Federal Circuit Affirms (Not) “Obvious to Try” Jury Instructions

Rentrop v. Spectranetics Corp. (Fed. Cir. 2008)

Dr. Rentrop is the chief of research at St. Vincent's Hospital in NYC. For several years Rentrop used Spectranetics optical catheters to deliver LASER treatment. The Spectranetics catheters came in various tip diameters ranging from 1.4 mm to 2 mm. Finding those diameters too inflexible, Rentrop had the idea of using a 0.9 mm tip. Rentrop told Spectranetics of his idea and help them to create a prototype. Eventually Spectranetics obtained FDA approval and began marketing. In the meantime, the parties began to dispute over financial issues. Rentrop wanted a cut of the profits and so he filed for patent protection and eventually sued Spectranetics for infringement. The jury awarded $500,000 in damages.

On appeal, the Federal Circuit quickly affirmed. The most interesting legal issue of the case involves the pre-KSR jury instructions. The first part focused on the teaching-suggestion-motiviation test:

"In evaluating the scope and content of the prior art, you should keep in mind that there must have been some suggestion for a person skilled in the art to make the combination covered by the claims of the patent in issue in order for the claims to have been obvious. In other words, a claim in a patent is not obvious and invalid, simply because the claim combines elements that can all be found among the prior art references. It must have been a motivation or a suggestion to combine the limits in a manner disclosed by the patent."

The Federal Circuit found this instruction proper – in context – because the instructions defined motivation as potentially arising "from common knowledge, or common sense of the person of ordinary skill in the art, without any specific hint or suggestion in a particular reference."

Obvious to Try: The jury instruction on obviousness also included the statement that a "the test for obviousness is not whether or not it would have been obvious to try to make the invention." The defendant argued that the instruction violates KSR. In KSR, the Supreme Court held that the Federal Circuit was in error to hold that a "patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try." The Federal Circuit, however, was able to logically reconcile the two statements – noting that the jury instruction "does not imply that a showing that the specific combination of elements was obvious to try is insufficient to find obviousness."

Notes:

• Northern District of California Chief Judge Vaughn Walker authored the opinion while sitting by designation on the Federal Circuit.
• Spectranetics recently filed for ex parte reexamination of two of Rentrop's patents. [LINK]

Comments

[6]

Doesn't that logical reconciliation kind of seem wrong? To a lay jurist that instruction might very well be interpreted that way.

[David Stein]

"Doesn't that logical reconciliation kind of seem wrong? To a lay jurist that instruction might very well be interpreted that way."

I read it that way, too, 6.

The CAFC has ruled here that the statement "X must include Y" can be satisfied by showing that one can infer Y into X, or that it's "common sense" that X includes Y... even if Y isn't even arguably present in X.

I wonder how well that sort of argument would hold up in a Markman hearing.

- David Stein

[Malcolm Mooney]

"The most interesting legal issue of the case involves the pre-KSR jury instructions."

Zzzzzzzz.....

[Rocco Bama]

Thank God they are getting back to their senses and whittling away at the Supreme Court's KSR gobbledygook.

[Michael F. Martin]

"Northern District of California Chief Judge Vaughn Walker authored the opinion which was"

...heard while he was sitting with the Federal Circuit by special designation?

[curious]

KSR's "obvious to try" language was a mistake IMHO

[Nobody123]

On the topic of KSR, I find the USPTO and the MPEP to be quite non-committal.

"These guidelines do not constitute substantive rule making and hence do not have the force and effect of law. They have been developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Consequently, any failure by Office personnel to follow the guidelines is neither appealable nor petitionable."

"Exemplary rationales that may support a conclusion of obviousness include:"

It goes on to list the various rationales.
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm

I find the prosecution history to be quite inconsistent since this section was added to the MPEP. Some actions do not cite KSR rationales at all, and instead only cite TSM, while other rely on these rationales.

I personally wish that the USPTO would take a stance on this issue so that examiners and practitioners alike may be put on notice of the standards for examination.

[Free wills]

Good article. I think they have been developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office.

[Nobody123]

"I think they have been developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office."

On this particular issue, I am of the opinion that the USPTO wants its cake and wants to eat it, too.

Management wants to force examiners to apply a specific standard for examination, but management does not want to be liable for the fallout from the Corp applying said standard en masse.

In this particular area, I feel that sometimes the practitiner, out of sheer frustration, would hammer the examiner to no avail, whereas the frustration would be better directed at management.

One interesting note is that the MPEP also lists TSM as a possible rationale for obviousness.

[Nurse Ratched]

Malcolm, its time for your Ritalin...