User:Charles R Talley/Notes CRT

Non-Obviousness

KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)

• Debate over obviousness of adjustable pedal apparatus with electronic throttle control
• District Court ruled the patent invalid in a summary judgement due to obviousness
• TSM Rule: Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.
  • CAFC & PTO want simple clear rules
    • Unlike the Supreme Court, they deal with these rules on a daily basis
    • Tension between imperfect, simple rules and perfect, ambiguous rules
    • Montana speed limit: Reasonable & Prudent
• We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here. To be sure, Graham recognized the need for “uniformity and definiteness.” 383 U.S., at 18, 86 S.Ct. 684. Yet the principles laid down in Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684. To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive. Id., at 17, 86 S.Ct. 684.
  • US v. Adams: If the combination itself is obvious, but a positive result is unpredictable, it's not obvious
  • Anderson's Black Rock, Inc. v. Pavement Co.: Mere combinations are obvious and unpatentable
• Can't just look at the patents referenced on the application to determine obviousness. The market and customer demand also comes into play in determining obviousness.
• KSR provided convincing evidence that mounting a modular sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art. Its arguments, and the record, demonstrate that claim 4 of the Engelgau patent is obvious. In rejecting the District Court's rulings, the Court of Appeals analyzed the issue in a narrow, rigid manner inconsistent with § 103 and our precedents. The judgment of the Court of Appeals is reversed, and the case remanded for further proceedings consistent with this opinion.
  • Case goes back to District Court for a retrial without claim 4. Summary Judgement is invalid. KSR now has to present their case.

Novelty

Gottschalk v. Benson

• 1972
• Relates primarily to 35 U.S.C. 101 (inventions patentable)
  • process, machine, manufacture, or composition of matter
• "Process" is difficult to define
  • Recently, methods of doing business
  • Computer programs
• Article !, Section 8 of Constitution
• Benson was seeking the patent; Gottschalk at PTO denied; CCPA granted; USSC denied

Conclusions

• Can't patent an idea
  • Would stop all innovative progress
  • For something to be patentable, you have to apply ideas to something new and useful.
• Not In 101
  • Scientific truth
  • Mathematical expression of a scientific truth
  • Idea (reduction to practice)
  • Phenomena of nature (even newly discovered)
• In 101
  • Structure created with knowledge
  • Application of the law
  • Process resulting in changes (transformations) in materials.
• Claims 8 & 13 are too fundamental and sweeping, so granting a patent would eliminate too much possible innovation/invention.
• Process alone is often too fundamental; usually need to include an application
• Patentability of Computer Programs
  • No current classification; so unpatentable
  • PTO is freaking out

Arrhythmia Research Technology, Inc. v. Corazonix Corp.

Claims

Claim 1 is the broadest method claim:

1. A method for analyzing electrocardiograph signals to determine the presence or absence of a predetermined level of high frequency energy in the late QRS signal, comprising the steps of:

converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time;

applying a portion of said time segments in reverse time order to high pass filter means

determining an arithmetic value of the amplitude of the output of said filter; and

comparing said value with said predetermined level.

Claim 7 is a representative apparatus claim:

7. Apparatus for analyzing electrocardiograph signals to determine the level of high frequency energy in the late QRS signal comprising:

means for converting X, Y, and Z lead electrocardiographic input signals to digital valued time segments;

means for examining said X, Y, and Z digital valued time segments and selecting therefrom the QRS waveform portions thereof;

means for signal averaging a multiplicity of said selected QRS waveforms for each of said X, Y, and Z inputs and providing composite, digital X, Y, and Z QRS waveforms;

high pass filter means;

means for applying to said filter means, in reverse time order, the anterior portion of each said digital X, Y, and Z waveform; and

means for comparing the output of said filter means with a predetermined level to obtain an indication of the presence of a high frequency, low level, energy component in the filter output of said anterior portions.

Background

• Question of law vs. question of fact
  • addresses the jurisdiction of the court
  • Question of law: within the authority of the court to make a ruling on statutory subject matter
  • Question of fact: must be clearly erroneous to overturn
• USSC has observed that legislative branch intends absolutely anything to be patentable
  • decide that this is wrong, but never explain why.
• In Parker v. Flook, the Court explained that the criterion for patentability of a claim that requires the use of mathematical procedures is not simply whether the claim “wholly pre-empts” a mathematical algorithm, but whether the claim is directed to a new and useful process, independent of whether the mathematical algorithm required for its performance is novel. Applying these criteria the Court held nonstatutory a method claim for computer-calculating “alarm limits” for use in a catalytic conversion process, on the basis that “once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.”
• Freeman-Walter-Abele Test
  • This analysis has been designated the Freeman-Walter-Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met.
  • Court likes these simple cut-and-dry tests because although they only have to handle a case every several years, the PTO processes thousands of these, so it makes it significantly easier on them, resulting in fewer debates that lead back to the court system.

Decision

• Reversed
• Patent Valid

State Street Bank & Trust Co. v. Signature Financial Group, Inc.

Background

• Case ended in summary judgement
• Patent
  • Collection of mutual funds
    • hubs and spokes and mutual funds
• State Street and Signature are both in the business of acting as custodians and accounting agents for multi-tiered partnership fund financial services. State Street negotiated with Signature for a license to use its patented data processing system described and claimed in the '056 patent. When negotiations broke down, State Street brought a declaratory judgment action asserting invalidity, unenforceability, and noninfringement in Massachusetts district court, and then filed a motion for partial summary judgment of patent invalidity for failure to claim statutory subject matter under § 101.

Bilski v. Kappos

Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner

Summary of Argument

Small- to mid-size entrepreneurial software companies represent a considerable portion of U.S. innovation and have significant impact on U.S. global competitiveness. These same companies are being harmed by the overly-narrow, inflexible definition of statutory subject matter outlined by the U.S. Court of Appeals for the Federal Circuit in its decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008).

This Court has long proffered a broad view of patent-eligible subject matter. Without any corresponding change in this Court's precedent, the *3 Federal Circuit has instigated an overly-narrow and limiting test, by which all types of innovation must be evaluated. As a result, many valuable software-related inventions are being left without adequate patent protection.

The inability to appropriately protect software-related innovation is crippling the ability of small- and mid-size entrepreneurial software businesses to compete in the market against more-established companies. Uncertainty caused by the current legal landscape, and the overly-broad application of the machine-or-transformation test, is causing these software companies to lose significant value due to depreciation of their existing patents and patent potential. Furthermore, small- and mid-size software companies are being particularly harmed by the overbearing increase in unpredictability and costs of patent prosecution and enforcement.

Even if the Federal Circuit did not intend for its machine-or-transformation test to be applied to any statutory classes other than methods, the U.S. Patent and Trademark Office and various district courts are extending the test to all statutory classes of innovation. Additionally, there is great inconsistency among the adjudicative bodies regarding the interpretation of the machine-or-transformation test. This Court should recognize its own precedent and maintain a broad view of statutory subject matter, and strike down the rigid machine-or-transformation test, or at the very least indicate clearly that this test does not apply to software patents.

Interpreted:

• Narrow scope of patentability is stifling small/mid-sized businesses
• Narrow scope of software patentability is inconsistent with broad scope applied in general.
• Valuable software-related inventions unprotected
• Small/Mid-sized companies are suffering
• Machine-or-Transformation Test created for Methods evaluation
  • PTO is applying to all classes of innovation
  • USSC should reject Machine-or-Transformation Test or at least reject it in the case of software patents

Statutory Bars

35 USC 102

Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless—

1. the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
2. the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
3. he has abandoned the invention, or
4. the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
5. the invention was described in an application for patent, published under section 122 (b), by another filed in the United States before the invention by the applicant for patent or a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351 (a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; [1] or
6. he did not himself invent the subject matter sought to be patented, or
7. during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Important Dates

• Date of invention (1)
  • Patent void if
    • known or used prior to this date by
      • others in U.S.
    • printed or patented
      • applicant
      • others foreign
• 1 year prior to patent application (2)
  • Patent void if
    • printed or patented by
      • anyone U.S.
      • anyone foreign
    • public use or sale in
      • U.S.

Purpose & Intention

• Prevent inventors from establishing a business advantage, profiting from it until competition arises, and then patenting the invention to squash competition and extend monopoly.

Egbert v. Lippmann

Patent

Improvement in corset springs

• Allowed metal plates to move longitudinally, but not laterally, increasing flexibility while maintaining strength.
• Invented by Samuel H. Barnes in 1866

Case

• Appeal from the Circuit Court of the United States for the Southern District of New York.
• The original letters bear date July 17, 1866, and were issued to Samuel H. Barnes.
  • The reissue was made to the complainant, under her then name, Frances Lee Barnes (Egbert), executrix (female executor of a will) of the original patentee, in 1873.
• We have to consider whether the patented invention had, with the consent of the inventor, been publicly used for more than two years prior to his application for the original letters.
• Joseph H. Sturgis, another witness for complainant, testifies that in 1863 Barnes spoke to him about two inventions made by himself, one of which was a corset-steel, and that he went to the house of Barnes to see them. Before this time, and after the transactions testified to by the complainant, Barnes and she had intermarried. Barnes said his wife had a pair of steels made according to his invention in the corsets which she was then wearing, and if she would take them off he would show them to witness. Mrs. Barnes went out, and returned with a pair of corsets and a pair of scissors, and ripped the corsets open and took out the steels. Barnes then explained to witness how they were made and used.

Conclusions

Public

• No restrictions
• Number sold doesn't matter
• Number of people that used it doesn't matter
• Small or hidden items are still "public"
  • Dissentor disagreed with this point

Private

• Restrictions on use
  • secrecy
  • experiment

Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc.

Patent

Process to treat metal surface

• sprayed on surface bonds better
• conditioning

Public Use

• Things produced by secret process
  • Only one place was producing

Conclusions

• Regardless of whether or not the invention itself is public, if the output of that invention is sold in public for more than one year, the patent is invalid
• Precedent
  • Machine, not process
    • no knowledge

Coming now to our own decisions (the opinions in all of which I wrote), the first was Grasselli Chemical Co. v. National Aniline & Chemical Co., 2 Cir., 26 F.2d 305, in which the patent was for a process which had been kept secret, but the product had been sold upon the market for more than two years. We held that, although the process could not have been discovered from the product, the sales constituted a ‘prior use,’ relying upon Egbert v. Lippmann, supra, 104 U.S. 333, 26 L.Ed. 755, and Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367. There was nothing in this inconsistent with what we are now holding. But in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, where the patent was for a machine, which had been kept secret, but whose output had been freely sold on the market, we sustained the patent on the ground that ‘the sale of the product was irrelevant, since no knowledge could possibly be acquired of the machine in that way. In this respect the machine differs from a process * * * or from any other invention necessarily contained in a product’ 29 F.2d at page 649. So far as we can now find, there is nothing to support this distinction in the authorities, and we shall try to show that we misapprehended the theory on which the prior use by an inventor forfeits his right to a patent. In Aerovox Corp. v. Polymet Manufacturing Corp., supra, 2 Cir., 67 F.2d 860, the patent was also for a process, the use of which we held not to have been experimental, though not secret. Thus our decision sustaining the patent was right; but apparently we were by implication reverting to the doctrine of the Peerless case when we added that it was doubtful whether the process could be detected from the product, although we cited only Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367, and Grasselli Chemical Co. v. National Aniline Co., supra (2 Cir., 26 F.2d 305). In Gillman v. Stern, supra, 2 Cir., 114 F.2d 28, it was not the inventor, but a third person who used the machine secretly and sold the product openly, and there was therefore no question either of abandonment or forfeiture by the inventor. The only issue was whether a prior use which did not disclose the invention to the art was within the statute; and it is well settled that it is not. As in the case of any other anticipation, the issue of invention must then be determined by how much the inventor has contributed any new information to the art.

Elizabeth v. American Nicholson Pavement Company

• 2 defenses:
  • Not novel; other prior art
  • Public use

Public Use

• Timeline
  • 1848: Mill-dam Road (privately-owned toll road in public domain)
  • 1852:
  • 1854: Application & Issue
  • 1867: Re-Issue
• Held:
  • not public use
  • it was testing to ensure it worked
• Evidence of experimentation
  • keep records
  • no profit
  • confidentiality
  • control
  • observation
  • no other way to test

UMC Electronics Co. v. U.S.

• Necessary and Sufficient conditions
  • A->B (Necessary)
  • A<-B (Sufficient)
• Patent
  • Aviation Counting Accelerometer (ACA)
    • counts the number of times an airplane reaches a certain acceleration
    • cant distinguish btwn different kinds of acceleration
• Dates
  • Late 1966 - UMC-A contract
  • UMC-A no good
  • May, 1967 - UMC-B prototype (subcomponent)
  • July, 1967 - UMC-B proposal
  • Early 1968 - UMC-A contract cancelled
  • August 1,1968 - UMC-B application filed
  • 1987 - Resolved

Ruling

• Timothy Products
  • Offer to sell
  • Reduction to Practice (on appeal, no reduction to practice; only prototyped subcomponents)
  • For profit, not experimentation
• Reduction to Practice not needed

Dissent

• Wants physical manifestation/model
• Doesn't think that drawings alone should be sufficient for patents
• The work of the inventor must be finished, physically as well as mentally. Nothing must be left for the inventive genius of the public

Pfaff vs. Wells Electronics

• Dates
  • April 8, 1981 - TI orders parts
    • Did not make a prototype before sale, only drawings
  • Reduced to Practice
    • same as drawings
    • physically existed
  • July, 1981 - Actually sends parts
  • April 19,1982 - Application
  • 1998 - Case resolved

Ruling

• On-sale bar applies when invention exists as a completed concept, not when it's "reduced to practice"
  • must be subject of a commercial offer for sale
  • must be ready for patenting
    • reduction to practice before critical date, OR
    • drawings so detailed that someone skilled in the art could produce a copy