Secondary Considerations of Obviousness in a Patent Case: The Seldom-Used "Simultaneous Invention" Factor

Secondary considerations are most often used by patentees as circumstantial evidence that an invention was nonobvious.  “Negative” secondary considerations – those used as circumstantial evidence of obviousness – have received less attention and less support in the case law. However, Brent Yamashita discusses the potential use of one negative secondary consideration: the simultaneous invention factor.  Brent gave his permission to publish this short article on the topic.

By Brent Yamashita*

Introduction: In nearly every patent litigation, the accused infringer will argue that the asserted patent claims are obvious (if not anticipated) by the prior art and therefore should be ruled invalid.  The U.S. Supreme Court substantially altered the law of obviousness in KSR when it held that an accused infringer does not necessarily need to show "a teaching, suggestion, or motivation" ("TSM") in the prior art to combine known elements in order to show that the combination was obvious.  See KSR Int'l Co. v. Teleflex Inc., 550 U.S. ___, 127 S. Ct. 1727, 1741 (2007).  Now that proving obviousness no longer requires establishing TSM, the secondary considerations of obviousness and nonobviousness have taken on greater importance in obviousness determinations, as KSR left that doctrine fully intact.

The concept of secondary considerations originated in Graham, where the Supreme Court stated that secondary considerations can serve as relevant "indicia of obviousness or nonobviousness" and might be utilized "to give light to the circumstances surrounding the origin of the subject matter to be patented."  See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).  The Court further stated that secondary considerations can include commercial success, long-felt but unsolved need, and the failure of others.  See Id.  Other factors recognized by the Federal Circuit after Graham include whether the prior art teaches away from the invention, whether others have copied the invention, and whether the invention has received industry acclamation.  See, e.g., Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361 (Fed. Cir. 2000), cert. denied, 532 U.S. 974 (2001).

The Simultaneous Invention Factor: Another secondary consideration-and one which appears to have been discussed and applied much less frequently by the Federal Circuit than the other secondary considerations-is the simultaneous invention consideration.  The Federal Circuit has stated that, "[T]he possibility of near simultaneous invention by two or more equally talented inventors working independently,… may or may not be an indication of obviousness when considered in light of all the circumstances."  Ecolochem, 227 F.3d at 1379 (quoting Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir. 1984)).  In other words, the fact that another person simultaneously and independently created the same invention claimed in the patent-in-suit can serve as an indication that the invention was obvious.

Every accused infringer should consider this often-overlooked secondary consideration in preparing its obviousness defense.  This factor can be particularly useful in a situation where the simultaneous inventions occurred shortly after an enabling technology was introduced.  Some inventions only become possible-or relevant-once a foundational technology becomes known.  For example, tires could not have been invented before the wheel and would have been meaningless before the wheel.  An enabling technology can serve as a chronological starting point for the simultaneous inventions that follow, which can be useful in gauging obviousness of the invention.

In this particular context, I propose that the simultaneous invention factor be modified as follows:  Simultaneous invention by a first inventor and a second inventor is indicative of obviousness when the development by the two inventors occurred independent of one another in a simultaneous manner shortly after an enabling technology emerged and where there is a nexus between the enabling technology and the development by the two inventors.  Applying the simultaneous invention factor in this manner would reflect the fact that if more than one person develops the claimed invention quickly once all of the necessary enabling technology becomes available, then the invention arguably was obvious.

As an example, imagine the following sequence of events: 

• March 1, 1925:  Company A introduces the world's first TV.  The TV includes an antenna for receiving broadcast signals.  (Admittedly, TV content is hard to come by at this time.)
• May 1, 1925:  Inventor B develops a TV antenna that improves the reception of Company A's TV.  Inventor B files a patent application on his invention and eventually obtains the patent.
• May 15, 1925:  Inventor C, independently of Inventor B, develops a TV antenna that improves the reception of Company A's TV.  Inventor C's antenna practices the claims of Inventor B's patent when it ultimately issues.

Under the simultaneous invention factor, an accused infringer in a lawsuit brought by the owner of Inventor B's patent could argue that the fact that Inventor B and Inventor C each independently created a TV antenna shortly after an enabling technology (i.e., Company A's TV) emerged suggests that the claimed invention was obvious once the enabling technology existed and that the invention would have been invented sooner had the enabling technology been available sooner.  In addition, the simultaneous invention factor in this context would counteract the ability of the patent holder to argue that a long-felt but unsolved need for the claimed invention shows that the patent was nonobvious, since the "long" aspect of the long-felt need in this context was a result of the amount of time that elapsed before the TV emerged and was not a result of the amount of time taken to develop the invention once the enabling technology existed.

From a litigation strategy standpoint, in most instances the accused infringer under this proposed rule would do whatever it could to find technology that preceded the invention and argue that it was enabling and that the invention occurred only once that technology existed.  The proposed modification of the simultaneous invention rule potentially could become a "knee-jerk" obviousness argument by every accused infringer, and courts therefore must be diligent about identifying and rejecting spurious arguments.  In that regard, requiring litigants to establish a nexus between the simultaneous inventions and the enabling technology will help to prevent the abuse of this secondary consideration.  The nexus will be most apparent if both inventors began their work only after the enabling technology emerged and if the inventions never could have been developed or built without that enabling technology in place.  In this sense, the enabling technology must be a genuine prerequisite or foundation for the invention.

Conclusion:  In appropriate circumstances, litigants should utilize the often-overlooked simultaneous invention factor in its obviousness defense.  If applied in the manner proposed in this article, the simultaneous invention factor properly recognizes the fact that in some instances inventions do not occur after years and years of toiling in a laboratory, but rather, after a minimal effort (executed by others independently and simultaneously) after a breakthrough in an enabling technology that is not itself the subject of the invention.

Notes:

• * Brent Yamashita is a partner in the patent litigation group of DLA Piper US LLP's Silicon Valley, California office.
• See also, Duffy’s Timing Approach to Patentability.
• TJ Chiang discusses this the history behind the Simultaneous Invention factor in his recent law review article: A COST-BENEFIT APPROACH TO PATENT OBVIOUSNESS.

Comments

[AllSeeingEye]

In a sense, all inventions are waiting for enabling technology of one kind or another. However, not all inventions are subject to a simultaneous invention phenomenon.

[MaxDrei]

Up crops that adjective "genuine" again. Is it a sign of the times in which we live, that so many (Rader, Yamashita, DLA Piper) feel the need to include it? I'm a bit bothered by secondary considerations in general, and by the specific indication, that the subject matter of a claim could be more obvious because two top class inventors conceive it more or less simultaneously. Things that are obvious to a top inventor aren't obvious to the PHOSITA, and healthy competition means that it's normal to find corporate teams of top class inventors in head-to-head rivalry. I think the first top team to file should get a valid patent (unless the state of the art includes a hint or suggestion to the PHOSITA, to modify the realistic prior art starting point (lead compound, perhaps?) to something within the claim, in the reasonable expectation that that mod will deliver the specific technical effect (anti-ulcer efficacy, for example) on which patentability is predicated). But that's boring old Europe, of course, where litigators struggle to make any penny for themselves out of "secondary considerations".

[Anon E. Mouse]

If this becomes good law, it will deter R&D shops and labs from competing against each other to solve big problems.

Let's run the 100 meter dash with a multimillion dollar entry fee, but only give a first place prize to the winner if no one else crosses the finish line. Taking out your competitors (via violence or negotiation) is punishable by antitrust law.

Now, who is going to enter this event?

So much for promoting innovation.

[patent.drafter]

Well put, Anon E. Mouse.

I have a different question, still related to obviousness.

If I have personal knowledge of prior art teachings toward an invention, but those teachings are limited-access (security clearance required), the limitations of my previous clearance take precedence over my duty of disclosure as a practitioner, right? And over my usual duty to inform the client?

Unless someone can provide a convincing precedent otherwise (haven't found one), that's how I'll approach this issue that recently arose in my practice.

[Steve Sereboff]

How about some case citations and discussions regarding success or failure of the argument? Ecolochem was 7 years ago. Lindemann was 14. What happened in those cases? Is this it?

[SF]

"Unless someone can provide a convincing precedent otherwise (haven't found one), that's how I'll approach this issue that recently arose in my practice."

I think the Molins case mentioned a similar issue with respect to the attorney client privilege, but left it up in the air. You probably want to Shepardize / KeyCite that case to see what cases have done since.

[Anon In-House]

"Unless someone can provide a convincing precedent otherwise (haven't found one), that's how I'll approach this issue that recently arose in my practice."

I guess that I would start with MPEP 724-724.05, and then also evaluate whether or not the confidential information is truly prior art as a key component in evaluating if something is prior art is looking to see if it was "accessible to the public"

[TJ]

Steve, to answer your question quickly, Ecolochem is the only case within recent memory where this argument has succeeded; it has failed multiple times before and after that, most recently in Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1324 (Fed. Cir. 2005). Prior to KSR, raising this argument would have been akin to raising the reverse doctrine of equivalents: if it was the only thing you got, don't bother.

[patent.drafter]

Thanks.

[Malcolm Mooney]

"in some instances inventions do not occur after years and years of toiling in a laboratory, but rather, after a minimal effort (executed by others independently and simultaneously) after a breakthrough in an enabling technology that is not itself the subject of the invention."

Of course, the Supremes recognized this basic fact it was one of the reasons why the "strict TSM" test had to be dumped: there is a lag time between a breakthrough technology and the subsequent publication of all the obvious applications of that breakthrough technology.

Hence the extreme crappiness of all the "web-based" patents that the PTO granted during the patent bubble, e.g., "web-based" contests, "web-based" advertising schemes, "web-based" paint color selection and reams of similar garbage "inventions" where the major insight of the "inventor" was the realization that the PTO was actually granting patents on total crap.

[2L]

I have a question concerning the author's hair...

[Steve M]

Among other problems with this theory/approach are these biggies:

The definition of:

1.Obvious

2.Simultaneous

3.Nexus

[DutchMeister]

Hmmmm.... Brent Y's hair looks very familiar. Now I remember! Brent was featured in the movie poster for "House Party" (1990)!!!

[AllSeeingEye]

I guess you can't read graphs Mooney. There was no patent bubble. And the author styled his hair after Mooney's. By the way, pollyanna and I are getting really tired of your late night phone calls.

[AllSeeingEye]

By the way Mooney, your theory about the Supreme Court's rationale regarding KSR doesn't make any sense. Therefore, I will have to conclude, as you so often do about just about everything, that your reasoning is total crap. If you're always going to be so glibly judgmental, at least you could try to be funny like Mr. Cranky.

[Paul Cole]

The best evidence is direct evidence. Circumstantial evidence is inherently second best.

If you look at the "trilogy cases" including Graham you will see that they were decided on the technical facts, not the circumstantial evidence. The Supremes said that circumstantial evidence was admissible but they did not rely on it for reaching their decision in Graham. Simultaneous invention by others may point to lack of inventive step or it may not. But probably a wholly disproportionate time will be spent arguing about it.

[MaxDrei]

I have a question Paul. Given that corporations budget filing and prosecution tightly, but feel unable to impose any budget on patent litigation activity, what exactly is the control mechanism that prevents "a wholly disproportionate time" being consumed, by every litigant, in every patent case, on barmy wild goose chases around the world of "secondary indications of obviousness"? Do the judges have a role here, in the public interest (or in the interest of impecunious litigants)? Are they equipped to perform that case management role? If not, is there anything else, that will constrain the efforts of litigation law firms to "leave no stone (even on the surface of the moon) unturned"?

[Paul Cole]

Max Drei raises a number of interesting questions.

The budget constraints imposed by some US corporations run directly counter to guidance from the CAFC that specifications should be carefully prepared, should contain defintitions of claim terms and should mention equivalents in order to satisfy public notice requirements. Anyone defending at trial in the US is well advised to consider asking the relevant corporate attorney the following questions:

-- Does your company have a policy of shipping out its patent specification writing work to low cost countries?

-- Was this one of the cases affected by this policy?

-- What budget constraint did you impose on the writing of this patent?

-- Could this be why the specification does not fully discuss X or Y or Z?

The likelihood is that there may be embarrassing answers to one or more of these questions, and a tight-fisted coropration with a poorly drafted patent may find its corner-cutting practices exposed to a jury deeply resentful of having its time wasted, and may find itself well on its way out of the doors of the courthouse.

Why, then does the US have this "barmy wild-goose chase"? All litigants, and their attorneys, suspect that there is a "smoking-gun" document in the next filing cabinet. But there is a more serious underlying reason. US pleadings tend to be somewhat vague and generalized. There are no clear mechanisms that I can see in the Federal Rules of Civil Procedure for focusing the pleaded issues at an early stage in the litigation. Since discovery should be given for any issue that arises from the pleadings, and since US pleadings are widely and generally worded, then US discovery is apt to be wide-ranging. UK pleadings are more focused (or if not there are mechanisms for clarifying the pleaded issues before discovery). Documentary discovery then should be on relatively well-defined issues, and the extent of it tends to be less than in the US. And although we exchange witness statements before trial we do not follow US deposition practice.

In the UK, the courts have for at least the last ten years been aware of the limitations of circumstantial evidence and have endeavoured to limit its extent. Discovery and the number of witnesses is controlled to some extent by judicial case management. Control over costs is not always what it should be, but the courts are instructed to deal with cases in "a proprotionate" manner as one of their defined "over-riding objectives" and some mechanisms for controlling what happens at trial are in place. I do not think that US judges are any more receptive than their UK counterparts to waste of the court's time, but they may be less well placed that judges in the UK to control what happens during pre-trial preparation.

There is a further factor in the UK that acts to control costs in a way that happens less frequently in the US. Here the losing party has to pay the costs of the winning party. However, it is not the whole of the costs that are payable but only those costs that are reasonably incurred. If the parties cannot agree, then the file and a so-called "bill of costs" goes before a costs judge, and everyting that has been done has to be justified to the costs judge on the basis that the costs were both necessary and reasonable. Obese bills get trimmed down to size, and the decision of the costs judge will draw unnecessary fat painfully to the attention of the client.

[Roger Karp]

Not directly on point but the insidious 102(e) rejection perhaps represents a type of "simultaneous invention".

[Jim]

So, when we have two PhD researchers who are both independently trying to solve a problem (e.g., find a cure for AIDS) and they both sumble upon the same solution now that an enabling technology exists (e.g., subject the blood to ultrasonics for a specific period of time - purely hypothetical, please don't flame that example!!!), neither of them deserve a patent for coming up with it? The mere fact that someone else thought of it around the same time as the first researcher inherently makes it obvious? That seems ridiculous. I agree with Anon E. Mouse - where's the incentive then? Suppose that research cost hundreds of millions of dollars - why start researching when someone else might come up with the same invention shortly after you, thus negating your ability to get a patent. I thought the whole idea of patent law was to incentivise innovation and disclosure, and, with all due respect to Mr. Yamashita, his proposal would work opposite to that concept.

[millard duckworth iii]

AllSeeingEye: "By the way Mooney...Mooney...Mooney... Mooney...Mooney...Mooney...Mooney...Mooney"

What, did Jodie Foster change her phone number again?

[John Spevacek]

How can two inventors of (more or less) the same thing claim that the other invention was obvious? Wouldn't that mean that they had filed an application for something that they knew was obvious?

[Anon]

There is a relevant non-prec opinion - NPF v. SmartParts, 05-1273 (June 27, 2006), slip op. at 12 (finding simultaneous non-public combinations made by others relevant to motivation to combine) - http://www.cafc.uscourts.gov/opinions/05-1273.pdf

"[T]he court relied on the evidence that actual electronics designers used reprogrammable processors in paintball guns during product development before the priority date to conclude there was a motivation to make that combination. JMOL Order, slip op. at 6-7. Therefore, on appeal, NPF next argues that evidence that certain developers used reprogrammable processors during paintball gun development could not properly serve as the basis for a finding of motivation to combine because the use was not sufficiently public to constitute prior art. But NPF’s argument addresses the wrong issue. Although these uses may not have constituted prior art, they nevertheless can be evidence of a motivation to combine. See Kahn, 441 F.3d at 987-88. Evidence that those of ordinary skill in the art in fact combined the prior art teachings as claimed is certainly evidence that they were motivated to do so. Such evidence shows the knowledge of the skilled artisan at the time of the invention, which can provide the basis for a motivation to combine. See id. at 989. Evidence that multiple developers of microprocessors for paintball guns used reprogrammable processors shows that it was within the knowledge of one of ordinary skill in the art to use reprogrammable processors during development."

[SF]

"The mere fact that someone else thought of it around the same time as the first researcher inherently makes it obvious? That seems ridiculous."

It *is* ridiculous ... because it's a straw man: "the mere fact that someone else thought of it." No one is asserting that simulataneous invention is the only factor in the obviousness analysis.

[AllSeeingEye]

Nice try Mooney, er, I mean "duckworth..." - very original. How many names do you have? Yep, Jodie had to change her number when I kicked her out.

[millard duckworth iii]

honk honk! ^^ hey look guys it's AllSeeingEye ^^ honk honk!

[DDG]

I'm not sure the author is using "secondary considerations" in a technically correct manner. Ordinarily, secondary considerations are purely rebuttal evidence of nonobviousness -- commercial success, failure of other, long-felt but unmet need. The existence of any one of these factor is evidence of nonobviousness, but the absence of any of them is [i]not[/i] evidence of obviousness. Under unusual circumstances, simultaneous inventions can be a (weak) secondary consideration.

But teaching away and the sort of simultaneous invention that the author proposes are not secondary considerations. Systematically, they would fall as part of the prima facie analysis. Mostly it looks like a fact-specific theory of motivation to combine. And there is something compelling about the point about the enabling technology coming into being. But it's hard to derive some general theory from unusual facts like these.

On a more fundamental level, I'm not sure that near simultaneous invention says anything in a general sense. Who is to say that both of the inventors are persons of merely ordinary skill in the art?

[AllSeeingEye]

I can see I have struck a nerve duckworth

[millard duckworth iii]

As there in no reference to Mooney in the preceding post, i refuse to acknowledge it as a post by the real AllSeeingEye. To the impostor above: Please refrain from user name thievery. To the real AllSeeingEye: honk honk!

[AllSeeingEye]

Let's see, Malcolm Mooney, Leopold Bloom, millard duckworth iii, what next? Now I know I struck a nerve. Its OK you can respond to this one since it contains Mooney.

[confused SCOTUS]

The problem with Yamashita's theory is that it ignores how the R&D world works. R&D people do not work in vacuums or secluded chambers. Most R&D people read their fellow R&Ds' scholarly articles or perhaps at one time in the past worked alongside them at the university or in industry. It should come as no surprise then that an improved antenna is developed around the same time (by both B and C in the example) shortly after television A's antenna. Both B's R&D dept and C's R&D dept knew well prior to A's "first TV" that the rest of the R&D world was likewise grinding their neurons trying to arrive at a TV incorporating an antenna(they would be absolutely clueness not to!), but once this TV was developed by A, then B and C hit the pavement of R&D to improve the antenna incorporated by A. That B and C's antennae were invented at almost the same time does not mean their antennae were obvious. It simply means B and C kept abreast of what is happening amongst their peers in the R&D community, as well they should have! I suppose in a vacuum type world where a researcher is locked up in a secluded room and told to invent a cure for cancer, or you cannot come out of the room, then perhaps such an invention would survive a Yamashita obviousness attack, since presumably there would be no starting "enabling" point. Otherwise, the Yamashita theory ignores the realities of the R&D world, and everything is rendered obvious by what came shortly therebefore.