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Lawrence B. Ebert
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2 years ago
in Supreme Court Smacks Down Federal Circuit on The Technology Liberation Front
Claim 4 of US Patent 6,237,565 to Teleflex (not KSR, please note error in above post) reads:
A vehicle control pedal apparatus (12) comprising:
a support (18) adapted to be mounted to a vehicle structure (20);
an adjustable pedal assembly (22) having a pedal arm (14) moveable
in
force [sic] and aft directions with respect to said support (18);
a pivot (24) for pivotally supporting said adjustable pedal
assembly
(22) with respect to said support (18) and defining a pivot
axis (26); and
an electronic control (28) attached to said support (18) for
controlling a vehicle system;
said apparatus (12) characterized by said electronic control (28)
being responsive to said pivot (24) for providing a signal (32)
that
corresponds to pedal arm position as said pedal arm (14) pivots
about
said pivot axis (26) between rest and applied positions wherein
the
position of said pivot (24) remains constant while said pedal arm
(14)
moves in fore and aft directions with respect to said pivot (24).
The CAFC was making a big deal about the absence of motivation for --electronic control (28) attached to said support--.
In a NONPRECEDENTIAL opinion, the CAFC wrote: Claim 4 specifically provides for an assembly
wherein the electronic control is mounted to the support bracket of the assembly. This configuration avoids movement of the electronic control during adjustment of the
pedal's position on the assembly.
The Supreme Court considered putting the electronic control on the support "obvious to try," but the CAFC had required "obvious to try with a reasonable expectation of success." Roughly speaking, that's what changed.
The comments about "nature of the problem" were a bit bogus, because the CAFC was reviewing how the district court had analyzed the problem. The "nature of the problem" was NEVER the only way to establish motivation.
See also
KSR: an overemphasis on the importance of published articles[?]
and, for a situation in which the new test will likely play out badly,
KSR v. Teleflex: it's not bedtime for Bongso
A vehicle control pedal apparatus (12) comprising:
a support (18) adapted to be mounted to a vehicle structure (20);
an adjustable pedal assembly (22) having a pedal arm (14) moveable
in
force [sic] and aft directions with respect to said support (18);
a pivot (24) for pivotally supporting said adjustable pedal
assembly
(22) with respect to said support (18) and defining a pivot
axis (26); and
an electronic control (28) attached to said support (18) for
controlling a vehicle system;
said apparatus (12) characterized by said electronic control (28)
being responsive to said pivot (24) for providing a signal (32)
that
corresponds to pedal arm position as said pedal arm (14) pivots
about
said pivot axis (26) between rest and applied positions wherein
the
position of said pivot (24) remains constant while said pedal arm
(14)
moves in fore and aft directions with respect to said pivot (24).
The CAFC was making a big deal about the absence of motivation for --electronic control (28) attached to said support--.
In a NONPRECEDENTIAL opinion, the CAFC wrote: Claim 4 specifically provides for an assembly
wherein the electronic control is mounted to the support bracket of the assembly. This configuration avoids movement of the electronic control during adjustment of the
pedal's position on the assembly.
The Supreme Court considered putting the electronic control on the support "obvious to try," but the CAFC had required "obvious to try with a reasonable expectation of success." Roughly speaking, that's what changed.
The comments about "nature of the problem" were a bit bogus, because the CAFC was reviewing how the district court had analyzed the problem. The "nature of the problem" was NEVER the only way to establish motivation.
See also
KSR: an overemphasis on the importance of published articles[?]
and, for a situation in which the new test will likely play out badly,
KSR v. Teleflex: it's not bedtime for Bongso
2 years ago
in Supreme Court Smacks Down Federal Circuit on The Technology Liberation Front
Of the above comment, KSR did not patent a concept, AND, separately, the issue that the CAFC worried about (and the Supreme Court did not worry about) was where the sensor was mounted.
For a comparison of what the CAFC and Supreme Court were talking about, see IPFrontline.
For a comparison of what the CAFC and Supreme Court were talking about, see IPFrontline.
2 years ago
in Good and Bad in Patent Reform Act of 2007 on The Technology Liberation Front
Of "more uncertainty," the so-called "second window" in which to oppose an ISSUED patent will create MAJOR uncertainty:
§ 322.– The petition for cancellation can only be filed (1) within 12 months of the patent’s issue or reissue (known as the “first window”), or (2) if there is substantial reason to believe that the continued existence of the challenged claim is likely to cause the petitioner significant economic harm, the petitioner has received notice from the patent holder alleging infringement by the petition, or the patent owner consents to the proceeding in writing (known as the “second window”).
Thus, if the reform act of 2007 passed, one could never be sure if an issued patent is valid.
The correct approach is to examine the patent application THOROUGHLY in the first place, and assess prior art/poor wording/etc. at the BEGINNING of the process. Continual "reinspection" of the product flies in the face of the teachings of Deming, and is just simply bad business.
Leaving aside the uncertainty that WOULD be created by a POST-GRANT opposition, consider what can happen in the re-examination procedure ALREADY in place.
See for example:
http://ipbiz.blogspot.com/2007/04/somers-on-bon...
While there is much discussion on techliberation about bad patents being enforced against competitors, there is not so much discussion about the use of bad patents against patentees, as is happening in the Thomson case. Issued US patents are presumptively valid, and Thomson now gets to explain how his (real) "product" is distinct from the non-existent, prophetic "products" of earlier workers who merely guessed about things might be.
§ 322.– The petition for cancellation can only be filed (1) within 12 months of the patent’s issue or reissue (known as the “first window”), or (2) if there is substantial reason to believe that the continued existence of the challenged claim is likely to cause the petitioner significant economic harm, the petitioner has received notice from the patent holder alleging infringement by the petition, or the patent owner consents to the proceeding in writing (known as the “second window”).
Thus, if the reform act of 2007 passed, one could never be sure if an issued patent is valid.
The correct approach is to examine the patent application THOROUGHLY in the first place, and assess prior art/poor wording/etc. at the BEGINNING of the process. Continual "reinspection" of the product flies in the face of the teachings of Deming, and is just simply bad business.
Leaving aside the uncertainty that WOULD be created by a POST-GRANT opposition, consider what can happen in the re-examination procedure ALREADY in place.
See for example:
http://ipbiz.blogspot.com/2007/04/somers-on-bon...
While there is much discussion on techliberation about bad patents being enforced against competitors, there is not so much discussion about the use of bad patents against patentees, as is happening in the Thomson case. Issued US patents are presumptively valid, and Thomson now gets to explain how his (real) "product" is distinct from the non-existent, prophetic "products" of earlier workers who merely guessed about things might be.
2 years ago
in A Correction on Patent Law on The Technology Liberation Front
Of the text --The whole point of the article was that the Supreme Court should reject the Federal Circuit's absurdly narrow definition of the term.--, the Federal Circuit's approach to obviousness is roughly in two parts:
#1. Gather references that illustrate each part of the claim (i.e., show that there is prior art teaching each claim element; meaning that there is structural similarity between the alleged invention and old work)
#2. Show that there is a reason to combine the many references to reach the invention of the claim. That is, just because A, B, and C all existed before the invention doesn't mean that the invention (A + B + C) existed.
To give a simple example, the invention of the Wright Brothers pertained to three-dimensional control of flight (not to powered flight, as some believe). Control of two dimensions was well-known before the Wrights, and, ailerons, an element that could control the third dimension (analogously to the wing warping of the Wrights) was also known before the Wrights. A, B, and C were all known. Did that make (A + B + C) obvious? Is the Federal Circuit's definition "absurdly narrow"? If so, propose a new one, rather than hiding with the confusion of the justices.
As a minor aside, the Wright's patent application, written by the Wrights, was filed months before the date of powered flight in December 1903. Relevant to the remark above about patent lawyers, the patent lawyer who later came on board (and who would be used by the Wrights at all later times and who recently was honored with a statue) altered the application in ways which delayed issuance. Not being a patent lawyer is no barrier to understanding patent law. And spending too much time with patent lawyers can be hazardous, as Wilbur learned.
Separately, on the "tools belong to the man who can use them" concept:
http://www.ipfrontline.com/depts/article.asp?id...
Lawrence B. Ebert
January 23, 2007
#1. Gather references that illustrate each part of the claim (i.e., show that there is prior art teaching each claim element; meaning that there is structural similarity between the alleged invention and old work)
#2. Show that there is a reason to combine the many references to reach the invention of the claim. That is, just because A, B, and C all existed before the invention doesn't mean that the invention (A + B + C) existed.
To give a simple example, the invention of the Wright Brothers pertained to three-dimensional control of flight (not to powered flight, as some believe). Control of two dimensions was well-known before the Wrights, and, ailerons, an element that could control the third dimension (analogously to the wing warping of the Wrights) was also known before the Wrights. A, B, and C were all known. Did that make (A + B + C) obvious? Is the Federal Circuit's definition "absurdly narrow"? If so, propose a new one, rather than hiding with the confusion of the justices.
As a minor aside, the Wright's patent application, written by the Wrights, was filed months before the date of powered flight in December 1903. Relevant to the remark above about patent lawyers, the patent lawyer who later came on board (and who would be used by the Wrights at all later times and who recently was honored with a statue) altered the application in ways which delayed issuance. Not being a patent lawyer is no barrier to understanding patent law. And spending too much time with patent lawyers can be hazardous, as Wilbur learned.
Separately, on the "tools belong to the man who can use them" concept:
http://www.ipfrontline.com/depts/article.asp?id...
Lawrence B. Ebert
January 23, 2007
2 years ago
in A Correction on Patent Law on The Technology Liberation Front
As a followup, for a different "conservative" view on the case.
#1. A district court is required by law to follow the precedent of the relevant appellate court, here the Court of Appeals for the Federal Circuit.
#2. Here, the district court didn't bother to write down any reason that one of ordinary skill would combine the two parts of the combination invention as claimed by the patentee.
#3. In not writing down any reason, the district court violated controlling precedent, as expressed for example in In re Kotzab.
#4. As a separate matter, the Kotzab case states that motivation may be implicit in the prior art as a whole, rather than having to be found in one particular document. Thus, the burden of finding "something" to write down was not high.
#5. The Federal Circuit sent the case back to the district court, to write something down. The Federal Circuit did not say that the invention wasn't obvious. They said the district court didn't follow the law.
#6. Talking about "how obvious" the invention at issue may be is interesting, but irrelevant to what happened here, as there was no ruling that the invention wasn't obvious. The district court flaunted controlling precedent, which it is not at liberty to do. The Supreme Court has the power to change the precedent of the Federal Circuit, but the district court does not.
***
Although the question of whether or not the invention in the KSR case is obvious was NOT at issue before the Federal Circuit, one notes that the Federal Circuit has to fashion law that applies to a variety of cases. Thinking about a different case is instructive. Right now, three of the Thomson (WARF) patents on human stem cells are being challenged. The challengers say that Thomson merely followed a "recipe" that had been created for mouse stem cells. Years and years passed between the time of the mouse recipe and the isolation of a human stem cells. Obvious?
Of "obviousness" in the scientific realm, the journal Science published two papers in the area of SCNT to create human embryonic stem cells. The reviewers and editors passed judgment that the submitted manuscripts were entirely plausible, based on scientific principles. They weren't. Significantly, one year has passed since the fraud was uncovered, and not one lab in the whole world has been able to duplicate the results of the first paper, much less the second paper. Was the considered judgment of the scientific community "obviously" wrong?
***
Finally, it is ironic to note that the opinions on patents of the conservative community of 2007 bear a striking resemblance to the opinions of two liberal icons, Black and Douglas, as they were expressed for example in the Graver Tank case back in 1950.
Lawrence B. Ebert
January 23, 2007
#1. A district court is required by law to follow the precedent of the relevant appellate court, here the Court of Appeals for the Federal Circuit.
#2. Here, the district court didn't bother to write down any reason that one of ordinary skill would combine the two parts of the combination invention as claimed by the patentee.
#3. In not writing down any reason, the district court violated controlling precedent, as expressed for example in In re Kotzab.
#4. As a separate matter, the Kotzab case states that motivation may be implicit in the prior art as a whole, rather than having to be found in one particular document. Thus, the burden of finding "something" to write down was not high.
#5. The Federal Circuit sent the case back to the district court, to write something down. The Federal Circuit did not say that the invention wasn't obvious. They said the district court didn't follow the law.
#6. Talking about "how obvious" the invention at issue may be is interesting, but irrelevant to what happened here, as there was no ruling that the invention wasn't obvious. The district court flaunted controlling precedent, which it is not at liberty to do. The Supreme Court has the power to change the precedent of the Federal Circuit, but the district court does not.
***
Although the question of whether or not the invention in the KSR case is obvious was NOT at issue before the Federal Circuit, one notes that the Federal Circuit has to fashion law that applies to a variety of cases. Thinking about a different case is instructive. Right now, three of the Thomson (WARF) patents on human stem cells are being challenged. The challengers say that Thomson merely followed a "recipe" that had been created for mouse stem cells. Years and years passed between the time of the mouse recipe and the isolation of a human stem cells. Obvious?
Of "obviousness" in the scientific realm, the journal Science published two papers in the area of SCNT to create human embryonic stem cells. The reviewers and editors passed judgment that the submitted manuscripts were entirely plausible, based on scientific principles. They weren't. Significantly, one year has passed since the fraud was uncovered, and not one lab in the whole world has been able to duplicate the results of the first paper, much less the second paper. Was the considered judgment of the scientific community "obviously" wrong?
***
Finally, it is ironic to note that the opinions on patents of the conservative community of 2007 bear a striking resemblance to the opinions of two liberal icons, Black and Douglas, as they were expressed for example in the Graver Tank case back in 1950.
Lawrence B. Ebert
January 23, 2007
2 years ago
in A Correction on Patent Law on The Technology Liberation Front
Thanks for the post. Without reaching into the nuances of patent law, the CAFC decision in KSR (which significantly is NONPRECEDENTIAL) relied on, and EXPLICITLY cited, In re Kotzab, so any "confusion" regarding the LACK of a requirement for a specific document to show motivation would have to be an intentional confusion. Another point worth noting is that the Federal Circuit didn't say the invention wasn't obvious; they merely said that there was no showing of motivation (i.e., there was a lack of evidence; not that there might not be evidence). For the requirement of motivation, the Federal Circuit cited In re Kotzab, which is the precedential case at issue (although certainly not the first case requiring motivation).
