Forgent v. EchoStar: Jury Instruction on Obviousness

Earlier this week, a Texas jury determined that Forgent’s patent claims against EchoStar were all invalid as anticipated, obvious, and lacking proper written description. Although the one-sided decision probably did not receive a boost from the recent decision of KSR v. Teleflex, it is interesting to note that the jury instructions on obviousness-by-combination closely follow DyStar and other new CAFC obviousness cases.

Jury Instructions:

One way to decide whether one of ordinary skill in the art would combine what is described in various items of prior art, is whether there is some teaching, suggestion, or motivation in the prior art for a skilled person to make the combination covered by the patent claims. Motivation can be implicit. In other words, motivation need not be explicit.

It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. Multiple references in the prior art can be combined to show that a claim is obvious. 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. To determine whether there was an apparent reason to combine the known elements in the way a patent claims, you can look to interrelated teachings of multiple patents, to the effects of demands known to the design community or present in the marketplace, and to the background knowledge possessed by a person of ordinary skill in the art. Neither the particular motivation nor the alleged purpose of the patentee controls. One of ordinary skill in the art is not confined only to prior art that attempts to solve the same problem as the patent claim.

 Notes:

23 thoughts on “Forgent v. EchoStar: Jury Instruction on Obviousness

  1. 22

    Hi Just an ordinary inventor(TM).

    I’m glad I was able to provide some comfort. However, please do not confuse a patent attorney’s ability to “intelligently” respond to a KSR 103 rejection using the logic from one of the board’s opinions (thus avoiding a malpractice claim) with a patent attorney’s ability to “successfully” respond to a KSR 103 rejection. If you are facing a KSR 103 rejection, your probability of success seems to be 5% at the examiner level and 15% or less at the board level, even with the best arguments presented. KSR is a devastating blow to patentees.

  2. 21

    Afterthought: the 22 Technical Boards of Appeal (TBA) of the EPO are not subject to the precedent of any higher court, or their own precedent, or the precedent of any of the other 21 Boards. That’s the civil law system at work (as opposed to common law). Every new TBA member could get famous by writing a Decision that pricks the inflated balloon called PSA (problem and solution approach). In this Darwinian soup of legal uncertainty, PSA is by now unassailable, as the tool by which the can of worms called obviousness is laid bare. Rodrigo C cites T465 of 1992. That’s, like, Neandertal. Doesn’t anybody find it significant, that the criticism of PSA today comes only from folks who manifestly don’t understand it, or who have got a vested interest in sidelining it (because it reduces billable hours)?

  3. 20

    Well, Rodrigo C, the 1992 one-off EPO Board of Appeal case you mention is notorious and did indeed say that PSA is not mandatory, but can you give me a case since then? That’s 15 years ago and there have been thousands of obviousness appeal EPO Decisions since then. Do you want to try running at the EPO today any obviousness line that isn’t PSA? Good luck to you. The Boards of Appeal are the judicial instance, supposedly rigorously independent of the administrative Patent Office function of the EPO. What else can the Guidelines to Examiners write except “normally” PSA applies? Yeah, I agree I am probably boring people with my constant whinging that PSA ain’t understood. But I have the idea that this blog actually might change perceptions, for a non-trivial number of readers, and that would benefit a lot of non-litigator users of any patent system.

  4. 19

    Help me O’Lord,

    You just made my weekend! Great. Extremely comforting comments. I already forwarded your comments to my patent attorney lest he file any PTO responses today before he reads them on Patently-O — I think he only gets to read Patently-O once a day, not like us dyed in the wool Patently-O IP addicts.

  5. 18

    Of the 41 KSR citing decisions by the Board of Patent Appeals and Interferences, seven cite KSR against the examiner and in support of the patentee. The reasoning provided in the decisions may be used in responses to offices actions, even if the decision cannot be cited. It would be great if someone read all these and submitted a summary to Dennis to post as a new article on how to argue against the Examiner’s position using KSR as your friend.

    1. Ex Parte Kalliokulju et al (BPAI 2007-0834) link to des.uspto.gov
    2. Ex Parte Mayer (BPAI 2007-0403) link to des.uspto.gov
    3. Ex Parte Shin (BPAI 2007-0002) link to des.uspto.gov (ruled against the examiner under KSR, but the board cited new patents to reject the claims! Haha!)
    4. Ex Parte Bodin (BPAI 2007-0257) link to des.uspto.gov
    5. Ex Parte Nolte et al (BPAI 2007-0563) link to des.uspto.gov
    6. Ex Parte Rinkevich et al. (BPAI 2007-1317) link to des.uspto.gov
    7. Ex Parte Diehl et al (BPAI 2007-0125) link to des.uspto.gov

    In addition to addressing 103 motivation, don’t forget to argue lack of 103 prima facie case. Some of the KSR cases (not above) show that the examiners are using “motivation” to derive the existence of an element not otherwise found in the prior art. However, the Board states that the elements still must be described in the prior art, even if the motivation is not. (e.g., “Hollis fails to disclose a controller or control circuitry that produces aversive stimulus control signals in response to the combination of a neck motion detection signal and signals from a vibration sensor as required by claim 3, the independent claim from which claim 5 depends. Examiner has provided no reference showing such a controller, nor has he made a prima facie case of obviousness over Hollis.”)

    You can find all BPAI decisions at
    link to des.uspto.gov

  6. 17

    I read Ex Parte Rinkevich. It appears to be a startling example of logical reasoning by the Board.

    The reasoning in Rinkevich can be extended, I think, thusly: that in order for motivation to be inherent in the problem, the motivation spoken of must be the motivation to do what it was that the applicant/patentee did–i.e. motivation to solve the problem in the way in which the applicant/patentee solved the problem–not just a general motivation to solve the problem in any way. Sure TSM can be inherent, but it should also have to be specific. I say this because the situation in Rinkevich did not amount to a teaching away.

  7. 16

    peanut gallery wrote, “Even if you consistently characterized the invention as an improvement rather than the solution to a problem, examiners will pick up on the implicit admission that the prior art had a problem due to its failure to implement the improvement.”

    There is not an implicit admission of a problem just because an invention is better. Of course, examiners might try to spin it that way, which is why consistently characterizing the invention as an improvement isn’t a cure-all. Nevertheless, you’re in a much better place if you haven’t expressly admitted a problem because you can argue, either on appeal or in litigation, that using the invention to show a problem in the prior art is classic improper hindsight. Force the USPTO or the defendant to shown a known problem — don’t expressly admit one exists!

  8. 15

    Here’s a KSR cite that turns KSR on its head to support a patentee! In it, the board puts the burden on the examiner to explain why a skilled person would look elsewhere (e.g., reference #2) to solve a problem already solved by reference #1.

    In Ex Parte Rinkevich et al. (BPAI 2007-1317), the board use KSR to reason that a skilled person would not look to a second patent to solve a problem already solved by a first patent (and by the patentee). The board wrote: “In the instant case, we conclude that a person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to Wu to solve a problem already solved by Savill. Therefore, we agree with Appellants that the Examiner has impermissibly used the instant claims as a guide or roadmap in formulating the rejection.”” See link to des.uspto.gov

    Instead of assuming that a skilled person would look for the motivation outside of a patent, this decision puts the burden on the examiner to explain why a skilled person would look outside of a patent when that patent already solves the problem faced by that skilled person.

  9. 14

    By my count, seven courts have cited to KSR so far since the Supreme Court released the opinion on April 30, 2007. However, 41 opinions from the Board of Patent Appeals and Interferences (BPAI) have cited to KSR so far. It looks like the patent office is running with the KSR bulls on this one.

  10. 13

    SF said:

    By focusing on improvements without discussing deficiencies or problems, there is less chance of admitting a problem for which there is an obvious solution.

    Response:

    Improvements and deficiencies are two sides of the same coin. Even if you consistently characterized the invention as an improvement rather than the solution to a problem, examiners will pick up on the implicit admission that the prior art had a problem due to its failure to implement the improvement. (e.g. improvement makes faster = prior art was too slow; improvement uses fewer resources = prior art consumed too many resources; improvement is easer to use = prior art was too difficult to use)

  11. 12

    MaxDrei, I understand your enamourment of the PSA (although I suspect that non-European readers of this blog may start becoming a little fed up with your insistence), but I must point out that even the Boards of Appeal of the EPO have admitted in one occasion (T 465/92, OJ 1996, 32) that, although it is a very handy test in most cases, there may be in some specific cases more adequate alternative criteria for determining obviousness or lack thereof…

    The EPO Guidelines for Examination (C-III, 9.8) also implicitly acknowledge this by noting that “in order to assess inventive step in an objective and predictable manner, the examiner should *normally* apply the so-called problem-and-solution approach.”

  12. 11

    Two MaxDrei items above, saying virtually the same thing, because Dennis I wasn’t asked, in the usual way, to fill in the anti-robot six integer string. So I thought my first post had disappeared into the ether. Sorry readers.

  13. 10

    Luke, sorry but it seems that you don’t understand EPO PSA either. The “objective problem” in PSA emerges for the first time at an intermediate stage of PSA analysis. You can do this analysis only after the prior art searching is complete and all the references reviewed in the light of what the inventor wrote. Whether or not there actually was, before the date of the claim, any “real” problem in the field is 100% irrelevant. What I am saying is that PSA works with just the same clinical efficiency, to sort out obviousness, fairly, in 30 minutes, even when there was no problem ever identified before the claim got filed. It makes me irritated how many ignorant and prejudiced writers (should I include the Australian Court: I haven’t yet read its Decision) write off PSA without first bothering to understand it.

  14. 9

    Yeah Luke but the “problem” in the EPO PSA construct is nothing to do with any “real” problem existing before the filing date. Whether or not there was or was not any “problem” at all in the technical field before the date of the claim, there ALWAYS is one in PSA. The “objective problem” is an “intermediate product” which emerges from the early stages of the “Problem and Solution Analysis”. It is an intermediate finding that you need, before you can advance to the later stages of the PSA analysis. My sense is that the Australian Court did not understand it and, like everybody else not involved at the EPO, wrote off PSA on pure prejudice, before bothering to try to understand it. Shame really, given that PSA routinely sorts out obviousness in about half an hour, without upsetting either patent owner or opponent. From your writings above, Luke, you don’t understand PSA either. Sorry.

  15. 8

    ‘Its all BS wrote’:

    “Filing the patent application proves that the inventor is in the field and proves that he is one of ordinary skill in the art”.

    Not so.

    For one thing, the application may have been filed by a 3rd party. This will of course, be normal for filing by applicants outside the US. The uS application names the inventors as the “applicants”, but that is a nice little label saying nothing about who the “true” applicants are.

    Further more, there are many inventions made by inventors who are definitely not “in the field”. Look at the recent litigation in the UK about an electrostatic insect trap – the true inventor, as determined by the court, didn’t know whether his invention would work, or even that a patent had been applied for on his invention, until he found out later about the patent application at issue. He had just suggested waht was basically an off-the-cuff suggestion to some people in a university, who then went off and “reduced that idea to practice” in US-speak. he knew abosolutely nothing about the field of insect-trapping. he certainly wasn’t anybody of ordinary skill of art in the field – he had zero skill in the field concerned.

    “The problem to be solved must have been known by the inventor at the time of filing, otherwise the inventor would not have solved it or set it out in his patent application”.

    Again, this isn’t always the case. Not all applications are filed by the true inventor for one thing. And not all inventions solve “problems”, which is why the Australian High Court has just said the EPO problem-and-solution approach, while valuable, is not the be-all-and-end-all of obvious determination. Some combination inventions happen to give synergistic results that lead to valuable inventions, without anybody realising there was a “problem” with the prior art in the first place – because there was no such problem.

    Reagrds, Luke

  16. 7

    “Simple. If it is a problem, then there inherently is a motivation to solve that problem. So motivation to combine is inherent.”

    That’s why applicants will likely stop characterizing the prior art as deficient or having problems that the invention solves. Instead, applicants will start stating that their invention is an improvement without admitting problems. After all, many “problems” in the prior art are not known problems at all — they’re merely deficiencies when viewed in light of the invention.

    By focusing on improvements without discussing deficiencies or problems, there is less chance of admitting a problem for which there is an obvious solution.

  17. 6

    Reply to the above comments:

    Filing the patent application proves that the inventor is in the field and proves that he is one of ordinary skill in the art. The problem to be solved must have been known by the inventor at the time of filing, otherwise the inventor would not have solved it or set it out in his patent application. If the inventor knew of the problem at the time of filing and the inventor is in the field, then the jury can assume that problem must have been known in the field at the time of filing.

    Of course, this really doesn’t matter since the instructions state, “Neither the particular motivation nor the alleged purpose of the patentee controls.” In other words, even if the jury does not find motivation or purpose, that does not control and the jury still can find 103 obviousness.

  18. 5

    This is all BS since human motivation to solve a problem is inherent in all problems and a computer word search of the patent database will turn up each element in a claim. Take a look at the instructions. The instructions state “Any need or problem known in the field.” How do they establish that the problem is known in the field if it is not set out in the written prior art? Well, look at the next part of the instruction: “Any need or problem known in the field and addressed by the patent.” The judge basically is saying to the jury, first, look at the patent and see what problem the patentee was trying to solve. If that problem was known to the patentee, it must have been known in the field, even though no written prior art characterized the problem. So how does this tie into motivation. Simple. If it is a problem, then there inherently is a motivation to solve that problem. So motivation to combine is inherent. That only leaves the jury to search all the multiple patent documents given to them for each element of the claim. That was previously done through a computer word search of the patent database by the defense. By removing the writing requirement for motivation and the timing requirement for motivation, very few patents will survive 103 obviousness.

  19. 4

    Exactly. Known AT THE TIME OF FILING. Those jury instructions may as well be labeled “How to have hindsight bias.”

  20. 3

    “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.”

    These instructions are missing the timing factor. “Known in the field” is not the same as “Known in the field at the time of filing”.

    “Any need or problem … addressed by the patent” seems to be inviting the jury to do exactly what patent examiners do… employ hindsight informed by the content of the application/patent.

  21. 2

    MaxDrei,

    Welcome to the funhouse of mixed questions of fact and law.

    Obviousness is a question of law based upon underlying factual inquiries. Questions of fact are usually determined by a triar of fact (e.g., a jury or a judge in a bench trial) unless the facts are such that no reasonable person could resolve the question otherwise, in which case the question may be resolved by the court. Therefore, the triar of fact is supposed to evaluate the Graham factors of (non-)obviousness, and the court is supposed to transform those factual findings into a yea-or-nay determination based upon a consistent set of rules and precedent.

    The knowledgeable reader scoffs.

    Obviousness defenses are frequently sent to a jury so that the jury can render a quasi-advisory verdict that rests on their role in resolving the underlying factual inquiries. The judge generally follows the jury’s verdict, however strictly speaking it is the judge who evaluates the jury’s findings of fact in resolving the question of law. Hilarity ensues at the appellate level when a jury has been asked to determine obviousness/non-obviousness through a general verdict (instead of a special verdict) and everyone attempts to read the tea leaves and argue their own views concerning the implicit findings of fact, of law, and the alleged errors involved in each.

  22. 1

    For my education in Europe, can anybody answer the following question: If obviousness is deemed to be a matter of law (KSR), why is the jury deciding it, and not the judge?

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