Mitros:Homework 4 (2/8/2011)
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
Hotchkiss v. Greenwood (1850)
Account of the case: Hotchkiss had received a patent consisting for a drawer knob that consisted of a porcelain knob, metallic shank, and spindle. After Greenwood was accused by Hotchkiss of patent infringement, Greenwood demonstrated that Hotchkiss's general design had existed in the previous art. Hotchkiss had argued that the fact that the knob was made out of porcelain (as opposed to the traditional wood or metal) as well as the method in which the shank was attached to the knob made it worthy of a patent. However, the court ruled that "unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absense of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.
Contributions to Non-obviousness: 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. Additionally, it ruled that mere substitution of material is not something worthy of a patent. This issue will arise in later cases such as Adams v. United States in which the court further emphasizes that mere substitutions of materials is not patentable if their effect on the system would be predictable
- ...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)
Account of the case: The case was brought to the attention of the Supreme Court. The patent in dispute contained a design for a cashier's check out counter that was found in the previous art and had been improved by the addition of an extension of the counter. Both the District Court and Appeals Court had ruled that the claims of the patent were valid, and as a result the patent had been infringed upon. After reviewing the case, the Supreme Court ruled that the appropriate standards to determine the validity of the patent had not been used and ruled the claims of the patent to be invalid.
The District Court had found that each element in the device claimed in the patent was known to the prior art. However, it went on to state that "the conception of a counter with an extension...was a decidedly novel feature and constitutes a new and useful combination." Therefore, the court found the patent to be valid.
The Appeals Court had similarly found no other new or different element to constitute invention but overcame this doubt by consideration of the need for such a device and the evidence of the commercial success of this one.
The Supreme Court reversed the ruling of the lower courts and determined the patent was invalid. It claimed that the counter extension had not been clearly defined within the patent's claims, that regardless the extension did not amount to an invention, and that the claims of the patent were too overbearing by claiming the invention of old elements performing their normal function.
Contributions to Non-obviousness 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 as well as the difficulty in defining what constitutes an invention when applied to a combination of old elements.
- First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
- Considerations such as commercial success can be secondary factors in determining whether there was an unsatisfied need for an invention. If commercial success is used as a primary factor to determine the validity of the patent, this can still provide erroneous judgments as evidenced by the Appeals Court's ruling on this case. The Supreme Court states that "commercial success without invention will not make patentability."
- Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
- The Court states that in this case "the patentee has added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly."
- "An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance."
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements. The Court states that any invention consisting of old elements must result in surprising or unusual consequences in order for it to be worthy of a patent.
- In this case the Court claims that "the conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."
35 USC 103 (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)
Account of the case: In this case Lyon had received a patent for a process to coat an optical lense to produce the desired reflective characteristics. The process in this patent was similar in nature to a few previously filed patents, however, none of them contained Lyon's process of heating the optical element itself while it was being coated. Therefore, there was some question as to whether or not Lyon's process was either previously taught or obvious in the previous state of the art. Furthermore, there was a second individual, Cartwright, who had been independently experimenting with Lyon's method. The court had to determine whether Cartwright's actions implied that Lyon's method was "public use". According to the Court, in order for something to fall under the category of public use it must neither be experimental, secret, or abandoned. Although Cartwright had performed many experiments using the Lyon method, the Court determined that he had abandoned the idea after testing it and had never pushed the method past that of the experimental stage. According to the Court, not only does abandonment fail to advance the art, it also puts it among those efforts that are proved useless. Therefore, even though Cartwright had experimented with Lyon's method, his actions failed to make the method public use/knowledge. The Court determined that the key step in Lyon's process was not, in fact, disclosed in the prior art as evidenced by Cartwright's failures along with those of many other individuals. Furthermore, the court determined that there had been an obvious, unmet need in the prior art that Lyon's method was able to meet. Over a period of at least ten years some of the most competent individuals in the field had attempted to produce the same results as Lyon but had failed. Furthermore, once Lyon's method was introduced to the art, it had "supplanted the existing practice and occupied substantially the whole field." Therefore, the advances to the art provided in Lyon's patent were considered to be nonobvious and the validity of the patent was upheld.
Contributions to Non-obviousness: This ruling was passed soon after § 103 had been put into law. With this in mind, Learned Hand provides the Court's interpretation of the law and how it applies to the case at hand. Through Learned Hand's analysis of § 103 and its implications on patent law one can begin to see the start of the transition away from the previous language of "inventiveness" of a patent (which Hand calls a "baffling concept...for indefinitely varying occasions") towards the standards of Nonobviousness. The standards of nonobviousness help to apply some general guidelines in determining what should be patentable subject matter over a wide variety of fields (as will be inevitable when it comes to patent law). In order to do this it focuses primarily on developing an understanding of the prior art. In this case, Learned Hand focuses specifically on the ideas of demonstrating the need for a solution to a relevant problem in the prior art that has remained elusive, its impact upon the art after its discovery, and the level of skill within the art required to produce such a solution.
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)
Account of the case: In this case, the validity of a patent that contained a clamp for vibrating shank plows. In the lower courts, one had held the patent valid, while another had ruled the patent to be invalid. At question was whether or not the elements contained within the clamp device were already taught in the prior art. The patent in question, no. 2,627,798 (registered to Graham), is a modification of a previous patent also filed by Graham, no. 2,493,811. In this case the court explicitly addresses the implications of 103 and the standards that should be applied when determining whether a patent is nonobvious. In this case, the court determines that in light of the prior art (notably a patent issued to Glencoe and patent '811), there was no nonobvious elements in the '798 patent. Therefore, it rules the patent to be invalid.
Contribution to nonobviousness: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" set forth in 103. In its ruling the court traced the development of 103 back to Hotchkiss v Greenwood. It was here that the Court determined that for an invention to be patentable, it must be beyond the skill of an ordinary mechanic in the art. This case also helped to give rise to the use of the word "invention" as a legal term to signify patentable inventions. The use of this term and its lack of a clear implication or definition would result in occasionally inconsistent rulings which section 103 attempted to address. However, the important precedent that was set was the comparison of the subject matter of the patent and the ordinary skill found within the art. In Graham the Court stated that the passing of 103 was intended to codify the precedent set in the courts that had begun to develop since the Hotchkiss case. By doing so, "this section should have a stabilizing effect and minimize great departures which have appeared in some cases." The Court stated that 103 "when followed realistically, will permit a more practical test of patentability. The emphasis on nonobviousness is one of inquiry, not quality, and, as such, comports with the constitutional strictures." The Court then proceeded to provide a list of criteria to determine 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 include:
- commercial success of the invention;
- long-felt but unsolved needs;
- failure of others to find a solution, etc.
U.S. v. Adams (1966)
Account of the case: In this case, the validity of a patent issued to Adams was challenged by the US government claiming that it failed to meet the qualifications for patentability set forth in sections 102 and 103. Adam's patent was a wet battery composed of two electrodes (one magnesium and one cuprous chloride) that used either plain or salt water for an electrolyte. The battery's performance in terms of its ability to deliver a constant voltage generate current far exceeded those of similar batteries at that time. In fact, the battery's performance was so ideal, when Adams first presented it to experts in the U.S. Navy and Army, they deemed the performance figures submitted by Adams to be unrealistic and full of errors. A year later, Signal Corps scientists declared the battery feasible and it then entered wide use within the armed forces. However, they did not contact Adams to inform him of the use of his design. When Adams claimed infringement, the U.S. challenged the validity of the patent. Through an analysis of the prior art, the court established that not only did the prior art not teach Adams design, but it would have given Adams substantial inclination away from his design. Previous attempts to implement Adam's design in a useful for had often ended in failure (along with fires and explosions). The Court found that Adams design was not a simple substitution of materials as the U.S. had implied, but rather a novel use of the design's components to produce a surprising and unexpected outcome. Combining all the evidence presented, the Court determined that Adam's design was both novel and nonobvious, and as a result the patent was upheld.
Contributions to nonobviousness: All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness. Although on first glance Adam's patent may appear strikingly similar to the prior art, upon further examination, it was both novel and nonobvious. An analysis of the prior art indicated that Adam's design was not a simple substitution similar to fitting the last piece of a puzzle. Instead, the prior art taught against Adam's design. Additionally the experts in the field at that time did not believe Adam's claims about his battery's performance. Therefore, the Court determined the nonobviousness requirements of 103 and novelty requirements of 102 were satisfied. If one were to examine the patent without considering the standards set forth in section 103, Adam's design might appear as simple material substitution not worthy of a patent. However, when one considers the criteria for nonobviousness set forth in Graham v. John Deere, it becomes clear that Adam's invention was a scientific advance in the relevant art worthy of a patent.
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.
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
In Hotchkiss v. Greenwood, the Court sets forth the precedent that unless more ingenuity and skill was required in the development of a patent than was possessed by an ordinary mechanic acquainted in the art, then "there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor" and therefore should not be considered eligible for patentability. The implication in the Court's ruling is that such a patent would lack the inventive step that the patent laws seek to protect and would instead provide a monopoly on what is considered to be available public knowledge. The purpose of the patent system is to encourage growth within the sciences by issuing a temporary monopoly on technological advances that will serve to further the scientific arts. The concept of the inventive step attempts to separate the ideas that serve to advance the scientific arts from those that do not. This idea would eventually go on to evolve into the ideas of Nonobviousness set forth in section 103.
Relationship with Novelty
In order for a patent to be considered valid, it must meet both the novelty (section 102) requirements and criteria for nonobviousness (section 103). In order to develop an understanding of their relationship it is beneficial to read through Graham v. John Deere. In this case, the court cites a Senate and House report reflecting on the passing of section 103:
"[Section 103] refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art, then the subject matter cannot be patented.
That provision paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness. This section should have a stabilizing effect and minimize great departures which have appeared in some cases."
From this it is clear that there is some overlapping spaces between sections 102 and 103. In this case section 102 can be seen as the guidelines on establishing the contents of the "prior art" that the patent must distinguish itself from. Whereas section 103 establishes what how the state of the prior art should be interpreted by establishing a list of criteria within the prior art that the patent must meet to earn patentability.
Nonobviousness vs. Invention
The origin of the "inventive" language used in the court systems dates back to Hotchkiss v. Greenwood when the court set forth the idea of the inventive step(see above) that must be made for something to be considered patentable. Unfortunately, this term had lead to an inconsistency in the expressions and decisions made in the courts due to its difficult to define nature. Because of this, Congress added section 103 on nonobviousness to attempt to minimize the number of perceived departures from court precedent on patent law. In Graham v. John Deere, the court set forth a number of primary and secondary criteria to be used when determining the nonobviousness of a patent (see Graham v. John Deere for list of criteria). Ultimately the terms of section 103 have their origins in the precedent set forth in Hotchkiss as related to the idea of the inventive step. Therefore, both emphasize establishing the content of the prior art, however the terms set forth in section 103 provide a more usable set of criteria to establish the patent's relationship to the prior art than the more ambiguous "invention" language was able to.
In Graham v. John Deere the Court established a list of primary and secondary criteria to consider when evaluating the nonobviousness of a patent (see Graham v. John Deere for the list of secondary criteria). Although these secondary criteria can be potentially useful when determining nonobviousness, they do not necessarily apply to every and all situations that may arise. Therefore, they must be applied logically and with proper discretion to the patent in question. Additionally, if all of the primary criteria for nonobviousness can not be met, then these secondary criteria generally can not make up for the absence of the fulfillment of the primary criteria(s). Rather, they should be used to simply further the case for nonobviousness after all the primary criteria have been met.
An ideal example of how to apply these secondary criteria is provided in the case of Lyon v. Bausch & Lomb. Once Justice Hand has established that all primary criteria for nonobviousness has been met, he goes to on to consider secondary factors such as the fact that there was a long felt but unsatisfied need within the art, the failures of other competent individuals within the art, and as the ability of the invention to completely supplant the existing practice as further evidence of the nonobviousness of the patent.