Patents IVPatents IVNonobviousnessNonobviousness

Class 14 NotesClass 14 Notes

Law 507 | Intellectual Property | Spring 2004Law 507 | Intellectual Property | Spring 2004Professor WagnerProfessor Wagner

22/18/18

Today’s AgendaToday’s Agenda

1. Cleanup: Priority Issues

2. The Nonobviousness Requirement

1. The Graham Framework

2. Challenge 1: Combining References

3. Challenge 2: Secondary Considerations

4. Challenge 3: Software & Business Models

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Priority of InventionPriority of Invention

The Basic Rule of PriorityThe Basic Rule of Priority

First to ‘reduce to practice’ = First to ‘reduce to practice’ = prioritypriority

• Exception A: Prior conception + reasonable diligence until reduction to practice.

• Exception B: The original inventor abandons, suppresses, or conceals her invention.

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Priority of InventionPriority of Invention

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Priority of InventionPriority of InventionGriffith v Kanamaru (1987)Griffith v Kanamaru (1987)Issue: what is meant by ‘reasonable Issue: what is meant by ‘reasonable

diligence’?diligence’?• Await confirmation of funding sources• Await matriculation of graduate student

What types of delays are ‘reasonable’?What types of delays are ‘reasonable’?

Important: assume an inventor does set Important: assume an inventor does set aside her invention for an ‘unreasonable’ aside her invention for an ‘unreasonable’ time/reasontime/reason• Is she unable to seek a patent? (Under what

circumstances?)• What if she abandons her invention?

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Review: Requirements for Review: Requirements for PatentabilityPatentability

A valid patent must be . . .A valid patent must be . . .

1.1. Fully disclosed (§ 112)Fully disclosed (§ 112)

2. Novel (§ 102)

3. Not subject to a statutory bar (§ 102)

4.4. Nonobvious (§ 103) Nonobvious (§ 103)

5. Within the appropriate subject

matter. (Class 17)

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Obviousness: HistoryObviousness: HistoryWhy require something beyond novelty?Why require something beyond novelty?

Hotchkiss:Hotchkiss:• Prior art: metallic doorknobs with particular hole• Invention: clay or porcelain doorknob, same hole• Court: no patent; a patent requires “more ingenuity

and skill” than that of a “simple mechanic”

Subsequent tests:Subsequent tests:• “requirement for invention”• “flash of creative genius” requirement

Is there a problem with this?Is there a problem with this?

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ObviousnessObviousness

35 U.S.C. § 103. - Conditions for patentability; 35 U.S.C. § 103. - Conditions for patentability; non-obvious subject matternon-obvious subject matter

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between if the differences between the subject matter sought to be patented and the the subject matter sought to be patented and the prior art are such that the subject matter as a whole prior art are such that the subject matter as a whole would have been obvious at the time the invention would have been obvious at the time the invention was made to a person having ordinary skill in the art was made to a person having ordinary skill in the art to which said subject matter pertainsto which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

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Obviousness: Obviousness: GrahamGraham

Graham v John DeereGraham v John Deere (1966) (1966)Establishes the Graham Framework for

obviousness analysis.o The ultimate question of obviousness is one of law o The analysis requires three factual considerations:

1.Scope and content of the prior art2.Differences between the prior art and the

invention3.The level of ordinary skill in the pertinent art

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GrahamGraham in Action in Action

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GrahamGraham in Action in Action

Prior Art Invention

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Challenge 1: Combining Challenge 1: Combining ReferencesReferences

Recall: under § 102 - each element of Recall: under § 102 - each element of the claim must be found in the same the claim must be found in the same document/referencedocument/reference

Under § 103, you can ‘combine’ Under § 103, you can ‘combine’ references to identify all elements.references to identify all elements.

• What is the primary challenge with this?• How do you deal with it?

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Challenge 1: Combining Challenge 1: Combining ReferencesReferences

How to ‘limit’ combining references?How to ‘limit’ combining references?

In re Vaeck/Dembiczak:In re Vaeck/Dembiczak:• Require ‘teaching, suggestion, or motivation Require ‘teaching, suggestion, or motivation

to combine’ referencesto combine’ references• Require ‘reasonable expectation of success’ in Require ‘reasonable expectation of success’ in

combinationscombinations• Where can you find ‘teachings’?Where can you find ‘teachings’?

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Challenge 2: Secondary Challenge 2: Secondary ConsiderationsConsiderations

Note the Federal Circuit in 1980s:Note the Federal Circuit in 1980s:‘jurisprudentially inappropriate’ to exclude

consideration of secondary factors (Why?)

The factors: The factors: (Which - if any - are probative?)(Which - if any - are probative?)• Commercial success• Long-felt need / failure of others• Evidence of copying• Skepticism (prior to invention) / praise

(after invention)• Licensing/acquiescence to the patent

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Challenge 3: Software/Business Challenge 3: Software/Business ModelsModels

1.1. Why do software and business model Why do software and business model patents offer such a challenge?patents offer such a challenge?

2.2. How should the courts deal with this?How should the courts deal with this?

Lockwood v. American Airlines (1997)Lockwood v. American Airlines (1997)

Do you agree with the court that the Do you agree with the court that the lack of detail about the software lack of detail about the software component was fatal?component was fatal?

What does this suggest about software What does this suggest about software patents?patents?

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Challenge 3: Software/Business Challenge 3: Software/Business ModelsModels

Amazon.com v Barnesandnoble.com Amazon.com v Barnesandnoble.com (2001):(2001):• Note the procedural posture.• What do you think the court suggests

about the validity of the one-click patent?

• What does the court’s analysis suggest about software/business method/Internet patents more generally?• Is there a problem here?

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