelson's patent had five clauses. The PTO examiner found the patent to be indistinguishable from the prior art. Lemelson added clauses [f] and [g] and received a patent. The important parts of the claim were, "[f] said guide means include a pair of spaced apart runner portions for defining the pathway of a vehicle moving over said track, [g] said spaced apart runner portions include upwardly extending rails for guiding the wheels of a vehicle." The Court held that "Hot wheels" did not contain any elements equivalent to the clauses [f] and [g]. The Court also noted that the public is entitled to the PTO record to determine the scope and meaning of claims.

901330223

*Valmont Industries Inc. v. Reinke Manufacturing Company Inc., 983 F.2d 1039 (1993)

901316153

This case concerns an adaption for center-pivot (i.e. rotating) irrigation systems. The adaption (an apparatus that attaches to the main frame of the sprinkler) allows the corners of a field, normally missed by the standard rotating irrigation system, to be watered. The infringement issue relates to the means by which the position of the sprinkler is detected, relative to the field. The patent uses a method of pivot angle encoders, while the "infringing" patent uses buried electromagnetic cables to guide the sprinkler around the field.

The CAFC ruled that the second device was not infringing, reversing the decision of the district court. The district court argued that the means of controlling the system were equivalent. The CAFC's argument was that while the two irrigation systems performed substantially the same overall function to obtain substantially the same overall result as the claimed invention, the way those results were achieved was substantially different. "Comparison of these two control means compels the conclusion that the claimed control means and Reinke's control means are not structurally equivalent.[...][E]ven though both the control means in the specification and the control means on Reinke's device use electric signals, the structures generating those signals are strikingly different."

Because the doctrine of equivalence requires that the two devices perform substantially the same function in substantially the same way to achieve substantially the same results, the two control systems were not equivalent under the doctrine of equivalence because they did not meet the "way" requirement of the doctrine of equivalence.

*William Bradshaw and Robert Shepherd v. Igloo Products Corp. 1997 WL 543109 (US District Court, N.D.Ill.)

William Bradshaw sued Igloo Products for infringement of a wheeled cooler. Bradshaw’s patent was for a cooler with a pulling handle and two lifting handles, one of which was connected on the same axle as the pulling handle. The Igloo products in question were the Rolling Kool Locker which had a rotatable lifting hand that can also be used to pull the cooler and the Cool Roller which had separate lifting and pulling handles coupled to separate axles. The court decided that the prior art for the Cool Roller was a different patent, the Mason patent. This patent was for a wheeled cooler with separate lifting and pulling handles. The Mason patent was granted before Bradshaw’s patent. The court ruled that the Cool Roller fell under the Mason patent. Therefore, if Bradshaw’s patent were to be expanded to include the Cool Roller’s handles, it would be an invalid patent as a result of the prior art, the Mason patent. This leads to a method of deciding infringement. If the product in question mimics prior art, then it cannot infringe the patent otherwise that patent would be invalid. In deciding infringement for the Rolling Kool Locker, the court decided that it was up to a jury to decide whether the Kool Lockers handles were equivalent to Bradshaw’s patent, since there was no other glaring evidence.

Eric Paul

* Dr. Raymond G. Tronzo v. Biomet Inc. 1998 156 F.3d 1154 (United States Court of Appeals, Federal Circuit)
In this case Biomet was accused of infringement of an artificial hip prosthesis patented by Dr. Tronzo (patent 4,743,262). The alleged infringement revolved around the shape of the artificial hip socket and the hinge that was inserted into the socket. Patent ‘262 claimed a “generally conical” shape of the hip socket. Biomet’s design contained a strictly hemispherical shape. The court heard evidence in which it was claimed that even though the shapes would have at first glance performed in the same manner, the forces generated on the surface of each implant would be different depending on the shape. Additionally, after hearing expert testimony that suggested any shape would have been equivalent to the conical limitations of the patent claims, the court said that such a ruling would have been impermissible under the all-elements rule of Warner Jenkinson because it would write the “generally conical” shape limitation out of the claims. Therefore, the court held that the accused design did not infringe upon the patent claims under the doctrine of equivalence.

Anthony Schlehuber 901477539
*Lemelson v. Mattel (1992) 968 F.2d 1202
Lemelson sued Mattel on the grounds that the Hot Wheels car track infringed on his patented track design. In the circuit court Mattel was found to have infringed on Lemelson’s track design. However, in the CAFC, this decision was overturned due to limitations added to the Lemelson patent during the application process to prevent it from infringing on the prior art. Lemelson’s patent claimed a system of vertical track supports to differentiate it from earlier works. Since these claims were needed for Lemelson’s patent to be valid and Mattel’s track did not contain these supports, it was ruled that Mattel had not infringed.
Peter Mitros (901461727)

*Hale Propeller, L.L.C. v Ryan Marine Products Pty., LTD., et al, 151 F. Supp .2d 183 (2001) Connecticut District Court
Ryan owned patent 4411073, issued on 25 October 1983, which concerned devices to measure the pitch of propeller blades. Ryan originally filed the claim on 13 July 1981 it was rejected and then ammended on 4 October 1982. Hale's device called the "Hale Propeller MRI" was developed in 1997. In question are claims 1(b),(c),(f), and 6. A third party, Michigan Wheel Corporation, a distributor of Hale's invention filed for patent invalidity. The important differences between Hale's and Ryan's device are that Hale's does not use gears or worm-drives to rotate the blade and the device does not give direct readouts of the measurements using electric circuits. The issue with claim 1(b) was if a roller was a necessary part of the structure because it prevents skipping of the probe making the measurements more accurate. The court used means-plus-function to rule that the roller was important and Hale did not infringe. The issue with claim 1(c) deals with whether a worm or gear drive is necessary to rotate the blade. Ryan's patent discloses a hand-cranked device, like Hales, but includes a worm-drive. Part of Ryan's ammendment to his claim was to include worm gear to the hand-cranking device and therefore the court used prosecution history estoppel to make their decision because Ryan forfeited that claim (hand-cranked device without worm-drive) in order to get the patent and therefore cannot use doctrine of equivalents to get the claim back. The issue of claim 1(f) was whether the computer in the claim was a special computer needed for the readouts. The court ruled that the claim was not that narrow, but then the court ruled that claim 6 dealt with a computer that receives measurement data from the optical encoder and therefore Hale did not infringe. The patent was also ruled valid using the roller and worm drive to prove that it was non-obvious §103, definitively disclosed §112, and not anticipated by prior art §102(b).

Gillian Allsup

901281608

*Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc. Nos. 2010-1145, 2010-117. (2001) United States Court of Appeals, Federal Circuit

This case began as an infringement lawsuit by Siemens Medical Solutions USA, inc. against Saint-Gobain Ceramics and Plastics, Inc. for the alleged infringement of a patent held by Siemens for a scintillator, a part of an x-ray machine that detects radiation. Saint-Gobain owned a patent for a similar device and the circuit court found that this patent infringed on the patent held by Siemens, which was filed earlier. Though the doctrine of equivalents was used to rule infringement, Saint-Gobain was found to have accidentally, rather than willfully infringed and Siemens was awarded 52.3 million dollars.

Siemens filed for patent number 4,958,080 on August 4, 1989. This patent was for a scintillator containing cerium-doped- lutetium oxyorthosilicate. This is a component of a radiation detector that absorbs gamma-ray photons from an x-ray machine and converts them to visible light so the results can be interpreted. Saint-Gobain also produces scintillators, filing patent number 6,6424,420 in 2000 for a cerium-doped lutetium-yttrium orthosilicate. The chemical composition differs from that of the Siemens' patent as %10 of the lutetium is substituted for yttrium. These scintillators were sold by Saint-Gobain to Philips Medical Systems, a competitor of Siemens. The circuit court found that the composition of Saint-Gobain's scintillator preformed largely the same function in the same manner as Siemens' patent, and therefore was infringement under the doctrine of equivalence.

Saint-Gobain filed a motion for a new trail, on the basis that the jury was not told that infringement by the doctrine of equivalence must be proved by clear evidence and argued that damages should be remitted. The Federal Appeals Court did not grant Saint-Gobain a new trial, but did reduces the damages to 44 million.

*Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283 C.A.Fed. (Mich.), 2010
Adams Respiratory Therapeutics patented an extended release formulation of expectorant. The patent was for Mucinex and was new in that it allowed the expectorant (an aspect to medicine which promotes the discharge of phlegm or other fluid from the respiratory tract). Adams brought suit, alleging that generic manufacturer's (Perrigo's) proposed production and marketing of generic version of the product would infringe its patent. The United States District Court for the Western District of Michigan, Gordon J. Quist, J., 2010 WL 565195, granted defendant summary judgment of non-infringement. Plaintiff appealed. Within the patent Adams specified an amount of expectorant in the drug using the words "at least." The court found that "at least" did not prevent the use of the doctrine of equivalents and that the doctrine may apply to patents with specific number ranges. Adams patent stated that it would have at least 3500 hr*ng/mL, while Perrigo was using 3494.38 hr*ng/mL (only a 0.189% difference). Adams argued that this number was not substantially different and thus should represent infringement. Perrigo argued that because the claim does not use words of approximation, Adams cannot expand this element to ensnare Perrigo's product. The court found that the fact that the claim does not contain words of approximation does not affect the analysis-“terms like ‘approximately’ serve only to expand the scope of literal infringement, not to enable application of the doctrine of equivalents.” The proper inquiry is whether the accused value is insubstantially different from the claimed value. Because the court found that there was not a substantial difference between the numbers the doctrine of equivalents applied, the order of the district court was vacated and the case was remanded.

Snooki

*Sunbeam Products, Inc. v. Homedics, Inc., Slip Copy, 2010 WL 5230892 (2010)

This case involved a patent for a force-transmitting bearing used with a platform scale. Sunbeam held a patent which specified bearings which were attached to the platform via loose tabs which allowed the bearings to move horizontally. The patent claims required the base of the bearing to be oriented parallel to the platform and remain parallel to the platform at all times. The structure of the accused device was such that the bearings were connection to the platforms using dimples on the lower surface of the platform which the bearings fit into. Sunbeam had criticized prior art which used a similar dimple connection during prosecution beacuse of the potential for unwanted force moments applied by the bearing. The CAFC upheld the District Court's finding of no infringement based on the doctrine of equivalents because bearings which rocked and pivoted, as the accused device did, did not fall within the reach of the patent claims because they did not remain parallel to the platform at all times.

901422128

*Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326 (2001)
Kustom Signals held a patent for a multimode traffic radar system which will show either the fastest speed or the strongest signal. Three of the claims used the word "or" in their wording. Kustom claimed that the "or" was a logical operator meaning one, the other, or both. Applied Concepts had designed a radar system which returned both the fastest speed and the strongest signal. The Court held that the word "or" was to hold its traditional, customary meaning as being exclusive, not inclusive, of the two statements.

901 41 7852

*Sage Products, Inc. v. Devon Industries, Inc., 126 F. 3d 1420 (1997)

Sage Products sued Devon Industries for infringement of several patents relating to containers for disposing of hazardous medical waste (needles etc.). Devon counter-sued for infringement of one of its similar patents. The district court held (on summary judgment) that there was no infringement by either party literally or equivalently. The appellate court affirmed.

Devon’s first alleged infringement was of Sage’s container claiming an elongated slot "at the top" of the apparatus for which to deposit waste, and a "barrier over the slot" to prevent contamination. Devon's patent involved a type of elongated slot that was embedded within the container and a hinged element at the opening. The court ruled no literal infringement because the Devon patent did not include the "at the top" and "over" features of the Sage claim. Even though the devices perform the same function the court ruled no equivalent infringement because the hinged element did not "substantially constrict access" to the container, and the slot was not "substantially at the top" of the container. The court was adamant that equivalent function could not negate the “at the top” and “over” limitations of the patent, stating that such power would reduce patent claims to "functional abstracts" devoid of meaningful structure limitations for the public to reference. A second infringement involved in this case resulted in the court ruling that if patent claims specify a function and recite its importance the patentee cannot later accuse an invention devoid of the specified function of infringement.

901419437

*Siemens Medical Solutions USA, INC. v. Saint-Gobain Ceramics & Plastics., F.3d, 2011 WL 651790 (2011)

Siemens developed, manufactured, and sold PET scanners which made use of scintillator crystals consisting of cerium-doped lutetium oxyorthosilicate (LSO). Saint-Gobain manufactures and sells scintillator crystals for use in PET scanners which consisted of cerium-doped lutetium-yttrium orthosilicate (LYSO). This is chemically different from LSO in that some of the lutetium is substituted for by yttrium. In Saint-Gobain's crystals, 10% of the lutetium atoms are substituted for by yttrium atoms (crystals are 10% Y LYSO). In April of 2007, Siemens sued Saint-Gobain for infringement of claims 1 and 2 of Siemens '080 patent for LSO scintillator crystals and photodetectors. Saint-Gobain aregued that its LYSO crystals are not equivalent to those claimed in the '080 patent because their crystals are separately claimed by their '420 patent. A jury trial found Saint-Gobain infringing upon the claims held by Siemens. Saint-Gobains appeals, and claims that the district court erred in jury instructions, claiming that in cases where an alleged equivalent is separately patented, a higher burden of evidence is required. Their reasoning was that the jury's finding of infringement effectively invalidated their '420 patent for LYSO crystals as the ruling of equivalence implied a conclusion of obviousness. The Court of Appeals disagrees, stating that it is well established that separate patentability does not avoid equivalency as a matter of law. The Court of Appeals also disagrees that the jury's finding of infringement invalidates the '420 patent; it only finds the level of LYSO used in practice (10%) is equivalent to Siemen's LSO crystals. Other compositions of LYSO could well be non-equivalent. Using the function-way-result test which asks whether an element of the an accused product performs substantially the same function in substantially the same way, the Court of Appeals affirms the juries finding of infringement.

Erich Wolz

*Sunbeam Products Inc. v. Homedics Products Inc. , US Court of Appeals, District Court of Wisconsin (2010)
This case involved a clear example of non-equivalence relating to the doctrine of equivalence. The patent holder Sunbeam Products brought action against competitor Homedics, alleging infringement of its patent for force-transmitting bearings for a platform scale. This case was decided under the district court of Wisconsin. Sunbeam Products had created platform bearings which translated purely horizontally along a platform which transferred all platform loads into purely vertical loads supported by the bearings. A previous patent, ‘326 patent, encompassed bearings which rocked and pivoted. HoMedics's accused scales all include bearings similar to the bearing disclosed in the ′326 patent. Each of the HoMedics bearings is machined with a nose-like protrusion that fits into a corresponding dimple on the underside of the platform. The trial court noted that the accused bearings all rock and pivot within their corresponding dimples in the underside of the platform. Sunbeam did not dispute that the HoMedics bearings rock and pivot in that manner. Sunbeam's argument was that in addition to rocking and pivoting, the HoMedics bearings were capable of some horizontal movement and therefore infringe the ′420 patent.
In light of its claim construction and the undisputed evidence regarding the operation of the bearings in the accused HoMedics products, the district court granted summary judgment of noninfringement. The court determined that no reasonable juror could find that bearings that rock and pivot remain parallel to the underside of the platform; accordingly, it held that the pivoting bearings in all of the accused products do not literally infringe the ′420 patent.

The most important distinction that was made in this case was the following statement. “The doctrine of equivalents is not a license to rewrite the claims to encompass what a patentee believes to be an equivalent structure. That is especially true in a case such as this one, where the accused product is not later-developed technology that is insubstantially different from the claimed invention, but instead embodies disavowed prior art. Thus, the district court correctly held that the accused bearings do not infringe the ′420 patent under the doctrine of equivalents.”

Christine Roetzel - 901425022

*Hughes Aircraft Co. v. U.S. 717 F.2d 1351

NASA and Department of Defense, were trying to build a satellite that would orbit the earth. However, they were unable to do so they had problems with the attitude control. Williams, a man who was working for Hughes Co. was able to figure out the problem. He was able to have lab model on 4/2/60 and it was called "dynamic wheel." Williams presented it to NASA and then Hughes Co and NASA entered an agreement to build the satellite. Williams filed for a patent on 4/18/60 and that became known as "Williams patent."
However, the govt started to build these spacecrafts that used the same systems from the satellite and did not give compensation to Williams. It went to court and the govt said that Williams patent was invalid because it infringed McLean's telescope. Williams rewrote his claims and stated “McLean's infrared telescope does not indicate the instantaneous spin angle position of his body with reference to a fixed external coordinate system, and it does not indicate the orientation of the axis with reference to a fixed external coordinate system." The court found Williams patent valid.
Then, the court looked at the spacecraft and compared it to Williams satellite. They found the following similarites: "(1) each is spin-stabilized; (2) each contains a jet on the periphery, connected by a valve to a tank containing fluid for expulsion substantially parallel to the spin axis; (3) each employs sun sensors to sense ISA position; (4) each requires knowledge of orientation relative to a fixed external coordinate system; (5) each contains radio equipment for communicating with the ground; (6) each transmits spin rate and sun angle information to a ground crew; and (7) in each, jet firing is synchronized with ISA position to effect controlled precession and thus to achieve a desired orientation."
Needless to say the court ruled that govt infringed Williams patent.

901439143

* Sage Products, Inc. v. Devon Industries, Inc. 126 F.3d. 1420 (1997)

In this case, Sage Products sued Devon Industries for infringement of two of its patents and Devon countersued Sage for infringement of one of its own patents, all of which relate to the disposal of medical waste products such as needles. In trial and on appeal, the courts held that there was no literal infringement nor infringement by the doctrine of equivalents by any party. Sage claimed that Devon's '251 for a "tortuous path" disposal container infringed on both its '728 patent for a sharps disposal container and its '849 patent for the removal and storage of syringe needles. Devon claimed that Sage's '728 patent infringed on its '592 patent for a disposal container.
** The '728 patent consists of an opening with a curved arc extending above it and another below it (inside the container) with a rotatable L-shaped flap such that waste can be deposited without exposing it again.
** The '849 patent covers a container with notches for removing needles and a "moveable closure" that allows the container to be closed and reopened as needed.
** The '251 patent covers a disposal container with a slotted opening at the top and 2 overlapping but displaced obstructions within the container to prevent accessing material that has been disposed of. It also has a closure that permanently locks once closed.
** The 592 patent covers a container that has a slotted opening and another "baffle" within the container that has another slotted opening horizontally displaced from the first
The courts held that the '251 patent did not infringe on the '728 patent because the patent explicitly described a precise configuration of an opening at the "top of the container" with one obstruction "over said slot" and another below, and that '251 configuration was different. They also held that the '251 patent did not infringe on the '849 patent because there was an important difference between permanent closure and closure that can be reopened. Finally, the '728 patent did not infringe on the '592 patents for similar reasons as the first: the configurations were very different. The '592 patent emphasized a horizontal displacement, which was not part of the '728 patent. The courts held that the use of precise language in patents limited the claims and because disposal containers were reasonably simple and straightforward, different configurations could not be equated.

Julia Potter (jpotter2)

* Kudlacek v. DBC, Inc. 115 F. Supp. 2d 996 (2000)

Owner of Patent No. 5,611,325 for an archery bow stabilizer, Donald Kudlacek, brought an infringement suit against competitor DBC, Inc. DBC counterclaimed, stating that its patent for a peep sight targeting system was being infringed. The claim in question was a "threading" limitation on the stabilizer describing how it is adjusted and secured. The District Court decided that neither Kudlacek's stabilizer nor DBC's peep sight target system were infringed. This was because the accused device, the "Super Stix," was found to not be equivalent to the patented device because it did not infringe all the elements of claim 1. Though the accused device performs, basically, the same function, it does so in a substantially different way; therefore the Doctrine of Equivalents does not apply. Note that the invalidity issue was not settled by finding that the patent was not infringed.

901437068

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

Adkins v. Lear discussed the assembly and sale of a certain type of gyroscope. The gyroscope design had originally been borrowed by Lear, from Adkins under the terms that Lear would pay a small percentage of their profits to Adkins since Lear was not the original inventor of the gyroscope mechanical design. Conflicts arose when Lear refused to pay Adkins under the claim that their new gyroscope was a unique design that differed from the original design contracted from Adkins. The judges determined that since the new design was similar to the original in all the necessary inner working components and only differed in the external aesthetic features, the new design infringed on the old since it did not provide any new or useful feature. Based on this judgment Lear was required to pay Adkins for any sales of the new gyroscope.

901438174

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

I hate to be repetitive, but I read the same case. I will reiterate, it is a case about a dispute over profit sharing. Adkins invented the gyroscope and required Lear to share profits if he used the design. The dispute arose when Lear made an improvement upon the designed and refused to pay profits on this "new and improved" design. This design was really just the innards reworked into a new shape without altering the size or scale. This was ruled to be equivalent to the original design, reinforcing the underlying ideas of the doctrine of equivalents.

cmadiga1

Lemelson v. Mattel (1992), (968 F.2d 1202)

Lemelson sued Mattel, saying that their hotwheels toys infringed on his patent for a flexible track for toy cars. In the original case, Hotwheels was ruled to have infringed on Lemelson's patent. The history of the patents in the toy race car tracks was important in this case. Before Lemelson received his patent, Giardiol had a patent for a flexible car track with an internal support. Mattel's track was very similar in all aspects of the Giardiol patent, but did not have an internal frame. Lemelson's patent was originally denied as being completely anticipated by Giardiol. However by adding claims to the vertical supports which define the track and keep the car on the track Lemelson was able to distinguish his product and obtain a patent. Therefore, these were ruled as the defining characteristics of Lemelson's patent. In the original case, the jury found that Hotwheels product did not contain these characteristics. Therefore, the Court of Appeals reversed the previous ruling saying that the jury had made a logical error.

Andy Stulc

*American Piledriving Equipment, Inc. v. Geoquip, Inc., 696 F.Supp.2d 582 (2010)

In this case, American Piledriving Equipment(APE) sued Geopquip over a pile driving device which they claimed infringed upon their patent. In APE's patent, they mentioned as part of the claims that there is, "a cylindrical gear portion and an eccentric weight portion integral with said cylindrical gear portion,” and an “eccentric weight portion having at least one insert-receiving area formed therein.” The purpose of these items was to create a vertica force for pile-driving while balancing each other out in the horizontal direction. The court found that the wording of APE's claims were such that the component was described in terms of structure and function so simply showing that the same function was performed would be insufficient to claim infringement. The portion of Geoquip's device that accomplished this function however, was created of two parts, one being bolted onto the other. Furthermore, APE's specifications state that the metal in the insert receiving area have a melting temperature greater than 328 degrees Celsius. Geoquip's item does contain tungsten (with a melting temperature greater than 328), but not located in what might be the insert area of the eccentric portion. The court decided that APE's claims made a, "clear and unmistakable disavowel," which limited the term "integral" to one-piece counterweights. They were thus not able to now attempt to expand their claims in order to cover the accused infringing device.

gtorrisi

*Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., Smc v. Festo Corp. (1997)

Holder of two patents for magnetically coupled rodless cylinders sued infringer who was selling an aluminum alloy cylinder of same purpose. District court found infringement due to doctrine of equivalence and awarded summary judgement in favor of patent holder. Appeal was denied because the court of appeals judge ruled (1) substantial evidence supported the jury’s finding of infringement (2) the holder should not be hindered to argue equivalency and (3) the patent holders lost profits due to infringement provided appropriate assessment of damages.

Andrew Chipouras

*SUNBEAM PRODUCTS, INC., (doing business as Jarden Consumer Solutions), Plaintiff-Appellant, v. HOMEDICS, INC., Defendant-Appellee.

The patentee, Sunbeam, brought action against its competitor alleging infrigment for a patent for force-transmitting bearings for a platform scale. Sunbeam’s bearings were attached to the platform by loose tabs which allowed some horizontal displacement and also ensured that the force was transmitted in the vertical direction. Whereas, Homedics’ bearings attached by dimples on the under side of the scale, which allowed some moment forces to occur from the load. Consequently, it was understood that Sunbeam had improved on the prior art by creating a scale that exerted a pure downward force, and this was claimed in their patent. Thus, the Court of Appeals held that Sunbeam’s patent did not cover the rocking and pivoting bearings that were disclosed in prior art. It held that that Homedics’ scale did not infringe under doctrine of equivalents, and that district court could sua sponte grant summary judgement in favor of Homedics.

Bobby Powers (901349446)

Sam Karch

*Lemelson v. General Mills, Inc. 968 F.2d 1202 June 30, 1992

Lemelson obtained a patent on "a flexible track upon which toy cars run." He then sued General Mills for patent infringement for their incredibly popular "Hot Wheels" product. The District Court ruled in favor of Lemelson, and General Mills appealed. There was prior art that is referred to as "Gardiol" with extremely similar qualities to the Lemelson patent. The Court of Appeals reversed the Circuit Court's decision, saying "The evidence at trial demonstrated that the Hot Wheels track is basically the same as Gardiol, but without the internal support. Hot Wheels uses external attachments, as does Lemelson, to define the shape of the track for any particular configuration. However, there is no evidence of any other significant difference between Hot Wheels and Gardiol. The evidence at bar pointed to nothing in the Hot Wheels track which is not found in Gardiol. Gardiol differs only in having an extra element-the internal core for structural support... Lemelson failed to demonstrate that the Hot Wheels track included each claim limitation or its equivalent... We therefore conclude that no reasonable jury could read reissue claim 3 both to be valid in view of Gardiol AND infringed by Hot Wheels. When properly placed in the context of the prosecution history and the demonstrated meaning of the several clauses of the claim, these are inherently inconsistent conclusions." Basically, there is no way that Lemelson could be viewed as different than Gardiol under the doctrine of equivalents, and therefore a valid patent, while saying that the "Hot Wheels" product was equivalent to the Lemelson patent. Either "Hot Wheels" infringed, but the patent was invalid due to prior art, or the patent was valid, but "Hot Wheels" did not infringe.

*Haemonetics Corp. v. Baxter Healthcare Corp. 577 F.Supp.2d 482 (2008)

In this case, the patent owner (Haemonetics) filed action against competitor (Baxter) alleging infringement patent claiming centrifugal device used for separating and collecting components in liquid such as blood. Baxter filed motion for partial summary judgment of non-infringement. Haemonetics' patent included two drive units: The first drive unit is the assemblage of components responsible for rotating the tubes at an angular rate of ω and does not include the tubes or vessel; The second drive unit is the assemblage of components responsible for rotating the centrifugal vessel (or centrifugal unit) at an angular rate of 2ω and does not include the tubes or vessel. These drive units are considered two separate elements. Baxter's patent achieves the angular rate of 2ω in a different manner than that taught by Haemonetics' patent (namely, it doesn't use a second drive unit). Haemonetics counters that the accused device infringes their patent under the doctrine of equivalents which the defendant denied. In arriving at the decision that Baxter's patent did not infringe, the court used the doctrine of equivalents, asking "whether the difference between the element of the accused product and the corresponding limitation of the claim in the patented invention is a 'subtle difference in degree' or a 'clear, substantial difference in kind'."

Mackroyd

*'''Jerome H. Lemelson v. General Mills, Inc. 968 F.2d 1202 (1992)'''

United States District Court for Northern District of Illinois found in favor of plaintiff. The United States Court of Appeals reversed.
Lemelson issued a patent for "Toy Track and Vehicle Therefor" (June 24, 1969).
Matel (Defendent-Appellant) began independent track development (1967). Researched the prior art (Lemelson's patent did not yet exist) and concluded that a few features of the track may be patentable. Patented features of Hot Wheels but not the actual track.
The suit was filed December 1977 but Lemelson was granted a stay of litigation for the pending reissue of his patent. Reissued on April 8, 1986.
The case went to trial in the Northern District of Illinois in October of 1989 and ruled in favor of Lemelson.
The United States Court of Appeals reversed this judgment:
Lemelson failed to demonstrate that the Hot Wheels track included every claim limitation or its equivalent
Hot Wheels track was determined to be basically the same as the prior art (by Gardiol)
only two points of Lemelson's claims differed from Gardiol significantly and the Hot Wheels track was not show to have elements infringing this

Key takeaways: In order to be infringement by the doctrine of equivalents the track needed to be proved to infringe every claim limitation either directly or by equivalents.

901423417 - cnorton

Frontline Placement Technologies, Inc. v. CRS, Inc., 2011 Markman 451,962

Frontline Placement Technologies had a patent on a employee absence system, for which employees could notify the company if they needed a replacement, and replacements could accept the temporary position. It was ruled that CRS infringed on Frontline's patent by the equivalent language used in order to implement the system. A total of 16 similar words were used and in dispute for equilvalency, since CRS system boasted an improvement by having an intermediate step in the absence to replaced process whihc notifies that an acceptance and being accepted are differing meanings in the everyday sense of the word. It was ruled that the current language in the claims infringed, and that clarification which limited the means of ambiguously equivalent words must be stated.

RyanCalkin

Doctrine of Equivalents Case List

2011-04-04T21:18:13Z

Adam Mahood:

Add your case to the list with a one-paragraph (approximately 250 words) summary of the facts at issues, i.e., "an umbrella is or is not equivalent to a parasol because..."

Please put the cases in chronological order. If two are from the same year, then put them in alphabetical order. Also put your name, your login name or NDID number with your case. Use the following for a template.

* Goodwine v. Batill, 123 US 4567 (1066)
This case concerned a patent for an iPad and the patentee sued the maker of an iPod for infringement. The important part of the claim was "a device for playing music and other media comprising a touch screen..." The court held that iPod infringed the iPad patent because the ... was equivalent to the ... because ...

Bill Goodwine

Patrick Lane (901431645)
* Union Paper-Bag Machine Company v. Murphy 97 U.S. 120 (1877)
In this case, the patents in question were machines used to make paper bags. The machines are loaded with large rolls of paper and then stamp out the bag pattern, or "blanks," which are then folded and pasted to make a paper bag. Union Paper was granted a patent in 1859 for this type of machine which used a long, straight knife which would move up and down to punch the pattern out of the paper. In 1874, Murphy was granted a patent for a similar device that used a serrated knife which cut the paper from below as the rolls moved over it. Union is suing Murphy for infringement, claiming the devices which cut the paper in each machine are substantially equivalent, and therefore are under protection by Union's 1859 patent. Murphy argued that the serrated knife is an improvement over the straight knife, and that the method of cutting was different enough to constitute patent protection. However, the expert witness explained that the paper is essentially being cut in the same way in each device: a fast moving, sharp edge is slicing through the paper. Even though one knife was serrated, the cutting occurs in the same mechanical fashion, and therefore is equivalent. The court found in favor of Union, stating that the two methods of cutting the blanks were substantially equal because they performed the same function in the same way.
* I had also read this case. The above is a good summary, though perhaps also worth noting is the fact that the court made specific mention of the fact that changing the name of the invention had no bearing on its nonequivalence (though this seems pretty obvious). - Kurt Riester 901425018
* I read this case as well. The decision can be best summed: "Nor can it make any difference that the cutter is made to cut the paper by its own gravity, while the knife is made to cut by the fall of a device which performs no other function than to fall upon the paper at the proper moment, and cause the stationary knife to cut for the same purpose." Because the cutter and the knife accomplish the same purpose in substantially similar ways, they are equivalent. - 901239065
* I also chose to read this case. The summary stated above accurately states what this case is about. My addition to what has already been previously said would be that this case establishes the doctrine of equivalents in saying that "if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape." - 901360293

hwong1
* Absolute Software Inc. v. Stealth Signal Inc.
The patents in question deal with security apparatus’ that are used to retrieve lost or stolen electronic devices. Absolute accused Stealth of infringing on their patent, and in effect Stealth filed a counterclaim stating that Absolute infringed on another prior art. Both companies filed for summary judgment stating that neither infringed on any patent. The doctrine of equivalence was used to determine if either company infringed on other patents. Absolute proves that It does not infringe on the prior art because the transmission message to the central site is not done at a semi-random rate. Absolute did not literally infringe, but the doctrine of equivalence was needed to verify. The courts found that since Absolute’s product makes the call to the central site every 24.5 hours, it is not ‘random’ by any means but rather ‘uniformly randomly distributed’. Thus, Absolute does not infringe on its prior art. Stealth was analyzed on in infringing on Absolute by the use of an XTool agent. Doctrine of Equivalence is again applied, finding that Stealth’s invention differed in providing a step at the end of the communication that Absolute does not have. Absolute has written in their claims on their Xtool agent “without signaling the visual or audible user interface.” Therefore, when Stealth created an audible user interface, it made its invention nonequivalent to Absolutes. Thus, Stealth is found to be non-infringing with their patent.

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
This case was discussed in class and presented by another student, but I read it as well. This case concerned a patent for a gyroscope owned by Adkins, the inventor of an improved gyroscope, and Lear, the company that sells gyroscopes. Lear and Adkins had a written agreement that allowed Lear to sell Adkin’s patented invention, where Adkins received a small percentage of the net sales price as royalties. In 1957, Lear refused to pay royalties to Adkins with the claim that they were selling gyroscopes that differed from Adkin’s invention. However, the “new” gyroscopes differed only in “size, form, and shape,” but “contain[ed] the same elements.” The essential elements were the same between Adkin’s patent and Lear’s other steel gyroscopes, but the scale and exact assembly was different. Since those did not constitute a substantial difference, the jury of the Supreme Court of California held Adkins in favor and required Lear to pay royalties to Adkins for the sales price of the other gyroscopes sold. This case is an example of clear infringement.

901431048

* Adkins v. Lear, Inc. (1968)(67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
I am the other student^^^(see case above). Other items of note in the case, aside from the summary above, include that the court ruled that infringing the doctrine of equivalence is a matter of fact and that the jury should be the one to establish it. This brings up an interesting qualification, as it seems almost every other case considered with respect to the doctrine of equivalence was decided by judges, not juries.

Brobins

*AMEC Liquidating Trust v. IVAC Corporation, 885 F.2d 1574 (1989)

AMEC had a patent for a thermometer with a plastic cover held on by a hooking type mechanism. IVAC created a thermometer with a cover held on by a ring that created a friction lock. The CAFC held the IVAC invention was non-infringing on the AMEC patent because under the doctrine of equivalents, it did not perform the same function in the same way. The AMEC thermometer cover used an inscription fit, which created deep scratches in the cover. The IVAC thermometer used a friction fit, which only created superficial scratches in the cover. The CAFC found that the superficial scratches did not constitute an inscription fit. Also, the CAFC decided that AMEC did not present any evidence proving that the ring in the IVAC patent was equivalent to the “hook” in the AMEC patent. Because of this, the patent was non-infringing under the doctrine of equivalents.

901444263

*Johnston v. IVAC Corp., 885 F.2d 1574 (1989)

The inventor, Turner, invented a thermometer probe cover that stays on (this was owned by AMEC). It kept the cover on via a sharp metal hook to tear into the cover’s plastic. IVAC developed a thermometer that served a similar purpose of keeping the probe cover on, except that it did so with a ring on the probe (to hold the cover via friction). IVAC intentionally left the probe free of any sharp edge to ease the removal of the probe cover when needed. District Court of Southern California ruled in summary judgment that IVAC’s thermometer probe covers do not infringe AMEC’s. On appeal from AMEC, the Court of Appeals affirmed the judgment. A ring that does not tear the plastic cover is not equivalent to the hook that does. [http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?mt=CampusLaw&db=ALLCASES&rlt=CLID_QRYRLT4121840350313&origin=Search&sp=003654480-2000&method=TNC&cfid=1&rp=%2fwelcome%2fCampusLaw%2fdefault.wl&eq=welcome%2fCampusLaw&rltdb=CLID_DB1095239350313&srch=TRUE&query=TI(JOHNSTON+%26+IVAC)&vr=2.0&fmqv=s&action=Search&fn=_top&service=Search&sv=Split&rs=WLW11.01]

901471466

** I also read this case for the assignment and agree with the discussion above. The one thing that I would add, just to give insight into the amount of stretching certain companies due in order to show equivalence is the expert testimony that AMEC presented. AMEC had an engineer look for stratching and indentation on the IVAC device. He did so by using a 20x microscope to find superficial nicks and cuts. Luckily the court saw through this empty analysis and ruled that the IVAC device did not perform the same function as the patented article. - Adam Mahood

*Unitronics Ltd. v. Gharb, 318 Fed.Appx. 902 C.A.Fed. (Dist.Col.) (1989)

This case involved a patent for programmable logic controllers with Global System for Mobile communications. The main issue was infringement based on the capabilities of the programmable logic controllers (PLCs). The court held that alleged infringers PLCs did not contain a “digital recording device having at least one emergency message” or an equivalent. The alleged infringers PLCs also did not have the “data set for transmission to the mobile telephone including alarm information.” The court also ruled that they did not have anything equivalent to either of these claims. Based on the ruling in Warner-Jenkinson the device is not infringing unless it “contains each limitation of the claim, either literally or by an equivalent.” The alleged infringing PLCs did not have a similarity to all of the limitations to the claim and were thus allowed to continue selling their device. [[http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?mt=CampusLaw&db=ALLFEDS%2cALLSTATES%2cSCT&rlt=CLID_QRYRLT3654057332134&origin=Search&sp=003654480-2000&method=WIN&cfid=1&rp=%2fWelcome%2fCampusLaw%2fdefault.wl&eq=Welcome%2fCampusLaw&rltdb=CLID_DB3890056332134&srch=TRUE&query=unitronics+gharb&vr=2.0&fmqv=s&action=Search&fn=_top&service=Search&sv=Split&rs=WLW11.01]]

901479977

*Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990)

Wilson is suing DGA/Dunlop for infringement under the doctrine of equivalents of its patented design for a golf ball. Wilson's patent is for a golf ball modeled as an icosahedron with dimples placed in such a way as to have 6 "great circles" of symmetry instead of the typical 1. The patent specifies where dimples should be placed on the ball and requires that no dimples be placed on the great circles. The accused DGA balls use the same "great circles" design, but with dimples placed on the great circles. DGA's defense is that there is "no principled difference" between its design and a design of the prior art (prior to Wilson's patent). Therefore, allowing Wilson to utilize the doctrine of equivalents would extend protection of claims already in the prior art to Wilson's patent. The CAFC decided that Wilson can only utilize the doctrine of equivalents if it can make a hypothetical claim that literally covers Dunlop's design (in this case, claim a ball with dimples placed on the great circles) and is also nonobvious considering the prior art. Wilson is unable to make such a nonobvious hypothetical claim and therefore no infringement was found.

901338276

* Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990) 904 F.2d 677

I see that someone else and I did the same case, but I'll summarize in my own words here. This case involved the design of a golf ball, and the placement of the dimples on a golf ball. There are aerodynamic benefits as to where the dimples are placed and how the dimples themselves are shaped. The Wilson golf ball had a design where the face of the golf ball is divided using 6 great circles, creating an equal number of equally sized triangles. Then the midpoints of each leg of the resulting triangles are joined, creating 4 triangles inside each larger triangle. See the patent document as it is better shown than explained. This way of dividing the golf ball is not the novel idea, but rather the placement of the dimples relating to the previously mentioned division is. The Wilson ball left all 6 great circles untouched by dimples. They deemed this an aerodynamic advantage. At the time of the application filing, the prior art had already taught of the great circles, just not leaving them completely intact. The accused infringing ball from Dunlop had the same 6 great circles, but they did not make an effort to leave them uncovered, and rather had a significant number of dimples covering them. The court held that the Dunlop ball could not be considered equivalent to the Wilson ball because the prior art limited Wilson's claims in the first place, and those claims could not now be expanded to enclose the Dunlop ball. The court laid out a framework for deciding doctrine of equivalents cases: First, take the claim that is proposed to enclose the accused infringer, and reword it to literally enclose the infringer. Next, see if that claim would pass in light of the prior art. If yes, then the doctrine of equivalents can be used, if no, then it cannot. In this case, the hypothetical claim would not have passed in light of the prior art, so the doctrine of equivalents could not be used.

901417119 - Bcastel1

* Lemelson v. General Mills, Inc., 968 F.2d 1202 (1992)

Lemelson sued Mattel, alleging that Mattel's "Hot Wheels" toy car track infringed on his patented toy track. The U.S. District Court for the Northern District of Illinois found in favor of the plaintiff. Mattel appealed to the CAFC. The Court held that the "Hot Wheels" track did not contain all the limitations of the patent; it was equivalent to the prior art. That is, Lemelson's patent could not be both valid in light of the prior art and infringed upon by Mattel. Furthermore, upon his first application, claim 3 of Lemelson's patent had five clauses. The PTO examiner found the patent to be indistinguishable from the prior art. Lemelson added clauses [f] and [g] and received a patent. The important parts of the claim were, "[f] said guide means include a pair of spaced apart runner portions for defining the pathway of a vehicle moving over said track, [g] said spaced apart runner portions include upwardly extending rails for guiding the wheels of a vehicle." The Court held that "Hot wheels" did not contain any elements equivalent to the clauses [f] and [g]. The Court also noted that the public is entitled to the PTO record to determine the scope and meaning of claims.

901330223

*Valmont Industries Inc. v. Reinke Manufacturing Company Inc., 983 F.2d 1039 (1993)

901316153

This case concerns an adaption for center-pivot (i.e. rotating) irrigation systems. The adaption (an apparatus that attaches to the main frame of the sprinkler) allows the corners of a field, normally missed by the standard rotating irrigation system, to be watered. The infringement issue relates to the means by which the position of the sprinkler is detected, relative to the field. The patent uses a method of pivot angle encoders, while the "infringing" patent uses buried electromagnetic cables to guide the sprinkler around the field.

The CAFC ruled that the second device was not infringing, reversing the decision of the district court. The district court argued that the means of controlling the system were equivalent. The CAFC's argument was that while the two irrigation systems performed substantially the same overall function to obtain substantially the same overall result as the claimed invention, the way those results were achieved was substantially different. "Comparison of these two control means compels the conclusion that the claimed control means and Reinke's control means are not structurally equivalent.[...][E]ven though both the control means in the specification and the control means on Reinke's device use electric signals, the structures generating those signals are strikingly different."

Because the doctrine of equivalence requires that the two devices perform substantially the same function in substantially the same way to achieve substantially the same results, the two control systems were not equivalent under the doctrine of equivalence because they did not meet the "way" requirement of the doctrine of equivalence.

*William Bradshaw and Robert Shepherd v. Igloo Products Corp. 1997 WL 543109 (US District Court, N.D.Ill.)

William Bradshaw sued Igloo Products for infringement of a wheeled cooler. Bradshaw’s patent was for a cooler with a pulling handle and two lifting handles, one of which was connected on the same axle as the pulling handle. The Igloo products in question were the Rolling Kool Locker which had a rotatable lifting hand that can also be used to pull the cooler and the Cool Roller which had separate lifting and pulling handles coupled to separate axles. The court decided that the prior art for the Cool Roller was a different patent, the Mason patent. This patent was for a wheeled cooler with separate lifting and pulling handles. The Mason patent was granted before Bradshaw’s patent. The court ruled that the Cool Roller fell under the Mason patent. Therefore, if Bradshaw’s patent were to be expanded to include the Cool Roller’s handles, it would be an invalid patent as a result of the prior art, the Mason patent. This leads to a method of deciding infringement. If the product in question mimics prior art, then it cannot infringe the patent otherwise that patent would be invalid. In deciding infringement for the Rolling Kool Locker, the court decided that it was up to a jury to decide whether the Kool Lockers handles were equivalent to Bradshaw’s patent, since there was no other glaring evidence.

Eric Paul

* Dr. Raymond G. Tronzo v. Biomet Inc. 1998 156 F.3d 1154 (United States Court of Appeals, Federal Circuit)
In this case Biomet was accused of infringement of an artificial hip prosthesis patented by Dr. Tronzo (patent 4,743,262). The alleged infringement revolved around the shape of the artificial hip socket and the hinge that was inserted into the socket. Patent ‘262 claimed a “generally conical” shape of the hip socket. Biomet’s design contained a strictly hemispherical shape. The court heard evidence in which it was claimed that even though the shapes would have at first glance performed in the same manner, the forces generated on the surface of each implant would be different depending on the shape. Additionally, after hearing expert testimony that suggested any shape would have been equivalent to the conical limitations of the patent claims, the court said that such a ruling would have been impermissible under the all-elements rule of Warner Jenkinson because it would write the “generally conical” shape limitation out of the claims. Therefore, the court held that the accused design did not infringe upon the patent claims under the doctrine of equivalence.

Anthony Schlehuber 901477539
*Lemelson v. Mattel (1992) 968 F.2d 1202
Lemelson sued Mattel on the grounds that the Hot Wheels car track infringed on his patented track design. In the circuit court Mattel was found to have infringed on Lemelson’s track design. However, in the CAFC, this decision was overturned due to limitations added to the Lemelson patent during the application process to prevent it from infringing on the prior art. Lemelson’s patent claimed a system of vertical track supports to differentiate it from earlier works. Since these claims were needed for Lemelson’s patent to be valid and Mattel’s track did not contain these supports, it was ruled that Mattel had not infringed.
Peter Mitros (901461727)

*Hale Propeller, L.L.C. v Ryan Marine Products Pty., LTD., et al, 151 F. Supp .2d 183 (2001) Connecticut District Court
Ryan owned patent 4411073, issued on 25 October 1983, which concerned devices to measure the pitch of propeller blades. Ryan originally filed the claim on 13 July 1981 it was rejected and then ammended on 4 October 1982. Hale's device called the "Hale Propeller MRI" was developed in 1997. In question are claims 1(b),(c),(f), and 6. A third party, Michigan Wheel Corporation, a distributor of Hale's invention filed for patent invalidity. The important differences between Hale's and Ryan's device are that Hale's does not use gears or worm-drives to rotate the blade and the device does not give direct readouts of the measurements using electric circuits. The issue with claim 1(b) was if a roller was a necessary part of the structure because it prevents skipping of the probe making the measurements more accurate. The court used means-plus-function to rule that the roller was important and Hale did not infringe. The issue with claim 1(c) deals with whether a worm or gear drive is necessary to rotate the blade. Ryan's patent discloses a hand-cranked device, like Hales, but includes a worm-drive. Part of Ryan's ammendment to his claim was to include worm gear to the hand-cranking device and therefore the court used prosecution history estoppel to make their decision because Ryan forfeited that claim (hand-cranked device without worm-drive) in order to get the patent and therefore cannot use doctrine of equivalents to get the claim back. The issue of claim 1(f) was whether the computer in the claim was a special computer needed for the readouts. The court ruled that the claim was not that narrow, but then the court ruled that claim 6 dealt with a computer that receives measurement data from the optical encoder and therefore Hale did not infringe. The patent was also ruled valid using the roller and worm drive to prove that it was non-obvious §103, definitively disclosed §112, and not anticipated by prior art §102(b).

Gillian Allsup

901281608

*Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc. Nos. 2010-1145, 2010-117. (2001) United States Court of Appeals, Federal Circuit

This case began as an infringement lawsuit by Siemens Medical Solutions USA, inc. against Saint-Gobain Ceramics and Plastics, Inc. for the alleged infringement of a patent held by Siemens for a scintillator, a part of an x-ray machine that detects radiation. Saint-Gobain owned a patent for a similar device and the circuit court found that this patent infringed on the patent held by Siemens, which was filed earlier. Though the doctrine of equivalents was used to rule infringement, Saint-Gobain was found to have accidentally, rather than willfully infringed and Siemens was awarded 52.3 million dollars.

Siemens filed for patent number 4,958,080 on August 4, 1989. This patent was for a scintillator containing cerium-doped- lutetium oxyorthosilicate. This is a component of a radiation detector that absorbs gamma-ray photons from an x-ray machine and converts them to visible light so the results can be interpreted. Saint-Gobain also produces scintillators, filing patent number 6,6424,420 in 2000 for a cerium-doped lutetium-yttrium orthosilicate. The chemical composition differs from that of the Siemens' patent as %10 of the lutetium is substituted for yttrium. These scintillators were sold by Saint-Gobain to Philips Medical Systems, a competitor of Siemens. The circuit court found that the composition of Saint-Gobain's scintillator preformed largely the same function in the same manner as Siemens' patent, and therefore was infringement under the doctrine of equivalence.

Saint-Gobain filed a motion for a new trail, on the basis that the jury was not told that infringement by the doctrine of equivalence must be proved by clear evidence and argued that damages should be remitted. The Federal Appeals Court did not grant Saint-Gobain a new trial, but did reduces the damages to 44 million.

*Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283 C.A.Fed. (Mich.), 2010
Adams Respiratory Therapeutics patented an extended release formulation of expectorant. The patent was for Mucinex and was new in that it allowed the expectorant (an aspect to medicine which promotes the discharge of phlegm or other fluid from the respiratory tract). Adams brought suit, alleging that generic manufacturer's (Perrigo's) proposed production and marketing of generic version of the product would infringe its patent. The United States District Court for the Western District of Michigan, Gordon J. Quist, J., 2010 WL 565195, granted defendant summary judgment of non-infringement. Plaintiff appealed. Within the patent Adams specified an amount of expectorant in the drug using the words "at least." The court found that "at least" did not prevent the use of the doctrine of equivalents and that the doctrine may apply to patents with specific number ranges. Adams patent stated that it would have at least 3500 hr*ng/mL, while Perrigo was using 3494.38 hr*ng/mL (only a 0.189% difference). Adams argued that this number was not substantially different and thus should represent infringement. Perrigo argued that because the claim does not use words of approximation, Adams cannot expand this element to ensnare Perrigo's product. The court found that the fact that the claim does not contain words of approximation does not affect the analysis-“terms like ‘approximately’ serve only to expand the scope of literal infringement, not to enable application of the doctrine of equivalents.” The proper inquiry is whether the accused value is insubstantially different from the claimed value. Because the court found that there was not a substantial difference between the numbers the doctrine of equivalents applied, the order of the district court was vacated and the case was remanded.

Snooki

*Sunbeam Products, Inc. v. Homedics, Inc., Slip Copy, 2010 WL 5230892 (2010)

This case involved a patent for a force-transmitting bearing used with a platform scale. Sunbeam held a patent which specified bearings which were attached to the platform via loose tabs which allowed the bearings to move horizontally. The patent claims required the base of the bearing to be oriented parallel to the platform and remain parallel to the platform at all times. The structure of the accused device was such that the bearings were connection to the platforms using dimples on the lower surface of the platform which the bearings fit into. Sunbeam had criticized prior art which used a similar dimple connection during prosecution beacuse of the potential for unwanted force moments applied by the bearing. The CAFC upheld the District Court's finding of no infringement based on the doctrine of equivalents because bearings which rocked and pivoted, as the accused device did, did not fall within the reach of the patent claims because they did not remain parallel to the platform at all times.

901422128

*Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326 (2001)
Kustom Signals held a patent for a multimode traffic radar system which will show either the fastest speed or the strongest signal. Three of the claims used the word "or" in their wording. Kustom claimed that the "or" was a logical operator meaning one, the other, or both. Applied Concepts had designed a radar system which returned both the fastest speed and the strongest signal. The Court held that the word "or" was to hold its traditional, customary meaning as being exclusive, not inclusive, of the two statements.

901 41 7852

*Sage Products, Inc. v. Devon Industries, Inc., 126 F. 3d 1420 (1997)

Sage Products sued Devon Industries for infringement of several patents relating to containers for disposing of hazardous medical waste (needles etc.). Devon counter-sued for infringement of one of its similar patents. The district court held (on summary judgment) that there was no infringement by either party literally or equivalently. The appellate court affirmed.

Devon’s first alleged infringement was of Sage’s container claiming an elongated slot "at the top" of the apparatus for which to deposit waste, and a "barrier over the slot" to prevent contamination. Devon's patent involved a type of elongated slot that was embedded within the container and a hinged element at the opening. The court ruled no literal infringement because the Devon patent did not include the "at the top" and "over" features of the Sage claim. Even though the devices perform the same function the court ruled no equivalent infringement because the hinged element did not "substantially constrict access" to the container, and the slot was not "substantially at the top" of the container. The court was adamant that equivalent function could not negate the “at the top” and “over” limitations of the patent, stating that such power would reduce patent claims to "functional abstracts" devoid of meaningful structure limitations for the public to reference. A second infringement involved in this case resulted in the court ruling that if patent claims specify a function and recite its importance the patentee cannot later accuse an invention devoid of the specified function of infringement.

901419437

*Siemens Medical Solutions USA, INC. v. Saint-Gobain Ceramics & Plastics., F.3d, 2011 WL 651790 (2011)

Siemens developed, manufactured, and sold PET scanners which made use of scintillator crystals consisting of cerium-doped lutetium oxyorthosilicate (LSO). Saint-Gobain manufactures and sells scintillator crystals for use in PET scanners which consisted of cerium-doped lutetium-yttrium orthosilicate (LYSO). This is chemically different from LSO in that some of the lutetium is substituted for by yttrium. In Saint-Gobain's crystals, 10% of the lutetium atoms are substituted for by yttrium atoms (crystals are 10% Y LYSO). In April of 2007, Siemens sued Saint-Gobain for infringement of claims 1 and 2 of Siemens '080 patent for LSO scintillator crystals and photodetectors. Saint-Gobain aregued that its LYSO crystals are not equivalent to those claimed in the '080 patent because their crystals are separately claimed by their '420 patent. A jury trial found Saint-Gobain infringing upon the claims held by Siemens. Saint-Gobains appeals, and claims that the district court erred in jury instructions, claiming that in cases where an alleged equivalent is separately patented, a higher burden of evidence is required. Their reasoning was that the jury's finding of infringement effectively invalidated their '420 patent for LYSO crystals as the ruling of equivalence implied a conclusion of obviousness. The Court of Appeals disagrees, stating that it is well established that separate patentability does not avoid equivalency as a matter of law. The Court of Appeals also disagrees that the jury's finding of infringement invalidates the '420 patent; it only finds the level of LYSO used in practice (10%) is equivalent to Siemen's LSO crystals. Other compositions of LYSO could well be non-equivalent. Using the function-way-result test which asks whether an element of the an accused product performs substantially the same function in substantially the same way, the Court of Appeals affirms the juries finding of infringement.

Erich Wolz

*Sunbeam Products Inc. v. Homedics Products Inc. , US Court of Appeals, District Court of Wisconsin (2010)
This case involved a clear example of non-equivalence relating to the doctrine of equivalence. The patent holder Sunbeam Products brought action against competitor Homedics, alleging infringement of its patent for force-transmitting bearings for a platform scale. This case was decided under the district court of Wisconsin. Sunbeam Products had created platform bearings which translated purely horizontally along a platform which transferred all platform loads into purely vertical loads supported by the bearings. A previous patent, ‘326 patent, encompassed bearings which rocked and pivoted. HoMedics's accused scales all include bearings similar to the bearing disclosed in the ′326 patent. Each of the HoMedics bearings is machined with a nose-like protrusion that fits into a corresponding dimple on the underside of the platform. The trial court noted that the accused bearings all rock and pivot within their corresponding dimples in the underside of the platform. Sunbeam did not dispute that the HoMedics bearings rock and pivot in that manner. Sunbeam's argument was that in addition to rocking and pivoting, the HoMedics bearings were capable of some horizontal movement and therefore infringe the ′420 patent.
In light of its claim construction and the undisputed evidence regarding the operation of the bearings in the accused HoMedics products, the district court granted summary judgment of noninfringement. The court determined that no reasonable juror could find that bearings that rock and pivot remain parallel to the underside of the platform; accordingly, it held that the pivoting bearings in all of the accused products do not literally infringe the ′420 patent.

The most important distinction that was made in this case was the following statement. “The doctrine of equivalents is not a license to rewrite the claims to encompass what a patentee believes to be an equivalent structure. That is especially true in a case such as this one, where the accused product is not later-developed technology that is insubstantially different from the claimed invention, but instead embodies disavowed prior art. Thus, the district court correctly held that the accused bearings do not infringe the ′420 patent under the doctrine of equivalents.”

Christine Roetzel - 901425022

*Hughes Aircraft Co. v. U.S. 717 F.2d 1351

NASA and Department of Defense, were trying to build a satellite that would orbit the earth. However, they were unable to do so they had problems with the attitude control. Williams, a man who was working for Hughes Co. was able to figure out the problem. He was able to have lab model on 4/2/60 and it was called "dynamic wheel." Williams presented it to NASA and then Hughes Co and NASA entered an agreement to build the satellite. Williams filed for a patent on 4/18/60 and that became known as "Williams patent."
However, the govt started to build these spacecrafts that used the same systems from the satellite and did not give compensation to Williams. It went to court and the govt said that Williams patent was invalid because it infringed McLean's telescope. Williams rewrote his claims and stated “McLean's infrared telescope does not indicate the instantaneous spin angle position of his body with reference to a fixed external coordinate system, and it does not indicate the orientation of the axis with reference to a fixed external coordinate system." The court found Williams patent valid.
Then, the court looked at the spacecraft and compared it to Williams satellite. They found the following similarites: "(1) each is spin-stabilized; (2) each contains a jet on the periphery, connected by a valve to a tank containing fluid for expulsion substantially parallel to the spin axis; (3) each employs sun sensors to sense ISA position; (4) each requires knowledge of orientation relative to a fixed external coordinate system; (5) each contains radio equipment for communicating with the ground; (6) each transmits spin rate and sun angle information to a ground crew; and (7) in each, jet firing is synchronized with ISA position to effect controlled precession and thus to achieve a desired orientation."
Needless to say the court ruled that govt infringed Williams patent.

901439143

* Sage Products, Inc. v. Devon Industries, Inc. 126 F.3d. 1420 (1997)

In this case, Sage Products sued Devon Industries for infringement of two of its patents and Devon countersued Sage for infringement of one of its own patents, all of which relate to the disposal of medical waste products such as needles. In trial and on appeal, the courts held that there was no literal infringement nor infringement by the doctrine of equivalents by any party. Sage claimed that Devon's '251 for a "tortuous path" disposal container infringed on both its '728 patent for a sharps disposal container and its '849 patent for the removal and storage of syringe needles. Devon claimed that Sage's '728 patent infringed on its '592 patent for a disposal container.
** The '728 patent consists of an opening with a curved arc extending above it and another below it (inside the container) with a rotatable L-shaped flap such that waste can be deposited without exposing it again.
** The '849 patent covers a container with notches for removing needles and a "moveable closure" that allows the container to be closed and reopened as needed.
** The '251 patent covers a disposal container with a slotted opening at the top and 2 overlapping but displaced obstructions within the container to prevent accessing material that has been disposed of. It also has a closure that permanently locks once closed.
** The 592 patent covers a container that has a slotted opening and another "baffle" within the container that has another slotted opening horizontally displaced from the first
The courts held that the '251 patent did not infringe on the '728 patent because the patent explicitly described a precise configuration of an opening at the "top of the container" with one obstruction "over said slot" and another below, and that '251 configuration was different. They also held that the '251 patent did not infringe on the '849 patent because there was an important difference between permanent closure and closure that can be reopened. Finally, the '728 patent did not infringe on the '592 patents for similar reasons as the first: the configurations were very different. The '592 patent emphasized a horizontal displacement, which was not part of the '728 patent. The courts held that the use of precise language in patents limited the claims and because disposal containers were reasonably simple and straightforward, different configurations could not be equated.

Julia Potter (jpotter2)

* Kudlacek v. DBC, Inc. 115 F. Supp. 2d 996 (2000)

Owner of Patent No. 5,611,325 for an archery bow stabilizer, Donald Kudlacek, brought an infringement suit against competitor DBC, Inc. DBC counterclaimed, stating that its patent for a peep sight targeting system was being infringed. The claim in question was a "threading" limitation on the stabilizer describing how it is adjusted and secured. The District Court decided that neither Kudlacek's stabilizer nor DBC's peep sight target system were infringed. This was because the accused device, the "Super Stix," was found to not be equivalent to the patented device because it did not infringe all the elements of claim 1. Though the accused device performs, basically, the same function, it does so in a substantially different way; therefore the Doctrine of Equivalents does not apply. Note that the invalidity issue was not settled by finding that the patent was not infringed.

901437068

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

Adkins v. Lear discussed the assembly and sale of a certain type of gyroscope. The gyroscope design had originally been borrowed by Lear, from Adkins under the terms that Lear would pay a small percentage of their profits to Adkins since Lear was not the original inventor of the gyroscope mechanical design. Conflicts arose when Lear refused to pay Adkins under the claim that their new gyroscope was a unique design that differed from the original design contracted from Adkins. The judges determined that since the new design was similar to the original in all the necessary inner working components and only differed in the external aesthetic features, the new design infringed on the old since it did not provide any new or useful feature. Based on this judgment Lear was required to pay Adkins for any sales of the new gyroscope.

901438174

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

I hate to be repetitive, but I read the same case. I will reiterate, it is a case about a dispute over profit sharing. Adkins invented the gyroscope and required Lear to share profits if he used the design. The dispute arose when Lear made an improvement upon the designed and refused to pay profits on this "new and improved" design. This design was really just the innards reworked into a new shape without altering the size or scale. This was ruled to be equivalent to the original design, reinforcing the underlying ideas of the doctrine of equivalents.

cmadiga1

Lemelson v. Mattel (1992), (968 F.2d 1202)

Lemelson sued Mattel, saying that their hotwheels toys infringed on his patent for a flexible track for toy cars. In the original case, Hotwheels was ruled to have infringed on Lemelson's patent. The history of the patents in the toy race car tracks was important in this case. Before Lemelson received his patent, Giardiol had a patent for a flexible car track with an internal support. Mattel's track was very similar in all aspects of the Giardiol patent, but did not have an internal frame. Lemelson's patent was originally denied as being completely anticipated by Giardiol. However by adding claims to the vertical supports which define the track and keep the car on the track Lemelson was able to distinguish his product and obtain a patent. Therefore, these were ruled as the defining characteristics of Lemelson's patent. In the original case, the jury found that Hotwheels product did not contain these characteristics. Therefore, the Court of Appeals reversed the previous ruling saying that the jury had made a logical error.

Andy Stulc

*American Piledriving Equipment, Inc. v. Geoquip, Inc., 696 F.Supp.2d 582 (2010)

In this case, American Piledriving Equipment(APE) sued Geopquip over a pile driving device which they claimed infringed upon their patent. In APE's patent, they mentioned as part of the claims that there is, "a cylindrical gear portion and an eccentric weight portion integral with said cylindrical gear portion,” and an “eccentric weight portion having at least one insert-receiving area formed therein.” The purpose of these items was to create a vertica force for pile-driving while balancing each other out in the horizontal direction. The court found that the wording of APE's claims were such that the component was described in terms of structure and function so simply showing that the same function was performed would be insufficient to claim infringement. The portion of Geoquip's device that accomplished this function however, was created of two parts, one being bolted onto the other. Furthermore, APE's specifications state that the metal in the insert receiving area have a melting temperature greater than 328 degrees Celsius. Geoquip's item does contain tungsten (with a melting temperature greater than 328), but not located in what might be the insert area of the eccentric portion. The court decided that APE's claims made a, "clear and unmistakable disavowel," which limited the term "integral" to one-piece counterweights. They were thus not able to now attempt to expand their claims in order to cover the accused infringing device.

gtorrisi

*Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., Smc v. Festo Corp. (1997)

Holder of two patents for magnetically coupled rodless cylinders sued infringer who was selling an aluminum alloy cylinder of same purpose. District court found infringement due to doctrine of equivalence and awarded summary judgement in favor of patent holder. Appeal was denied because the court of appeals judge ruled (1) substantial evidence supported the jury’s finding of infringement (2) the holder should not be hindered to argue equivalency and (3) the patent holders lost profits due to infringement provided appropriate assessment of damages.

Andrew Chipouras

*SUNBEAM PRODUCTS, INC., (doing business as Jarden Consumer Solutions), Plaintiff-Appellant, v. HOMEDICS, INC., Defendant-Appellee.

The patentee, Sunbeam, brought action against its competitor alleging infrigment for a patent for force-transmitting bearings for a platform scale. Sunbeam’s bearings were attached to the platform by loose tabs which allowed some horizontal displacement and also ensured that the force was transmitted in the vertical direction. Whereas, Homedics’ bearings attached by dimples on the under side of the scale, which allowed some moment forces to occur from the load. Consequently, it was understood that Sunbeam had improved on the prior art by creating a scale that exerted a pure downward force, and this was claimed in their patent. Thus, the Court of Appeals held that Sunbeam’s patent did not cover the rocking and pivoting bearings that were disclosed in prior art. It held that that Homedics’ scale did not infringe under doctrine of equivalents, and that district court could sua sponte grant summary judgement in favor of Homedics.

Bobby Powers (901349446)

Sam Karch

*Lemelson v. General Mills, Inc. 968 F.2d 1202 June 30, 1992

Lemelson obtained a patent on "a flexible track upon which toy cars run." He then sued General Mills for patent infringement for their incredibly popular "Hot Wheels" product. The District Court ruled in favor of Lemelson, and General Mills appealed. There was prior art that is referred to as "Gardiol" with extremely similar qualities to the Lemelson patent. The Court of Appeals reversed the Circuit Court's decision, saying "The evidence at trial demonstrated that the Hot Wheels track is basically the same as Gardiol, but without the internal support. Hot Wheels uses external attachments, as does Lemelson, to define the shape of the track for any particular configuration. However, there is no evidence of any other significant difference between Hot Wheels and Gardiol. The evidence at bar pointed to nothing in the Hot Wheels track which is not found in Gardiol. Gardiol differs only in having an extra element-the internal core for structural support... Lemelson failed to demonstrate that the Hot Wheels track included each claim limitation or its equivalent... We therefore conclude that no reasonable jury could read reissue claim 3 both to be valid in view of Gardiol AND infringed by Hot Wheels. When properly placed in the context of the prosecution history and the demonstrated meaning of the several clauses of the claim, these are inherently inconsistent conclusions." Basically, there is no way that Lemelson could be viewed as different than Gardiol under the doctrine of equivalents, and therefore a valid patent, while saying that the "Hot Wheels" product was equivalent to the Lemelson patent. Either "Hot Wheels" infringed, but the patent was invalid due to prior art, or the patent was valid, but "Hot Wheels" did not infringe.

*Haemonetics Corp. v. Baxter Healthcare Corp. 577 F.Supp.2d 482 (2008)

In this case, the patent owner (Haemonetics) filed action against competitor (Baxter) alleging infringement patent claiming centrifugal device used for separating and collecting components in liquid such as blood. Baxter filed motion for partial summary judgment of non-infringement. Haemonetics' patent included two drive units: The first drive unit is the assemblage of components responsible for rotating the tubes at an angular rate of ω and does not include the tubes or vessel; The second drive unit is the assemblage of components responsible for rotating the centrifugal vessel (or centrifugal unit) at an angular rate of 2ω and does not include the tubes or vessel. These drive units are considered two separate elements. Baxter's patent achieves the angular rate of 2ω in a different manner than that taught by Haemonetics' patent (namely, it doesn't use a second drive unit). Haemonetics counters that the accused device infringes their patent under the doctrine of equivalents which the defendant denied. In arriving at the decision that Baxter's patent did not infringe, the court used the doctrine of equivalents, asking "whether the difference between the element of the accused product and the corresponding limitation of the claim in the patented invention is a 'subtle difference in degree' or a 'clear, substantial difference in kind'."

Mackroyd

*'''Jerome H. Lemelson v. General Mills, Inc. 968 F.2d 1202 (1992)'''

United States District Court for Northern District of Illinois found in favor of plaintiff. The United States Court of Appeals reversed.
Lemelson issued a patent for "Toy Track and Vehicle Therefor" (June 24, 1969).
Matel (Defendent-Appellant) began independent track development (1967). Researched the prior art (Lemelson's patent did not yet exist) and concluded that a few features of the track may be patentable. Patented features of Hot Wheels but not the actual track.
The suit was filed December 1977 but Lemelson was granted a stay of litigation for the pending reissue of his patent. Reissued on April 8, 1986.
The case went to trial in the Northern District of Illinois in October of 1989 and ruled in favor of Lemelson.
The United States Court of Appeals reversed this judgment:
Lemelson failed to demonstrate that the Hot Wheels track included every claim limitation or its equivalent
Hot Wheels track was determined to be basically the same as the prior art (by Gardiol)
only two points of Lemelson's claims differed from Gardiol significantly and the Hot Wheels track was not show to have elements infringing this

Key takeaways: In order to be infringement by the doctrine of equivalents the track needed to be proved to infringe every claim limitation either directly or by equivalents.

901423417 - cnorton

Frontline Placement Technologies, Inc. v. CRS, Inc., 2011 Markman 451,962

Frontline Placement Technologies had a patent on a employee absence system, for which employees could notify the company if they needed a replacement, and replacements could accept the temporary position. It was ruled that CRS infringed on Frontline's patent by the equivalent language used in order to implement the system. A total of 16 similar words were used and in dispute for equilvalency, since CRS system boasted an improvement by having an intermediate step in the absence to replaced process whihc notifies that an acceptance and being accepted are differing meanings in the everyday sense of the word. It was ruled that the current language in the claims infringed, and that clarification which limited the means of ambiguously equivalent words must be stated.

RyanCalkin

User:Adam Mahood

2011-03-31T00:17:47Z

Adam Mahood:

Doctrine of Equivalence Case - Adam Mahood

2011-03-31T00:16:55Z

Adam Mahood: Created page with "== Background/Summary of the Case == * Johnston v. IVAC Corp. - 1989 ** Court of Appeals for the Federal Circuit ** Citation - 885 F.2d 1574 ** Pretty clear case for non-equival..."

== Background/Summary of the Case ==
* Johnston v. IVAC Corp. - 1989
** Court of Appeals for the Federal Circuit
** Citation - 885 F.2d 1574
** Pretty clear case for non-equivalence
** As I mentioned in class, this case dealt with plastic covers for thermometer probes (the long metal rod probes from your doctor's office).
** Essentially, the Johnston patent (AMEC Corp.) was for a thermometer that had a jagged edge towards the base of the probe such that when the plastic cover was slid on, the jagged edge would embed itself in the plastic, thus providing the method for retaining the probe cover.
** The alleged infringing device used a circular ring also at the base of the probe for attachment, instead of the hook.
** AMEC sued IVAC for infringing claiming that the circular friction lock was equivalent to the hook and thus the claim read on the IVAC device.
*** AMEC engineer examined the IVAC device with a microscope to find indentations to be able to testify that the IVAC device also dug into the plastic.
*** Since he used a 20x microscope and the plastic deformations were superficial and were in no way enough to hold on the probe cover the judge declared non-equivalence.
** This case makes it clear that just because something performs the same function, it must also do it in a very similar manner as the patented device in order to potentially be held equivalent.

User:Adam Mahood

2011-03-31T00:08:46Z

Adam Mahood:

=Case Notes=
[[Bonito Boats v. ThunderCraft]] - Patent/IP Basics

[[Hotchkiss Knobs]] - Novelty and non-obviousness

=My Selected US Patent=
*Patent : The Portable Computer
**Patent Number: 4497036
**Filing date: Apr 12, 1983
**Issue date: Jan 29, 1985
**My idea was to try and find the "first" patent for a portable computer. Laptops and mobile technology have revolutionized how we live and work on a day to day basis and trying to trace their origins should prove to be a worthwhile venture. The actual patent is for a revolutionary new portable computing device that allows for a larger display than the one portable computer patented by Epson in the same year. By allowing the whole screen to fold over the keyboard, the keyboard and display sizer are both increased. The one revolutionary aspect of this design is that it allows for the insertion of CMOS RAM expansion cartridges so that the performance can be scaled. I found the patent while digging for laptop origins on Google Patents. The link is [http://www.google.com/patents?id=eP8wAAAAEBAJ&printsec=claims&zoom=4#v=onepage&q&f=false]

=Non-Obviousness Assignment - 1/28/11=
[[Non-Obviousness - My Selected Patent]]

=Engineering Analysis/Non-Obviousness - 2/4/11=
[[Engineering Analysis - Adams Patent]]

=Non-Obviousness - Adam Mahood - 2/9/11=
[[My Non-Obviousness Page]]

=Printed Publication Case - Adam Mahood - 3/22/11=
[[Printed Publication Case - Adam Mahood]]

=Doctrine of Equivalence Case - Adam Mahood - 3/30/11=
[[Doctrine of Equivalence Case - Adam Mahood]]

Printed Publication Case - Adam Mahood

2011-03-23T16:10:38Z

Adam Mahood:

== Background of the Case ==
* Truman v. Cargill Manufacturing Co. - 1898
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to make a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
* Opinion/Testimony
** During testimony, the defense presented a picture in a volume of the '''New York Coach-Makers' Magazine''', and particularly the January, 1864 volume that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.
** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.
*Holding
** Patent ruled invalidated based on lack of novelty due to printed publication.
** Would appear that copyrighted, published trade magazines count as printed publications when dealing with patent bars.

== Class Notes ==
* Types of Allowable Publications
** Technical report - Oblique reference to subject matter enough - In re Baxter
** Powerpoint pres put on posterboard not archived - Audience important - In re Klopfenstein
** Results of experiments relating to the patent do count as publication - Pickering v. Holman
** Instruction that includes all elements
** Scholarly article discussing effects of invention
** Product catalog

Printed Publication Case - Adam Mahood

2011-03-23T15:45:28Z

Adam Mahood: /* Opinion and Holding */

Printed Publication Case - Adam Mahood

2011-03-23T15:44:15Z

Adam Mahood: /* Opinion and Holding */

Printed Publication Case - Adam Mahood

2011-03-23T15:43:53Z

Adam Mahood: /* Background of the Case */

== Background of the Case ==
* Truman v. Cargill Manufacturing Co. - 1898
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to make a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
* Opinion/Testimony
** During testimony, the defense presented a picture in a volume of the New York Coach-Makers' Magazine, and particularly the January, 1864 volume that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.
** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.
*Holding
** Patent ruled invalidated based on lack of novelty due to printed publication.
** Would appear that copyrighted, published trade magazines count as printed publications when dealing in patent bars.

Printed Publication Case - Adam Mahood

2011-03-23T15:38:04Z

Adam Mahood: /* Background of the Case */

== Background of the Case ==
* Truman v. Cargill Manufacturing Co. - 1898
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
* Opinion/Testimony
** During testimony, the defense presented a picture in a volume of the New York Coach-Makers' Magazine, and particularly the January, 1864 volume that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.
** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.
*Holding
** Patent ruled invalidated based on lack of novelty due to printed publication.
** Would appear that copyrighted, published trade magazines count as printed publications when dealing in patent bars.

Printed Publication Case - Adam Mahood

2011-03-23T01:14:18Z

Adam Mahood: /* Opinion and Holding */

== Background of the Case ==
* Truman v. Cargill Manufacturing Co.
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
* Opinion/Testimony
** During testimony, the defense presented a picture in a volume of the New York Coach-Makers' Magazine, and particularly the January, 1864 volume that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.
** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.
*Holding
** Patent ruled invalidated based on lack of novelty due to printed publication.
** Would appear that copyrighted, published trade magazines count as printed publications when dealing in patent bars.

Printed Publication Case - Adam Mahood

2011-03-23T01:13:17Z

Adam Mahood: /* Opinion and Holding */

== Background of the Case ==
* Truman v. Cargill Manufacturing Co.
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
* Opinion
** During testimony, the defense presented a picture in a volume of the New York Coach-Makers' Magazine, and particularly the January, 1864 volume that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.
** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.

Printed Publication Case - Adam Mahood

2011-03-23T01:12:58Z

Adam Mahood: /* Opinion and Holding */

== Background of the Case ==
* Truman v. Cargill Manufacturing Co.
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
* Opinion
** During testimony, the defense presented a picture in a volume of the New York Coach-Makers' Magazine, and particularly the January, 1864 volume
that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.

** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.

Printed Publication Case - Adam Mahood

2011-03-23T01:12:44Z

Adam Mahood: /* Opinion and Holding */

== Background of the Case ==
* Truman v. Cargill Manufacturing Co.
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
* Opinion
** During testimony, the defense presented a picture in a volume of the New York Coach-Makers' Magazine, and particularly the January, 1864 volume
that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.
** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.

Printed Publication Case - Adam Mahood

2011-03-23T01:12:19Z

Adam Mahood: /* Opinion and Holding */

== Background of the Case ==
* Truman v. Cargill Manufacturing Co.
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==
** During testimony, the defense presented a picture in a volume of the New York Coach-Makers' Magazine, and particularly the January, 1864 volume
that showed a similar set up with the footrests attached to the seat below the axle very similar to the Putnam invention.
** This went to show that the cart design covered by the patent were in use long before the 1880 granting of the Putnam patent.
** Putnam tried to contend that these were not publications in the sense the patent law meant it, but there was no way to draw distinctions between "different types of publications in the eyes of the law."
** The court ruled that it past the most rigid test for prior publications that existed at that time, as “It appears that [the magazines] were published, copyrighted, and in general circulation."
** Librarians also testified that they had been available in their libraries for a number of years.
** Lastly, several skilled cart makers also testified that they had been making carts based on the published designs for quite some time.

Printed Publication Case - Adam Mahood

2011-03-23T01:09:21Z

Adam Mahood: /* Background of the Case */

Printed Publication Case - Adam Mahood

2011-03-23T01:09:06Z

Adam Mahood: /* Background of the Case */

== Background of the Case ==
** Truman v. Cargill Manufacturing Co.
** California Federal Circuit Court
** De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
** It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
** Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
** The defendant then sold the rest of the unreceived order in the county covered by the patent.
** Truman subsequently sued for infringement.
** There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==

Printed Publication Case - Adam Mahood

2011-03-23T01:07:48Z

Adam Mahood: Created page with "== Background of the Case == - Truman v. Cargill Manufacturing Co. - California Federal Circuit Court - De Witt Putnam, working for the Truman company got a patent on September 1..."

== Background of the Case ==
- Truman v. Cargill Manufacturing Co.
- California Federal Circuit Court
- De Witt Putnam, working for the Truman company got a patent on September 14, 1880 for the exclusive right to making a horse carriage with feet straps connecting directly to the seat, for the coverage of San Francisco County alone.
- It would appear that ostensibly, this set up would elminiate unwanted jostling of the rider by allowing the feet and seat to move in unison, not separately.
- Putnam's company in 1893 asked the defendant to produce around 125 carts according to the patent, but when finished would only receive around half of the order.
- The defendant then sold the rest of the unreceived order in the county covered by the patent.
- Truman subsequently sued for infringement.
- There were several differing district cases regarding this issue that needed to be resolved so it was reviewed by the Federal Court.

== Opinion and Holding ==

User:Adam Mahood

2011-03-22T19:04:48Z

Adam Mahood:

User:Adam Mahood

2011-03-22T19:04:20Z

Adam Mahood:

ESB Briefs

2011-03-03T22:48:46Z

Adam Mahood:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#croetzel
#kroshak
#Adam Mahood
#
#
#
#
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#
#
#
#
#
#
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#
#
#
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#
#
#
#
#
#

Bilski brief list

2011-02-14T15:33:31Z

Adam Mahood:

Choose one of the briefs from this list. Delete it and replace it with your login name. Please be careful editing this page. If you mess up all the formatting it will create work for your colleagues.

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Adam T. Letcher
#Craigkrzyskowski
#dcarter2
#ebingle
#Rabot
#Eric Paul
#cnorton
#kschlax
#Jnosal
#Mackroyd
#dsakamot
#eguilbea
#901444263
#shockett
#gallsup
#KyleR
#Andy Stulc
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
#Kevin Godshall
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Kriester
#Brobins
#Josh Bradley
#Chuck Talley
#E W Hitchler
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Mzahm
#Adam Mahood
#Hamburgler
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#901422128
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#LMiller
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#CRoetzel
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Pmitros
#pfleury
#901479977
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Bobby Powers
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Xiao Dong
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#ewolz
#kristen kemnetz
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Jmarmole
#Gtorrisi

Non-Obviousness Page - Adam Mahood

2011-02-10T06:02:31Z

Adam Mahood: /* Overarching Background */

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged analysis approach. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects that demarcate nonobviousness and attempt to derive some sort of objective standards for meeting the condition.

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===
See "Alternative Tests" below.

==Objective Standards for Nonobviousness==
Let us wind our way back from this lengthy but necessary historical conversation to the desire state at the outset to determine an objective set of criteria that demarcates the nonbviousness requirement as codified in 35 USC 103. Through Hotchkiss, Graham, Adams and the like, the following has been established through legislative language and judicial precedent:

To determine if an invention is nonobvious
:*First, one must examine in detail the scope and technical concepts of the prior art in the relevant subject matter.
:*Secondly, the differences between the prior art and the invention at hand must be clearly demarcated.
:*Thirdly, the level of ordinary skill in the art at the time of the said discovery must be determined.
:*Lastly, if the differences between the two are such that a person with ordinary skill in the art could have, at the time of the invention, deemed the advancement claimed by the patent obvious, the item is deemed not patentable.

There are also secondary considerations that can strengthen the case for nonobviousness that have been hinted at by the courts:
:*A longfelt but unsatisfied need for the advancement at hand
:*Commercial success of the product under contention
:*Previous failures of skilled artists in the field
:*Teaching away from the path of advancement that is taken by the inventor
:*Unexpected results arising from a combination of prior articles
(NB: These secondary conditions alone are not enough to guarantee nonobviousness)

==Alternative Tests (TSM)==
The KSR v. Teleflex case above is outlined here because at its heart lies consideration of an alternative test for nonobviousness. In this case, the District Court stated that the device was patentable because it had passed the so called TSM test. This test, an attempt by the Court of Appeals for the Federal Circuit to further codify obviousness of combination patents, stated that if there can be found some teaching, suggestion, or motivation to combine the component parts in the prior art, then the advancement is obvious.

However, it was ruled by the USSC in striking down the relevant patent as obvious, although this test does provide helpful insight into approaching the obviousness question, applying it in such a rigid manner is not an adequate way to address such concerns. The Supreme Court wanted to stress that it is often necessary and encouraged to look at the interconnectedness and relation of multiple patents and the demands of the design and consumer community that the device is striving to serve. Thus, confining oneself to a rigid definition of the works teaching, suggestion, and motivation without reading into the atmosphere and opinion surrounding the prior art is a misguided approach.

==Context of 103==
Now that an adequate outline of both the historical development and "objective checklist" of nonobviousness has been presented, it is important to refocus ourselves context in which Section 103 of Title 35 of the US Code exists. It must be realized that obviousness is not the only criteria that must be met in order to prove patentability. In fact, as we have shown, it is the most recent addition to the relevant section of the Code. Sections 101 and 102, outlining the other requirements, have remained largely the same since the first versions of the patent clauses were drafted. So, even though the object of a patent may pass the test of nonobviousness, it may not even be a new or useful product, thus not warranting a limited monopoly. Conversely, if a product passes the obstacles put in place by 101 or 102, it may not even come close to being nonobvious as described herein. Moving forward, all sections and their requirements must be taken into account when examining the validity of a patent.

Non-Obviousness Page - Adam Mahood

2011-02-09T16:10:13Z

Adam Mahood: /* Objective Standards for Nonobviousness */

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===
See "Alternative Tests" below.

==Objective Standards for Nonobviousness==
Let us wind our way back from this lengthy but necessary historical conversation to the desire state at the outset to determine an objective set of criteria that demarcates the nonbviousness requirement as codified in 35 USC 103. Through Hotchkiss, Graham, Adams and the like, the following has been established through legislative language and judicial precedent:

To determine if an invention is nonobvious
:*First, one must examine in detail the scope and technical concepts of the prior art in the relevant subject matter.
:*Secondly, the differences between the prior art and the invention at hand must be clearly demarcated.
:*Thirdly, the level of ordinary skill in the art at the time of the said discovery must be determined.
:*Lastly, if the differences between the two are such that a person with ordinary skill in the art could have, at the time of the invention, deemed the advancement claimed by the patent obvious, the item is deemed not patentable.

There are also secondary considerations that can strengthen the case for nonobviousness that have been hinted at by the courts:
:*A longfelt but unsatisfied need for the advancement at hand
:*Commercial success of the product under contention
:*Previous failures of skilled artists in the field
:*Teaching away from the path of advancement that is taken by the inventor
:*Unexpected results arising from a combination of prior articles
(NB: These secondary conditions alone are not enough to guarantee nonobviousness)

==Alternative Tests (TSM)==
The KSR v. Teleflex case above is outlined here because at its heart lies consideration of an alternative test for nonobviousness. In this case, the District Court stated that the device was patentable because it had passed the so called TSM test. This test, an attempt by the Court of Appeals for the Federal Circuit to further codify obviousness of combination patents, stated that if there can be found some teaching, suggestion, or motivation to combine the component parts in the prior art, then the advancement is obvious.

However, it was ruled by the USSC in striking down the relevant patent as obvious, although this test does provide helpful insight into approaching the obviousness question, applying it in such a rigid manner is not an adequate way to address such concerns. The Supreme Court wanted to stress that it is often necessary and encouraged to look at the interconnectedness and relation of multiple patents and the demands of the design and consumer community that the device is striving to serve. Thus, confining oneself to a rigid definition of the works teaching, suggestion, and motivation without reading into the atmosphere and opinion surrounding the prior art is a misguided approach.

==Context of 103==
Now that an adequate outline of both the historical development and "objective checklist" of nonobviousness has been presented, it is important to refocus ourselves context in which Section 103 of Title 35 of the US Code exists. It must be realized that obviousness is not the only criteria that must be met in order to prove patentability. In fact, as we have shown, it is the most recent addition to the relevant section of the Code. Sections 101 and 102, outlining the other requirements, have remained largely the same since the first versions of the patent clauses were drafted. So, even though the object of a patent may pass the test of nonobviousness, it may not even be a new or useful product, thus not warranting a limited monopoly. Conversely, if a product passes the obstacles put in place by 101 or 102, it may not even come close to being nonobvious as described herein. Moving forward, all sections and their requirements must be taken into account when examining the validity of a patent.

Non-Obviousness Page - Adam Mahood

2011-02-09T01:34:59Z

Adam Mahood: /* Context of 103 */

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===
See "Alternative Tests" below.

==Objective Standards for Nonobviousness==
Let us wind our way back from this lengthy but necessary historical conversation to the desire state at the outset to determine an objective set of criteria that demarcates the nonbviousness requirement as codified in 35 USC 103. Through Hotchkiss, Graham, Adams and the like, the following has been established through legislative language and judicial precedent:

To determine if an invention is nonobvious
:*First, one must examine in detail the scope and technical concepts of the prior art in the relevant subject matter.
:*Secondly, the differences between the prior art and the invention at hand must be clearly demarcated.
:*Thirdly, the level of ordinary skill in the art at the time of the said discovery must be determined.
:*Lastly, if the differences between the two are such that a person with ordinary skill in the art could have, at the time of the invention, deemed the advancement claimed by the patent obvious, the item is deemed not patentable.

There are also secondary considerations that can strengthen the case for nonobviousness that have been hinted at by the courts:
:*A longfelt but unsatisfied need for the advancement at hand
:*Commercial success of the product under contention
:*Previous failures of skilled artists in the field
:*Teaching away from the path of advancement that is taken by the inventor
:*Unexpected results arising from a combination of prior articles
(NB: These alone are not enough to guarantee nonobviousness)

==Alternative Tests (TSM)==
The KSR v. Teleflex case above is outlined here because at its heart lies consideration of an alternative test for nonobviousness. In this case, the District Court stated that the device was patentable because it had passed the so called TSM test. This test, an attempt by the Court of Appeals for the Federal Circuit to further codify obviousness of combination patents, stated that if there can be found some teaching, suggestion, or motivation to combine the component parts in the prior art, then the advancement is obvious.

However, it was ruled by the USSC in striking down the relevant patent as obvious, although this test does provide helpful insight into approaching the obviousness question, applying it in such a rigid manner is not an adequate way to address such concerns. The Supreme Court wanted to stress that it is often necessary and encouraged to look at the interconnectedness and relation of multiple patents and the demands of the design and consumer community that the device is striving to serve. Thus, confining oneself to a rigid definition of the works teaching, suggestion, and motivation without reading into the atmosphere and opinion surrounding the prior art is a misguided approach.

==Context of 103==
Now that an adequate outline of both the historical development and "objective checklist" of nonobviousness has been presented, it is important to refocus ourselves context in which Section 103 of Title 35 of the US Code exists. It must be realized that obviousness is not the only criteria that must be met in order to prove patentability. In fact, as we have shown, it is the most recent addition to the relevant section of the Code. Sections 101 and 102, outlining the other requirements, have remained largely the same since the first versions of the patent clauses were drafted. So, even though the object of a patent may pass the test of nonobviousness, it may not even be a new or useful product, thus not warranting a limited monopoly. Conversely, if a product passes the obstacles put in place by 101 or 102, it may not even come close to being nonobvious as described herein. Moving forward, all sections and their requirements must be taken into account when examining the validity of a patent.

Non-Obviousness Page - Adam Mahood

2011-02-09T01:26:48Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===
See "Alternative Tests" below.

==Objective Standards for Nonobviousness==
Let us wind our way back from this lengthy but necessary historical conversation to the desire state at the outset to determine an objective set of criteria that demarcates the nonbviousness requirement as codified in 35 USC 103. Through Hotchkiss, Graham, Adams and the like, the following has been established through legislative language and judicial precedent:

To determine if an invention is nonobvious
:*First, one must examine in detail the scope and technical concepts of the prior art in the relevant subject matter.
:*Secondly, the differences between the prior art and the invention at hand must be clearly demarcated.
:*Thirdly, the level of ordinary skill in the art at the time of the said discovery must be determined.
:*Lastly, if the differences between the two are such that a person with ordinary skill in the art could have, at the time of the invention, deemed the advancement claimed by the patent obvious, the item is deemed not patentable.

There are also secondary considerations that can strengthen the case for nonobviousness that have been hinted at by the courts:
:*A longfelt but unsatisfied need for the advancement at hand
:*Commercial success of the product under contention
:*Previous failures of skilled artists in the field
:*Teaching away from the path of advancement that is taken by the inventor
:*Unexpected results arising from a combination of prior articles
(NB: These alone are not enough to guarantee nonobviousness)

==Alternative Tests (TSM)==
The KSR v. Teleflex case above is outlined here because at its heart lies consideration of an alternative test for nonobviousness. In this case, the District Court stated that the device was patentable because it had passed the so called TSM test. This test, an attempt by the Court of Appeals for the Federal Circuit to further codify obviousness of combination patents, stated that if there can be found some teaching, suggestion, or motivation to combine the component parts in the prior art, then the advancement is obvious.

However, it was ruled by the USSC in striking down the relevant patent as obvious, although this test does provide helpful insight into approaching the obviousness question, applying it in such a rigid manner is not an adequate way to address such concerns. The Supreme Court wanted to stress that it is often necessary and encouraged to look at the interconnectedness and relation of multiple patents and the demands of the design and consumer community that the device is striving to serve. Thus, confining oneself to a rigid definition of the works teaching, suggestion, and motivation without reading into the atmosphere and opinion surrounding the prior art is a misguided approach.

==Context of 103==

Non-Obviousness Page - Adam Mahood

2011-02-09T01:15:58Z

Adam Mahood: /* Objective Standards for Nonobviousness */

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===
See "Alternative Tests" below.

==Objective Standards for Nonobviousness==
Let us wind our way back from this lengthy but necessary historical conversation to the desire state at the outset to determine an objective set of criteria that demarcates the nonbviousness requirement as codified in 35 USC 103. Through Hotchkiss, Graham, Adams and the like, the following has been established through legislative language and judicial precedent:

To determine if an invention is nonobvious
:*First, one must examine in detail the scope and technical concepts of the prior art in the relevant subject matter.
:*Secondly, the differences between the prior art and the invention at hand must be clearly demarcated.
:*Thirdly, the level of ordinary skill in the art at the time of the said discovery must be determined.
:*Lastly, if the differences between the two are such that a person with ordinary skill in the art could have, at the time of the invention, deemed the advancement claimed by the patent obvious, the item is deemed not patentable.

There are also secondary considerations that can strengthen the case for nonobviousness that have been hinted at by the courts:
:*A longfelt but unsatisfied need for the advancement at hand
:*Commercial success of the product under contention
:*Previous failures of skilled artists in the field
:*Teaching away from the path of advancement that is taken by the inventor
:*Unexpected results arising from a combination of prior articles
(NB: These alone are not enough to guarantee nonobviousness)

==Alternative Tests (TSM)==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-09T01:12:55Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===
See "Alternative Tests" below.

==Objective Standards for Nonobviousness==
Let us wind our way back from this lengthy but necessary historical conversation to the desire state at the outset to determine an objective set of criteria that demarcates the nonbviousness requirement as codified in 35 USC 103. Through Hotchkiss, Graham, Adams and the like, the following has been established through legislative language and judicial precedent:

To determine if an invention is nonobvious
:*First, one must examine in detail the scope and technical concepts of the prior art in the relevant subject matter.
:*Secondly, the differences between the prior art and the invention at hand must be clearly demarcated.
:*Thirdly, the level of ordinary skill in the art at the time of the said discovery must be determined.
:*Lastly, if the differences between the two are such that a person with ordinary skill in the art could have, at the time of the invention, deemed the advancement claimed by the patent obvious, the item is deemed not patentable.

There are also secondary considerations that can strengthen the case for nonobviousness that have been hinted at by the courts:

==Alternative Tests (TSM)==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

My Non-Obviousness Page

2011-02-09T01:04:41Z

Adam Mahood: moved My Non-Obviousness Page to Non-Obviousness Page - Adam Mahood: Uniqueness of page title

#REDIRECT [[Non-Obviousness Page - Adam Mahood]]

Non-Obviousness Page - Adam Mahood

2011-02-09T01:04:41Z

Adam Mahood: moved My Non-Obviousness Page to Non-Obviousness Page - Adam Mahood: Uniqueness of page title

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===

==Objective Standards for Nonobviousness==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==Alternative Tests (TSM)==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-09T00:45:58Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

===U.S. v. Adams (1966)===

This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.

It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.

===KSR vs. Teleflex===

==Objective Standards for Nonobviousness==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==Alternative Tests (TSM)==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-09T00:32:15Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

/*Original Text

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
*/

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

/*
While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
*/

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

/*
In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.
*/
===U.S. v. Adams (1966)===

This first of the final two cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.

The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.

Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Objective Standards for Nonobviousness==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==Alternative Tests (TSM)==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-09T00:16:26Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

/*Original Text

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
*/

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

/*
While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
*/

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.

The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.

This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.

/*
In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.
*/
===U.S. v. Adams (1966)===

* 1966: [[US v. Adams, 383 U.S. 39 (1966)]] All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-09T00:01:12Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

/*Original Text

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
*/

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

/*
While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
*/

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.

The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.

The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.

===Graham v. John Deere (1966)===

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.

===U.S. v. Adams (1966)===

* 1966: [[US v. Adams, 383 U.S. 39 (1966)]] All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-08T23:50:16Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

/*Original Text

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
*/

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

/*
While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
*/

===Patent Act of 1952===
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.

This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made."

A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.

===Lyon v. Bausch & Lomb (1955)===

This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language.

===Graham v. John Deere (1966)===

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.

===U.S. v. Adams (1966)===

* 1966: [[US v. Adams, 383 U.S. 39 (1966)]] All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-08T23:39:02Z

Adam Mahood:

==Overarching Background==
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing in itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition

==Historical Development==

As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.

===Hotchkiss v. Greenwood (1850)===

The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.

The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.

Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.

The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.

This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.

/*Original Text

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
*/

===A&P Tea v. Supermarket Equipment (1950)===

This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.

The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.

Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of ''invention.'' (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product '''can never''' lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.

It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone
* as a whole, exceed the functionality of the sum of its parts
* add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability."
Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.

/*
While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
*/

===Patent Act of 1952===

This section of the code was adopted in 1952 and prohibits a patent in a case where
: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.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

===Graham v. John Deere (1966)===

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.

===U.S. v. Adams (1966)===

* 1966: [[US v. Adams, 383 U.S. 39 (1966)]] All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Non-Obviousness Page - Adam Mahood

2011-02-08T23:17:03Z

Adam Mahood:

Non-Obviousness Page - Adam Mahood

2011-02-08T23:13:23Z

Adam Mahood:

Non-Obviousness Page - Adam Mahood

2011-02-08T22:53:02Z

Adam Mahood: Created page with "==Overarching Background== One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always c..."

User:Adam Mahood

2011-02-08T22:40:56Z

Adam Mahood:

User:Adam Mahood

2011-02-04T06:34:35Z

Adam Mahood:

Engineering Analysis - Adams Patent

2011-02-04T06:33:47Z

Adam Mahood: Created page with " == Background / Non-Obviousness == First off, it is important to briefly outline the key points that have been codified in 35 USC 103, as well as those that have been affirmed ..."

== Background / Non-Obviousness ==

First off, it is important to briefly outline the key points that have been codified in 35 USC 103, as well as those that have been affirmed time and time again by judicial precedent. The explicit language of 103(a) perhaps is the best way of making an initial attempt at analysis. The section states that the device is unpatentable is “the differences between the prior art and the subject matter of the patent are such that it would be obvious to a person with ordinary skill in the art at the time of invention. This language was a way of codifying the methods in Hotchkiss that outlined that mere material substitutions or combinations can not be patented unless it required unusual skill in the art unless it produces unexpected results. The latter part of the previous sentence is what is primarily at play in this engineering analysis. Also, we can turn to secondary factors such as commercial success, long felt and unmet need, and failures of others to point to non-obviousness.

== Analysis for Patent Validity ==
As stated by the courts many times, a deep dive into the prior art is necessary when analyzing obviousness. In this case, that is the Wood and Hayes Patents. Let us first outline the key technical aspects of the Hayes patent since it was temporally first. The stated goal of the Hayes device is to make a light, high capacity wet battery that uses Chloride-of-Silver as its positive pole. The main improvement of this device over prior devices was that the silver terminal wire was encased in a glass tube so that deposits were not formed, thus destroying the wire. This patent also mentions the use of Zinc as the negative battery terminal. These two terminals were in a wet solution of either sodium chloride or ammonium chloride/distilled water mixture. The Adams device at hand would not be obvious to someone skilled in the field of batteries at the time of the Hayes patent for several reasons. First off, the two poles of the devices are made from entirely different materials (Mg instead of Ag, and CuCl instead of Zn). Now although under Hotchkiss material substitutions weren’t patentable, the Adams substitution creates a device that has different operating characteristics than the Hayes device. Primarily, the Adams device does not give off fumes unlike the Hayes device, and it does not produce any solid Chlorine waste as in Hayes’ case. This unexpected result and added benefit of the Adams device is enough to show that it is non-obvious under 103 even when considering Hayes. Next, let us consider the Wood patent. This patent is for a wet battery whose negative terminal is made of magnesium, the same as in the Adams device. Wood states that, at the time, it was generally accepted that using Mg as an electrode was unsuccessful due to rapid corrosion. To prove this theory, and the theory that normal water can’t be used as the electrolyte in the battery, Wood ran a few tests. His tests showed that the battery that had ammonium chloride and distilled water was used up in four hours, gave off too much odor and gas but a constant voltage of 1.4V. These negative aspects were enough for Wood to throw away the idea of using water and put his support behind using the electrolyte mixture of ammonium chloride, ammonium nitrate, and sodium dichromate. The Adams patent is valid even in light of the Wood patent, primarily as a result of the device’s stability when using a magnesium electrode and plain water as an electrolyte. The fact that Wood’s patent would lead researches away from the Mg/water combination is enough to prove that it was not obvious for Adams to attempt to make this device. In fact, nowhere in Wood’s claims does it ever refer to using or the benefits of water as the electrolyte. Thus, it is my opinion that in the eyes of 103, the Wood patent, and the Hayes patent, our Adams device is patentable.

== Analysis for Patent Invalidity ==
The issue at hand in this case is quite simple. With regards to our Adams device in light of the Wood and Hayes devices, we are essentially dealing with a material substitution example not unlike that of Hotchkiss v. Greenwood. It has been shown that multiple wet batteries, including the Wood and Hayes cells, have used various combinations of materials for anodes, cathodes, and electrolytes including magnesium for the negative electrode, silver chloride for the positive electrodes and various ammonium chloride solutions as the electrolyte. Anyone with a working knowledge of chemical compounds and their characteristics would know that copper chloride is a reasonable substitute for silver chloride, thus making this a reasonably obvious substitution in trying to make a cell with similar characteristics. As for the magnesium, an electrode made of pure magnesium as outlined in the Wood patent. Thus, making a cell whose electrodes are magnesium and copper chloride would be obvious to anyone with a knowledge of the prior art in the field and attempting to construct a new cell. Lastly, we come to the electrolyte question. One of the things that had been plaguing industry is the waste or fume and gas production of the state of the art cells. In fact, this problem is explicitly contained in both the Wood and Hayes patents. The fact that the Adams device happens to not have this problem simply as a result of combining different elements from the prior art and using water as the electrolyte is a coincidence, and a result that is not even outlined in the claims. Thus, it is my opinion that there is nothing unexpected beyond a combination of prior art and a substitution of materials therein contained in the claims of the Adams patent and therefore it is deemed unpatentable.

'''Resources = Adams patent (US 2322210), Wood patent (US 1696873), Hayes patent (US 282634) '''

User:Adam Mahood

2011-02-04T06:30:33Z

Adam Mahood:

=Case Notes=
[[Bonito Boats v. ThunderCraft]] - Patent/IP Basics

[[Hotchkiss Knobs]] - Novelty and non-obviousness

=Selected US Patent=
*Patent : The Portable Computer
**Patent Number: 4497036
**Filing date: Apr 12, 1983
**Issue date: Jan 29, 1985
**My idea was to try and find the "first" patent for a portable computer. Laptops and mobile technology have revolutionized how we live and work on a day to day basis and trying to trace their origins should prove to be a worthwhile venture. The actual patent is for a revolutionary new portable computing device that allows for a larger display than the one portable computer patented by Epson in the same year. By allowing the whole screen to fold over the keyboard, the keyboard and display sizer are both increased. The one revolutionary aspect of this design is that it allows for the insertion of CMOS RAM expansion cartridges so that the performance can be scaled. I found the patent while digging for laptop origins on Google Patents. The link is [http://www.google.com/patents?id=eP8wAAAAEBAJ&printsec=claims&zoom=4#v=onepage&q&f=false]

=Non-Obviousness Assignment - 1/28/11=
[[Non-Obviousness - My Selected Patent]]

=Engineering Analysis/Non-Obviousness - 2/4/11=
[[Engineering Analysis - Adams Patent]]

Non-Obviousness - My Selected Patent

2011-01-28T15:52:49Z

Adam Mahood: Created page with "== References – My patent only references two other patents == '''- Electronic Calculating Machine - D243250''' This patent is essentially a design patent for an ornamental d..."

== References – My patent only references two other patents ==

'''- Electronic Calculating Machine - D243250'''
This patent is essentially a design patent for an ornamental design of a pocket calculating machine, referred to as the calculator for the rest of my discussion. In my opinion, there are four aspects of this patent and its enclosed product that make it unique that must be outlined before analyzing my patent through these document’s eyes. First off, it must be realized that the stated purpose of this device was to carry out the four basic mathematical operations of addition, subtraction, multiplication, and division. It is not stated anywhere in the patent of the possibility ability of this device to be scaled up for larger scale computational operations, such as the ones we commonly use laptops for today. Secondly, this device is of a portable manner in the sense that it is meant to be easily carried on the person or in an accessory bag. This is made easier by the clamshell-like design of the device, with its display half of the device folding over onto the keypad half. Thirdly, the design drawings of the patent show one row of digit displays on which the input and output numbers are displayed to the user. Fourthly, there are 17 buttons, presumably for the 10 different digits , the four operation signs, an equal sign and two other inputs. This small amount of buttons also goes to show its single-use design. These four things are, in my opinion, the unique aspects of this citation that must be analyzed moving forward.

'''- Assured-check computer-based bank credit disbursing system – 4053735'''
This patent is much more complex than the previous citation, in that it is not just a design patent, but it is more generally a patent for a device, both form and function. On its most basic level this patent is for a portable handheld “Check/ATM” machine. Essentially people who possessed one of these units would take it to a bank that had a “base unit” and the bank would initiate a transfer to the mobile unit into two accounts, Cash and Credit. With the portable device, the user could then go to any merchant of his or her choosing and create and print checks to pay for goods and services by deducting from either of the two accounts. To accomplish this task, this device had several unique features. First off, it too had a clamshell like design in which a hinged cover exists in order to fold over and cover the keyboard for transit. Speaking of transit, it is stated that this device should be pocket sized with the mobility of the portable calculators previously existing. This device has not one, but two single-line lighted displays in which the Balance and Transaction numbers can be displayed. The keyboard also contains 10 numeric keys, an enter key, a clear key, and a button for either ‘Cash’ or ‘Credit.’ One of this device’s main features is its integrated check printer that allows the user to pay for an item by deducting from their balance and printing a check ‘on-the-fly’. This patent document also includes two block diagrams which represent the electrical circuitry and information path of the internal computing device. A main feature of the internal computer is the inclusion of non-volatile RAM which enables the storage of the account data even if the unt’s power is turned off. These features, both of the design and functionality of the device are those on which we will base our further discussion.

== Hotchkiss v. Greenwood ==
The main debate in the Hotchkiss case centered around whether things whose only new feature was a material change of one part or another in a publicly existing or previously patented article could be patented.
In this particular case, there was not much appeal to the US Code just to logic and reason.
The opinion of the court was that a patent can not be granted to things that involve just a material change.
Justification was a mere substitution of material does not require someone exceptionally skilled in the art to carry out.
Regardless of the possible increase in quality of the resulting product, it was not new or non-obvious.
The dissenting opinion was that even if it didn’t take very much skill, if the product post-substitution was cheaper or of better quality the item was patentable.

Looking at the first patent I reference above, the calculator, my invention would most certainly be patentable.
It is clear that there is no simple material change from the calculator to the primitive laptop described in my chosen patent.
To me, the Hotchkiss decision puts stress upon the need for an item to require special skill above and beyond that of what a normal practitioner of the art would have for creation on order to be patentable. This device fulfills the requirement in my mind because someone with ordinary skill in operating and maintaining a pocket calculator would not have the ingenuity or know-how to add several of the distinguishing features of my patent including the larger keyboard whose functions are determined by software, an expandable ROM/RAM interface, and a larger display driven by a special driver circuit that allows for 80x25 characters.

I would say that my device is also patentable even when viewed as an extension of the check-writing machine referred to above.
Again, there is no mere material change and there are a lot of features of this new device, some of which have been enumerated above, that would require someone with more than ordinary skill in the art of banking, or operating or using electronics to invent.
The primary way that I believe my patent is distinguished from either of the two references but primarily that latter one is that in the patent or philosophy presented within, the inventor does not limit their device to a single purpose or application. Whereas the two references are what I will call specialized portable computers, one for four simple mathematical operations and one for banking transactions, this device is inherently limitless application wise. With the addition of the expansion RAM/ROM cartridges, the amount of possible software that can be run efficiently and easily presented on a larger display is very high.

== A & P Tea v. Supermarket Corp. ==

The A & P decision regarding non-obviousness is crucial in the sense that it occurred right around the time which the actual patent laws were changing. This particular case may have in fact directly impacted the future language of the United States Code at play with patents.
The main issue at play in this case was the non-obviousness of combination patents – patents whose devices are made up in whole or in part of previously existing parts or pieces.
There were several main points made in the decision.
In the opinion of the court, it was stated that an invention can’t be considered as such if it is merely an extension or change in dimensions of an existing item or items.
This shows the courts desire to refine the requirements of combination patents. One can not simply combine two existing items, change their dimensions and put them side by side and call them a new item.
With regards to validity of combinations, the key in my eyes is “only when the whole in some way exceeds the sum of its parts is the accumulation patentable.”
The invention must serve the end of furthering the amount of knowledge in the field of science and its associated knowledge pool.
Lastly mentions the genius test – a master in the field must recognize it as an advance.

Let’s now look at this case and apply it to my patent with regards to the first referenced patent.
It is clear that, even nowadays, most or all electronic devices are nothing but combinations of existing raw materials and simple electronic components (resistors, capacitors, transistors).
However, if a device is presented that uses a combination of these components in a new and unique manner and uses them in a way that the end function is totally different than a previous device, this new electronic device is patentable. This is exactly what we have in this case.
In large part, both the portable calculator and the portable computer at hand were at a low level, combinations of plastic, resistors, capacitors, transistors, and electrical wiring. However, my laptop device puts these things together in a totally new combination than what is presented in the calculator. It appears that the calculator platform described is a portable electronic device whose sole purpose is to perform the four basic mathematical operations. Although the laptop appears to be of a similar composition, it has a stated goal and functionality of being able to host and run a variety of software programs thus making it a scalable, portable, and versatile computing device.
In my opinion these points made above, and the technical details within the patent lead me to believe that an expert in electronics and computing architecture of the time would believe that a portable versatile computing device would be an advance and thus patentable over the calculator in the eyes of A & P precedent.

Secondly, let’s look at its patentability with regards to A & P precedent and the portable check printer.
Again, the Supermarket decision stressed the importance that a new device cannot be an extension in dimension of an old device.
I will bring two aspects of my patent which could be considered merely extensions of the portable check printer device. First off, I mentioned at the outset that my ‘laptop’ is unique in the sense it has a much larger keyboard than any of its predecessors. This expanded keyboard not only included the English alphabet, but also 4-directional arrow keys, the 10 digit keys, and other function keys. Although they have new designs printed on top of them, these new keys are merely extensions of the keyboard concept from the portable check printer.
Another possible ‘extension’ argument could be made for the larger display screen. The portable bank account device had two one-line displays on which numbers could be presented to the user in a clean format. My device also has a screen for presenting information to the user, but instead of two lines, it has a capability of 80 columns in 25 lines, thus allowing for a total of 2000 possible characters displayed. Again, this ‘LCD display’ concept was not new, merely just a larger version of the display presented in the banking patent.
It is my belief that through the eyes of the A&P precedent, there are certain claims of my laptop patent which may have been invalidated by invoking the extension argument brought up during the checkout counter conveyor device debate.

== Lyon v. Bausch and Lomb ==

Although I was somewhat confused by some of the language in the Lyon case, there were a few main takeaways with regards to non-obviousness that I had.
First off it became clear to me that the standards of ‘public use’ are not so clear. I realized that even if someone had been working on the same invention previously but it could be proven they abandoned the research, the art is still patentable.
Also, the Lyon decision again stressed that if you are building upon an existing article, your added step must require useful insight and expertise beyond that of a skilled practitioner of the field.
Lastly, my main takeaway was that of need satisfaction. If experts say that there had been a long standing need for a device of this kind, then it is clear that the subsequent discovery was not obvious.

Let’s one last time look at my device’s patentability through the eyes of Lyon as well as the portable calculator patent.
I primarily want to touch on the ‘need’ aspect of non-obviousness that was mentioned towards the end of the last class meeting. The calculator that I have referenced had some very serious limitations. One is something that I have mentioned before in that it does not allow the expansion of the CPU/memory which it would need in order to support more advanced computing applications. Secondly, it does not have a large enough display to make it feasible to present any large amount of information to the user at once. Lastly, the keyboard was limited to seventeen keys in the calculator embodiment. This was presumably enough to adequately carry out the necessary functionality of four-operation calculations, but not enough to allow use of the device for multiple purposes.
It is for these reasons of fulfilled need that I believe my device would be patentable, especially through the eyes of the Lyon decision, previous precedents, and 35 USC 103.

As a final analysis, it is necessary to briefly analyze the patentability with both the automatic check printing device and Lyon precedent in mind.
All of the limitations that I mentioned with regards to the portable calculator still hold true here: the small keyboard, the limited display, and the set amount of computing power and memory. In tune with the above discussion, all of these needs give me reason to believe that the patent for my device is legitimate even though the portable banking check printer did exist.
I want to end with a larger, more macroscopic statement of need which I believe my device fills, a characteristic that in my eyes affirms its patentability and non-obviousness especially with regards to prior art. Through the reference patents that I have presented, as well as other portable single-use electronic device patents that existed around the time of the invention of my device, it becomes clear that portable electronic devices to enable mobile computing was something that was desirable. However, as we have shown, all that existed were smaller devices that were capable of accomplishing one task. Thus, the overarching need for a multipurpose, expandable, versatile portable computing device existed at the time of my patent. Thus, since the need existed and my patent was for what appears to be the first device of its kind, I truly believe that it is patentable even with the two references patents and the decisions in Hotchkiss, A&P Tea, and most recently Lyon.

User:Adam Mahood

2011-01-28T15:42:46Z

Adam Mahood:

User:Adam Mahood

2011-01-28T15:41:02Z

Adam Mahood: