INTELLECTUAL PROPERTY LAW WORKSHOP

GETTING YOUR PATENT GRANTED

OVERVIEW OF SIGNIFICANT PATENT CASES

Wei Wei JeangAndrews Kurth LLP

1717 Main Street, Suite 3700Dallas, TX 75201

weiweijeang@akllp.com

28th Annual Advanced IP Law CourseThe State Bar of Texas

Intellectual Property Law Section

March 18, 2015

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Wei Wei Jeang*Andrews Kurth LLP

1717 Main Street, Suite 3700Dallas, TX 75201

weiweijeang@akllp.com

Wei Wei Jeang is a Partner at Andrews Kurth LLP, where she focuses on working with high tech

companies in the U.S. and abroad. Wei Wei assists clients to obtain patent protection, license

patent portfolios, and enforce those patents. She also works closely with clients on trademark and

other intellectual property issues. Wei Wei has a B.S. Computer Engineering degree from the

University of Illinois in Urbana-Champaign, and a Juris Doctorate degree from Southern

Methodist University Dedman School of Law.

Wei Wei is the immediate past Chair of the Dallas Bar Association Intellectual Property Section,

a Trustee of the Dallas Bar Foundation, and a Master of the Honorable Barbara M.G. Lynn

American Inn of Court. She also serves on The Institute for Law and Technology Advisory

Board of the Center for American and International Law. Wei Wei is a Co-Founder of Women in

IP, and served as President of the Dallas Asian American Bar Association.

Wei Wei’s recent recognitions include: Inspiring Women of the Southwest Award, Southwest

Jewish Conference; Best Lawyer in America; Texas Super Lawyer, Texas Monthly; and Best

Lawyers in Dallas, D Magazine. Wei Wei is a frequent speaker on intellectual property law

topics. Wei Wei is fluent in Mandarin Chinese is the proud owner of a historic fishing lodge in

Alaska.

* The opinions expressed herein are solely that of the author.

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INTELLECTUAL PROPERTY LAW WORKSHOP

GETTING YOUR PATENT GRANTED

Overview of Significant Patent Cases

By Wei Wei Jeang

Having practiced patent law for over twenty-six years, it has been remarkable to see the

pendulum swinging to and fro, and to experience the significant changes that have occurred

along the way. With the U.S. Supreme Court becoming more actively engaged in patent cases,

and sweeping changes in patent legislation in the form of AIA, patentees and patent practitioners

must do more to keep up with the fast and furious pace. This paper is a review of the legal

landscape patent attorneys must navigate in today’s prosecution practice.

35 U.S.C. § 101

When I first picked up the 37 C.F.R. and began working in-house as a patent agent in

1988, many of the engineers I encountered were doubtful that software inventions were

patentable. In 1981, the U.S. Supreme Court recognized in Diamond v. Diehr that even though

computer software implementing a mathematical formula is used to control the rubber curing

process, the protection sought is for the entire process that encompasses the mathematical

equation in conjunction with all of the other steps in the claimed process. Diamond v. Diehr, 450

U.S. 175, 187 (1981). The Court also realized that “if the computer use incorporated in the

process patent significantly lessens the possibility of ‘overcuring’ or ‘undercuring,’ the process

as a whole does not thereby become unpatentable subject matter” under 35 U.S.C. §101 by virtue

of the use of the computer. Id. (“[A] claim drawn to subject matter otherwise statutory does not

become nonstatutory simply because it uses a mathematical formula, computer program, or

digital computer.”). This is consistent with my understanding of computers’ operation. The

computer is a tool that makes computation and analysis much easier, and processes that utilize

computers should not be automatically barred from patent protection.

Diehr was consistent with prior cases Parker v. Flook (S. Ct. 1978) and Diamond v.

Chakrabarty, 447 U.S. 303 (1980). Flook dealt with a method for updating an alarm limit used to

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signal abnormal conditions in a catalytic conversion process. Chakrabarty dealt with a bacterium

capable of breaking down crude oil for cleaning up oil spills. In both cases the patents were held

as patent-ineligible under 35 U.S.C. §101.

In In Re Alappat, the Court of Appeals for the Federal Circuit held in an en banc decision

that Alappat's invention was in fact a "machine," one of the four categories of patentable subject

matter under §101. In Re Alappat, 33 F.3d 1526, 1536 (Fed. Cir. July 29, 1994) (en banc).

Alappat's claims are drawn to a so-called "rasterizer" which is used in a digital oscilloscope to

smooth waveform data prior to displaying the waveform on the oscilloscope screen. Id. at 1537.

The independent apparatus claim was written in means-plus-function language, and was deemed

by an expanded panel of the BPAI convened by the Commissioner to be a process claim and

ineligible for patent protection because it was a mathematical algorithm. Id. at 1539. The

majority en banc opinion made it clear that just because the claims cover a programmed general

purpose computer does not make them nonstatutory. Id. at 1545. Instead, a programmed general

purpose computer becomes a new machine once a computer program is loaded into memory, and

is therefore eligible for patent protection. Id. Again, as a computer engineer, this is consistent

with my understanding of how computers operated.

Four years later, we encountered the State Street Bank case that further affirmed that

computer-implemented methods for doing business are not excluded subject matter. State Street

Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). State

Street held that a claimed invention is eligible for patent protection if it involved some practical

application and “produces a useful, concrete and tangible result.” Id. at 1373. Because the claim

in question involved “transformation of data, representing discrete dollar amounts, by a machine

through a series of mathematical calculations into a final share price, constitutes a practical

application of a mathematical algorithm, formula, or calculation,” the requirements of §101 are

met. Id. This decision spurred patent activities and resulted in the filing of many “business

method” patents.

The pendulum began to swing in the other direction in Bilski v. Kappos, 561 U.S. 593

(2010). The Bilski patent is directed to a “method for managing the consumption risk costs of a

commodity sold by a commodity provider at a fixed price.” The patent examiner and the Board

of Appeals rejected the claim as being directed to unpatentable subject matter. On appeal, the

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Federal Circuit held that the claim was not patentable according to a “machine or

transformation” test, which required the claimed process to be tied to a particular machine or

transforms an article into a different state or thing. However, the Supreme court rejected the

Federal Circuit's holding in that the machine-or-transformation test is the sole test to determine

whether a particular process constitutes patent-eligible subject matter. Instead, the Court held

that business methods can be patentable, and this machine-or-transformation test can provide an

“important and useful clue” for the analysis. However, because the claim is directed to an

“abstract idea,” the Court held that it is ineligible for patent protection.

In a unanimous 2012 decision, the U.S. Supreme Court again opined on the question of

eligible patentable subject matter. Mayo Collaborative Services v. Prometheus Laboratories, Inc.

132 S.Ct. 1289 (2012). The Court held that “to transform an unpatentable law of nature into a

patent-eligible application of such a law, one must do more than simply state the law of nature

while adding the words ‘apply it.’” Id. at 1294 (emphasis original). The patent claims in question

recite an administering drug step, a determining step to measure the resulting metabolite levels in

the patient’s blood, and a “wherein” step describing metabolite concentration levels that are

either too high or too low. Id. at 1295. The Court pointed out the precedent set in Parker v. Flook

437 U.S. 584 (1978), which “insist[s] that a process that focuses upon the use of a natural law

also contain other elements or a combination of elements, sometimes referred to as an ‘inventive

concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a

patent upon the natural law itself. Id. at 1294. Because the claims set forth laws of nature -- the

relationship between blood concentrations of metabolites and the dosages of thiopurine drug --

the Court pondered the question of “whether the claims do significantly more than simply

describe these natural relations.” Id. at 1297 (emphasis added). The Court dismissed the notion

that interpretation of patent statutes should depend on “draftsman’s art” to make inventions

patent-eligible. Id. at 1294. The Court held that the claimed steps “when viewed as a whole, add

nothing significant beyond the sum of their parts taken separately,” and are “not sufficient to

transform unpatentable natural correlations into patentable applications of those regularities.” Id.

at 1298.

The latest in this continuing saga is the case unanimously decided by the Supreme Court

last term, Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014). The

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Alice Court applied the rationale developed in Mayo to a computer-implemented scheme for

mitigating settlement risk. The Court held that such a scheme is a patent-ineligible abstract idea.

The Court applied a two-step analysis that was set out in Mayo: (1) determine whether the claims

at issue are directed towards an abstract idea, law of nature, or natural phenomenon, and (2) if so,

determine whether the claim contains “an inventive concept” that is “an element or combination

of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more

than a patent upon the [ineligible concept] itself.” Id. at 2355. The Court further announced that

“the method claims, which merely require generic computer implementation, fail to transform

that abstract idea into a patent-eligible invention.” Id. at 2356. Here, the claimed steps, taken

separately, are “purely conventional,” and that considered “as an ordered combination,” the

method adds nothing that is not already present when the steps are considered separately.” Id. at

2359. After Alice, it is apparent that the recitation of generic computer limitations would not

make an otherwise ineligible claim patent-eligible. However, it is difficult to discern from the

opinion what the Court thinks is that fairy dust that would amount to what is “significantly more”

and thus push the subject matter into patent-eligible territory.

The Alice case has been widely criticized as using abstract and undefined terms such as

“significantly more,” and “inventive concept” that do not provide any objective guidance.

Moreover, the second step in the Mayo analysis appears to confuse §101 with the determination

of novelty under §102 or §103 that the Diehr Court cautioned and admonished -- “The question

therefore of whether a particular invention is novel is ‘wholly apart from whether the invention

falls into a category of statutory subject matter.’” Diehr at 190 (citing In re Bergy, 596 F.2d 952,

961 (CCPA 1979))). Justice Breyer wrote in the Mayo opinion that “[t]hese considerations lead

us to decline the Government’s invitation to substitute §§102, 103, and 112 inquiries for the

better established inquiry under §101,” which contradicts Diehr. Mayo at 1304. These critics

pointed out that the Diehr Court cautioned against this kind of analysis and referenced legislative

history of the 1952 Patent Act which provided that “Section 101 sets forth the subject matter that

can be patented, ‘subject to the conditions and requirements of this title.’ The conditions under

which a patent may be obtained follow, and Section 102 covers the conditions relating to

novelty." (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952)).

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Some further criticize that the second step of looking for an “inventive concept” in

Mayo’s two-step analysis is also in direct contradiction with Diehr in which the Court there

understood that:

In determining the eligibility of respondents' claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The "novelty" of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter.

Diehr at 188-189 (emphasis added). Subsequent to Alice, a slew of lower court cases invalidated

patents on the basis of §101, and more patent applications are being challenged by Examiners on

the basis of ineligible subject matter, causing consternation among the patent bar as well as at

corporations who have advanced the state of the art in software, biotech, and medical diagnostic

areas.

The U.S. Patent and Trademark Office has now published the 2014 Interim Guidance on

Patent Subject Matter Eligibility in December 2014 (“Interim Eligibility Guidance”) that

supplements the Preliminary Examination Instructions published on June 25, 2014, but

supersedes the Procedure for Subject Matter Eligibility Analysis Of Claims Reciting Or

Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products

published in March 4, 2014. The Interim Eligibility Guidance includes the following flowchart

having steps 1, and 2A and 2B that Examiners should use during examination of patent

applications.

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This analysis hinges on the question of whether the claims “recite additional elements

that amount to significantly more than the judicial exception” once it is recognized that the claim

is directed to “a law of nature, a natural phenomenon, or an abstract idea.” (emphasis added).

The Interim Eligibility Guidance provides a list of illustrative concepts that have been

previously construed as abstract ideas as guidance for determining step 2A in the flowchart:

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1. mitigating settlement risk (Alice)

2. hedging (Bilski)

3. creating a contractual relationship (buySafe)

4. using advertising as an exchange or currency (Ultramercial)

5. processing information through a clearing house (Dealertrack)

6. comparing new and stored information and using rules to identify options (SmartGene)

7. organizing information through mathematical correlations (Digitech)

8. the Arrhenius equation for calculating the cure time of rubber (Diehr)

9. a mathematical formula relating to standing wave phenomena (Mackay Radio)

10. a mathematical procedure for converting one form of numerical representation to another (Benson)

Step 2B is the “search for an ‘inventive concept,” which focuses on the finding that the

claim “amounts to significantly more” than “a law of nature, a natural phenomenon, or an

abstract idea.” The Interim Eligibility Guidance also provides a list of limitations that have been

shown to be “significantly more”:

1. improvements to another technology or technical field

2. improvements to the functioning of the computer itself

3. applying the judicial exception with, or by use of, a particular machine

4. effecting a transformation or reduction of a particular article to a different state or thing

5. adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application

6. other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment

In contrast, limitations that have been found to be insufficient to qualify as “significantly

more”:

1. adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer

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2. simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry

3. adding insignificant extrasolution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea

4. generally linking the use of the judicial exception to a particular technological environment or field of use

The Interim Eligibility Guidance cautions that some obvious cases would not require the

application of the full eligibility analysis. For example, “a robotic arm assembly having a control

system that operates using certain mathematical relationships,” “an artificial hip prosthesis

coated with a naturally occurring mineral” are not attempts to tie up the use of the mathematical

relationships or the mineral, and are patent eligible subject matter.

As a final note, some have speculated that in the wake of Alice, patent practitioners

should consider using means-plus-function claims to avoid the ineligibility question under §101,

and to include as much of the technological alternatives in the specification as possible. The

Ramifications of Alice: A Conversation with Mark Lemley,

http://www.ipwatchdog.com/2014/09/04/the-ramifications-of-alice-a-conversation-with-mark-

lemley/id=51023/ (September 4, 2014).

35 U.S.C. §112

When I first started drafting patent applications, I was trained to always include means-

plus-function claims because according to §112 ¶6, means-plus-function elements “shall be

construed to cover the corresponding structure, material, or acts described in the specification

and equivalents thereof.” Patent practitioners have historically employed "means for" limitations

in claims with the intent and expectation that in litigation they will be able to argue that the

limitation reads on any means for performing the claimed function, known and unknown at the

time the application for patent was filed, so long as such an interpretation would not render the

claim invalid. In the Patent Office during prosecution, a means-plus-function limitation was

construed as literally covering all means or structures for performing the claimed function. Thus

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as the basis of a rejection, the Patent Office could rely on prior art that disclosed the claimed

function but no specific structure for performing the function. See Harry F. Manbeck,

Applicability of the Last Paragraph of 35 U.S.C. § 112 to Patentability Determinations Before

the Patent and Trademark Office, 1134 OFF. GAZ. PAT. OFFICE 631, 636 (Jan. 7, 1992),

reprinted in 1135 OFF. GAZ. PAT. OFFICE 8 (Feb. 4, 1992) (discussing the Patent Office's

sweeping and long-standing practice of ignoring section 112(6) and construing means plus

function limitations so as to cover any means for performing the function, such that a prior art

reference that met the recited function met the limitation). However, there was tension with the

Federal Circuit. In litigation, a means-plus-function limitation was construed under §112(6) as

literally covering only the structure disclosed in the specification and equivalents thereof that

perform identically the function recited. A claim thus cannot be literally infringed unless the

accused device includes a structure for performing the claimed function that is the same as or

equivalent to the structure disclosed in the patent specification for performing the claimed

function.

The Patent Office was brought in line with the Federal Circuit by the unanimous en banc

ruling in In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994). The

Court held that the Patent Office may not disregard the structure disclosed in the specification

corresponding to means-plus-function claim language when rendering a patentability

determination. As a result, §112(f) or pre-AIA §112(6) limitations are likely to be afforded a

more narrow interpretation than a limitation that is not crafted in “means plus function” format.

Non-structural generic placeholders that have been held to invoke 35 U.S.C. §112(f) or

pre-AIA 35 U.S.C. §112(6) include: “mechanism for,” “module for,” “device for,” “unit for,”

“component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.”

Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir.

2008); Massachusetts Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354, 80 USPQ2d 1225,

1228 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 704, 48 USPQ2d at 1886–87; Mas-

Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017 (Fed. Cir.

1998).

However, §112(6) will not apply if persons of ordinary skill in the art reading the

specification understand the term to be the name for the structure that performs the function,

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even when the term covers a broad class of structures or identifies the structures by their function

such as “circuit,” “detent mechanism,” “digital detector,” “reciprocating member,” “connector

assembly,” “perforation,” “sealingly connected joints,” and “eyeglass hanger member.” Linear

Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1321, 72 USPQ2d 1065, 1071 (Fed. Cir.

2004); Apex Inc. v. Raritan Computer, Inc., 325 F.3d at 1373 (2003); Greenberg v. Ethicon

Endo-Surgery, Inc., 91 F.3d at 1583-84 (Fed. Cir. 1996); Personalized Media Commc’ns, LLC v.

ITC, 161 F.3d at 704-05; CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369-70, (Fed.

Cir. 2002); Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d at 1358-63 (20024); Cole

v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); Watts v. XL Sys. Inc., 232 F.3d at

881(Fed. Cir. 2000); Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318-19 (Fed. Cir. 1999).

MPEP 2181.

Turning to other parts of the statute, the Court in Ariad v. Eli Lilly decided that 35 U.S.C.

§112, first paragraph, contained two separate requirements - enablement AND written

description. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1344 (Fed. Cir.

2010) (en banc). The statute thus requires “a written description [i] of the invention, and [ii] of

the manner and process of making and using [the invention].” Id. (emphasis original). Further,

these two separate requirements apply to all claims - original as well as amended. Id. at 1349.

In LizardTech, claims to a generic method of making a seamless discrete wavelet

transformation (DWT) were held invalid under 35 U.S.C. §112, first paragraph, because the

specification taught only one particular method for making a seamless DWT (by maintaining

updated sums) and there was no evidence that the specification contemplated a more generic way

of creating a seamless array of DWT coefficients. LizardTech v. Earth Resource Mapping, Inc.,

424 F.3d 1336, 1344 (Fed. Cir. 2005). Although “it is unnecessary to spell out every detail of the

invention in the specification; only enough must be included to convince a person of skill in the

art that the inventor possessed the invention and to enable such a person to make and use the

invention without undue experimentation.” Id. at 1345. Here, a person of skill in the art would

not have understood how to make a seamless DWT except by using the method explicitly taught

by the specification, i.e., by maintaining updated sums. Id.

Along the same line, there is also recognition that the disclosure of a species (prosthesis

in the shape of a conical cup) in the parent application is not sufficient to provide written

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description support for the genus (generically-shaped cup) in a child patent application where the

specification taught against other species. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir.

1998). The Court pointed out that the specification does discuss other shapes but only in the

context of prior art that are inferior to the conical-shaped cup and never suggesting that the

invention encompasses these additional shapes. Id.

35 U.S.C. § 102 and §103

The America Invents Act’s First-Inventor-To-File provision became effective on March

16, 2013, and we have embarked on a journey into the unknown. However, as there is not much

post-AIA case law to discuss, we turn to pre-AIA case law that are still relevant.

Before AIA, we operated in the first-to-invent realm that also gave inventors an one-year

grace period to pursue patent protection after an occurrence of public use, public disclosure, or

offer for sale. The determination of “on sale” is still applicable under AIA, as a claimed

invention that is “on sale” before the effective filing date of the patent application is barred from

patent protection.

In Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 66-68 (1998), the Supreme Court enunciated a

two-prong test for determining whether an invention was “on sale” within the meaning of pre-

AIA 35 U.S.C. §102(b) even if it has not yet been reduced to practice. “[T]he on-sale bar applies

when two conditions are satisfied before the critical date [more than one year before the effective

filing date of the U.S. application]. First, the product must be the subject of a commercial offer

for sale…. Second, the invention must be ready for patenting.” Id. at 67.

There may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which

nevertheless constitutes a statutory bar. Hobbs v.United States, 451 F.2d 849, 859-60 (5th Cir.

1971). However, the phrase “or otherwise available to the public” in AIA §102(a)(1) appears to

indicate that “on sale” does not now cover secret sales or offers for sale when, for example, the

activity involves individuals that are obligated to keep the sale confidential. MPEP §2152.02(d).

Under AIA, public use that occurred prior to the effective filing date of the patent

application would bar patent protection of the claimed invention regardless of geographic scope.

Under pre-AIA §102(b), “public use” included use that was accessible to the public and

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commercial exploitation of the invention. American Seating Co. v. USSC Group, Inc., 514 F.3d

1262, 1267 (Fed. Cir. 2008) (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380

(Fed Cir. 2005); Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir.

1998)). The fact that the inventor revealed the prototype to a select group of individuals without

a written confidentiality agreement is not dispositive, but rather an understanding of

confidentiality can be implied from the relationships of the observers and the inventor in a

controlled environment. Id. at 1268 (citing Bernhardt, L.L.C. v. Collezione Europa USA, Inc.,

386 F.3d 1371, 1381). The Court pointed out that the inventor solicited feedback from the group

after the demonstration, and then removed and stored the invention under his control. Id.

However, “public use” under AIA only applies to those uses that are available to the public by

the inventor or a third party. MPEP §2152.02(c).

Nearly fifty years ago, Graham v. John Deere Co. set out the basic analytic framework

for obviousness. Graham v. John Deere Co., 383 U.S. 1 (1966). In order to determine whether an

invention is obvious one must work through this analytical framework: (1) Determine the scope

and content of the prior art; (2) Ascertain the differences between the claimed invention and the

prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective

indicia of non-obviousness, i.e. secondary considerations such as commercial success, long felt

but unsolved needs, failure of others, etc. Id. at 17.

Concerned with hindsight construction, the Federal Circuit had been applying the TSM or

teaching-suggestion-motivation test that required the prior art that rendered the claimed

invention obvious to include some explicit teaching, suggestion, or motivation to combine the

prior art and arrive at the claimed invention. If there was no teaching, suggestion or motivation to

combine the prior art references then the invention would not be obvious. The U.S. Supreme

Court, in KSR Int'l Co. v. Teleflex Inc., held that the application of TSM in the obviousness

inquiry by the lower courts is too narrow, rigid, and formalistic. KSR Int'l Co. v. Teleflex Inc.,

550 U.S. 398, 400 (2007). It was wrong to assume “that a person of ordinary skill in the art

attempting to solve a problem will be led only to those prior art elements designed to solve the

same problem.” Id. at 402. Instead, “any need or problem known in the field and addressed by

the patent can provide a reason for combining the elements in the manner claimed.” Id. The

Court further provided that “[c]ommon sense” can now teach “that familiar items may have

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obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be

able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Further, a

claimed invention is not obvious merely because the combination of elements was “obvious to

try.” Id. at 402.

Post-KSR, the Graham factual inquiries are still valid, but the absence of TSM does not

immediately lead to a conclusion of non-obviousness. The proper analysis is whether the claimed

invention would have been obvious to one of ordinary skill in the art after consideration of all the

facts. MPEP §2141. The USPTO provided a list of exemplary rationales that may support a

conclusion of obviousness:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

MPEP §2143.

In rebuttal, applicants may submit evidence or argument to demonstrate that, for

example:

(A) one of ordinary skill in the art could not have combined the claimed elements by known methods (e.g., due to technological difficulties);

(B) the elements in combination do not merely perform the function that each element performs separately; or

(C) the results of the claimed combination were unexpected.

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MPEP §2141.

After KSR, applicants should take steps to preserve and submit evidence that would

support unpredictable and unexpected results as well as technical challenges and difficulty in

arriving at the claimed invention. Applicants may even be well-advised to include evidence of

unexpected or superior results, functions or properties in the specification to provide a solid

foundation for subsequent discussions of non-obviousness with the Examiner.

Conclusion

With KSR and Alice, we currently appear to be mired in a patent-hostile swamp. The

Supreme Court issued more than twice as many patent law opinions in the last five years than

issued in the entire 1990’s. Going forward, we can expect that this trend will continue or even

ramp up as courts turn to disputes and issues arising from AIA. I am holding on to my cowboy

hat and hanging on for a wild ride!

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